On 27 July 2015, the Irish Commercial Court refused to grant an interlocutory injunction in favour of The Irish Times restraining the UK based newspaper The Times from launching a new digital Irish edition. The court, in coming to this decision, was largely influenced by the delay on the part of The Irish Times in bringing the proceedings.

The business impact of this decision is that parties seeking to enforce their IP and considering an application for an interlocutory injunction pending trial should act expeditiously once a threat becomes apparent. Urgency is the essence of interlocutory relief and waiting for events to unfold may prove critical to any subsequent claim.

The defendant in these proceedings, Times Newspapers Limited, intends to launch a digital Irish edition of its newspaper called ‘The Times (Irish Edition)’. ‘The Times’ currently has a small readership in the Republic of Ireland for its printed edition and has been available since 1787. The plaintiff, ‘The Irish Times’ was established in Ireland in 1859 and its website has a monthly online audience of over 6.5 million unique users. ‘The Times’ and ‘The Irish Times’ have coexisted for over one and a half centuries in the newspaper market in Ireland. The Times was colloquially distinguished from The Irish Times by the use of the name “The London Times”. The Irish edition of The Sunday Times has been published in Ireland since the early 1980s.

In the substantive proceedings, The Irish Times is seeking relief on the grounds of trade mark infringement, copyright infringement and passing-off. The application before the court in this instance concerned an application for an order restraining The Times from launching its new online Irish edition pending the trial of the full action. This would represent the first national edition of The Times newspaper to be launched outside of the UK.

Although substantive legal arguments were put to the court concerning the legal basis for granting an injunction, such as the presence of a serious question to be tried and inadequacy of damages, the success of the injunction application ultimately hinged on the question of delay.

The Irish Times contended that it first became aware of The Times’ intention to launch its Irish edition in the middle of May 2015. However, Mr Justice Hedigan was satisfied on the evidence before him that The Times’ intention to launch had been common knowledge since at least eight months previously in September 2014. The court was referred specifically to tweets showing that those involved in Irish journalism were well aware of The Times’ intentions, for example, tweets referring to an advertisement for the post of editor of The Times Ireland. Further, in January 2015, tweets congratulating the newly appointed editor circulated throughout the highest executive levels of The Irish Times. The application for an injunction was commenced in May 2015 seemingly as a reaction that month to the registration of THE TIMES IRELAND as a Community trade mark by The Times.

As a result, the court held that The Irish Times has “not moved with the reasonable expedition required of a moving party for interlocutory relief” and for that reason refused to grant the injunction. The case will continue to trial in due course but provides a useful reminder that injunctions, which are equitable remedies, will only be granted when there is no culpable delay on the part of the party seeking the injunction. In this case, for the purposes of a preliminary injunction, it was held that The Irish Times could not sit back since late last year and allow The Times to continue with its plans only to raise the issue at the eleventh hour.

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