Intellectual property – Passing off – Trade mark infringement – Trade mark validity – Injunction – Clarity of proposed use
The defendant proposed to use the names “The Mail”, “Evening Mail” and “London Evening Mail” for its new free London newspapers. The claimant was the proprietor of the Daily Mail, the Mail on Sunday and the Evening Standard and applied for an injunction restraining the defendant from using the proposed names.
(1) Whether the proposed use of the names was sufficiently clear for the issue of passing off to be determined. (2) Whether the claimant’s registered trade mark “The Mail” was invalid as being insufficiently distinctive. (3) Whether the use of the proposed names would constitute passing off or trade mark infringment.
There was a real threat that the word “Mail” would feature prominently in the new newspapers and that there would be no campaign to prevent confusion among the public. As such the threatened use was sufficiently clear for the issue of passing off to be determined. The claimant had goodwill and reputation in the name “Mail”, particularly in London and the South East. There was an appreciable risk that significant indirect damage was likely to be inflicted by the defendant’s activities. The passing off claim was therefore made out and an injunction was appropriate. There was no evidence that the claimant’s trade mark “The Mail” was not overwhelmingly distinctive and so the attack on its validity failed. Use of “The Mail” would therefore be an infringement of the claimant’s trade mark. There was a likelihood of confusion if the defendant used the name “Evening Mail” or “London Evening Mail”.
An unusual example of a successful passing off case concerning periodical titles. The majority of such cases fail as commonly the titles are descriptive. The court is reluctant to permit one trader to tie up in a monopoly right such common descriptive words which other traders are likely to want to make legitimate use of. In this case it was held that ‘Mail’ was not descriptive of newspapers but was rather the name of a newspaper – newspapers not being described as ‘mails’. In addition, the Claimant could show goodwill and reputation.