Associated Newspapers Ltd. & Anor v Express Newspapers

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;

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:

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:

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.

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.

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 that Mr Ferrari had not been reprimanded in relation to it. There is no suggestion that there is any internal guidance, whether written or oral, which would require staff on the new newspaper to avoid using the title The Mail either in the newspaper itself or when referring to it to outsiders. In the pre-action correspondence referred to above, Express Newspapers took the position that any newspaper with a title containing the word Mail is likely to be referred to as The Mail and that it would not undertake not to use that abbreviation.

Associated Newspapers’ view of the likelihood of abbreviation was supported by the evidence given during the trial. Not only was there much evidence that the claimant’s Daily Mail is frequently referred to as The Mail and, indeed, this is inherent in its use of the title The Mail on Sunday for the Sunday edition, but evidence was given of how some other newspapers with the word "mail" in the title were referred to as The Mail. As part of its case to demonstrate, amongst other things, that Associated Newspapers had no relevant reputation in the words The Mail, the defendant put in evidence from a Mr Christopher Thompson, a paralegal employed in house, which sought to demonstrate how newspaper titles containing the word "mail" were referred to outside London. The whole of his evidence merits reading. For present purposes it is sufficient to note that Mr Thompson’s enquiries suggested that it was normal in Birmingham to abbreviate the Birmingham Evening Mail to the Evening Mail or The Mail and that similar abbreviation takes place in respect of the North West Evening Mail, a newspaper local to South Cumbria.

Indeed, the way in which the title of the Birmingham Evening Mail was frequently foreshortened to The Mail or Evening Mail was a major feature of Express Newspapers’ defence to this action. It was pointed out that not only do members of the public shorten the full title in this way but so also do retailers and the proprietors of the Birmingham Evening Mail. Thus the latter’s editorial appears under the title "Mail Comment", some of its articles are said to be written by a "Mail Reporter", its television listings bears the title "TV Mail", its financial column bears the title "City Mail", the classified advertisement section is called "Mail Classified" and the back page splash concerning sports news carries the banner heading "Sports Mail".

I have come to the conclusion that, whether the defendant uses London Evening Mail or Evening Mail as the full name of its newspaper, the staff will not infrequently refer to it as The Mail and, absent a firm and rigorously enforced directive not to do so, that use will pass into the newspaper itself. There is no evidence that the defendant has considered such a directive. In view of the response of its solicitors in the pre-action correspondence, its stated position is that it need not steer clear of the use of the title The Mail. The argument that the use of that title by Mr Ferrari and the threat to use it in the future is de minimis fails.

Both Mr Thorley QC, for Associated Newspapers, and Mr Watson agree that a convenient starting point for the consideration of the law of passing off is Reckitt & Colman v Borden [1990] RPC 341. They say that the claimant needs to establish the classic trinity of a reputation or goodwill in the name or title sued on, a relevant misrepresentation and damage or real likelihood of it. In this case, Associated Newspapers asserts that it has a substantial reputation and goodwill in the names The Mail, Mail on Sunday and Daily Mail. It says that the use by Express Newspapers of each of London Evening Mail, Evening Mail and The Mail will cause confusion among members of the public and the trade between the defendant’s free London newspaper and its national newspaper. It also says that that is likely to cause real damage. Each of these is disputed by Express Newspapers. It is convenient to consider each topic by itself.

However, before doing so, it is necessary to consider what Mr Watson describes as his primary submission namely that whether or not there is passing off depends on the precise way in which the defendant distributes its product. He argues that this action is "impossibly quia timet" because it is not known how the defendant will market its new publication.

Mr Watson is correct in saying that whether or not there is passing off depends on what has happened or will happen in the market place. For example, it would be possible for the defendant to precede the launch with a prolonged and extensive advertising campaign designed to educate the public into an understanding that the Evening Mail or the London Evening Mail has nothing to do with the Daily Mail or The Mail on Sunday and, for example, on each newspaper, the mark Evening Mail or London Evening Mail could be printed in small letters and be less prominent than a banner headline "This newspaper is wholly unconnected to the Daily Mail or The Mail on Sunday". Were that to be done, it might well be very difficult for the claimant to show any deception of the public, whatever the strength of its reputation in The Mail, Daily Mail or The Mail on Sunday.

The trouble with this argument is that it is dependent on the defendant’s ability or willingness to disclose what its plans are. I have referred already to the paucity of material produced by it as to the name it intends to use for the newspaper. There is no material at all which suggests that the defendant has considered a campaign of disclaimer, let alone taken any steps towards preparing one. No doubt Mr Ferrari, as editor of the new publication, has a large say in how it will be marketed and advertised. Unfortunately, as noted already, he did not give evidence. The only senior employee of the defendant who did give evidence, Mr Ashford, does not claim to have any major part in the marketing of the new publication and, in any event, does not suggest that any campaign to emphasise the difference between the claimant’s and the defendant’s products is in contemplation. In view of the pre-action correspondence, there is nothing to suggest that the defendant believes such a campaign to be necessary.

In the light of these considerations and the fact that the dummies used for market research by the defendant used the titles Evening Mail and London Evening Mail prominently, I conclude that not only is there a real threat that the defendant will use one of those names as the official and printed name of its new product and the name The Mail as Mr Ferrari did, but that such use will be as prominent as in the dummies and is not planned to be preceded or accompanied by any overt campaign designed to prevent confusion among members of the public. This means that the manner of use threatened by the defendant is sufficiently clear to determine whether or not there is an actionable threat to pass off. I reject Mr Watson’s argument on this point.

Associated Newspapers’ argument is simple. It and its predecessors in title have published the Daily Mail since 1896 and The Mail on Sunday since 1982. Sales of each has been very large over a long period of time. According to the unchallenged evidence of Mr Lawrence Sear, the current Managing Editor of the Daily Mail, over the last 20 years that newspaper and the Mail on Sunday have enjoyed circulation figures ranging from 1.7 to 2.4 million copies per day and 1.2 to 2.4 million copies per day respectively. The readership figures over the same 20 year period have ranged from 4.2 to 5.8 million (Daily Mail) and 3. 2 to 6.3 million (The Mail on Sunday). Furthermore it says that the two newspapers, but particularly the Daily Mail, are widely known to and referred to by the public and the trade as The Mail.

The latter point was the subject of evidence before me. It is clear that Associated Newspapers has itself referred to its newspapers as The Mail both in the newspapers themselves and in advertisements for them. Apparently the BACC, which is the governing body which vets what advertisements are allowed to be run on television, has given Associated Newspapers permission to use the words The Mail as the title of both the Daily Mail and The Mail on Sunday. Furthermore there was evidence from a number of sources which indicated that these publications were known to and identified by the public and trade by reference to the name The Mail alone. In particular evidence as to trade usage was given by Mr Sear, Mr Hagerty (the editor of the British Journalism Review), and Miss Philippa Kennedy (a freelance journalist). It is also clear from the evidence of Mr Thompson that retailers and members of the public refer to the claimant’s newspapers as The Mail.

In its defence, Express Newspapers admits that these two newspapers have been successful and well known among the public at large. Furthermore it admits that Associated Newspapers enjoys a reputation and goodwill in England and Wales in relation to the name Daily Mail "insofar as the said name is applied to a national daily tabloid newspaper sold under that title" and in relation to the name The Mail on Sunday "insofar as the said name is applied to a national Sunday tabloid newspaper sold under that title". Those admissions in fact contain a number of subtle challenges to the claimant’s case. First, there is no admission that the claimant has any reputation in the title The Mail simpliciter in relation to any type of newspaper. Further, in respect of the two full titles, Daily Mail and The Mail on Sunday, there is no admission that the claimant has any reputation in relation to free newspapers and such reputation as does exist only relates to national newspapers, not regional ones.

Two arguments are advanced by the defendant. The first is directed primarily at the name The Mail and the word "mail" in the titles Daily Mail and The Mail on Sunday. Notwithstanding the evidence referred to above, and the common knowledge that, at least in London, the Daily Mail and The Mail on Sunday are regularly referred to simply as The Mail, Mr Watson argues that Associated Newspapers has no protectable reputation in the words The Mail or in "mail". He draws my attention to the well known judgment of Lord Simmonds in Office Cleaning v. Westminster Window (1946) 63 RPC 39 and says that both the claimant and the defendant have merely adopted the common word "mail" which is a non-distinctive term indicative of the nature of the relevant goods, namely newspapers. In support of the argument that this word is descriptive, he relies on the evidence of Mr Ashford who refers to the entry in the Oxford English Dictionary which contains an entry under the word "mail" to the effect that it is "the name of a newspaper", referring, among others, to the Daily Mail in 1896. Mr Ashford has also carried out some research and, to support his claim that the word is generic, says that he has found in the British Library’s Newspapers Library references to 781 examples of newspapers with a title containing the word "mail" from 1800 to the current date. Although he accepts that some of these titles are foreign and many of them no longer exist, apparently about 60 are in use, in the majority of cases as part of the title to a local newspaper. He says that these facts demonstrate that the word has become one of the customary terms to indicate a newspaper. Interestingly he also finds that a search of the same Library found 46 newspaper titles containing the two words "evening mail" and 71 containing the words "daily mail". If Mr Ashford is correct, both the title favoured for the defendant’s product is entirely descriptive as is the title Daily Mail. If "mail" is descriptive then Daily Mail means "daily newspaper" and The Mail on Sunday means "the Sunday newspaper" and both should be unprotectable. The admission that each of these titles is distinctive of the claimant is somewhat inconsistent with this part of the defendant’s case.

The jurisprudence to the effect that it is difficult if not impossible to succeed in a passing off action where the mark relied on is descriptive is based on the principle that no trader should be allowed to secure a monopoly over words which customers would regard not as an indication of origin but as merely descriptive of the type of goods or services being offered and which, for that reason, other traders are likely to want to use. Where a mark possesses the ability to convey to the customer an indication of a particular trade origin for goods made available under it, it can be protected by passing off proceedings.

The defendant’s argument that The Mail is descriptive fails on the facts. As the extract from the Oxford English Dictionary says, the word "mail" is the name of a newspaper, not a generic description for newspapers. Newspapers are not referred to as "mails". No one wanting a newspaper but unconcerned as to its origin would enter a newsagent and ask for "a mail". Furthermore all the evidence before me points to the expression The Mail being widely regarded as referring to a particular newspaper from a particular source. Anyone asking for "a mail" in a newsagent during the week, at least in London, would be supplied with the Daily Mail because that is what the newsagent would think was being referred to. If he asked for it on a Sunday, he would be supplied with The Mail on Sunday for the same reason.

The second argument advanced against the existence of a protectable reputation is that neither The Mail as a whole or the word "mail" in Daily Mail and The Mail on Sunday is distinctive because of the existence of numerous other publications on the market which contain "mail" in their title. This is not the same as the argument of descriptiveness. So many publications use the word "mail" that it has ceased being capable of performing a trade mark function. Familiarity has bred contempt. Members of the trade and public cannot and do not rely on that word to indicate a newspaper from a particular publisher. Three types of evidence are relied on in support of this submission. First the defendant points to the numerous "mail" titles still in use now and which have been used in the past referred to above. Second it relies on the evidence of Mr Thompson particularly in relation to the Birmingham Evening Mail and the Sunday Mail as demonstrating that, at least in Birmingham and Scotland respectively, The Mail is a reference to those newspapers, not the claimant’s. This was emphasised during the cross examination of members of the public called by the claimant to give evidence of confusion. Many of them, when shown copies of the Birmingham Evening Mail or Sunday Mail thought that they must be associated with the claimant’s newspapers. Mr Watson expresses the argument as follows. The word "mail" is not uniquely distinctive of the claimant. Shared reputation can not continue to the point where the reputation is shared with a host of independent traders. It is not enough that the claimant owns the largest newspapers using the word "mail" in their title, the word must be distinctive at least down to very few independent traders.

As Mr Watson implicitly accepts, there is no requirement in the law of passing off that the claimant’s reputation has to be exclusive. There have been a number of cases where a claimant has succeeded even though he was not the only trader with a reputation in the mark. A newcomer who adopts a mark employed by more than one competitor and thereby deceives the public harms each of them. There is no reason in principle and no authority which suggests that because a number of proprietors are harmed, none of them can seek to restrain the interference with their trade. Mr Watson also did not put forward any reason why shared reputation could only be protected where there are "very few" traders using the same or similar marks. I can see no reason why this should be so. It may well be that where a number of traders use a similar name as or as part of their trade mark, the public will become more discerning about small differences between them. This may make misrepresentation less easy to prove. But that is quite different to saying that the traders do not have protectable reputations in their marks. It follows that I do not accept this argument. If, as appears to be the case, the claimant has a reputation in The Mail, Daily Mail and The Mail on Sunday as an indication of newspapers from a particular source, the fact that others may have reputations in other newspaper titles which incorporate the word "mail" does not deprive it of the right to protect that reputation.

In addition to this, the defendant’s argument fails on the facts. The law of passing off is concerned with what happens in the market place. Although the claimant claims to have a reputation in the whole of England and Wales and may well do so, what is at issue here is what would be the effect of the defendant doing what it threatens, that is to say launching a new newspaper in London and, possibly, the South East of England. The issue therefore is what will happen in that market. What would happen if the defendant were to launch in Scotland or Birmingham is not in issue and the claimant’s reputation in those locations and all other locations where the defendant is not threatening to publish is irrelevant. A trader’s reputation in one part of the country may be different to its reputation in another and may be protected locally (see, for example, Evans v. Eradicure [1972] RPC 808 and Levey v Henderson-Kenton (Holdings) [1974] RPC 617).

The uncontested evidence is that the heartland of the claimant’s trade in the Daily Mail and The Mail on Sunday is London and the South East of England. The distribution figures suggest that this area accounts for about 40% of total sales. Mr Watson argues that in that area there are other "mail" newspapers. He relies on the fact that copies of the Scottish newspaper, the Sunday Mail, can be found at major main line railway stations, and is recorded as having a readership of 34,000 in London and the South East. Similarly the Birmingham Evening Mail can be found in London. He also relies on the fact that there are a small number of local papers in the South East which contain "mail" in their titles. He relies, in particular, on the Alton Times & Mail, the Bordon Times & Mail, the Liphook Times & Mail, all of which appear to have been launched in the first week of August 1992, the Aldershot Mail, the Chobham and Windlesham News & Mail, the Farnborough Mail, the Molesey News and Mail, the Walton & Hersham News & Mail and the Woking News & Mail. There may be one or two more.

Total sales of all these titles, as compared with sales of the Daily Mail and The Mail on Sunday are trivial. As far as the Sunday Mail is concerned, the circulation figure of 34,000 was arrived at by the National Readership Survey ("NRS"), an organisation which calculates circulation figures based on a sampling technique. It appears that the circulation figure for the Sunday Mail in London and the South East was extrapolated from the fact that, during the whole of 2002, the NRS found 18 people in that area who said that they had read this newspaper. In respect of London alone, the NRS figure is based on finding 5 people in the whole of that calendar year who said that they had read the newspaper. As Mr Jeffries, Group Advertisement Marketing Manager for the claimant, explains these figures are so small as to make the extrapolated figure unreliable. In addition to this, there is no evidence at all as to how the little local papers are referred to by retailers and customers. It may well be, for example, that the Alton Times & Mail is referred to as the Alton Times, the Alton Mail, the Times, the Times & Mail or by its full title. The possibility that none of these newspapers are referred to as The Mail is reinforced by the evidence of Mr Thompson. He went to Cardiff to see how the Western Mail was referred to by retailers and customers. He summarised his findings as follows:

On the evidence the claimant has established that it has goodwill and reputation in the titles The Mail, Daily Mail and The Mail on Sunday and that that goodwill and reputation is particularly pronounced in London and the South East of England.

There is no doubt that the claimant’s reputation has been generated in relation to national newspapers which are sold to members of the public. However there is nothing in the titles used to suggest that the reputation is limited only to national newspapers or to newspapers which are sold. Once again, Mr Thompson’s evidence is illuminating. The local newspaper, the Birmingham Evening Mail, is referred to in Birmingham as The Mail or the Evening Mail. In relation to the Sunday Mail in Scotland, Mr Thompson discovered that every one of the eleven newsagents interviewed had experienced confusion amongst customers between the Sunday Mail and The Mail on Sunday. The different geographical spread of the two newspapers was insufficient to prevent that. It is difficult to see how the titles used would allow a customer to assume one way or another whether The Mail, The Mail on Sunday or the Daily Mail are local or not. Similarly Mr Thompson’s investigations into the marketing of the North West Evening Mail in its local market in South Cumbria revealed that when customers asked for The Mail it was unclear whether this was a request for the local newspaper or the claimant’s. There is also no material which suggests that the public will assume that a free newspaper cannot be connected with a sold newspaper. It should be remembered that the claimant not only sells the Evening Standard but it also distributes the free newspaper, the Metro. Both are widely available in the London area. Furthermore, I think it is permissible to take judicial notice of the fact that newspapers are frequently the subject of price wars with editions being distributed at virtually give-away prices from time to time. There is no material which suggests that the claimant’s reputation in its titles is restricted to national, paid-for newspapers.

Because this action is brought quia timet, there is no direct evidence from the market place on the impact of the defendant’s newspaper. The claimant has tried to address that by conducting market research put together under the supervision of a well known market researcher, Mr Philip Malivoire, a director of NOP Consumer, the consumer research division of the NOP Group. In addition to this, again Mr Thompson’s evidence may contain useful indications as to what is likely to happen if the launch of the new publication proceeds.

The claimant relies upon the fact that its newspapers are referred to as The Mail and that the defendant’s newspaper will be referred to by the same name. Confusion is inevitable. Further it says that the Evening Mail and the London Evening Mail will be regarded by a not insignificant section of the public as part of the same stable from which the Daily Mail and The Mail on Sunday come. It will be regarded as the evening version or cousin of the other two. It can be said that the existence of those two titles as part of the claimant’s business reinforce the impression that there is a family of newspapers of which the defendant’s product is a new member.

The defendant disputes this. The existence of other newspapers with "mail" in their title means that consumers will be more discriminating. Further, the difference between a free evening local newspaper and a national, paid for daily is so great that confusion will be rare. As for the survey evidence, it is so riddled with defects as to be worthless.

For the reasons set out above, there is little in the local/national, free/paid and daily/evening argument. None of these differences, even if appreciated by the consumer, would be sufficient of themselves or together to deter him from believing, if he were otherwise inclined to do so, that the defendant’s publication is from the same stable as the claimant’s.

The existence of other newspapers containing the word "mail" is of more substance. If it were true that the title "mail" was commonplace in the titles of numerous newspapers in the geographical area in which the defendant threatens to distribute its product, it would be reasonable to assume that the public would pay more attention to the other words in the titles of the newspapers they read. In particular they might well learn rapidly that, contrary to first expectations, a new "mail" newspaper has nothing to do with the Daily Mail or The Mail on Sunday. It is because, with time, the public and trade will learn to distinguish between products and services with similar names that it is particularly important in passing off cases that the claimant moves fast. If a leisurely stroll is taken to the court, by the time one arrives all the relevant confusion and damage may be in the past. There may remain no justification for injunctive relief. The more densely packed a market is with similar sounding names, the more care and discrimination can be expected of the customer.

However, as pointed out already, in the claimant’s heartland where the defendant’s paper will be distributed, it is not true to say that the public will be aware that there are many newspapers with "mail" in the title. To the overwhelming majority, the only such newspapers are the Daily Mail and The Mail on Sunday. Furthermore, the assumption that the public will learn quickly to discriminate is somewhat undermined by Mr Thompson’s evidence. Although in Scotland the Sunday Mail and The Mail on Sunday have been on sale, side by side, for twenty years, confusion still occurs. Each of the eleven newsagents interviewed stated as much. One of them, Central News in Leith, said that there was a lot of confusion. Some of the newsagents said that the confusion was exhibited mainly by tourists. It seems reasonable to assume that this was a reference to visitors who either knew of neither the Sunday Mail nor The Mail on Sunday or, more probably, only knew of The Mail on Sunday. Those who did not know of the existence of the Sunday Mail but were aware of The Mail on Sunday, when faced with the existence of another newspaper with a similar sounding name were confused. That would be the position in London. The members of the public who know of The Mail on Sunday would be faced with a new newspaper with a similar name but without the knowledge, acquired over time, that it was not from the same stable. In addition, in relation to the North West Evening Mail, Mr Thompson recorded that most newsagents faced with a customer asking for The Mail would need to make inquiries as to which one, the North West Evening Mail or the Daily Mail, was wanted. In the case of a free newspaper like that proposed by the defendant, there will not be a knowing intermediary able to reduce the possibility of confusion.

This leads me to the survey evidence. Copies of the defendant’s dummy bearing the name Evening Mail were shown to members of the public who were asked:

A significant number mentioned the Daily Mail while a similar number mentioned the Evening Standard. This, perhaps, is not surprising. The dummies carry across the top a banner proclaiming that this is an evening newspaper. The name depicted on the dummy consisted of half of the name of the Evening Standard printed in exactly the same font as that newspaper, together with half the title of the Daily Mail. It is to be noticed that these results were obtained notwithstanding the fact that, as can be seen from Appendix 3, the dummies carried the banner headline:

The attacks on the survey were numerous. It did not pretend to give a quantitative assessment of the likelihood of confusion. For example it was not designed to select a representative cross-section of the relevant public. Furthermore the circumstances in which the questions were asked did not imitate the real world. Some of the interviewees probably did not care who published the defendant’s newspaper and were merely speculating. In addition, the interviewees called to give evidence under cross examination gave a variety of reasons for assuming connection between the dummy and the claimant’s newspapers. All these criticisms, attributable at least in part to the speed with which the survey was designed and conducted to meet the tight timetable for the speedy trial, were acknowledged by Mr Malivoire. However he said that the survey was still useful in giving a snapshot of the likely views of members of the public. Furthermore he said that one of the peculiarities of the results obtained was the absence of equivalent responses identifying other well known tabloid newspapers, such as the Daily Mirror and The Sun. Random guessing should have thrown up a similar, or at least significant, number of interviewees who thought that the Evening Mail was connected with one or other of those newspapers or the defendant’s other tabloid newspapers the Daily Express and the Daily Star.

Notwithstanding the defendant’s criticisms, the survey does give a feel for the reaction of members of the public to the defendant’s proposed newspaper. This is not a case where the customer will take a lot of time and care over his purchase. On the contrary, the defendant’s product will be given away free. The outcome of the survey accords with one’s expectations. A not insubstantial number of readers will assume a connection between the Evening Mail and the Daily Mail and The Mail on Sunday. If a reader tells a friend that he has seen a good article or offer in The Mail, he could be referring to the defendant’s or the claimant’s newspaper. A significant level of confusion is likely. That would be the case even if the defendant were to use London Evening Mail as the title. London is not Alton, Bordon, Liphook or Molesey. It is the capital of the country and its largest conurbation. There is no reason why any reader would assume from that name in the title that this is a little local newspaper run by a provincial newspaper company which has nothing to do with the publisher of national daily papers.

There is no realistic prospect that a significant number of readers will take the defendant’s product in the belief that they are receiving the Daily Mail or The Mail on Sunday. Furthermore I reject the suggestion made by the claimant that there will be direct loss of advertising revenue caused by advertisers placing advertisements in the defendant’s newspaper believing it to be the claimant’s. Anyone wishing to place an advertisement will need to find out the cost and terms of doing so and will need to have a contact telephone or fax number. All of those will be found by looking in the newspaper in which the advertisement is to be placed. However the law of passing of has for many years looked wider than this. One can go back nearly a hundred years to Ewing v Buttercup Margarine Co Ltd [1917] 34 RPC 232. In that case the plaintiff sold margarine retail in shops, mainly in Scotland and the north of England. It had used the name ‘Buttercup Dairy Company’. The defendants proposed to sell margarine wholesale under the name ‘Buttercup Margarine Company’. In holding there to be passing-off Lord Cozens-Hardy MR said:

Warrington LJ in the same case said:

Mr Thorley refers to Clock Ltd v Clock House Hotel Ltd (1936) 53 RPC 269 and Harrods v. Harrodian School [1996] RPC 697 as more recent cases where courts have discussed passing off consisting of the misleading the public into the belief that the defendant’s business and products are connected with those of the claimant. In all these cases, direct sale for sale substitution is unlikely or impossible. Nevertheless the damage to the claimant can be substantial and invidious since the defendant’s activities may remove from the claimant his ability to control and develop as he wishes the reputation in his mark. Thus, for a long time, the common law has protected a trader from the risk of false association as it has against the risk of more conventional goods for goods confusion.

I do not accept the suggestion that the potential damage to the claimant caused by the defendant’s threatened activity would be too insubstantial to support a passing off action. As mentioned above, the claimant and defendant are fierce rivals. No quarter has been given in their circulation battle. For example the claimant gave evidence of "copycat promotions". The promotion advertised on the front of the Daily Mail and The Mail on Sunday as depicted in Appendix 1 is an example. To boost circulation the claimant purchased a £200,000 cottage and offered it as a prize to readers. It appears that the defendant found out about this and, on the same day, advertised its own promotion for the Daily Express. It carried a banner advertisement depicting a very similar thatched cottage with a very similar family group representing the (future) happy winners. In fact the defendant had not purchased a cottage for its competition nor, for that matter, did it promise that the cottage it would supply would be of any particular value. The thatched cottage depicted on the front of its newspaper appears to have been chosen simply because it looked like the one on the front of The Mail, not because that was what the winner was going to receive. The similarity between the claimant’s and the defendant’s respective promotions is obvious. Mr Thorley does not suggest that the defendant’s copy promotion is actionable by his client nor does he complain of rough play but he does argue that it illustrates how close to his client’s newspaper the defendant may well sail. If confusion between the titles to the newspapers is allied to this type of imitation of content or promotion, the claimant’s attempts to maintain or increase circulation may well be undermined in a way which, though difficult to quantify, will be real. Furthermore, both parties express strong political and other views through their respective newspapers. I do not think it is fanciful to suggest, as the claimant does, that a strident campaign run by the Evening Mail which might upset a part of the public could result in customers or advertisers boycotting the claimant’s titles. Furthermore the newspapers in the defendant’s stable include advertisements for adult chat-lines and massage parlours. Mr Ashford was not in a position to say whether the Evening Mail would or would not do the same. I was told that that sort of advertising material would not be accepted for inclusion in either of the claimant’s Mail newspapers and there was no wish to be associated with such material. Whether or not one regards the defendant’s policy in this regard as being objectionably down market or the claimant’s policy as being precious and out of touch, each affects the public perception of their products. The personality of the claimant’s newspapers is likely to play a significant part in its attraction to many readers. The above examples suggest that confusion between them and the Evening Mail may result in the claimant losing some of the control it has over that personality.

In the circumstances, I accept Mr Thorley’s argument that there is an appreciable risk that significant, though indirect, damage of this type is likely to be inflicted by the defendant’s activities.

In the result, the claim in passing off is made out. For reasons set out above, in reaching that conclusion it has only been necessary to consider whether the defendant’s proposed activities in and around London are actionable. It has not been necessary to consider what would have been the impact on the claimant or readers of its newspapers had the defendant threatened to launch a new product under the name Evening Mail in, say, Birmingham. Nor does anything set out in this judgment deal with the consequences were the defendant to purchase, for example, the Birmingham Evening Mail. This means that any injunction to restrain passing off will need to be carefully drafted so not to give relief beyond that justified by the findings above. (c.f. Coflexip SA v Stolt Comex Seaway MS Ltd [2001] RPC 182.

Express Newspapers raises three grounds of invalidity. The first is that set out in paragraph 1 of the particulars of objections served by the defendant. It is said that pursuant to section 47(1) of the Trade Marks Act 1994, this mark, at the time of its registration, failed to comply with the requirements as set out in section 3(1)(a)-(d) of the Trade Marks Act 1994. In other words it falls within the absolute grounds for refusing registration. This is put two ways. The first is that the mark is incapable of distinguishing the goods of the proprietor because it is a widely used expression and, on its own, simply indicates the nature of the goods, namely as being a newspaper. These are objections which are said to arise under section 3(1)(c) and (d) of the Act. For reasons set out above, this argument fails on the facts. The words "mail" and "the mail" are not descriptive and continue to have a pronounced trade mark significance.

The second way this argument is put is as follows. Section 1(1) of the Act defines a trade mark as meaning signs "capable of distinguishing goods or services of one undertaking from those of other undertakings". Section 3 then provides:

Mr Watson prays in aid an unreported decision Nestle v Unilever [2002] EWHC 2709 in which the claimant was asserting trade mark rights in the shape of its famous Viennetta ice cream. Jacob J said:

Based on this, Mr Watson says that The Mail must be a unique identifier. If a failure rate of 15% to identify the proprietor was enough to demonstrate that the mark in the Nestle case was not sufficiently unique, the same applied here because of the numerous newspapers which incorporated the word "mail" in their title.

Mr Thorley’s answer was to suggest that the passage in Nestle was clearly wrong as a matter of construction of the statute and that, in any event, Mr Watson’s clients failed on the facts. Mr Watson conceded that, perhaps, Jacob J’s statement of principle went a bit too far, but he said that it was generally correct.

I must confess that the principle as set out in Nestle does appear difficult to reconcile with other provisions of the Act. First, there appears to be a misquotation of the relevant legislation. Section 3(1)(b) prohibits registration of trade marks which are devoid of "any" distinctive character. The reference to "any" was omitted in Nestle. I have difficulty in seeing how a sign which has trade mark significance to, say, 85% of the relevant public can be said to be devoid of any distinctive character. Furthermore the Act contains a number of provisions which contemplate the coexistence of competing rights in the same mark. For example there are provisions allowing for registration in situations of honest concurrent use. In all of those, it would be impossible to say that the mark was a unique identifier. In any event, I do not need to resolve these issues because, on the facts, there is no evidence that, taken across the length and breadth of the United Kingdom, the mark The Mail is not overwhelmingly distinctive, in a trade mark sense, of the claimant. There may be areas, such as Birmingham, where the trade mark significance is shared with another trader. However the answer to that is not that the mark is invalid but that the other trader may be able to get onto the register on the basis of honest concurrent use and may be able to rely upon section 11(3) as a defence to an infringement action.

The next ground of attack relies on section 5 of the act. The pleaded objection is as follows:

In the end this attack came down to a reliance on the Sunday Mail in Scotland and the Birmingham Evening Mail. As Mr Thorley pointed out, the first of these can be ignored because there is no evidence of any substantial reputation in the Sunday Mail in England and Wales and the claimant’s mark is only registered in respect of the latter two countries. As far as the Birmingham Evening Mail is concerned, it is necessary to consider the position as of the date of registration of The Mail on 30 January 1987. That is 26 years ago. There is no evidence before the court as to how the Birmingham Evening Mail was referred to in those days. There is no material upon which the court could safely conclude that passing off would have occurred at that time. Furthermore, as Mr Thorley pointed out, even if it had been possible to prove that at the relevant time there was a real risk of passing off, this would not result in invalidity of the registration. It would be possible to restrict the geographical scope of the registration by excluding Birmingham under the provisions of section 13(1)(b) of the Act.

In the light of these conclusions, I do not need to consider whether, in any event, it would have been open to me to refuse to declare the registration invalid. If a discretion exists, it seems to me that there would be compelling reasons for exercising it so as not to invalidate this registration. Here the register reflects what is the reality in the market place, namely that The Mail is recognised very widely as a trade mark of the claimant. That appears to me to be a good reason for leaving the register as it is. However that would only be possible if I have a discretion not to remove from the register. Whether such a discretion exists is unclear on the current state of the law.

This brings me to the last invalidity attack. Express Newspapers pleads that the 436 Mark has not been put to genuine use in the United Kingdom by the claimant or with its consent in relation to the goods for which it has been registered within 5 years following the completion of its registration (i.e. during the period 24 July 1992 to 23 July 1997) and there are no proper reasons for its non-use. Accordingly it should be revoked pursuant to section 46(1)(a) of the Trade Marks Act 1994. Alternatively it has not been put to genuine use in the United Kingdom by the claimant or with its consent in relation to the goods for which it has been registered during the 5 year period expiring as at the date of the claim form (i.e. during the period 17 February 1998 to 17 February 2003) and there are no proper reasons for its non-use. Accordingly it should be revoked pursuant to section 46(1)(b) of the Trade Marks Act 1994.

In my view these allegations fail on the facts. Not only has the title The Mail been used by the claimant both orally and in a printed form as an indication of origin in relation to advertising material for its newspapers, but it has been used extensively on The Mail on Sunday. It will be seen from the reproduction of the front page of the latter newspaper in Appendix 1 that the words "THE" and "MAIL" are used very prominently as the trade mark. Underneath, in a much smaller and less prominent font, are the words "ON SUNDAY". Mr Watson concedes that the latter constitutes genuine use of the mark. However he says that it is only use in relation to a national Sunday paper which is sold to members of the public. He says that the registration should therefore be restricted to "for sale national Sunday newspapers" and should be revoked as invalid for non-use in relation to all other types of newspaper including free evening newspapers distributed in the London area.

Even ignoring the use of The Mail in relation to the Daily Mail, I reject this argument. The way in which a court can restrict the classification of goods to meet a non-use attack was considered by the Court of Appeal in Thomson Holidays v Norwegian Cruise Line [2002] IP&T 299. At paragraph 31 Aldous LJ said:

The current registration is in respect of "Newspapers for sale in England and Wales only". Applying the guidance given in Thomson Holidays, this appears to me to be a fair specification taking into account the nature of the newspapers sold by the claimant. Even if use had only been made of the mark The Mail on The Mail on Sunday, it would not have been appropriate to restrict the classification to Sunday newspapers. I do not think that is a sufficiently separate category of newspapers from those sold during the week. In any event, the mark has been used in relation to daily newspapers as well. For reasons set out above, I also do not accept that free newspapers are significantly different in kind to sold newspapers.

It follows that all the attacks on the validity of the trade mark fail.

It is convenient to consider the allegations of infringement of the ‘436 trade mark, The Mail, first. Mr Thorley alleges infringement under section 10(1) and (2) of the Act. He also says that this mark is or would be infringed by the use by the defendant of the names The Mail, the Evening Mail and the London Evening Mail in relation to its free newspaper. Section 10(1) of the Act provides:

Mr Watson argues that this cannot be infringed because his client’s newspapers are free newspapers, not "newspapers for sale" as in the specification of goods for this mark. Mr Thorley’s response is that one should adopt a purposive construction. He says that at the date of registration free newspapers were not distributed in England and Wales. It follows that there was no need to concentrate on whether a newspaper was free or for sale at that time. Customers would not draw a distinction. The word "sold" in the specification of goods carries no meaning greater than "distributed".

In approaching this subject I think it is necessary to bear in mind that it is for the proprietor to decide the width or narrowness of the specification of goods he wishes to have covered by a registered trade mark. Furthermore, because of the provisions of section 10(2), a narrow classification does not mean that the proprietor is prevented from suing in respect of goods outside the specification. Both free and sold newspapers are commercial products. The difference between them on this score is that in the case of the latter, a significant part of the income of the proprietor is derived from the money paid by readers while in the case of the former substantially all the income is derived from advertisers. One of the functions they have in common is to carry news stories. They are both likely to carry advertisements, articles and promotions. They will frequently meet the same needs of the customer. However I do not think it is permissible to downplay the significance of the word "sold" in the specification of goods. Whether newspapers are sold or given away free affects the channels through which they reach the customer. Not surprisingly, newsagents are not willing to distribute a free newspaper which may undermine their income from sold newspapers. It is open to the proprietor to specify the class of goods to be covered by his mark by reference to the channels of distribution by which products bearing it reach the market. He has done so here. The fact that he could have used a less restricting definition does not alter the fact that he did not. I do not think that the words "for sale" can be ignored. It follows that there can be no case of infringement under section 10(1).

The alternative case arises under section 10(2) which provides:

Free newspapers are goods which are similar to those for which the ‘436 trade mark is registered. Although they have different channels of distribution, this does not detract from their manifest similarities. Adopting the analysis suggested by Jacob J in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 231, they have similar uses, they will be made available to the same users, they will be similar in size and makeup and they will compete with each other.

In so far as the defendant uses the name The Mail for its newspapers, whether orally as Mr Ferrari did or in writing as is likely in view of the natural tendency to abbreviate, that will be a use of a mark which is identical to that covered by the ‘436 registration. The question then is whether as a result of such use there exists a likelihood of confusion. This is a subject which has been the subject of considerable discussion in cases in the European Court of Justice. Counsel made reference to Sabel BV v. Puma AG [1998] RPC 199, Canon v. MGM [1999] RPC 117, Lloyd Schuhfabrik [2000] FSR 77 and Marca Mode v. Adidas [2000] ETMR 723 all of which are decisions of that court. Reference was also made to the passage dealing with this topic in the Thompsons Holidays case. The question of likelihood of confusion has to be looked at globally taking into account all the circumstances including the closeness of the goods, the impressions given by the marks, the possibility of imperfect recollection and the risk that the public might believe that the goods come from the same source or economically-linked sources. Applying that approach here, it is clear that there is a likelihood of such confusion insofar as the defendant uses the name The Mail.

In my view there is a similar likelihood of confusion if the defendants use either the Evening Mail or the London Evening Mail as the title of their newspaper. As mentioned already, there will be a natural tendency to shorten such names to The Mail and it follows that there is a significant risk that members of the public would do that.

It follows that the case of infringement of the ‘436 mark is made out.

This brings me to the question of whether there has been infringement of the other two registrations, namely No. 1207666 for the mark Daily Mail and No. 1218343 for the mark The Mail on Sunday. The points made above in relation to the infringement of the registration of The Mail trade mark by use of the titles London Evening Mail and Evening Mail work the other way round as well. Insofar as the defendant uses the title The Mail for its newspaper, it will infringe these two registrations. The question is whether use of the full titles London Evening Mail and Evening Mail will infringe either of these marks. As I understand it, for the purpose of infringement it is necessary to compare each registered mark with the alleged infringement. It is not appropriate to consider the two registered marks together so as to create a "family" of marks, thereby imitating the assessment in the passing off part of this case. Although I have rejected the suggestion that the word "mail" is descriptive, it is certainly common and, looked at globally, an average consumer could be expected to notice and pay attention to the distinguishing words "London", "Evening", "Daily" and "On Sunday". In support of the argument of infringement, Mr Thorley relies on the decision in Canon and, in particular, the following passage:

Considering first the use of the title Evening Mail, it appears to me that the factors which point towards confusion outweigh those that point away. The Evening Mail could well be thought of as the evening version of either the Daily Mail or The Mail on Sunday and from economically linked undertakings. Looked at globally, I have come to the conclusion that this title infringes both registrations. However I am not persuaded that the same holds true if the title used is London Evening Mail. The distinctive words "London" and "Evening" make up the majority of the title. With considerable hesitation, I have come to the conclusion that, on balance, the differences are so noticeable and important to the title that the likelihood of confusion for trade mark infringement purposes has not been made out. As a consequence, it has not been proved that this back up title for the defendant’s newspaper will infringe either of these two registrations.

In the result, the claim in passing off succeeds as does most of the claim for trade mark infringement. The attack on validity of the registration of the 436 mark fails.