Brand owners interested in protecting their intellectual property rights should take note of the recent judgment of the Commercial Court where it refused to grant an injunction to the Irish Times restraining the Times Newspapers Limited, the publishers of “The Times” (commonly known as the London Times in Ireland), from using the words “The Times Irish Edition” and other names similar to The Irish Times in promoting a new digital Irish edition of its newspaper. 

Details of the case:

  • The Irish Times (“IT”) instituted legal proceedings against the Times Newspapers Limited (“TNL”), claiming trade mark infringement and passing off. It also filed an application seeking an interlocutory injunction restraining TNL from launching its digital paper in Ireland, pending the trial. 
  • IT claimed that use of the mark “The Times Irish Edition” and other names similar to “The Irish Times” by TNL for its online newspaper was an infringement of its trade mark, “The Irish Times” which has been in use since 1859.  
  • IT also contended that the use of “The Times Irish Edition” by TNL would likely cause confusion in the minds of readers, thereby reducing its readership.  
  • TNL disputed the allegations, pointing out that it was entitled to use its trade mark and that use of the term, “Irish Edition” was merely a connotation that it was an Irish edition of a foreign paper and so, a descriptor of the place from where the newspaper was being published.  
  • For the purposes of the interlocutory application, the Court had to consider whether:  (i) there was a bona fide issue to be tried;  (ii) damages were an adequate remedy; and  (iii) the balance of convenience lay in granting an injunction.  However before considering the above, the Court addressed the issue of delay.

Decision:

  • The High Court was satisfied on the evidence that TNL’s intention to launch a digital Irish edition was common knowledge since September 2014. It is well-established that if an interlocutory injunction is being sought, the party seeking the relief must move with reasonable expedition.  
  • As the IT failed to move with reasonable expedition, the Court refused to grant an injunction. The case will now proceed to a full hearing.

What can companies learn from this case?

    The lesson for other companies is that if they are interested in seeking an interlocutory injunction, they must move swiftly because failure to do so will result in the relief not being granted.