UK: Passing Off "The Mail"

Associated Newspapers, proprietor of the Daily Mail, The Mail on Sunday and The Evening Standard newspapers has successfully prevented Express Newspapers under the law of passing off and trade mark infringement from adopting the title "Evening Mail" or "London Evening Mail" for its proposed free newspaper in the London area.

The parties are competitors. The defendant decided to attack the claimant’s London evening newspaper market (principally The Evening Standard) by launching a free newspaper in the area.

The claimant contended that use of the proposed names would constitute passing off and would infringe its three registered marks: THE MAIL, DAILY MAIL and THE MAIL ON SUNDAY, in part because the proposed names were likely to be abbreviated in use to "the Mail". The defendant had made no final decision about the name however its argument that possible use of the abbreviation "The Mail" would be "de minimis" failed.

The classic trinity to establish passing off – claimant’s reputation, misrepresentation by the defendant, and consequent damage to the claimant, was successfully made out. However the injunction was restricted to the particular threat in the London area.

Challenges to validity of the marks failed, and it was held that infringement would occur under s.10(2) Trade Marks Act 1994.

On reputation and goodwill, the defendant argued that the claimant had no protectable reputation in the words "The Mail" or in "mail" – as the word "mail" was descriptive. This argument failed on its facts as the word "mail" was held to be the name of the newspaper not a generic description for newspapers. The defendant’s argument that so many publications used the word "mail" that it had ceased to be capable of performing a trade mark function was also rejected as there is no requirement in the law of passing off for the claimant’s reputation has to be exclusive. On the evidence, the claimant established goodwill in The Mail, Daily Mail and The Mail on Sunday, and its reputation was particularly pronounced in London. The defendant’s argument, that the claimant’s reputation was restricted to national newspapers which were sold (rather than distributed free of charge), failed for want of evidence.

As to misrepresentation, the defendant sought to characterise the differences between local/national, free/sold and daily/evening newspapers as being so great that confusion would be rare. The argument was rejected and the judge held that consumers would still believe the defendant’s product originated from the same stable as the claimant’s. The existence of other titles containing the word "mail" and the assumption that as a result the public would be more discriminating in terms of paying more attention to the other words in such titles, was also considered. However, the judge held that in the claimant’s heartland (where the defendant’s paper would be distributed) the public would not be aware that there were many other newspapers with "mail" in the title. The claimant’s survey, although heavily criticised, did show that a substantial number of readers would assume a connection between the claimant and the defendant’s proposed titles.

In terms of damage, bearing in mind the competition between the parties, the judge held there was an appreciable risk that significant, although indirect, damage was likely to be caused by the defendant’s activities. Accordingly the passing off claim was made out.

The defendant challenged the validity of the claimant’s mark THE MAIL on a number of grounds. The claim that the mark was incapable of distinguishing the goods of the proprietor on the grounds that the words "The Mail" and "mail" were descriptive was rejected - the words had trade mark significance. Secondly, the defendant attempted to rely on the case of Nestle v Unilever (unreported) in which Jacob J had said that a trade mark must be a "unique identifier". The defendant sought to argue that The Mail was not a unique identifier because of the number of other papers containing the word "mail" in their title. The judge expressed doubts about the Nestle principle but sidestepped the issue by finding that there was no evidence that the mark THE MAIL was not overwhelmingly distinctive.

A further challenge based on s. 5(4) TMA 1994 was that the claimant’s use of the mark THE MAIL, at its date of registration, would have constituted passing off with regard to other unregistered trade marks in use at the time. Again, this challenge failed for lack of evidence. The defendant’s final attack on validity was brought on the ground that the mark had not been put to genuine use. This was also rejected. Accordingly, all challenges to the validity of the mark failed.

The claimant alleged infringement under s. 10(1) and s. 10(2) of TMA 1994. In relation to the claimant’s mark, THE MAIL, the claim under s. 10(1) failed as the specification of the mark was restricted to newspapers for sale and the defendant’s newspaper was to be free of charge. Therefore, the goods in respect of which the THE MAIL was registered were not identical.

However, in relation to the mark THE MAIL, the claim under s. 10(2) succeeded. Free newspapers were similar to the goods for which THE MAIL was registered. In so far as the defendant adopted the abbreviation "The Mail", the mark would be identical to the claimant’s registration. It was held that there was a likelihood of confusion if the defendant used either "Evening Mail" or "London Evening Mail" as its title, as there would be a tendency to abbreviate those titles to "The Mail".

In relation to the claimant’s other registrations for THE DAILY MAIL and THE MAIL ON SUNDAY, the judge held that in so far as the defendant used the title "The Mail" or "Evening Mail", they would infringe both of these registrations. With hesitation, the judge held that use of the title "London Evening Mail" would not infringe either of the registrations, because the distinctive words "London" and "Evening" made up the majority of the title and that, on balance, the differences were so noticeable that the likelihood of confusion would not be made out.

It is difficult to reconcile why "Evening Mail" was held to infringe (with the necessary confusion being made out under s.10(2)) the claimant’s registrations for THE DAILY MAIL and THE MAIL ON SUNDAY when "London Evening Mail" did not (although this did not make any difference to the practical outcome). Following the Gofkid decision (where the judge was concerned not to give wider protection to dissimilar goods than similar goods in relation to well known marks) one wonders whether the claimant might have fared better in relation to "London Evening Mail" by basing their infringement claim on s.10(3) where it is not necessary to make out confusion.

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