Miss World Limited v Channel 4 Television Corporation (Pumfrey J;  EWHC 982 (Pat); 16.04.07)
Pumfrey J granted an interim injunction to restrain the use of the words “Mr Miss World” for a programme about a transsexual beauty pageant in Thailand called “Miss International Queen”.
The claimant owned a UK trade mark registered in respect of services for the production of television programmes relating to contests and a CTM registered in respect of entertainment services, both for the words “Miss World”. The claimant alleged that the defendant’s use of the title “Mr Miss World” infringed the two marks under Sections 10(1), 10(2) and 10(3). The defendant argued that the use of the word “Mr” transformed the title from denoting that which the claimant provided and suggested a beauty pageant that was not the claimant’s.
In relation to the scope of the specification of goods, a television programme was certainly an entertainment service and therefore within the scope of the CTM. However, Pumfrey J was doubtful that the transmission of the show under the “Mr Miss World” name would infringe the UK mark, which related to production services.
Pumfrey J held that at least one use on the Channel 4 website, referring to the Miss International Queen event as “the Miss World event for transgenders”, was probably an infringing use under Section 10(1). However, the question of whether use of “Mr Miss World” constituted use of an identical mark remained. In this respect, Pumfrey J set out two contentions: Firstly, the words could be viewed as the mark Miss World with an intrabrand feature consisting of the word “Mr”, in which case Miss World would still be a distinct mark and there would be identity of marks. Alternatively, the words could be viewed as an ordinary composite mark in which the word “Mr” did nothing but qualify the Miss World part of the mark purely semantically, with the result that there was some indication that it was a different mark.
Pumfrey J held that Section 10(1) infringement was at least arguable even taking a narrow approach to the idea of identity. If this interpretation was incorrect the question became one of infringement under Section 10(2), for which there was a strongly arguable case: the marks were plainly similar and there would be relevant confusion through association due to the claimant’s extensive reputation in the words “Miss World”.
Pumfrey J commented that Section 10(3) raised the only real reason for requiring removal of the mark from the programme at such a late stage before transmission, rather than leaving the claimant to its remedy in damages. Central to the claimant’s complaint of infringement under Section 10(3) was the assertion that even if members of the public were not confused into the belief that the defendant was transmitting a Miss World production, they would still associate it with the claimant’s product; the use of the mark was parasitic upon the claimant’s reputation, which was unfair. While the defendant accepted that the Miss World mark had a reputation it argued that, since the case involved publication of a television programme, Article 10 of the European Convention on Human Rights was engaged and therefore Section 12(3) of the Human Rights Act 1998 applied. This section states that where the relief granted by a court might affect the exercise of the Convention right to freedom of expression “[n]o such relief is to be granted so as to restrain publication before trial unless the court is satisfied that the applicant is likely to establish that publication should not be allowed”.
Pumfrey J noted that the European Court of Human Rights has distinguished three types of expression: political, artistic and commercial. The court consistently attaches great importance to political expression and rather less to artistic and commercial expression. The relief here was not to restrain broadcast of the programme, but to do so using the words “Mr Miss World”. Pumfrey J was unpersuaded that such use gave rise to questions under Article 10; the name was essentially descriptive. However, in case Article 10 was in fact engaged, Pumfrey J considered whether the case was strong enough to satisfy the requirement imposed by Section 12(3). For this purpose, Pumfrey J considered the judgment in the House of Lords in Cream Holdings v Banerjee  UKHL 44, and the meaning of the word “likely”. In Cream Holdings, Lord Nicholls held that the degree of likelihood of success at trial needed to satisfy Section 12(3) must depend on the circumstances. The general approach was that the courts should be slow to make interim restraining orders unless the applicant showed that he was “more likely than not” to succeed at trial. But there would be cases where a lesser degree of likelihood would suffice.
Absent a sign that was a political point or identifying some matter of political importance, the idea that use of a trade mark could of itself generally engage Article 10 was a difficult one. Pumfrey J was satisfied that there was a strong arguable case of trading upon the goodwill and repute of the mark in an unfair manner and thus the requirement imposed by Section 12(3) was satisfied.
Regarding the balance of convenience, there had already been a number of objectionable uses in mass circulation newspapers and on the Internet. Further, editing the programme at this late stage would be difficult. On the other hand this was a late programming change: the claimant could not reasonably have been expected to find out about it any earlier and once it did find out, it had moved extremely quickly. The programme may leave a lasting impression, undesired by the claimants, and which could affect their relationship with sponsors. While editing the programme would be difficult, it was not impossible. The overall picture seemed to be one where an injunction was appropriate.