Newspaper launch halted by rival METRO mark owners

In a judgment that should be welcomed by registered trademark owners, the High Court in Ireland has granted an interlocutory injunction to Metro International SA, Tidnings AB Metro and Fortunegreen Limited to restrain Independent News and Media plc (INM) from using the word 'metro' in the masthead of a proposed free daily newspaper (Case 2005 3177P, October 7 2005).

The plaintiffs, who were about to launch a free daily newspaper entitled Metro, applied for an injunction after learning that INM intended to produce a rival publication under the title Herald Metro Edition. The plaintiffs hold a registration in Ireland for the word and device mark METRO in which the letter 'O' is replaced by a globe device.

In following the standard case law, Justice Clarke stated that the plaintiffs had first to prove that they had a serious issue to be tried. The judge referred to the decision of the European Court of Justice in SABEL BV v Puma AG and, on that basis, stated that the issue was "whether a global appreciation of the various relevant characteristics of the marks would give rise to a likelihood of confusion on the part of the ordinary consumers of the goods in question".

Clarke held that the goods in each case were identical (ie, newspapers) and that, even though INM's proposed masthead did not feature a globe or similar device, it was possible that INM's proposed new title may be shortened in common parlance to Metro in order to distinguish it from INM's best-selling evening publication The Evening Herald. As this would make INM's proposed new title identical to the plaintiffs' proposed title, Clarke was satisfied that there was a serious issue to be tried on the matter of trademark infringement.

Having decided that an award of damages at trial would not adequately compensate either side, the judge turned to the key issue of where the balance of convenience lay. He observed that to succeed at trial, INM would have to prove that there was no risk of confusion between its proposed masthead and the plaintiffs' registered trademark. To do so, the judge considered that INM would have to demonstrate that the inclusion of the word 'metro' does not amount to a significant part of its proposed masthead. However, at the interlocutory stage, the balance of convenience would be unlikely to lie in INM's favour unless it could show that the inability to use the word 'metro' in its proposed title would have significant consequences if an injunction were granted. As stated by the judge, INM "cannot have it both ways". Either the presence of the word 'metro' in INM's proposed masthead would play a significant role in marketing and establishing INM's publication or it would not. If it would, then it was difficult for the judge not to conclude that, at trial, the plaintiffs would be likely to succeed - in which case an injunction should be granted. If it would not, then it was difficult for the judge to conclude that the balance of convenience pending trial would favour INM more than the plaintiffs.

As a result, Clarke concluded that the plaintiffs were faced with a more significant inconvenience and, on that basis, he granted them an injunction to restrain INM from incorporating the word 'metro' in the name and masthead of its proposed publication or from advertising such a free newspaper.

Although turning on its facts, and in particular the fact that the subject matter of the case was the unexplored market of free daily newspapers in Ireland, the judgment will nevertheless be of interest to trademark holders for a number of reasons. Of greatest interest is the strong endorsement by Clarke of the principle that a registered trademark is a property right, the infringement of which will normally be defended by the courts by way of injunction rather than compensated at trial by means of an award of damages.

In addition, the case highlights the potential dilemma faced at an interlocutory hearing by a defendant that has incorporated a third party's trademark into its own combination mark. As pointed out by the judge, the court will not permit the defendant to have it both ways, that is, to make the contradictory claim that at trial the defendant will have no difficulty in disproving a likelihood of confusion and, at the same time, at the interlocutory stage, submitting that the inability to use the element complained of pending trial would have significant consequences for its business such that the balance of convenience lies in the defendant's favour. This judgment indicates that the defendant will not be allowed to make inconsistent submissions as between the situation at the interlocutory stage and the trial and, as a result, this will tend to favour the plaintiff rights holder.

As a post-script, two weeks after giving judgment, Clarke amended his order to allow INM to use the word 'metro' in its masthead on the basis that the word would appear in a greatly reduced size and style relative to the revised title Herald AM. Both free newspapers have now been launched in Dublin on that basis.

Kieran Heneghan, FR Kelly & Co, Dublin