Associated Newspapers Ltd and Another v Express Newspapers
| Jurisdiction | England & Wales |
| Judge | Mr Justice Laddie |
| Judgment Date | 11 June 2003 |
| Neutral Citation | [2003] EWHC 1322 (Ch) |
| Docket Number | Case No: HC 03 CO0625 |
| Court | Chancery Division |
| Date | 11 June 2003 |
[2003] EWHC 1322 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
The Honourable Mr Justice Laddie
Case No: HC 03 CO0625
Mr S Thorley QC and Mr A Speck (instructed by Bird & Bird for the Claimant)
Mr A Watson QC and Mr M Vanhegan (instructed by Ashurst Morris Crisp for the Defendant)
Hearing dates: 13 —16 May 2003
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Mr Justice Laddie
Introduction and sequence of events leading to these proceedings
These proceedings have been brought by Associated Newspapers Limited and Daily Mail and General Trust Plc. I will refer to them together as Associated Newspapers or the claimant. The claimant is the proprietor of two very well known, high circulation, tabloid newspapers, the "Daily Mail" and "The Mail on Sunday". It is also the proprietor of a well known evening newspaper, the "Evening Standard" which is distributed primarily in the London area, and a free newspaper "Metro" of which there are a number of editions, each one designed to cater for the interests of the population in discrete geographical areas in England. Appendix 1 to this judgment contains reproductions of typical examples of the top half of the Daily Mail and The Mail on Sunday. Appendix 2 contains a reproduction of an example of the top half of the Evening Standard.
The defendant is a private company, Express Newspapers. It is part of the Northern & Shell Network Limited group of companies ("Northern & Shell"). It, or others in the group, is the proprietor of other very well known, high circulation, tabloid newspapers, the "Daily Express", "Sunday Express", "Daily Star" and "Daily Star Sunday". The group publishes other newspapers and magazines.
As Mr Paul Ashford, Group Editorial Director of Northern & Shell, states, and is not denied, the claimant and the defendant have had a very competitive and at times deeply antagonistic relationship for many decades.
Although the Evening Standard is distributed throughout most of England, it has a virtual monopoly of the evening newspaper market in London and the South East of England. In the second half of 2002, Northern & Shell decided to attack the claimant's evening newspaper market by launching a free newspaper, particularly in the London area. News of this seems first to have appeared in a trade magazine, the Press Gazette, on 22 November 2002. An article there referred to the planned launch and stated that the new paper was being "provisionally – and provokingly – titled Evening Mail". This resulted in the claimant seeking in correspondence certain undertakings and assurances from the defendant. On 2 February of this year, an article appeared in the defendant's Sunday Express. Under the headline "Standard at half-mast as Evening Mail limbers up", one of its reporters said, among other things;
"The London Evening Mail, produced by Express Newspapers, will hit the streets later this month and be free to Londoners."
This produced an urgent request for undertakings. Correspondence ensued. On 5 February, Mr Cameron of the defendant's Group Legal Department wrote to the claimant's solicitors confirming that it was the defendant's view that it was entitled to use either London Evening Mail or Evening Mail as the title of its proposed new product. On the next day, Mr Nick Ferrari, who had by then been chosen as the editor of the planned newspaper, was interviewed on the BBC programme "London News". He explained the future plans as follows:
"The Evening Mail is going to be everything London needs. It's obviously going to have news and sport and the telly and stars and features, but it's going to be what London is all about, which is having opinions about things and also campaigning. That's what London doesn't have at the moment, and that's what the Mail will bring."
This again produced requests for undertakings and threats of legal proceedings from the claimant. In a letter dated 11 February of this year, Mr Cameron wrote, amongst other things:
"As previously explained, we believe that Associated Newspapers has no monopoly over the use of the generic word "Mail" in a newspaper title. Indeed the name "Mail" is commonly used by local and regional newspapers unconnected with Associated Newspapers. Furthermore, any title containing the name "Mail" is likely to be referred to as "the Mail" and we do not consider that your client has an exclusive right to use of this abbreviation either. We are therefore unable to agree to your proposed undertaking that we do not refer to any planned newspaper as "the Mail", either orally or in writing. Indeed we find such a request to be wholly unreasonable. Furthermore we believe that we are entitled to use any of the above names in respect of any new London daily newspaper title that we may choose to launch. …"
This resulted in the commencement of the current proceedings and the launch of an application by the claimant for interlocutory relief. That came before Patten J on 21 February when a consent order was made for a speedy trial. Certain undertakings were given by the defendant without admission of liability. The result of that order is that the parties have had to prepare for this trial in about two months.
Associated Newspapers' claims
In these proceedings, Associated Newspapers asserts that Express Newspapers has threatened to use the titles The Mail, Evening Mail and London Evening Mail for a newspaper to be published and distributed commercially in and around London. It says that the use of each of these names will constitute passing off and will infringe three registered trade marks, No. 1299436 for the mark THE MAIL, No. 1207666 for the mark DAILY MAIL and No. 1218343 for the mark THE MAIL ON SUNDAY, all of which are registered in class 16 in relation to, amongst other things, newspapers and printed matter. For its part, Express Newspapers says that its use of the title The Mail is de minimis and should be ignored. Further, in relation to all the titles, it disputes that it has passed off or threatened to pass off. As far as the registered trade marks are concerned, it denies infringement and, in respect of registration No. 1299436 for the mark THE MAIL, it alleges invalidity on a variety of grounds and accordingly counterclaims for revocation. It will be convenient to consider the case in passing off first. However before doing so, there is one factual matter which should be addressed at the outset.
The titles which Express Newspapers threatens to use
There is a paucity of documentary material dealing with the issue of what title Express Newspapers intends to use for its newspaper. As mentioned above, statements have been issued to the press indicating that launch was only a few weeks away and the defendant's own newspaper, the Sunday Express, stated in February that the new publication would be made available at the end of that month. Further, by the time of the of the commencement of the proceedings, planning for the launch has been ongoing for at least six months. Nevertheless it is the defendant's position that no final decision on the name to use has been taken. I have also been told that, as a private company, the defendant is run on an informal basis with many decisions being taken orally, hence the absence of much in the way of documentation in relation to this issue. In the result, there is no document which either describes the title selection process or the winner of it. For present purposes the defendant is content to say that its two candidate names are Evening Mail and London Evening Mail.
Mr Ashford told me that Mr Ferrari gave the interview to the BBC with his approval and that he was not reprimanded for anything he said. Mr Ashford expressed the view that Mr Ferrari was being "deliberately provocative" and, as he put it, "we were not averse to being provocative". There is no reason to believe that that attitude to their competitor was not to be carried through to the new newspaper once it was put into general circulation. On a balance of probabilities, Evening Mail is the defendant's preferred title for its new publication even if, as I am assured, a final decision has not been taken and no documents relating to the decision-making process exist. London Evening Mail is likely to be the fall-back alternative. It was probably for that reason that Mr Ferrari used the title in his interview. This is consistent with such limited documentation as has been produced by the defendant. In particular, a dummy of the front page of the proposed new publication was prepared by the defendant and used for market research purposes. A reproduction of that dummy is to be found at Annex 3 to this judgment.
This leaves the question of whether or not Express Newspapers threatens to use, orally or in writing, the title The Mail for its new publication, whatever the full title printed on the front page. As mentioned above, Mr Ferrari referred to the paper as The Mail during his BBC interview. Mr Watson QC, who appears for Express Newspapers, argues that this should be ignored as de minimis.
Unfortunately Mr Ferrari has given no evidence and, once again, the defendant says that there is no documentation relating to this issue. In my view it is not open to Express Newspapers to suggest that this was a one-off slip by the editor of the paper, or that he does not intend to use the same name in the future. As I have stated already, Mr Ashford was asked questions about this interview and said...
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