Irish Times v Times trademark dispute – no injunction

Posted: 5 years ago in: Case Study, News, Trademark Dispute, Trademark InfringementPosted By admin

BATTLE's summary of famous papers case - Irish Times v Times

Irish Times v Times trademark dispute – no injunction

Irish Times dispute with Times over launch of Irish edition

  • Two great paper titles took a trademark dispute against each other to the Irish High Court recently.
  • The Irish Times, the well-known newspaper in Ireland, took a court action to obtain an injunction against the Times (Times Newspapers Ltd.) , the well-known newspaper in Britain, to stop it launching a digital version in Ireland, using the terms “Irish edition”.
  • The Irish Times wanted the Times and Sunday Times to stop use of any term that may take unfair advantage of its trademark rights.
  • It wanted the Times and Sunday Times to cease and desist from having  the Times closely associated or being regarded as linked with the Irish Times, in order to to block any trademark infringement.

 Goodwill damage from likelihood of confusion and trademark infringement

  • The Irish Times argued that there was a likelihood of confusion among consumers, and there was a risk the Times could be regarded as passing-off its Times Irish edition as the Irish Times.
  • This could be trademark infringement on the latter’s trade mark rights.
  • It objected to any damage to its goodwill that could arise from use of any title confusingly similar to The Irish Times.

 No country named Republic of Ireland

  • In the pre-trial trademark dispute proposals, the Times indicated it could agree to replace “Irish edition” with one referring  to the Republic of Ireland edition.  In court, the judge, Hedigan, indicated the country’s name was Ireland or Eire.  Not “the Republic of Ireland”.

 Each paper had long-running titles

  • The Times dates back to 1785 as a newspaper in Ireland.
  • The Irish Times dates back to 1859.
  • The judge observed the titles ran in the same territory for over 100 years.
  •  The Times planned its launch of a digital version for over a year. And this was common knowledge in the trade.  Tweets showing the intention to launch had been circulated by the Times, as well as The Irish Times.
  • The Irish Times, as far as the trademark dispute is concerned, according to the judge, should have acted sooner to be entitled to a claim for an injunction.

The judge refused to grant an injunction pending a full hearing.

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