Associated Newspapers Ltd. & Anor v Express Newspapers

Associated Newspapers Ltd. & Anor v Express Newspapers

Associated Newspapers has protectable reputation and goodwill in 'The Mail', 'Daily Mail', and 'The Mail on Sunday' in London and the South East; Express Newspapers' threatened use of 'The Mail', 'Evening Mail', or 'London Evening Mail' is likely to cause confusion and indirect damage, constituting passing off and infringing the 'THE MAIL' trade mark; attacks on validity and non-use of the trade mark fail.

Parties
Claimant: Associated Newspapers Limited; Claimant: Daily Mail and General Trust PLC; Defendant: Express Newspapers
Jurisdiction
England and Wales
Judgment Date
11 June 2003
Procedural Posture
Civil / Judgment After Speedy Trial
Outcome
claim for passing off and trade mark infringement succeeds; counterclaim for invalidity fails
Legal Topics
Passing Off, Trade Mark Infringement, Trade Mark Validity
Intellectual Property Commercial Law Passing Off Trade Mark Infringement Trade Mark Validity

Case Brief

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Parties

Associated Newspapers Limited

Claimant

Daily Mail and General Trust PLC

Claimant

Express Newspapers

Defendant

Procedural Posture

Civil / Judgment After Speedy Trial

Legal Issues

  1. 1 Whether Express Newspapers' threatened use of 'The Mail', 'Evening Mail', or 'London Evening Mail' constitutes passing off against Associated Newspapers
  2. 2 Whether such use infringes Associated Newspapers' registered trade marks for 'THE MAIL', 'DAILY MAIL', and 'THE MAIL ON SUNDAY'
  3. 3 Whether the registration of 'THE MAIL' trade mark is invalid or should be revoked

Ratio Decidendi

Associated Newspapers has protectable reputation and goodwill in 'The Mail', 'Daily Mail', and 'The Mail on Sunday' in London and the South East; Express Newspapers' threatened use of 'The Mail', 'Evening Mail', or 'London Evening Mail' is likely to cause confusion and indirect damage, constituting passing off and infringing the 'THE MAIL' trade mark; attacks on validity and non-use of the trade mark fail.

Court Disposition

claim for passing off and trade mark infringement succeeds; counterclaim for invalidity fails

Orders

  • Injunction to restrain Express Newspapers from using 'The Mail', 'Evening Mail', or 'London Evening Mail' in and around London in a manner likely to cause confusion or passing off
  • Declaration that Associated Newspapers' trade marks are valid and infringed by Express Newspapers' threatened use