Guardian Media Group Plc and Others v Associated Newspapers Ltd
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE ROBERT WALKER,MR. JUSTICE SCOTT BAKER,LORD JUSTICE HENRY |
| Judgment Date | 20 January 2000 |
| Judgment citation (vLex) | [2000] EWCA Civ J0120-3 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | 2000/5109/83 |
| Date | 20 January 2000 |
[2000] EWCA Civ J0120-3
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(Mr Justice Jacob)
Royal Courts of Justice
Strand
London WC2
Lord Justice Henry
Lord Justice Robert Walker
Mr. Justice Scott Baker
2000/5109/83
MR. J. BALDWIN Q.C. and MR A SPECK (instructed by Messrs Bird & Bird, London, EC4) appeared on behalf of the Appellant/Defendant.
MR. M. BLOCH Q.C. and MR. I. PURVIS (instructed by Messrs Perkins & Co., Manchester) appeared on behalf of the Respondents/Claimants.
: This is an appeal, for which this court granted permission at the beginning of the hearing, from an order of Jacob J made on 14th January 1999. The order granted an interim injunction restraining the defendant, Associated Newspapers Limited, ("Associated Newspapers") until trial or further order "from publishing distributing or causing enabling or assisting others to publish or distribute any newspaper magazine or other periodical under or by reference to the name METRO or any other name colourably similar thereto in the area within the distance of 15 miles of Piccadilly Station, Manchester."
The claimants are three companies, Guardian Media Group Plc, Greater Manchester Newspapers Limited and Manchester Morning News Limited ("the Manchester Group"). The multiplicity of claimants is explained by the need for a solid undertaking in damages.
The Manchester Group publishes the well-known Manchester Evening News, but the Group have for more than 10 years also published and distributed free a weekly newspaper, the correct full title of which is now Manchester Metro News. This paper is distributed mainly in prosperous suburbs to the south of Manchester, including Altrincham, Wilmslow and Stockport, by delivery to peoples' homes on Friday.
The judge described the newspaper in the following terms, which are taken from an approved transcript of his judgment:
"It began life in 1987 or 1988. Initially the masthead read 'Manchester Evening News Metro', the 'Metro' being given much the greater prominence. The reference to the Evening News disappeared by 1988 [I interpose that that seems to be not entirely correct] and from then on the masthead with variants so insignificant as not to count read 'METRO' in very big letters with 'Manchester' and 'News' floating in much smaller letters above and below the big lettered METRO. The newspaper has a circulation of about 300,000 and is delivered to households in the Manchester area, particularly the wealthier areas of Manchester. There can be no doubt that this newspaper in the ten years in which it has been operating in Manchester has acquired a significant reputation."
The evidence in fact showed that a tiny fraction of the circulation, less than one-tenth of one per cent, is sold at outlets in Central Manchester or in Salford. However, neither side based anything on that minute number of copies which were sold.
The judge then recorded the claim made by the Manchester Group to have very substantial goodwill in the name "Metro" in the Manchester area. Their evidence was that the name is well-known to members of the public, to advertisers, and to those concerned with placing advertisements. Even for a free newspaper, which derives its revenue wholly from advertising, recognition by the public, as well as by advertisers, is obviously important, because advertisers are interested in the size and character of any newspaper's readership. The Manchester Group's free weekly newspaper has won trade awards in 1997, 1998 and 1999. Its masthead has for many years included the slogan "Britain's Biggest Free Newspaper".
Associated Newspapers is a well-known newspaper publisher, its best known publications being the Daily Mail, the Mail on Sunday and the Evening Standard. In March 1999, after nearly two years planning and preparation, it launched a new venture which has been very successful; that is, a free daily newspaper to be distributed to commuters in the London area, at railway stations, tube stations and so on. Associated Newspapers chose the name "Metro London" for its new venture, the word "Metro" being more prominent on the masthead and being used on its own within the newspaper for items such as Metro Weather, Metro Travel Watch and so on. I comment at this point that the judge observed, I think correctly, that "Metro" is a distinctly unusual name for a newspaper in contrast to other words (such as Times, Observer, Express, and so on) which are found in the titles of both national and many local newspapers.
It is not suggested that Associated Newspapers set out with any intention of misappropriating a name known to be used by competitors. On the contrary, the judge recorded the evidence on behalf of Associated Newspapers in the following terms:
"The defendants say that they took particular care when they chose the name 'Metro' to ensure that it was clear for use throughout the country. They always envisaged that the London version of their Metro newspaper would be followed by Metros in other parts of the country and searches were done. The fact that the claimants were using Metro as part of their newspaper name did not emerge as a result of those searches. That may well be because the search technique used did not always have the ability to throw up the word 'Metro'. Computers can look for 'Metro' but they can only look for 'Metro' in a computer data base. The particular listing of newspapers and the like, a publication called [Willings Press Guide] only had the full title of the claimant's newspaper, 'Manchester Metro News'. The search [in April 1998] did not throw up the existence of that newspaper and those concerned in the defendants with their Metro project were not aware of the Manchester local newspaper, even though it had won all those awards which are referred to in the evidence. … It is unfortunate that the search did not reveal the use of the name 'Metro' and it is perhaps surprising, because by 1999 the Metro paper of the claimants was producing advertising revenue of £5.4 million a year."
The chronology recorded in the judgment, and there is an issue as to whether it is complete enough to give a true picture, is that on 10th November 1999 the Manchester Group learned of Associated Newspapers' intention to launch a Manchester version of its free daily newspaper, and that it came out on Friday, 12th November 1999 under the name of Metro Northwest. This was, according to the evidence of Mr. Kass, the legal director at Associated Newspapers, six days after Mr Kass had become aware of the name of the Manchester Group's free weekly. It appears, therefore, that Associated Newspapers acted with its eyes open but that its eyes, on that evidence, were opened only at a late stage.
The Manchester Group had already, in July 1999, announced its plan to launch its own daily free newspaper distributed at public transport centres, and the Manchester Group accelerated that launch so as to coincide with Associated Newspapers' launch in Manchester. Associated Newspapers described this as a mere spoiler, but the judge did not accept that that was 'quite right'. That way of putting it allows for some element of a spoiler. The Manchester Group's new free daily was called Manchester Metro News, with the "Metro" being dominant. The outcome has been that since the middle of last November, and until the present time, there have been two free dailies, both being distributed at railway stations, tram stations and other transport centres in the Manchester commuter area; that is, Associated Newspapers' Metro Northwest, containing mainly national and international news and carrying national advertising, but in a Manchester edition which gives prominence to local items, and the Manchester Group's Manchester Metro News, containing mostly local news but some national news and carrying mainly local advertising. The evidence indicates that in 1999 about 10% of the Manchester Group's weekly free paper's advertising was advertising which should be classified as national advertising.
It has not been suggested that, apart from the names, there was any particular similarity in get-up between the two publications, although of course a stressed and half awake commuter may be inclined to act like a 'moron in a hurry', in the phrase used by Foster J in Morning Star Co-operative Society v Express Newpapers [1979] FSR 113, 117. There is, however, a strong likelihood of confusion, in that both are distributed at transport centres by agents clad in each case in bright yellow jackets. Mr John Baldwin QC, appearing with Mr Adrian Speck for Associated Newspapers, has rightly criticised a statement in a witness statement of Mr. David Benjamin, a director of the third claimant, to the effect that Associated Newspapers copied the Manchester Group's method of distribution for its daily free paper. The fact is that the Manchester Group was copying a distribution method which Associated Newspapers has been using in London successfully for months.
The Manchester Group complained to Associated Newspapers about its new Metro Northwest within two days of 12th November 1999. A letter before action was written on 16th November, and the matter came before the Chancery Division of the High Court on 6th December 1999. However, there was no effective hearing of the application for an interim injunction until the hearing on 14th January, which I have already mentioned. The...
To continue reading
Request your trial