Miss World Ltd. v Channel Four Television Corporation

This is an application for interim relief in respect of infringement of domestic registered trade marks and community trade marks by Miss World Limited, the organizer of the well-known beauty pageant. I say "well known" since it is accepted on the part of the defendant in this case that the name "Miss World" has an immediately recognizable impact.

The defendant is Channel 4 Television Corporation, which proposes to transmit a programme on the evening of Tuesday, 17th April under the name "Mr Miss World". This programme follows the fortunes of an English competitor in a beauty pageant for transvestites and transsexuals that took place in Thailand in 2006 and which was called "Miss International Queen".

The evidence is that the claimant became aware of the proposed transmission on 11th April. Complaint was made on the basis of certain registered trade marks and community trade marks on 12th April. It will be appreciated that this complaint was made late having regard to the intended date of transmission, but this is not really so surprising.

It appears from paragraph 12 of the witness statement of Mr. Andrew Mackenzie (the Commissioning Editor of Factual Entertainment at Channel 4) that the presence of this programme is a comparatively late decision on the part of Channel 4 itself since towards the end of March 2007, as he puts it, it became apparent to the Channel 4 Scheduling Team that an American drama series called Kidnapped was not attracting the audience expected for its slot at 10pm on a Tuesday. A decision was therefore taken to place that series elsewhere in the schedule and replace it with the three programmes of the so-called "sexually confused" season of programmes of which this is one.

Channel 4 Television offered no undertakings, and a copy of the programme, which had already been released to television critics for the purpose of preview notices in accordance with the standard practice, was refused; hence these proceedings.

On Friday, 13th April Channel 4 appeared before me by Miss Heal without any evidence either as to the merits of the allegation of the infringement of trade mark but, more importantly, setting out the practicalities of removing the words complained of from the title and from the sound track of the programmes, to the extent to which it was there present. Nor was there any evidence as to the extent to which the title had been publicized and the extent to which it had formed the subject matter of previews.

If I considered that there was a triable issue regardless of the threshold at which that decision must be determined, many important considerations affecting the balance of the injustice, as it is sometimes called, would be related to me by Miss Heal on instructions. At the end of Miss Heal's submissions on legal merits of the allegation of infringement I directed that evidence should be prepared relating to these matters for a resumed hearing at 10 o'clock on Monday the 16th. That is today and I now give judgment at the conclusion of the resumed hearing.

The registered trade marks are set out in the exhibits to the first witness statement of Michael Anthony Macario on behalf of the claimant and are summarized in paragraph 15 of that witness statement. They are as follows:

Infringement of the two word marks is alleged under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994. It is convenient to summarize the cases under each head. The section 10(1) case -- the case where there is identity of goods and services -- is developed in this way. The use complained of is of the sign "Mr Miss World" as the programme name and use on the Channel 4 website. The use on Channel 4 website is, by way of example only, on page 29 of the exhibit to Mr. Macario's witness statement and that consists of the following sentence:

In my view the second use of the words of Miss World is probably an infringing use under section 10(1). That, however, is by the way since it does not affect the difficult question whether Mr Miss World in fact is the use of an identical mark. I have wavered in my view of this problem during the argument in this case. The two contesting contentions may be put as follows.

First, Mr Miss World is properly to be viewed as the mark Miss World with what might be called an intrabrand feature consisting of the word "Mr". This means that, if right, it would have to be demonstrated that the ordinarily interested notional member of the public or notional consumer would consider this to be a Miss World product, differentiated by the use of the word "Mr". In that case the word Miss World would still be a distinct mark. Then there would be identity of marks.

Second, an alternative view is that it is an ordinary composite mark in which the word "Mr" does nothing but qualify the Miss World part of the mark purely semantically with the result that there is some indication that this is a different mark, but none the less one clearly dependent upon the Miss World reputation.

If the second alternative is correct, the comparison to be made under section 10(2) is a global comparison, as is well known, and involves, necessarily, taking into account the reputation which attaches to Miss World as a mark, a reputation which, as I have indicated, is accepted by the defendant.

Miss Heal's submission is that "Mr Miss World" is a title which does not denote something from the same stable as "Miss World" but merely suggests a beauty pageant which is not the claimant's beauty pageant. She submits that the "Mr" transforms the mark from denoting that which the claimant in fact provides, which are services in relation to a beauty pageant for unmarried women. As she puts it, the sign is gender transfigured.

As I have indicated, identity is a difficult question and is to be viewed strictly, but, as at present advised, I am of the view that section 10(1) infringement is at least arguable even taking a narrow approach to the idea of identity. If I am wrong in that, then the question becomes one of infringement under section 10(2), which is probably the preferable view.

I should at this point, before turning to the detail of infringement under section 10(2), add a word about the specification of goods or services and the relevant mark. I agree with Miss Heal that, as I have indicated, the Mr World marks are irrelevant for infringement purposes. They are device marks but I reserve my position as to whether, if used, they might become relevant to the global comparison which will be made in respect of the Miss World marks under section 10(2).

Be that as it may, I consider that so far as the scope of the specification of goods is concerned the crucial question is: what is the defendant supplying? The answer is: a television programme so far as the public is concerned, and that is certainly an entertainment service within class 41 and, therefore, within the scope of community trade mark 151282.

I am much more doubtful about the scope of the domestic registered mark. Whether the transmission of this show under this name infringes the marks relating to production services I am more doubtful, but the foregoing analysis suffices for infringement under article 9(1)(a) of the Trade Mark Regulation, Council Regulation 48/94 of 20th December 1993.

I turn to what can be conveniently called infringement under section 10(2), which encompasses infringement under Article 9(1)(b) of the Regulation. The marks are plainly similar. There will be relevant confusion if the notional consumer views the mark as being the claimant's mark. Mr. Malynicz submits that the "Mr" is too weak to distinguish and may be overlooked. This I doubt, but if this is taken as a single mark, associated with the claimant by reason of the claimant's extensive reputation in the words "Miss World", that is equally infringement.

The analysis is little different from that that I have summarized above in considering identity of the marks. There is certainly a strongly arguable case on the face of it under section 10(2) if I am wrong about identity.

Finally, I turn to section 10(3). This raises what is, in substance, the only real reason for requiring removal of the mark from the programme before transmission at this late stage in these proceedings rather than leaving the claimant to its remedy in damages. The question is whether the infringing use is use of a sign identical with or similar to trade mark, "where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark".

Central to the complaint here is that even if the public is not confused by the use into the belief that this is a Miss World production transmitted by Channel 4, they will still associate it with the claimant's product. The use is, therefore, parasitic upon the claimant's reputation which, as I have indicated, the defendant accepts for this purpose. This, so the claimant says, is unfair.

In seeking to communicate to the viewer the fact that this is a programme not about unmarried young women but about transvestites in Thailand, unfair advantage is said to be taken of the distinctive character and the repute of the trade marks. Added to the general unfairness, the claimant complains of the nature of the Thai Pageant itself. The programme has to be shown after the 10 pm watershed and Mr. Macario puts his objection like this in paragraphs 39 and 40 of his first witness statement.

That much, I think, was accepted by Miss Heal on behalf of Channel 4. Indeed, she sought to turn it to Channel 4's advantage when she made her submission about the impact of Article 10 of the European Convention on Human Rights to which I shall turn in a moment.

In his second witness statement Mr. Macario returned to this subject in paragraph 5 where he says this:

Section 10(3) of the Act requires actual damage to the mark by reason of the use complained of. I consider that, whether this programme or not, does cause actual damages, in principle, triable on the material available before me. This is a difficult area because different sections of the public hold very different views as to what is and what is not appropriate to be transmitted at all and what is and is not suitable subject matter with which to be associated.

There is in fact in the area of trade marks something of a history of the employment of section 10(3) or corresponding arguments in respect of matters sexual which might be considered shocking by some members of the public but not by others, the others tending to see them merely as jokes. There is a well-known example in the Visa application in relation to condoms. In DaimlerChrysler v. Alavi [2001] RPC, paragraph 85 I have summarized the cases as they stood at that date.

In this case, which is essentially still quia timet, it may well be difficult to show actual damage at this stage. The only real material, matters appearing in the press aside, would be what has happened in consequence of the sale of the programme to other interested companies. At this stage evidence of this sort is unlikely to be forthcoming. Furthermore, this is a single television programme, albeit with an expected audience of 2 million and which will, no doubt, soon be forgotten. On a quia timet basis I think none the less that the case is still certainly triable.

At this point I must turn, really, to the central point of Miss Heal's submission given that this is a case in which there is to be publication of a television programme. It is a case to which section 12(3) of the Human Rights Act applies. Section 12(3) of the Human Rights Act applies because Article 10 of the European Convention on Human Rights is engaged. Basing herself on the decision of the South African Constitutional Court in Laugh It Off Promotions v. South African Breweries, a judgment delivered on 27th May 2005, Miss Heal submits that the use in this case is protected by Article 10. No interlocutory injunction should be granted or, in the alternative, if it is arguable that the use is protected by Article 10, the very threshold for interlocutory relief required by section 12 has not been overcome.

Section 12 of the Human Rights Act 1998 is as follows:

The prerequisite for section 12 to operate is whether the relief in question might affect the exercise of the convention right to freedom of expression. The convention right to freedom of expression is conferred by Article 10 as follows:

It is with those provisions of the South African Constitution which correspond to the guarantee conferred by Article 10 of the Convention that the Laugh It Off Corporation case is concerned. This was a case in which T-shirts had been printed with a parody of well-known marks in South Africa. The claimant was the brewer of Carling Black Label lager in South Africa. The difference between the Carling Black Label trade mark, which in its English version is probably very well known, and the T-shirt mark is described in the single judgment of Moseneke J, with whom the remainder of the Constitutional Court agreed, in paragraph 9:

The purpose of the alleged infringement is described in paragraph 14 of the judgment as follows:

It is unnecessary for me to follow the judgment in detail but it is interesting to look at paragraph 20 which sets out the meaning which was held to be conveyed by the T-shirt mark:

The trade mark legislation is to all intents and purposes the same in South Africa and in England, save that the requirement for detriment is, if anything, weaker in South Africa than it is here. So the question was directly raised. In paragraphs 55 and 56 of this judgment appear, I think, the core of the decision of the court:

Paragraph 56 of this judgment sets out what seems to me to be an extremely complex series of contentions. It is a truism that a registered trade mark's primary function is as an indicator of the origin of the goods or services with which it is associated. It is equally a truism that its protection does not cease there. It also acts as a guarantee of such quality as the trade mark owner is willing to associate with the mark. Thus, if the trade mark owner is in the habit of turning out high quality goods under his or her mark, that becomes part of the commercial value with which the mark is associated because the nature of the goodwill then becomes associated with the mark and becomes a relevant factor in considering what the mark actually protects.

This is a difficult area and I do not wish to go into it more than necessary but I am worried that it is difficult to see where marginal detriment, which any detriment starts by being, to the goodwill or the repute of a mark becomes unmarginal. So, for example, if, untruthfully, a statement is made, whether satirically or whatever, damaging to the quality reputation with which the mark is associated, should the proprietor of the mark have a complaint on the footing that such damage is wholly related to the commercial value vested in the mark itself?

My immediate reaction is that it is very difficult generally to disentangle commercial value, properly understood, from the goodwill and repute that is associated with the mark. This case must, I think, be viewed as a case in which the point that was made by the alleged infringement was so disconnected from the ordinary function as an indication of origin and as an indicator of quality fulfilled by the mark, that it was fanciful to say that the mark qua mark was affected in any way. That is a finding of fact, not a proposition of law, and it is plainly a consideration which must be, so far as the guarantee conveyed by the South African Constitution is concerned, assessed as a question of fact in every case.

Here, Article 10 is already the subject of much learning. It is well known, for example, that the European Court of Human Rights have in effect identified three types of expression. So, for example -- I take this from Clayton and Tomlinson's Law of Human Rights 2001 edition -- the court has distinguished three kinds of expression: political expression, artistic expression and commercial expression. The court consistently attaches great importance to political expression and applies rather less vigorous principles to artistic and commercial expression.

Now, the relief in the present case is not to restrain the showing of the programme at all but to restrain showing of the programme using with it the words "Mr Miss World". What is the function of these words divorced from the programme? That was vividly described, I think, by Miss Heal this morning as a spoof and a parody, a use of part of the vernacular or a byword which means a reputation and an attitude in sexual matters appropriate to the 1970s, but inappropriate to modern conditions. She says that that burden is carried simply by the words "Mr Miss World". It is, I think, for this reason that she has to accept that Miss World is readily recognizable as a brand in its own right. I am very doubtful as to the correctness of this argument.

The scope of the intervention of Article 10 in matters concerning registered trade marks is far from well worked out. Indeed, I think it is fair to say that it is almost completely unworked out. It is conceivable, I think, that a use such as that with which the South African Breweries case was concerned would, in this country, equally give rise to questions under Article 10.

Whether that is right or not, I am, I am afraid, unpersuaded that it does so in this case. In my view the use of the words "Mr Miss World" is a useful and indeed ingenious shorthand intended to convey that we are here dealing with a beauty pageant for men as well as women and also for transsexuals. It may be that the true unpacking of a name will not become apparent to everybody until they have looked at the descriptive matter but once the descriptive matter is looked at then I think that the way in which the name is to be unpacked is quite apparent. That is all. It is essentially descriptive and it depends for its descriptive power upon the reputation that is attached to the words "Miss World".

In those circumstances I think it is very likely that this is a section 10(3) infringement. I think that the principal function of the mark is indeed to take unfair advantage of the distinctive character and the repute of the Miss World mark. In coming to this conclusion I really put to one side the subject matter in any more detail than that. It is not necessary for me to deal with the various epithets which appear from time to time such as "unsavoury" and I do not do so.

On the footing that Article 10 is in fact engaged, is this case strong enough to satisfy the requirement imposed on me by section 12(3) HRA? For this purpose it is necessary briefly to consider the judgment in the House of Lords in Cream Holdings v. Banerjee [2004] UKHL 44, [2005] 1 AC 253. The question in Cream Holdings v. Banerjee was what the word "likely" meant in section 12(3) of the Human Rights Act 1998 and whether the test was only satisfied if it was more likely than not that the claimant would succeed or whether a real prospect of success sufficed.

In the judgment of Lord Nicholls the determination was that it was unlikely that the claimant would make good its claim to restrain disclosure of allegedly confidential information and so the action failed. The interpretation placed on the word "likely" in paragraph 22 of the judgment is as follows:

The other convention right, of course, is the right to the trade mark itself. This is a right of property. It is protected under the convention under the first protocol and it comes with those rights appended to it by the general law as are appended to all the registered rights.

Absent a sign which is really telling a political story, making a political point or identifying some matter of public importance, I find the idea that use of a trade mark can of itself generally engage Article 10 of the Convention difficult. I do understand how copyright may very well do so. The distinction is not, "Is this property or not?", but what was the nature of the property and what function does it fulfil in the marketplace? Because I have formed the view I have in this case in relation to the triability of these issues and I have come to the conclusion that there is a good prospect of success, it is difficult to see which out of sections 10(1) or (10)(2) will succeed, but I am satisfied that one will. So far as section 10(3) is concerned, I am satisfied that there is a strongly arguable case of trading upon the goodwill and repute of the mark in an unfair manner. The requirement imposed by section 12(3) is satisfied.

I come back, as one was always, I suspect, going to come back, to the issues affecting the balance of convenience. I have found this an extraordinarily difficult case on the balance of convenience. I think the highest it can be put for the defendant is as follows. First of all, as Miss Heal put it very forcefully, the horse is mainly out of the stable. There have already been a number of objectionable uses. Moreover, these uses have been in mass circulation newspapers and on the Internet, albeit only over the last seven days or so. That means that each of those uses has been accompanied by descriptive matter accurately for concisely setting out the subject matter of the programme. So all the damage which the claimant apprehends has in large part already been suffered.

At the same time it will be difficult to edit the programme so as to remove the offending passages and so, taking all those factors into account, the injunction should not go.

From the claimant's point of view, the position is as follows. This is a late programming change. The claimant could not reasonably have been expected to find out about it any earlier than it in fact did. It has moved with extreme rapidity and it has on one occasion at least not been told relevant facts in the shape of a copy of the programme which it should have been told. Notwithstanding the uses which have already taken place, they can be pulled and they will do no harm in the future. As far as the programme is concerned, it may leave a lasting impression and any such lasting impression is not a lasting impression which the proprietors of the mark wish to remain. This is unfair, and the unfairness will affect their relationship with their sponsors and will affect their marketing endeavours at an event called MIPTV which takes place in Cannes for five days and at which the world's television industry shows up to trade its programmes.

On this occasion, so Mr. Macario says, "It is unfair that we should have to deal with a programme called Mr Miss World which is not our product, it arguably infringes by reason of that title alone and is not a product with which we wish to be associated".

Finally, Mr. Malynicz submits that "difficult" is not to be equated with "impossible" so far as the alterations needed to the programme are concerned and it certainly cannot be said on the basis of the evidence as it presently stands that it will be impossible to edit this programme in a suitable manner before the transmission time tomorrow.

On the whole I consider that this is a proper case for an injunction. It is very difficult to explain how I balance up the essentially incommensurable considerations outlined above, but the overall picture seems to me to be one where an injunction is appropriate.

Accordingly, I propose to grant an injunction substantially in the form in which it is requested.