Passing Off

Cases

 

McCambridge Ltd. v Joseph Brennan Bakeries

 

[2012] IESC 46, the Supreme Court

“… The result is that even a reasonably careful and observant customer may not read or notice in particular the front panel of the package until it is in his or her hand, because only the end or side of the package is visible on the shelf. For the average shopper therefore, the competing brand name and indeed the distinctive red and yellow brand colours on the Brennans product or other distinguishing features may not be readily and clearly visible when the product is on the shelf. Each product looks almost identical from that angle and vantage point being of the same general shape and size.”

The High Court judge had been

“addressing evidence as to the phenomenon of fast moving consumer goods displayed on the supermarket shelf. He was not dealing with a traditional grocery shop with a counter, a shopkeeper, and shelves, behind their counter. What was in issue here, and what was clearly in his mind was that even ordinary reasonable prudent consumers do not, in fact, frequently carry out a detailed examination of the product at the time when they take the bread from the supermarket shelf and place it in the supermarket trolley. This conclusion was open to him on the basis of the evidence of shoppers and experts in marketing.”

“I would be prepared to accept that the size and shape of the packaging is generic. I would go further and accept that so too is the colour green, although the shade is very similar to that used in the McCambridge packaging. Other smaller competitors use the same or a similar colour. But that does not mean those features are to be entirely ignored. Among the features identified earlier, there are others less generic. These include white on green writing; the use of an off yellow colour panel; the utilisation of a stylised signature and similar font; the use of overhanging script against the main green panel, the particular combination of colour schemes; the depiction of the head of wheat and the shadow effect behind the signature of the words Joe Brennan. All of these combined features are to be assessed in the context of the type of packaging and the colour green. Together, all of these features are to my mind not generic. Taken as a combination they prima facie form a protectable get up on the packaging. Because of the similarities, the nature of the wrapping, and package, and its shape, they go beyond the realm of mere resemblance into imitation.”

“Here the get up, the manner in which the goods are displayed and the nature of the purchasing transaction involved are essential. The old authorities are not always helpful in the modern age of supermarkets, where as the evidence showed, a consumer will be guided by transient perceptions, and even an ordinary careful consumer may engage only in a momentary examination is a of a product, perfectly or imperfectly presented. This is what the trial judge found … The trial judge pointed out that consumers will not always direct their attention in a careful way in their purchasing of wholemeal bread products. There was actual evidence that the presence of brand name on the package had not eliminated the risk of confusion in the eyes of such ordinary consumers. It is true that the colours red and yellow appear on the top of the Brennan wholemeal bread package but the judge found that these can become obscured. There was evidence that confusion had been caused. The judge rejected Brennan’s point that supermarket consumers might engage in intermediate scrutiny in favour of his view of the risk of confusion. In these circumstances therefore I am of the view that this case is distinguishable from Adidas [Sports Schufabriken Adi Dassler KG v Charles O’Neill & Co Ltd [1983] I.L.R.M. 112]. The nature of the product and the nature of the purchasing transaction are quite different.”

“Here, the get up, the manner in which the goods are displayed and the nature of the purchasing transaction involved are essential. The old authorities are not always helpful in the modern age of supermarkets, where as the evidence showed, a consumer will be guided by transient perceptions, and even an ordinary careful consumer may engage only in a momentary examination of a product, perfectly or imperfectly presented. This is what the trial judge found … The trial judge pointed out that consumers will not always direct their attention in a careful way in their purchasing of wholemeal bread products. There was actual evidence that the presence of brand name on the package had not eliminated the risk of confusion in the eyes of such ordinary consumers. It is true that the colours red and yellow appear on the top of the Brennan wholemeal bread package but the judge found that these can become obscured. There was evidence that confusion had been caused. The judge rejected Brennan’s point that supermarket consumers might engage in intermediate scrutiny in favour of his view of the risk of confusion. In these circumstances therefore I am of the view that this case is distinguishable from Adidas [Sports Schufabriken Adi Dassler KG v Charles O’Neill & Co Ltd [1983] I.L.R.M. 112]. The nature of the product and the nature of the purchasing transaction are quite different.”

 

Adidas Sportschuhfabriken Adi Dass/er KA v O’Neill & Co

[1983] ILRM 112 (SC, 1982)
O’Higgins CJ

The appellants (hereinafter referred to as Adidas) appeal to this court against the dismissal by Mr Justice McWilliam of their claim for passing off brought against the respondents (hereinafter referred to as O’Neill).
Adidas originates in Germany but has now an international basis and standing. It manufactures and sells sports equipment of all kinds including boots, shoes, clothing, bags, footballs and various accessories. It has at present factories in nineteen countries situate in western and central Europe and the Far East. In addition it has a large international sales organisation. It was formed in 1947 and its growth over the years has been rapid and sustained. The process has been supported by an extensive advertising campaign, not only in newspapers, magazines and other periodicals, but also on radio and television in different countries. As a part of its promotional and advertising campaign, Adidas has concentrated on having its products worn and used by competitors in the big international athletic and sporting events which would be the cynosure of world television. When Adidas commenced operations in 1947 it confined its activities to the manufacture and sale of sports footwear of all kinds – football and other boots; track, tennis and other types of sports shoes. This footwear was manufactured and marketed with a distinctive design or fashion of three diagonal coloured stripes on the instep and out side of each boot or shoe. As a result of the use of Adidas footwear by competitors at athletic and other events and the television coverage, this particular design or fashion became well known. In 1967 Adidas decided to launch into textiles and sportswear generally. To this end it proceeded to manufacture and sell, through its organisation football shorts, shirts, singlets, track suits, anoraks, bathing costumes and a variety of sporting and leisure gear. Most of these garments, in addition to bearing the word “Adidas” or a particular trefoil, which are Adidas trade marks, also carried the design of three coloured stripes, not diagonal, but straight down the side of the arms or legs, where that was possible. Again, to the extent that competitors at Olympic or other sporting events used Adidas sports gear, the three­ stripe design necessarily received extensive television coverage. So far as Ireland is concerned it appears that Adidas footwear came on the market in limited quantities in the late 1960’s. Footwear was then subject to quota restrictions and such small quantities of Adidas products as were imported were brought in by commission agents. One of these was a Mr Michael O’Connell. In 1970 when quota restrictions on footwear came to an end Mr O’Connell succeeded in securing the sole agency for Adidas in Ireland. In 1971 he formed a company called Three Stripes International Ltd, through which this agency operated. Initially, Mr O’Connell’s importation of Adidas products consisted of footwear although he did sell a small quantity of track suits and other sports gear. In 1976 Mr O’Connell persuaded Adidas to commence manufacturing in Ireland and since then has been, on behalf of Adidas, in competition with O’Neill in the sport market for textiles.
O’Neill is an Irish company which was formed in 1918. It commenced with the manufacture and sale of footballs for the three codes of football in this country. Its products were identified by the name “O’Neill’s” written across them. In the middle l 920’sit produced a white football known as “The O’Neill All-Ireland” which has since become the standard ball for big GAA games. In 1927 in association with an English company called Umbro, O’Neill started importing sports gear – mostly shorts and jerseys – and supplied these on order to teams playing the different codes of football. As a result of difficulties of supply and import restrictions both during and subsequent to the last War, O’Neill decided in 1960 to manufacture its own textile products. Initially these consisted of football shorts and jerseys which were supplied in order, mostly to GAA teams. Apparently, the business expanded quickly. In 1965 O’Neill started putting stripes on its products. The number of stripes varied, according to what was ordered, from one to three. In 1967 track suits first appeared on the Irish market, having been imported from Poland. Their appearance apparently started a fashion in Ireland and O’Neill responded by manufacturing its own track suits. Again in response to orders O’Neill commenced putting stripes on these articles. Initially the number of stripes varied in accordance with the order from one to three. O’Neill faced particular technical difficulties in affixing stripes to their products. However, because stripes were popular and were demanded, it persisted in efforts to overcome this difficulty and eventually secured a machine which enabled stripes to be added to the garment in a satisfactory and economical manner. By 1976 O’Neill had four striping machines in production and were manufacturing in two centres – one in Dublin and one in Strabane. At this stage, and for some years before, it had concentrated on three stripes down the side of the legs and arms of jerseys and shorts and also on track suits. At this stage, O’Neill’s products were extensively used by supporters of the three football codes in Ireland. It had a virtual monopoly in the supply to the GAA of footballs and hurling balls and they supplied to clubs in the three codes the majority of the sporting gear used. In addition, their products were stocked by sports shops and were freely purchased by the public.
This was the situation which confronted Adidas when it decided in 1976 to open a factory in this country and thereby seriously to compete for the Irish sports gear market. It had the year before secured the registration in Ireland of a trade mark consisting of a trefoil with three horizontal stripes. This trade mark was in no way associated with a design of stripes on garments. However, faced with the fact that O’Neill ‘s garments were then commonly on sale with the three stripe design, Adidas in May 1976 instructed their trade mark agent to write to O’Neill claiming that this was an infringement of Adidas’ registered design. This letter only referred to track suits. In fact Adidas had no such design registered in Ireland. O’Neill’s reply indicated that if such design were registered it was invalid as ‘a three-stripe pattern in ornament has been applied to sportswear since at least the late 1950 ‘s … Furthermore decorations of three stripes are widely used throughout the clothing trade.’ Subsequent to this letter, on the 22nd December 1976, through their trade mark agents Adidas applied for a registration of a trade mark consisting of “three equally spaced stripes, each of the same colour and width” on the arms and legs of sports clothing. This application has not yet been dealt with. This is probably due to the fact that these proceedings were commenced by Adidas against O’Neill’s and involve incidentally the whole question as to whether any particular exclusive property or reputation can be claimed by Adidas in respect of the three-stripe design on clothing.
Adidas’s claim in these proceedings is that O’Neill by putting three coloured stripes down the arms and legs of the shorts, jerseys and track suits which it manufactures and sells, has been passing off these products as the products of Adidas. The claim is confined to the use of this three-stripe design in the manner indicated. No suggestion has been made that Adidas’ name or trade marks have been used or that any other form of representation has been made. It is, therefore, a claim for passing off based exclusively on the alleged imitation of the general appearance or “get up” of Adidas products so as to confuse and mislead the public. A claim for passing off so based is rare. In Kerly’s Law of Trade Marks (10th edition) at 419, this fact is noted in the following passage:
“It is usually true in some degree that a trader’s goods are recognised as his by their general appearance, or ‘get up’. Accordingly, resemblance of ‘get up’ is not uncommonly an ingredient in passing off, and it is possible for imitation of ‘get up’ alone to amount to passing off. Such cases are rare, since few traders rely on ‘get up’ alone to distinguish their goods, so that trade names and word trade marks are ordinarily present too; and in these days, in this country, a difference in names is enough to warn the public that they are getting one trader’s goods and not the other’s. Accordingly, there can hardly be passing off by ‘get up’ alone unless the resemblance between the goods is extremely close, so close that it can hardly occur except by deliberate imitation, and
even that may not be enough.”
Even if its claim be rare or exceptional, Adidas is entitled to succeed if it can establish that the three-stripe design used in the manner indicated is clearly associated in the public mind with its products, and with those of no other trader, so that it hasa clear reputation in the use thereof; and further, that what has been done by O’Neill is calculated to cause such confusion in the minds of probable customers of Adidas as would be likely to lead to O’Neill’s goods being bought and sold as the goods of Adidas,
I think it proper to add that the public mind which is to be considered in relation to the establishment ofa reputation for Adidas in the three-stripe design is the public mind in this country and, further, that the confusion which is relevant is the confusion of probable customers here. In this respect this case differs fromC & A Modes andC & A (Ireland)v C & A (Waterford) and Others [1976] IR 198 where the passing off which was injuncted was the use of an established and well known trade name, although the plaintiffs carried on no trade within the State. The court held that the good will attached to the established name and that, as such was well known within the State, the owners of that name were entitled to protection. The distinction between sucha case anda claim in respect ofa given mark or “get up” was noted by Mr Justice Kenny in his judgment in that case. He quoted from the judgment of Lord Justice Jenkins in Alain Bernadinv
Pavillion Properties Ltd [1976] RPC 581 as follows:
“It is of course essential to the success of any claim in respect of passing off based on the use ofa given mark or get up that the plaintiff should be able to show that the disputed mark or get up has become by user in this country distinctive of the plaintiff’s goods so that the use, in relation to any goods of the kind dealt in by the plaintiff, of that mark or get up will be understood by the trade and the public in this country as meaning
that the goods are the plaintiff’s goods.”
Mr Justice Kenny added in his own judgment as follows:
“This passage relates to passing off by the use of a trade mark or ‘get up’ of goods( as the judge emphasises) and has no application to passing off by the use ofa well known
name.”
In this case if the complaint had been that the name “Adidas” ora name similar thereto or an imitation thereof had been used in association with O’Neill’s goods, although no Adidas products were on sale in this country, I have no doubt thata good will anda potential in relation to customers would have been established and protection given. We are dealing, however, not with a well known name but with a particular design and its exclusive association with the goods of Adidas in Ireland must be established if the claim made is to succeed. One other matter should be mentioned. The fact is that Adidas have, over the years, projected their products with the three-stripe design in every advertising medium available. This fact, however does not give title to Adidas to complain if a trader attracted by the design or susceptible to the fashion which its prominence creates, decides to copy or imitate. The mere copying of a design or the anticipating of a fashion or the taking advantage of a market or demand created by another’s advertising is not of itself sufficient to support an action for passing off if the trader against whom the complaint is made has sufficiently distinguished his goods so that confusion is not created. (See Cadbury-Schweppes v Pub Squash Co [1981] WLR 193).
I think it proper now to refer again to some of the evidence in the case and then to consider the findings of fact made by the learned trial judge. As already indicated, O’Neill is a well established and well known Irish firm which both manufactures and wholesalers its products. Its products in footballs and in sporting gear of all kinds have been bought and sold over many years in athletic and sporting circles in this country. As already mentioned, it commenced experimenting with stripes on its textile products in the late sixties and by 1971 freely advertised in its price list two and three-stripe jerseys. Shortly after this, having perfected a process for attaching stripes to other garments, it proceeded to market shorts and track suits with a three-stripe design. In doing so, O’Neill may have been aware of the growing attraction of stripes on sporting gear due to the television coverage of international sporting events. If so, in this respect, it was not alone, as other firms, about this time, also commenced to use a striped effect on their products. Indeed one French firm, which had a branch in Canada, used a three-stripe design. The evidence establishes that O’Neill’s products were always delivered to retail outlets in clearly marked O’Neill boxes or packages and that each garment bore the O’Neill name written across a white circle intended to indicate the O’Neill All-Ireland football. While there was evidence that in some shops garments such as track suits were displayed in rows, on hangers, so that the sides of the garments with the stripes on the shoulders and legs would normally be observed by customers, it was not suggested that this was done by O’Neill or that it was done in order to deceive. In any event it must be assumed in relation to the possibility of confusion that customers will look fairly at the goods on display and that such goods will be shown fairly without the distinguishing features being concealed (Schweppes Ltd v Gibbens (1905) 22 RPC 601; Lever Brothers Ltd v Bedingfield (1898) 16 RPC 3). As already indicated, Adidas commenced manufacturing textiles in 1967 and very quickly put on international markets all forms of sporting gear including track suits with a three-stripe design. However, by reason of import restrictions, very few of Adidas’ products reached this country at that time. Some footwear and a limited amount of textiles were imported but it was not until 1976, when they opened a factory here, that Adidas posed a real challenge to O’Neill for the Irish market in sporting gear. At this stage O’Neill’s products with a three-stripe design were well established and well known. These were on the market clearly marked as O’Neill’s products with the O’Neill sign. At the trial Mr Justice McWilliam had to consider all this evidence and also the evidence of a number of witnesses who, as he put it, “were almost equally divided in numbers as to whether they did or did not assume that any garment with three-stripes was an Adidas garment”. He came to the conclusion, in effect, that Adidas had failed to establish that essential reputation in this country in relation to the three-stripe design which was vital to the success of their claim and, further, that no confusion had been caused by the use by O’Neill of that particular design.
I have considered very carefully all the evidence which was before the learned trial judge and also the conclusions which he reached. As he pointed out in his judgment, this is not a claim for an infringement of a registered mark or design. Had Adidas succeeded in registering a three-stripe design in this country, different considerations might apply.
This, however, isa claim for passing off which involves not only the use of another’s “get-up” but also, and, essentially, a resulting confusion in the market-place. As indicated, he was not satisfied that Adidas had established in this country an exclusive association of the three-stripe design, with their garments. On the contrary, he was impressed by evidence which showed the opposite to be the position. More important than this, however, was his finding of fact that no confusion had been caused. In this respect he noted the evidence that Adidas had two registered trade marks, the word “Adidas” and the design with three elliptical leaves crossed by three horizontal stripes, and that one or other or both these marks appear on all their products, except where sports organisations preclude such during public event. Similarly, in relation to O’Neill’s products he noted the evidence that all such were sold clearly marked with the O’Neill emblem or trade mark in boxes or packets indicating clearly the firm by which they were
made. In this respect he said:
“Certainly, in so far as O’Nei!l’s garments were sold in or with the packages in which they are made up and delivered to retailers, there could not, to my mind, be any possibility of confusion. Nor has the likelihood of confusion been demonstrated with regard to other garments unless it is assumed that customers do not observe the name O’Neill’s written on them and believe that all garments with three stripes are made by
Adidas.”
He formed the view, on the evidence that the use of stripes of varying colours and numbers on sports gear was a fashion in the trade and that O’Neill had done no more than to adopt this fashion and to use on their products the same number of stripes as Adidas did on their products, and that in doing so O’Neill had not attempted to deceive or pass off and had in fact not done so. In my view, the learned trial judge’s finding of the fact the conclusions which he reached were fully justified and his findings cannot be
disturbed. I would accordingly dismiss this appeal.

 

An Bord Trachtala v Waterford Foods

[1994] FSR 316 (25 November 1992) HC
Keane J: This is in essence an action for passing off, but one which differs in crucial respects from that form of proceeding as it is normally understood. The plaintiffs area statutory body established under the Export Promotion Act 1959 and charged with the duty of developing and promoting the export of Irish produce throughout the world.
They carry on this work through the medium of specialised divisions concerned with different sectors of Irish industry. One such division is concerned with exports by what has come to be called the “agri-food” industry, which is the largest sector of Irish industry, accounting for some 20% of total employment in industry. The sector’s annual exports at present total IR£15 billion per annum, representing approximately 21% of Ireland’s total exports.
The plaintiffs took the view that the marketing of Irish agri-food products on a worldwide basis would be helped by the creation of a single identity representative of all food related products. With this aim in mind and the assistance of design experts, a logo was evolved intended to emphasise what was seen as the particular Irish advantage in marketing food products, ie the image of Ireland as a clean, pollution-free source of natural food products. The logo eventually settled on consists of a symbol representing the sun rising over a valley of green hills leading down to the sea and the accompanying legend “FOOD IRELAND”. Since 1989, this logo has been prominently displayed on all exhibition stands taken by the relevant department of the plaintiffs at international trade fairs. It has also been used extensively in supermarket displays featuring Irish food products and, the plaintiff’s claim, has been used widely in advertising at home and abroad. It is stated that the logo has been registered as a “service mark” in a number of jurisdictions, including the United Kingdom, Germany and the Benelux countries. It has not been possible to register it in Ireland, since such service marks are not registerable in this country.
The defendants are the principal company in a group of companies usually known as “Waterford Foods”. They are responsible for a range of products based mainly on milk and cheese which are sold extensively both in Ireland and abroad and are described in an affidavit sworn by one of their executives as the largest dairy processor in Ireland. In 1991/2, following the expansion of the group, they considered it desirable to adopt a logo to be used on the products of all the companies which, it was hoped, would establish a strong Waterford Foods identity. With the assistance of design experts, they ultimately adopted a logo consisting of a symbol which is described in one of the plaintiffs’ affidavits as taking the form of a “yellow sun above a blue and green valley” and accompanied by the words “WATERFORD FOODS”.
The defendants informed the plaintiffs of their intention of adopting this new logo and the latter voiced concern as to the possibility of confusion with their logo. The defendants indicated that they would be prepared to modify the symbol to meet the plaintiffs’ anxieties, but did not succeed in mollifying the plaintiffs by showing them the suggested alterations. Ultimately, the defendants told the plaintiffs that they intended to proceed with the launch of the new logo in the final version submitted and the plaintiffs thereupon issued these proceedings. They now apply for an interlocutory injunction pending the trial of the action restraining the defendants inter alia from
⦁ adopting or using as its corporate or group logo a symbol confusingly or colourably similar to the plaintiffs’ “Food Ireland” symbol or in any other manner passing off or attempting to pass off their products as being connected with or associated with or forming part of or as being authorised, endorsed or promoted as part of the plaintiffs’ marketing activities under the title “Food Ireland”;
⦁ distributing any documents or packaging bearing a logo identified or associated with the plaintiffs’ “Food Ireland” logo or closely resembling the same or colourably similar thereto or confusing or deceiving the public or customers of “Food Ireland” promotions into believing that the defendants’ products are being promoted by “Food Ireland”.
……
(In case this Judgment should be published in any of the printed series, where colour reproduction may not be possible, I should point out that while the symbols in both cases appears in yellow or orange, green and blue, the shades of colour employed are not identical.)
Ms Fidelma Macken on behalf of the defendants submitted that the claim of the plaintiffs failed in limine, since there was no evidence before the court that they enjoyed any reputation in Ireland associated with the logo or that any reputation they might enjoy would be injured by any confusion arising out of the adoption by the defendants of the proposed logo. She argued that, in any event, as a matter of first impression the court should hold that there was no similarity between the two logos sufficiently striking to warrant an injunction. The alleged acts of passing off, moreover, would take place, if anywhere, outside the jurisdiction and, in the absence of proof that they were actionable in the jurisdiction where they would be committed, could not be enjoined by an Irish court. She said that in these circumstances the plaintiffs had failed to establish the existence of a serious question to be tried and that the application accordingly did not meet the first requirement for the granting of an interlocutory injunction laid down by the Supreme Court in Campus Oil Ltd v Minister for Industry and Energy (No 2) [1983] IR 88. She also submitted that the plaintiffs had failed to prove that they would suffer any irreparable damage as the result of the refusal of the injunction, since any possible damage that would result would be suffered by the defendants’ competitors and not by the plaintiffs’ who were essentially an “umbrella” organisation not in business themselves. The defendants by contrast would effectively be obliged by the granting of the injunction to abandon completely the use of their logo.
Mr O’Keeffe, on behalf of the plaintiffs, submitted that the action for passing off was not confined to traders supplying goods or services and that bodies such as professional associations had obtained injunctions restraining others from using names confusingly similar to theirs. He said that, while the plaintiffs had brought the proceedings before the defendants began using the logo and as a result were not in a position to adduce evidence of actual confusion, they should not be prejudiced in their claim for an injunction by an action which was in ease of the defendants. He said that it was sufficient to establish the probability that confusion would arise and that this was amply demonstrated by the evidence of the plaintiffs’ own marketing and design experts. He said that on the authorities the fact that the passing off might occur in other jurisdictions was not fatal to the obtaining ofrelief in Ireland and that in any event the plaintiffs also carried out their statutory objectives in Ireland. As to the question of irreparable damage, he said that any loss the plaintiffs might suffer if it should transpire that the injunction was wrongly granted would be readily met by the implementation of an undertaking as to damages: the plaintiffs, by contrast, would suffer a wholly unquantifiable loss if the application was wrongly refused, since the damage would be to the performance of their statutory
duties.
At the outset, a question arises as to the jurisdiction of the court to entertain the
plaintiffs’ claim. That claim essentially seeks to restrict the commission by the defendants in other jurisdiction of what are alleged to be acts of passing off. Although the plaintiffs undoubtedly publicise their efforts to promote Irish exports in this jurisdiction, their real cause of complaint is the proposal by the defendants to use their new logo for the promotion of their products abroad. The plaintiffs say, in effect, that its use by the defendants will weaken the impact of their promotional campaign on behalf of Irish food products in foreign markets by causing unnecessary confusion between the two logos and will lead customers in those markets to suppose that the defendants’ products enjoy some special endorsement from the plaintiffs with a consequent erosion, not merely of the position of the defendants’ competitors, but oflrish food exports generally. Hence, with one exception, all the many photographs exhibited with the plaintiffs’ affidavits are of trade exhibitions or supermarket displays in other countries. Similarly, all the promotional literature exhibited is clearly directed to overseas markets. I have no doubt that the present proceedings would never have been instituted if the
defendants’ use of the logo was confined to this jurisdiction.
It by no means follows, however, that the plaintiffs’ action cannot be entertained by
an Irish court. The authorities cited by counsel make it clear that, in the case of passing off actions, the courts have jurisdiction to grant relief even though the actual passing off takes place in other jurisdictions in two sets of circumstances.
The first is when what have been called “the instruments of deception” are made by
the defendant and sold by him to a middleman in Ireland. In such a case, the fact that the actual confusion with the plaintiffs’ products occurs in another jurisdiction is regarded as irrelevant, since the tort is considered as complete once the instruments of deception are sold by the defendants. While the relevant authorities are comparatively modern English decisions (see, for example, John Walker & Sons Ltdv Henry Ost & Co Ltd [1970]1 WLR 917) it has not been suggested that the reasoning on which they are based would not commend itself to our courts. It is clear, however, that they cannot avail the plaintiffs in this case, where there is no question of the “instruments of deception” (if such they be) being sold to a middleman in Ireland to be used by him or his agents in
other countries.
The second set of circumstance derives from the application to the tort of passing off
of the principle of private international law usually referred to as the rule in Phillipsv Eyre (1870) LR 6 QB 1. It was stated in these terms by Willes Jin that case:
“Asa general rule, in order to found a suit in England for a wrong alleged to have been committed abroad, two conditions must be fulfilled. First, the wrong must be of sucha character that it would have been actionable if committed in England. Secondly, the act must not have been justifiable by the law of the place where it was done.”
The rule was severely criticised by Walsh J in a recent Supreme Court decision, Grehan v Medical Incorporated and Another [1986] IR 528, to which I shall refer in more detail ina moment. The second limb of the rule was explained by a majority of the House of Lords in Chaplin v Boys [1971] AC 356 as meaning that the act must have been actionable at civil law under the law of the foreign jurisdiction: it did not mean that the
tort was actionable in England simply because it was a crime in the foreign jurisdiction.

The rule, if it is part of Irish law, would be grounded to some extent on the premise that Irish courts should determine cases coming before them in accordance with Irish concepts of justice. That view might well merit to-day the description of ‘parochial’ applied to it by Lord Wilberforce in Chaplin v Boys [1971] AC 356 and Walsh Jin Grehan [1986] IR 528. In passing off actions, its successful invocation could prevent the application of laws as to unfair competition in civil jurisdictions which may more amply defend the rights of injured traders than our passing off tort. The second limb of the rule has also been criticised as being uncertain in its scope.
In Chaplin v Boys [1971] AC 356 some of the Law Lords were in favour of modifying the rule so as to enable a more flexible approach to be adopted in determining the applicable law. The view was also expressed in that case that a decision as to whether an act should be actionable under the rule in Phillips v Eyre [1870] LR 6 QB 1 necessitated the resolution of a choice of law issue and cannot be regarded as a jurisdictional issue only.
In Grehan v Medical Incorporated and another [1986] IR 528 the plaintiff claimed damages for personal injuries suffered as a result of the disintegration of a heart valve which had been inserted in his heart within the jurisdiction. The valve had been manufactured in the United States by the second defendant. The plaintiff obtained an order joining the second defendant as a party to the action and authorising service of notice of the proceedings outside the jurisdiction on that defendant. That defendant, before entering an appearance, sought an order setting aside the service and discharging the order authorising such service. The application was refused by Lynch J and his order was upheld on appeal.
After a detailed review of the authorities, Walsh J (with whom Finlay CJ and Griffin J agreed) concluded that to fulfil the requirements set out in Order 11, Rule l(f) of the Rules of the Superior Courts 1962, it was sufficient if any significant element in the commission of the tort had occurred within the jurisdiction. The court should then examine the circumstances of the case before exercising its discretion to make an order for service out of the jurisdiction. In the instant case, such an element had occurred within the jurisdiction, ie the injury to the plaintiff, and the High Court judge was entitled to exercise his discretion, as he had done, by authorising service out of the jurisdiction.
That was sufficient to dispose of the appeal. However, Walsh J also indicated that, in his view, the High Court in dealing with such applications should have regard to the choice of law implications. He went on to criticise both limbs of the rule in Phillips v Eyre (1870) LR 6 QB I and suggested the adoption of a more flexible approach in Ireland. These remarks (which did not evoke any dissent from the Chief Justice and Griffin J) are, of course, entitled to the greatest respect. They are, however, clearly obiter and it is to be noted that they do not propose the replacement of the rule in Phillips v Eyre (1870) LR 6 QB I by a specific principle governing choice oflaw in cases of tort to be applied by Irish courts in all such cases in the future. It must also be borne in mind that Grehan v Medical Incorporated and another [1986] IR 528 was essentially a case raising a jurisdictional rather than a choice of law issue and that the resolution of issues in the latter category on ex parte applications in the absence of the proposed defendants presents difficulties. There is, moreover, little agreement among judges and commentators in this and other jurisdictions as to how the rule in Phillips v Eyre [1870) 6 QB I should best be modified or replaced. (The implications are comprehensively discussed in Binchy, Irish Conflicts of Law, 572/580 and Cheshire and North, Private International Law, 11th edn, 550/551). There is much to be said for leaving these complex issues to be resolved by the Oireachtas in the light of the recommendations which will ultimately be made by the Law Reform Commission which is at present examining the entire topic.
In the present case, counsel seemed to accept that there was no difficulty in applying
the rule in Phillips v Eyre (1870) LR QB I with the refinement of the second limb proposed by the House of Lords in Chaplin v Boys [1971] AC 356. Both the parties being bodies incorporated under our law who would quite reasonably anticipate that their rights and duties would fall to be determined in accordance with Irish law, the application of the first limb presents no difficulty. The second limb requires the application of the lex loci delicti in addition to the lex fori, thus modifying in part the insularity complained of in the first limb: again that should present no problem, although it requires, of course, evidence as to the applicable foreign law.I reserve for an appropriate case the question as to whether the rule in Phillips v Eyre (1870) LR6 QBI is part of Irish law and, if it is, the modifications, if any, to which it should be subject.
As to the application of the second limb in the present case, the only evidence as to foreign law was in the case of the United Kingdom. That evidence consisted ofa letter from an English firm of solicitors in which it was stated that:
“assuming that the Board could establish a reputation and goodwill in England in respect of the Food Ireland logo, a cause of action would be available to the Board under
English law.”
This carefully qualified view seems to me, at least for the purposes of this application, to mean that the plaintiffs have complied with the second limb of the rule in the case of the
United Kingdom.
Mr O’Keeffe did not adopt the bold stance of counsel for the plaintiffs in Alfred
Dunhill Ltd and Another v Sunoptic SA and Another [1979] FSR 337 who urged the court to applya presumption (which might indeed reasonably merit the description “parochial” or “insular”) that the law of all foreign jurisdictions was the same as that of England.I adopt the same approach as that of the Court of Appeal in that case, ie that the defendant is not to be injuncted, even at the interlocutory stage, unless evidence is adduced as to the law in the jurisdictions where the tortious acts are alleged to have been committed. Accordingly, the plaintiffs can succeed in the present application if, and only if, they have established that there is a serious issue to be tried as to whether the activities of the defendants in the United Kingdom would, if carried on in this country,
amount to the tort of passing off
I am satisfied that the plaintiffs have not met this requirement. The first essential ina
passing off action is for the plaintiff to prove that the name or other indicia on which he relies is well known in connection with a business in which he has goodwill, or with goods connected with that business, and is distinctive of those goods or that business. The authorities cited make it clear that the word “business” is to be widely construed and the fact that the plaintiffs are not engaged in any trade or profession in the conventional sense would not be of itself an obstacle. But they have not adduced any evidence that the logo on which they rely is well known – or known at all – in this or any other country in connection with them or any “business” in which they might be regarded as engaged, principally in their case the promotion of Irish exports abroad. Nor is there the slightest reason why it should be so known: from the point of view of the plaintiffs, provided the logo achieves, or helps to achieve, its object of identifying Irish food products abroad witha pure and pollution-free environment, it is hardly a major consideration that the name and reputation of the sponsoring body is not known to the prospective customers in Birmingham or Glasgow. It is “Food Ireland” that the logo seeks to promote, not “An Bord Trachtala”3
Moreover, even if it could be said that there is a cause of action available to the plaintiffs, provided they can demonstrate some risk of confusion which would lead people in the United Kingdom to suppose that the defendants, products enjoyed some unique and official form of endorsement from the plaintiffs – and I am bound to say that it would bea somewhat innovative claim, to put it no more strongly – the plaintiffs have failed to adduce any independent evidence as to the risk of such confusion. It is not enough in this context for the plaintiffs to say, as is undoubtedly the case, that specific examples of confusion will not be available until the defendants’ logo is launched. If the plaintiffs’ apprehensions are justified, it is the defendants’ competitors in the United Kingdom export market who will be primarily affected by the alleged similarity between
the two logos. But there is simply no evidence that any of these firms share the plaintiffs’ concern as to the possibility of confusion arising.
Finally, I have to say that, applying the same commonsense test of the first impression produced by the offending logo when placed side by side with the plaintiffs’ logo (the test favoured by Whitford Jin Laura Ashley Ltd v Coloroll Ltd [1987] RPC 1,I would not consider the essential feature of the plaintiffs’ logo to be the symbol: it is the symbol in conjunction with the words “FOOD IRELAND” andI think that the possibility of any significant confusion, even supposing it was actionable, is remote.
In the light of that conclusion, it is unnecessary for me to consider the other arguments that have been addressed to me as to the adequacy of damages and the balance of convenience. The application for an interlocutory injunction will be refused.

B & S Ltd v Irish Auto Trader Ltd

[1995] 2 IR 142 McCracken J:

The plaintiff has for some years published a magazine entitled “Buy and Sell”. It consists of advertisements placed by persons wishing to buy or sell anything froma bantam hen to a wedding dress, including as a very important part of its contents, motor vehicles and accessories. Since December, 1993, the section of the magazine dealing with motor vehicles has the heading “Autotrader” on the top of each page. At times, going back at least to February, 1994, the cover page, which is headed “Buy and Sell” Ireland’s Free Ads Paper, has also carried the words including “Autotrader”. Since the beginning of February of this year the back page has been given over to promoting
plaintiff restricted to motor vehicles and asscessories, but all advertisements are paid for by the advertiser. A minimal number of these magazines were sold in Ireland over the years, but about six months ago the Scottish edition was put on sale in Northern Ireland and in December, 1994, the defendant produced some form of supplement to its Scottish edition which was confined to Northern Ireland.
On 23rd February, 1995, the defendant launched an Irish edition of their magazine. On the front page it was stated: “Ireland’s Own Auto Trader serving Northern Ireland and the Republic”, although in fact the advertisements were almost entirely from Northern Ireland. However, it must be acknowledged that there is a considerable sale of motor vehicles from Northern Ireland to purchasers in the Republic.
The plaintiff has sought an interlocutory injunction restraining the defendant from publishing, printing or distributing its magazine in this jurisdiction, and claim that by doing so the defendant is passing off its magazine as and for that of the plaintiff.
The accepted test at this stage of the proceedings is to determine whether there is a serious issue to be tried. It is strongly urged on me by the defendant that there is no such serious issue in the present case. The nature of the issue is whether there has been passing off, and I adopt the speech of Lord Diplock in Erven Warnink B.V. v. J. Townend and Sons (Hull) [1979] A.C. 731 at p. 742 as identifying the characteristics of passing off as:”
“(1) a misrepresentation,
(2) made by a trader in the course of trade,
(3) to prospective customers of his or ultimate consumers of goods or services supplied by him,
(4) which is calculated to injure the business or goodwill of another trader (in the sense that it is a reasonably foreseeable consequence), and
(5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so”.
The defendant says that passing off is not an issue in this case as the plaintiff did not use the word “Autotrader” in a prominent way until February of this year, and that in fact the plaintiff changed its use of the word to give much more prominence to it as a pre-emptive strike against the defendant’s magazine. It also says that there is no evidence of confusion or the likelihood of confusion. As the defendant only sold one issue, I cannot really criticise the lack of evidence of confusion. This is almost aquia timet application.
The plaintiff has filed a number of affidavits from persons in the motor trade who say that they associate the name “Autotrader” with the plaintiff’s magazine. These affidavits certainly go a considerable way towards establishing a reputation on the part of the plaintiff in the name. In my view there is a serious issue to be tried based on the argument that persons seeing the defendant’s magazine might think that the plaintiff had extracted the motor section of their “Buy and Sell” magazine and launched it as a separate magazine, and therefore potential customers would purchase the defendant’s magazine in the belief that it was published by the plaintiff.
The evidence certainly carries an implication of the possibility of confusion on this basis, and if such confusion were to be established, it would probably bring the case within the definition quoted above, although Lord Diplock did caution that a cause of action did not automatically arise if these characteristics were present. However, at this stage it is sufficient to say that the facts appear to give rise to a serious issue to be tried.
I now turn to whether on a balance of convenience an interlocutory injunction should be granted. The leading case on the test to be applied on this point are set out by Lord Diplock in American Cyanamid v. Ethicon Ltd. [1975] A.C. 396. These tests have been applied and approved many times in this jurisdiction, and can be summarised that if it is shown there is a serious issue to be tried then:”
1. An interlocutory injunction should be refused if damages would adequately compensate the plaintiff for any loss suffered between the hearing of the interlocutory injunction and the trial of the action, provided the defendant would be in a position to pay such damages.
2. Should this test be answered in the negative, an interlocutory injunction should be granted if the plaintiff’s undertaking as to damages would adequately compensate the defendant, should he be successful at the trial, in respect of any loss suffered by him due to the injunction being in force between the date of application for the interlocutory injunction and the trial, again assuming that the plaintiff would be in a position to pay such damages.
3. If damages would not fully compensate either party, then the court may consider all relevant matters in determining where the balance of convenience lies, but these will vary depending on the facts of each case.
4. It is normally a counsel of prudence, although not a fixed rule, that if all other matters are equally balanced, the court should preserve the status quo.
5. Again, where the arguments are finely balanced, the court may consider the relative strength of each party’s case as revealed by the affidavit evidence adduced at the interlocutory stage where the strength of one party’s case is disproportionate to that of the other.
While Lord Diplock only used the phrase “balance of convenience”when considering the position if damages were not an adequate remedy for either party, I would be more inclined to the view that the entire test rests on a balance of convenience, but that the adequacy of damages is a very important element, and may frequently be the decisive element, in considering where the balance of convenience lies. In the present case, the defendant has offered to have their parent company joined as a co-defendant, so as to ensure that the plaintiff would be able to recover damages should they be awarded, and thus the question of the ability of either party to pay does not seem to me to enter into the issue.
In a case such as this, where a plaintiff is seeking to injunct a competitor from entering the market for the first time, the question of assessing damages on either side becomes extremely difficult. If no injunction is granted, the plaintiff’s loss will be its loss of actual business due to confusion with the defendant’s magazine, and possibly some loss of good will, particularly if some of the plaintiff’s customers should come to believe that the plaintiff was no longer offering free advertising. Both of these are matters which would be extremely difficult to assess in monetary terms. On the other hand, the defendant is producing a magazine which may well only be economic if it is sold in both Northern Ireland and the Republic, and is seeking to break into what it sees as a lucrative market at the present time, where it may well prove considerably cheaper for a purchaser in the Republic to buy a second hand car in Northern Ireland, and therefore is seeking to offer even its Northern Ireland advertisers access to the Republic of Ireland market. If it is prevented from doing this, it may fail to attract the relevant number of advertisers in Northern Ireland, and of course will attract no advertisers from the Republic. It will also have its sales reduced, but as only one issue has so far been published, it is certainly impossible to assess at this time, and probably will be impossible to assess at any time with accuracy, how many sales would have been lost, or indeed how many advertisers would have been lost. In my view, therefore, neither party can be adequately compensated in damages.
While I accept that in these circumstances the court will normally maintain the status quo, which in this case would be to grant an injunction, I feel that there are other factors in the present case which must be taken into consideration. The first of these is that the defendant has clearly acted in a totally bona fide manner, and has not chosen its name with a view to taking advantage of the plaintiff’s business, but simply because it is an extension of the defendant’s own business in Great Britain and elsewhere. Secondly, I feel that the possible loss to the defendant would considerably exceed the possible loss to the plaintiff. It has been suggested that all the defendant has to do is to change the name of its magazine, and that would be so in many cases such as this, but it is not so in the present case. It would clearly be quite unrealistic for the defendant to produce a magazine with a different name for the Republic of Ireland, and I think it is almost equally unrealistic to expect them to produce a magazine for the whole of Ireland under a different name from that used by it in Great Britain. I also take into account that a considerable amount of the advertising in both magazines comes from traders, and indeed the plaintiff’s evidence in relation to reputation has come entirely from traders. I think it highly unlikely that any traders would be confused. Finally, in the short term I think it is quite clear that the defendant’s magazine is largely going to be based in Northern Ireland, and that while a purchaser may purchase the magazine believing it to be the plaintiff’s magazine, the probability is that they will only make this mistake once, as they will very quickly find out it is not the same magazine.
Accordingly, I think this is one of these unusual cases where the balance of convenience lies in favour of refusing an interlocutory injunction, notwithstanding the fact that this is altering the status quo.

Symonds Cider & English Wine Co. Ltd v. Showerings (Ireland) Ltd;

[1997] 1 I.L.R.M. 481 Laffoy J
Date: 10 January 1997

The plaintiff is a company incorporated in England and is part of the HP Bulmer group, the world’s largest cider maker. The plaintiff and its predecessors have been making cider for sale under the trade mark ‘Scrumpy Jack’ since at least the early 1980s in England and have been selling that product in cans and bottles and on draught throughout the United Kingdom. The plaintiff has about 7.4% of the canned cider market in the United Kingdom and overall has about a 4.9% market share in cider in the United Kingdom.
‘Scrumpy Jack’ has been imported into Ireland and sold on the Irish market since 1991. ‘Scrumpy Jack’ has a 17% share of the canned cider market in Ireland and the turnover in Ireland in 1995 for ‘Scrumpy Jack’ amounted to in excess of £730,000.
‘Scrumpy Jack’ has been advertised and promoted extensively in Ireland and in the year 1995 in excess of £240,000 was expended in advertising ‘Scrumpy Jack’ in Ireland. Moreover, it is contended by the plaintiff that the marketing of ‘Scrumpy Jack’ in Ireland has benefited from the ‘spill over’ effect of extensive advertising of the product on terrestrial and satellite television channels in the United Kingdom.
Since 1991 ‘Scrumpy Jack’ has been marketed and sold in Ireland in a gold coloured 500 ml can. The get-up of the can was refined twice in the period between 1991 and 1996. The features of the can which was on the market in June 1996, which, for the sake of clarity, I will refer to as ‘the plaintiff’s old can’ , were as follows:
(a) It was a bright shiny gold colour incorporating a co-ordinating gold coloured cap;
(b) The name ‘Scrumpy Jack’ in large brown script appeared in a prominent position in approximately the centre of the can;
(c) Above the name ‘Scrumpy Jack’ was a logo, the dominant feature of which was a display of red apples on either side of an old fashioned cider press;
(d) Above the logo was the house mark ‘Symonds’ ;
(e) Below the name ‘Scrumpy Jack’ was a description of the product — ‘strong cider’ ;
(f) Below the description was a note concerning the nature of the contents;
(g) Below that note was a statement of the alcohol content (6%); and
(h) There were two narrow brown lines at the shoulder and two narrow brown lines at the bottom of the can.
Since March 1991 the plaintiff has been the registered proprietor of the following trade marks in Ireland:
(i) Trade mark 143341 for the words ‘Scrumpy Jack’ in respect of cider; and
(ii) Trade mark 150918 for a label showing the name ‘Scrumpy Jack’ with the apples/cider press logo and the name Symonds over it for cider.
The defendant is a company incorporated in this jurisdiction and is part of the Cantrell & Cochrane group, which is one of the largest drinks groups in Ireland. The defendant is the market leader in cider in Ireland. In the year ended 30 April 1996 it had a 50.5% market share in the off-trade in its brands ‘Stag’ , ‘Linden Village’ , ‘Strongbow’ and ‘Bulmers’ (the trade mark in which it owns in Ireland). During the five years prior to 1996 the defendant developed four additional brands of cider, which it classifies as tactical brands, to complement its established brands. The dispute the subject of these proceedings concerns one of these tactical brands which has been called ‘Annerville Golden Scrumpy’ in the affidavits filed on behalf of the defendant in these proceedings. For the sake of brevity I will refer to this product as ‘Golden Scrumpy’ , but it is not to be inferred from this that I have formed any view as to the name by which this product is commonly known in the market. In accordance with its policy in relation to tactical brands, the defendant did not advertise ‘Golden Scrumpy’ .
‘Golden Scrumpy’ came on to the market in late June 1996 and was marketed by the defendant in a 500 ml gold coloured can. The defendant’s can incorporated the following design features:
(a) It was a bright shiny gold colour with a co-ordinating gold cap, the colour being very slightly different to that of the plaintiff’s old can;
(b) The name ‘Golden Scrumpy’ in large brown script appeared in a prominent position approximately in the centre of the can;
(c) Above the name was a logo showing two barrels surrounded by a display of red apples with green leaves;
(d) Above the logo was the name ‘Annerville’ ;
(e) Below the name ‘Golden Scrumpy’ was the description — ‘Traditional Cider’ ;
(f) Below the description was a statement of the alcohol content (6%) with the words ‘strong cider’ on a red banner below the statement;
(g) Below that was a note concerning the contents; and
(h) There was a green band at the shoulder bearing the words ‘premium quality’ and a green band at the foot of the can bearing the words ‘serve chilled’ .
These proceedings were initiated by plenary summons which issued on 11 July 1996. On 12 July 1996 the plaintiff issued a notice of motion seeking interlocutory injunctive relief framed in broad terms restraining the defendant from infringing the plaintiff’s Irish registered trade marks Nos. 143341 or 150918 or either of them and from passing off goods not of the plaintiff’s manufacture as and for the plaintiff’s goods and, more specifically, orders restraining the defendant:
(i) from selling, offering for sale or advertising for sale, or distributing or otherwise dealing in cider under the mark ‘Golden Scrumpy’ or any other mark which by reason of its similarity to the trade mark ‘Scrumpy Jack’ is likely to cause confusion or deception or to lead to cider of the defendant being passed off as or for the cider of the plaintiff, and
(ii) from marketing, advertising or promoting cider in any can or other container having a get-up so nearly resembling the plaintiff’s ‘Scrumpy Jack’ get-up as to be likely to cause confusion or deception, and to lead to cider of the defendant being passed off as the cider of the plaintiff.
The motion was grounded on the affidavit of Peter Winters (Mr Winters), the manager of the plaintiff’s business in Ireland, which was sworn on 11 July 1996. On 30 July 1996 the defendant issued a notice of motion claiming, inter alia , a declaration pursuant to s. 24 of the Trade Marks Act 1996 (the 1996 Act) that the threats of infringement of trade mark proceedings by the plaintiff against the defendant were unjustifiable and an injunction against the continuation of such threat. This motion was grounded on the affidavit of John Keogh, (Mr Keogh) the marketing director of the defendant, which was sworn on 28 July 1996 and which also responded to the plaintiff’s motion and the affidavit which grounded it.
Both motions came on for hearing on 15 October 1996 and were heard over four days. In the interim a very considerable number of affidavits were filed by both parties. In all, at the hearing there were 29 affidavits before the court, which including exhibits, comprised approximately 600 pages. In addition to four further affidavits from Mr Winters and three further affidavits from Mr Keogh, there were affidavits from experts (three from graphic designers, five from trade mark agents, two from market research specialists and one from a linguistics expert) and from lay witnesses (seven on the issue of confusion and two on the issue of the use of the word ‘scrumpy’ in Ireland). The affidavits are replete with conflicting evidence of fact and conflicting opinions and with accusations and counter accusations which, having regard to the issues which arose on the application, had no purpose other than to discredit the opponent.
In his grounding affidavit sworn on 11 July 1996, Mr Winters disclosed that it had been the plaintiff’s intention to update the get-up of the ‘Scrumpy Jack’ can and to launch a new can in or about September 1996. The evidence establishes that cans with the new get-up were available in retail outlets from mid-July 1996 in six packs. The can with the new get-up, which, for the sake of clarity, I will refer to as ‘the plaintiff’s new can’ , was put on the market in August 1996. There is uncontroverted evidence that by the weekend of 5 October 1996, of the 34 off-licences in the Dublin area selling ‘Scrumpy Jack’ monitored by the defendant, the plaintiff’s old can was on sale along side the plaintiff’s new can in two off-licences and the old can only was on sale in one. The remaining 31 off-licences selling ‘Scrumpy Jack’ displayed the plaintiff’s new can only.
The plaintiff’s new can is a 500 ml can of the same shape as the plaintiff’s old can and the defendant’s can, which is the standard shape for 500 ml beverage cans. Its features are as follows:
(a) It is coloured gold with a co-ordinating gold coloured cap, the gold colour being darker and more matt in appearance than either the plaintiff’s old can or the defendant’s can;
(b) The name ‘Scrumpy Jack’ in brown script somewhat similar to, but larger than, the script on the plaintiff’s old can appears in the centre with greater prominence than the name on the plaintiff’s old can;
(c) Above the name is reference to certain species of apples;
(d) Above that, just below the shoulder, is a cider press logo without the display of apples but with the name Symonds underneath, the entire device being smaller in size than the corresponding logo and name on the plaintiff’s old can;
(e) Alongside and below the name ‘Scrumpy Jack’ is a statement that the product is made from real cider apples;
(f) A logo comprising two red apples with brown coloured leaves appears on the lower quarter on the right hand side over, alongside and under which is text — ‘Picked from my own trees’ /‘Otherwise I wouldn’t put my name on it!’ ; and
(g) There is one narrow brown line near the bottom of the can under which is a description of the product as ‘traditional cider’ and a statement of the alcohol content (6%).
It was submitted on behalf of the plaintiff that the principles by which this Court should be guided in determining the plaintiff’s application for interlocutory injunctions are the principles set out by the House of Lords in American Cyanamid Co. v. Ethicon Ltd [1975] AC 396 , as adopted by the Supreme Court in Campus Oil Ltd v. Minister for Industry and Energy (No. 2) [1983] IR 88 ; [1984] ILRM 45 and subsequently frequently applied by this Court in applications for interlocutory injunctions in passing off actions, for example, by Costello J, as he then was, in Mitchelstown Co-Operative Agricultural Society Ltd v. Golden Vale Food Products Ltd High Court 1985 No. 9460P, 12 December 1985 and McCracken J in B. & S. Ltd v. Irish Auto Trader Ltd [1995] 2 IR 142 ; [1995] 2 ILRM 152 . Having regard to the submissions made on behalf of the defendant as to the applicability of these principles, I think it would be useful to outline them. The first step in applying the American Cyanamid principles is to determine whether the plaintiff has shown that there is a fair issue to be tried. If it has, then the following criteria, adopting the summary set out by McCracken J in B. & S. Ltd v. Irish Auto Trader Ltd at pp. 145/156, fall to be applied:
1. An interlocutory injunction should be refused if damages would adequately compensate the plaintiff for any loss suffered between the hearing of the interlocutory injunction and the trial of the action, provided the defendant would be in a position to pay such damages.
2. Should this test be answered in the negative, an interlocutory injunction should be granted if the plaintiff’s undertaking as to damages would adequately compensate the defendant, should it be successful at the trial, in respect of any loss suffered by it due to the injunction being in force pending the trial, again assuming the plaintiff would be in a position to pay such damages.
3. If damages would not fully compensate either party, then the court may consider all relevant matters in determining where the balance of convenience lies, but these will vary depending on the facts of each case.
4. It is normally a counsel of prudence, although not a fixed rule, that if all other matters are equally balanced, the court should preserve the status quo .
5. Again, where the arguments are finely balanced, the court may consider the relative strength of each party’s case as revealed by the affidavit evidence adduced at the interlocutory stage where the strength of one party’s case is disproportionate to that of the other.
Counsel for the defendant submitted that the American Cyanamid principles have been considerably refined since 1975, particularly in the field of intellectual property. In support of this contention he relied on the following passage from the judgment of Lord Diplock in NWL Ltd v. Woods [1979] 3 All ER 614 at p. 625:
… when properly understood, there is in my view nothing in the decision of this House in American Cyanamid Co. v. Ethicon Ltd to suggest that in considering whether or not to grant an interlocutory injunction the judge ought not to give full weight to all the practical realities of the situation to which the injunction will apply. American Cyanamid Co. v. Ethicon Ltd , which enjoins the judge on an application for an interlocutory injunction to direct his attention to the balance of convenience as soon as he has satisfied himself that there is a serious question to be tried, was not dealing with a case in which the grant or refusal of an injunction at that stage would, in effect, dispose of the action finally in favour of which ever party was successful in the application, because there would be nothing left on which it was in the unsuccessful party’s interest to proceed to trial ….
Cases of this kind are exceptional, but when they do occur they bring into the balance of convenience an important additional element. In assessing whether what is compendiously called the balance of convenience lies in granting or refusing interlocutory injunctions in actions between parties of undoubted solvency the judge is engaged in weighing the respective risks that injustice may result from his deciding one way rather than the other at a stage when the evidence is incomplete. On the one hand there is the risk that if the interlocutory injunction is refused but the plaintiff succeeds in establishing at the trial his legal right for the protection of which the injunction has been sought he may in the meantime have suffered harm and inconvenience for which an award of money can provide no adequate recompense. On the other hand there is the risk that if the interlocutory injunction is granted but the plaintiff fails at the trial the defendant may in the meantime have suffered harm and inconvenience which is similarly irrecompensable. The nature and degree of harm and inconvenience that are likely to be sustained in these two events by the defendant and the plaintiff respectively in consequence of the grant or the refusal of the injunction are generally sufficiently disproportionate to bring down, by themselves, the balance on one side or the other; and this is what I understand to be the thrust of the decision of this House in American Cyanamid Co. v. Ethicon Ltd. Where, however, the grant or refusal of the interlocutory injunction will have the practical effect of putting an end to the action because the harm that will have been already caused to the losing party by its grant or its refusal is complete and of a kind for which money cannot constitute any worthwhile recompense, the degree of likelihood that the plaintiff would have succeeded in establishing his right to an injunction if the action had gone to trial is a factor to be brought into the balance by the judge in weighing the risks that injustice may result from his deciding the application one way rather than the other.
Counsel for the defendant adopted the commentary in Drysdale and Silver-leaf on Passing-Off Law and Practice , 2nd ed. (1995), at p. 142 that in a passing off action the outcome of the interlocutory proceedings often determines the final outcome of the whole proceedings and that the court in such circumstances is justified in considering the substantive case. He further relied on the judgment of Laddie J in Series 5 Software Ltd v. Clarke [1996] FSR 273 as to the approach to be adopted in weighing the strength of the respective positions of the plaintiff and the defendant. In that case, having quoted a passage from the judgment of Lord Diplock in the American Cyanamid case to the effect that assessing the relative strength of the parties’ cases should be done only where it is apparent upon the facts disclosed by the evidence as to which there is no credible dispute that the strength of one party’s case is disproportionate to that of the other party, Laddie J went on to say:
In my view Lord Diplock did not intend by the last quoted passage to exclude consideration of the strength of the cases in most applications for interlocutory relief. It appears to me that what is intended is that the court should not attempt to resolve difficult issues of fact or law on an application for interlocutory relief. If, on the other hand, the court is able to come to a view as to the strength of the parties’ cases on the credible evidence then it can do so. In fact, as any lawyer who has experience of interlocutory proceedings will know, it is frequently the case that it is easy to determine who is most likely to win the trial on the basis of the affidavit evidence and any exhibited contemporaneous documents. If it is apparent from that material that one party’s case is much stronger than the other’s then that is a matter the court should not ignore. To suggest otherwise would be to exclude from consideration an important factor and such exclusion would fly in the face of the flexibility advocated earlier in American Cyanamid .
The decision of the House of Lords in NWL Ltd v. Woods was referred to in argument before the Supreme Court in Westman Holdings Ltd v. McCormack [1992] 1 IR 151 ; [1991] ILRM 833 . In his judgment, Finlay CJ stated as follows (at pp. 157/838:
Having regard to the decision of this Court in Campus Oil Ltd v. Minister for Industry and Energy (No. 2) [1983] IR 88 , and in particular to the judgment of O’Higgins CJ in that case, I am satisfied that once a conclusion is reached that the plaintiff seeking an interlocutory injunction has raised a fair question to be tried at the hearing of the action in which, if he succeeded, he would be entitled to a permanent injunction that the court should not express any view on the strength of the contending submissions leading to the raising of such a fair and bona fide question, but should proceed to consider the other matters which then arise in regard to the granting of an interlocutory injunction.
Counsel for the defendant submitted that the evidence establishes that to grant interlocutory injunctions to the plaintiff would determine the final outcome of the whole proceedings. In his affidavit sworn on 28 July 1996, Mr Keogh averred that if ‘Golden Scrumpy’ was taken off supermarket and off-licence shelves in obedience to injunctions, there would be no reality in attempting to reintroduce the brand if the injunctions were discharged after a plenary hearing. Further, counsel for the defendant submitted that as a matter of common sense, the defendant’s product must die if injunctions are granted. That being the case, it was submitted, the plaintiff must satisfy the court that it has a real and substantial and forceful case to make at the trial of the action.
I am satisfied that, having regard to the decision of the Supreme Court in Westman Holdings Ltd v. McCormack , it is not open to this Court, assuming the plaintiff has established that there is a fair and bona fide question to be tried, to express any view on the strength of the contending submissions on this issue. In any event, even if it were open to the court at this interlocutory stage to evaluate the likely outcome of the trial, in my view it would be impossible to do so in this matter, which is bristling with difficult issues of fact arising from conflicting affidavit evidence and difficult issues of law.
The plaintiff contended that there are fair issues to be tried in relation to the conduct of the defendant of which it complains on two bases: for passing off and for trade mark infringement. In relation to passing off, the plaintiff contended that it has shown that there is a fair issue to be tried that it has an established reputation in the get-up of the plaintiff’s old can and in the name ‘Scrumpy Jack’ and that the adoption by the defendant of a similar get-up for its can and the name ‘Golden Scrumpy’ for its cider product has caused confusion and is likely to deceive prospective purchasers that ‘Golden Scrumpy’ is the plaintiff’s product ‘Scrumpy Jack’ . Although the thrust of the plaintiff’s case is that the defendant’s wrong was and is that it has imitated the plaintiff’s old can, the plaintiff contended that it has and will continue to have a residual and persistent reputation in the get-up of the plaintiff’s old can and in the name ‘Scrumpy Jack’ which is sufficient to found an action for passing off and in this connection relied on Thermawear Ltd v. Vedonis Thermawarm Ltd [1982] RPC 44 and, in particular, the statement in the judgment of Whitford J at p. 67 to the effect that relief has not infrequently been given in passing off proceedings when only a residual reputation could be relied upon. In relation to the allegation of trade mark infringement, the plaintiff contended that it has produced prima facie evidence of the validity of its registered trade marks and has shown that there is a fair issue to be tried — that the adoption by the defendant of the name ‘Golden Scrumpy’ on a gold can for its cider product is likely to deceive or cause confusion.
The defendant contended that both bases of the plaintiff’s claim are without foundation and must fail in limine . The nub of the plaintiff’s complaint against the defendant, it was asserted, is the use of the word ‘scrumpy’ on the defendant’s cider product. The word ‘scrumpy’ , the defendant argued, is part of the commonage of the English language. It is a descriptive term; a word used to denote rough dry cider. It cannot be monopolised by a trader and it cannot confer any exclusivity either under common law or statute law. Any manufacturer of ‘scrumpy’ is entitled to describe his product as such with whatever emphasis he wishes and it cannot constitute a wrongful act to do so. In support of its argument that scrumpy has an ordinary and natural meaning, the defendant relied on copious dictionary definitions, literary and journalistic references and on trade and other usage. The plaintiff’s answer was that the term ‘scrumpy’ was only of dialectical significance in certain parts of England and that, prior to the launch of the plaintiff’s product ‘Scrumpy Jack’ on the market in Ireland in 1991, it had not any particular meaning or the meaning contended for by the defendant in Ireland.
The gravamen of the defendant’s case in relation to the alleged trade mark infringement is that the plaintiff’s trade marks are not validly registered. The 1996 Act came into force on 1 July 1996. The alleged infringement commenced before 1 July 1996 and continued after that date. It is common case that, in the circumstances, by virtue of the combined operation of s. 100 and article 3(3) of the Third Schedule to the 1996 Act, the plaintiff’s allegation has to be considered by reference to the question whether the defendant’s conduct would have amounted to an infringement under the Trade Marks Act 1963 (the 1963 Act). The defendant contended that the term ‘Scrumpy Jack’ was incapable of registration as a trade mark under s. 17 of the 1963 Act without a disclaimer in relation to the word ‘scrumpy’ because that word is not distinctive, in that it is incapable of distinguishing one person’s scrumpy from another’s and it is incapable of being ‘adapted … to distinguish’ within the meaning of s. 17(2) of the 1963 Act it being the only word available in the English language to describe rough dry cider. Further, s. 16(b) of the 1963 Act completely reserved the right of a manufacturer to manufacture scrumpy and describe it as such. In his affidavit sworn on 28 July 1996, Mr Keogh averred that the defendant will be counter-claiming in these proceedings for rectification of the Register of Trade Marks under s. 40(1) of the 1963 Act in respect of the plaintiff’s registrations insofar as they did not contain a disclaimer of the word ‘scrumpy’ . The plaintiff’s answer was that, as proceedings for rectification had not been commenced before 1 July 1996, any application for rectification will have to be brought under s. 52 of the 1996 Act and, on such application, it would be open to the court to hold that, in consequence of the use of the plaintiff’s trade marks since registration, the word ‘scrumpy’ has acquired a distinctive character in relation to the plaintiff’s product. The defendant disputed this proposition.
The defendant contended that, leaving aside the gold colour of both cans, for which the plaintiff cannot and does not claim exclusivity in relation to cider, the only similarity between the defendant’s can and the plaintiff’s old can is the prominence of the word ‘scrumpy’ in the centre of the can. If the plaintiff is wrong in claiming a monopoly on the word ‘scrumpy’ , which the defendant asserted is the case, the plaintiff’s claims for passing off and trade mark infringement must fail.
In my view, the affidavit evidence adduced by the defendant and the arguments advanced on its behalf do not answer the plaintiff’s contentions in a manner sufficient to lead to the conclusion that the plaintiff has not shown that there is a fair issue to be tried. Indeed, as the above summary of the arguments advanced by the parties, which is by no means comprehensive, indicates, many fair issues arise for determination on the plaintiff’s claim and on the defendant’s proposed counter-claim. I consider that it is not necessary to outline those issues here, nor do I consider it necessary to pinpoint the evidence on the basis of which I conclude that there are fair issues to be tried save to state that I have not had regard to the market research evidence in relation to the likelihood of confusion, which the defendant argued was inadmissible, because, adopting the test postulated by Blackburne J in Dalgety Spillers Foods Ltd v. Food Brokers Ltd [1994] FSR 504 at p. 527, I believe that my experience as an ordinary shopper or consumer enables me, just as well as any other, to assess the likelihood of confusion.
I turn now to the question whether damages would be an adequate remedy for the plaintiff if interlocutory injunctions are refused and the plaintiff ultimately succeeds in its claim. It is not contended that the defendant would not be able to meet any award of damages made on the plaintiff’s claim. In Mitchel-stown Co-Operative Agricultural Society Ltd v. Golden Vale Food Products Ltd , Costello J , as he then was, stated that it is axiomatic that in most passing off actions damages are an inadequate remedy for a successful plaintiff. Here, the plaintiff advanced the arguments which are usually advanced by a plaintiff in a passing off action on the inadequacy of damages as a remedy. It contended that it would be impossible to calculate in monetary terms the loss of or diminution in its reputation and its goodwill in ‘Scrumpy Jack’ which it is alleged will ensue if interlocutory injunctions are not granted. While it was not contended that the product in the defendant’s can is inferior to the plaintiff’s ‘Scrumpy Jack’ , it was contended that, as the plaintiff cannot exercise any quality control over the defendant’s product, the plaintiff is at risk of long-term irreparable damage notwithstanding that its exclusivity is restored by the grant in due course of a perpetual injunction, if consumers of ‘Golden Scrumpy’ are dissatisfied with its taste or quality and are ‘turned off’ scrumpy generally. Further, the value of the plaintiff’s expenditure on advertising and promoting ‘Scrumpy Jack’ has been and is being undermined in a manner which it is not possible to quantify in monetary terms. Despite the criticism of the foregoing arguments by counsel for the defendant, I am satisfied that damages would not be an adequate remedy for the plaintiff.
Apropos of the position of the defendant in the event of interlocutory injunctions being granted and the defendant ultimately succeeding in its defence and/or proposed counter-claim, it was not contended that the plaintiff would not be able to meet an award of damages in favour of the defendant on foot of the plaintiff’s undertaking as to damages. However, it was contended by the defendant that such an award would not adequately compensate the defendant. In particular, it was contended that, by contrast with the plaintiff which has an established market share, the defendant’s ‘Golden Scrumpy’ product is in its infancy and if it is taken off the market in consequence of the grant of injunctions, it will be impossible to quantify the damage to the defendant’s reputation and goodwill and its loss in terms of loss of market share and profits. In my view, an award of damages would not adequately compensate the defendant.
Having determined that damages would not fully compensate either party, I must now consider where the balance of convenience lies having regard to all relevant matters. On this point I share the view expressed by McCracken J in B. & S. Ltd v. Auto Trader Ltd at pp. 146/156 that, while Lord Diplock in the American Cyanamid case used the phrase ‘balance of convenience’ when considering the position if damages were not an adequate remedy for either party, the entire test rests on the balance of convenience and the adequacy of damages is a very important element, and frequently the decisive element, in considering where the balance of convenience lies. It was submitted on behalf of the plaintiff that the court should take cognisance of the fact that the defendant, the market leader in the cider trade in Ireland, regards ‘Golden Scrumpy’ merely as a tactical brand, whereas the plaintiff’s canned ‘Scrumpy Jack’ is a significant portion of its business. Having regard to the vigour with which the defendant contested the plaintiff’s application for injunctions, I can only assume that protection of the ‘Golden Scrumpy’ product is of considerable importance to the defendant and I have given no weight to the plaintiff’s submission to the contrary. The defendant submitted that the court should have regard to reality and to the practical effect of granting interlocutory injunctions to the plaintiff which, it was contended, would be to sterilise the word ‘scrumpy’ and effectively exclude any new entrant into the scrumpy market from calling his product scrumpy without first challenging the validity of the plaintiff’s registered trade marks and without running the risk of having to defend passing off proceedings. That the plaintiff may be able to raise a fair issue for determination against any person who wishes to market a cider product which he calls by a name which includes the word ‘scrumpy’ in a gold can of a particular style and design, in my view, is not a factor which can determine where the balance of convenience lies between this plaintiff and this defendant.
In broad terms, the remainder of the factors which it was asserted determine where the balance of convenience lies are factors which fall for consideration in determining the adequacy of damages as a remedy, to some of which I have already referred. It seems to me that in this case the detriments which will accrue to the defendant and the plaintiff respectively in consequence of the grant or refusal of the injunctions sought are qualitatively the same, namely, damage to reputation and goodwill, and it has not been shown that they are disproportionate in degree. But for one factor, I would consider that the detriments are evenly balanced in terms of nature and degree and, but for that factor, I would consider that the status quo should be preserved.
The factor which, in my view, tilts the balance is the prevalence of the plaintiff’s new can on the market at the time the applications were heard. The argument advanced by the plaintiff was that, far from alleviating the situation, the existence of the plaintiff’s new can on the market would heighten the risk of damage and confusion because consumers would be more inclined to view the defendant’s can as another variation of the plaintiff’s product. Counsel for the defendant submitted that, having regard to the prevalence of the plaintiff’s new can, what the plaintiff is seeking are injunctions for an indeterminate length of time on the basis of diminishing customer memory. It seems to me that that is the reality of the situation and that, in the unusual circumstances of this case, justice does not require that the injunctions sought should be granted. In reaching this conclusion, I am not overlooking the fact that the plaintiff claims a proprietorial interest in the name and trade mark ‘Scrumpy Jack’ under which the product in the plaintiff’s new can is marketed. However, the plaintiff’s case focused on the plaintiff’s old can and I am not satisfied that the plaintiff has shown on the affidavit evidence now before the court that there is a fair issue to be tried as to the likelihood of confusion between the plaintiff’s new can and the defendant’s can or that there has been actual confusion.
I will now consider the defendant’s motion, which is for interlocutory relief under s. 24 of the 1996 Act. That section is a new provision in our trade mark code. S. 24(1) provides as follows:
Where a person threatens another with proceedings for infringement of a registered trade mark other than in relation to —
(a) the application of the mark to goods, and
(b) the importation of goods to which the mark has been applied, or
(c) the supply of services under the mark,
any person aggrieved may apply to the court for relief under the section.
S. 24(2) itemises the types of relief which may be applied for, namely, a declaration that the threats are unjustifiable, an injunction against the continuance of the threats, and damages. S. 24(3) provides:
A plaintiff shall be entitled to such relief as is referred to in subs. (2) unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.
S. 24(4) provides that, notwithstanding the provisions of subs. (3) , a plaintiff in an application under s. 24 shall be entitled to relief under subs. (2) if he shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect.
There was no common ground between counsel for the plaintiff and counsel for the defendant as to the effect of the three exclusions from the operation of subs. (1) and, in particular, at whom or at what activity they are directed. I find it is unnecessary to come to any conclusion as the effect of those exclusions and, in particular, whether the defendant would have been precluded from invoking s. 24 before the plenary summons herein was issued because, in any event, I consider that at the time the defendant initiated its application under s. 24 the jurisdiction conferred by s. 24 was spent. The jurisdiction conferred by s. 24 relates to threats of proceedings. When, as happened here, a threat of proceedings burgeons into an action in this Court against the party threatened, in my view, it is not open to the party against whom the action has been taken to retaliate by invoking s. 24 . It is true that on this construction of s. 24 a party threatening proceedings may pre-empt an application under s. 24 by issuing a plenary summons. However, I believe that this is what the legislature intended in enacting s. 24 . Once a plenary summons is issued, the matter is within the seisin of this Court and, if necessary, the party who was threatened can invoke the rules of procedure of this Court to ensure that the issue between him and the party who issued the threat is dealt with.
Accordingly, I refuse the plaintiff’s application for injunctive relief on its motion and the defendant’s application for injunctive relief on its motion.

Local Ireland Ltd v. Local Ireland-Online Ltd.

[2000] IEHC 67; [2000] 4 IR 567 Herbert J.

1. The second named Plaintiff in these proceedings, Nua Limited, which was incorporated on the 20th of September 1995 developed in or about September 1996 an Internet Information Classification System which would provide users of the internet requiring information which related to Ireland with a simple and charge free means of accessing that information without having to engage in random searches through an ever expanding volume of information on the internet relating to Ireland. For this service the Second named Plaintiff devised the business name, “Localireland”, alternatively “Local ireland”, sometimes written as a single word and sometimes as two separate words. In either case by way of a distinctive logo the initial letter, “L” is presented in upper case with a swirl device like a crook or concentric crescents with one pair of the adjacent horns joined by a transverse line integrated into the right upper quarter of the vertical stroke of the letter and with the horizontal stroke of the letter presented as an equilateral triangle. The other eleven letters are always presented in lower case. The first five letters, including the initial “L” are always presented in bold type and where colour printing is used are always in a darker shade of colour.

2. In February 1997 a serious of electronic addresses for this system, generally known as, “domain names” were registered by the second named Plaintiff with an international control organisation known as, “Network Solutions” . These domain names are “local.ie”; “localireland.com” ; “local-ireland.com” ; “local-ireland.org”, and “local-ireland.net” .

3. The first named Plaintiff, Local Ireland Limited was incorporated on the 24th November 1998, initially under the name “Chingola Limited”, which was changed on the 11th December 1998 to its present name as a step in a joint venture business arrangement with Telecom Eireann now as known as Eircom plc. By an Intellectual Property License Agreement, dated 4th December 1998, the second named Plaintiff granted to the first named Plaintiff a non exclusive, non transferable licence in respect of its intellectual property rights in the reputation and goodwill in the name, get up and logo, “ Localireland” alternatively “Local-ireland”, and in the domain names, “Localireland.com” and “local.ie”. On the 23rd June 2000 the first named Plaintiff became aware, as a result of a reply received by them to a newspaper advertisement, that an entity describing itself as, “Local Ireland-Online” alternatively “local ireland-online” was seeking staff. Contact was established with this entity which proved to be the first named Defendant a company which was incorporated on the 20th of June 2000. On behalf of the first named Defendant it was confirmed that it was trading and proposed to continue to trade under the business name, “Local Ireland-Online”, offering a subscription business listing service through which local businesses would become accessible on the internet through the central web site of the first named Defendant. The Plaintiffs subsequently ascertained that a domain name, “localireland-online.com” had been registered by the second named Defendant on his own behalf on the 30th June 2000. It was subsequently confirmed that the first named Defendant was using and intended to continue to use this domain name.

A “cease and desist” letter, dated 27th June 2000 was sent to the first named Defendant and was acknowledged by a letter dated the 3rd of July 2000 from a firm of solicitors acting on behalf of both the Defendants. A similar letter dated the 4th July 2000 was sent to the second named Defendant. The Defendants maintain a legal right to use and unequivocally indicated an intention to continue to use the business name, “Local Ireland-Online” and the domain name, “localireland-online.com”. The first named Defendant presented this business name as three separate words, with the middle word in bold type and separated by a hyphen from the final word. Sometimes the initial letter of each word was presented in upper case but otherwise each word was presented in lower case.
4. On the 6th of July 2000 the Plaintiffs issued a plenary summons and also a notice of motion. The notice of motion claimed an interlocutory injunction and was grounded on the affidavit of Mr Gerry McGovern, Chief Executive Officer of each of the Plaintiffs, sworn on the 6th of July 2000. By an Order of this Court, (Mr Justice McCracken) made ex parte on the 6th of July 2000 the notice of motion was made returnable for the 10th of July 2000. The plenary summons, the notice of motion, the grounding affidavit and exhibits were served on each of the Defendants on the 7th of July 2000. An appearance was entered on behalf of both the Defendants on the 10th of July 2000. A Replying Affidavit was sworn on the 13th July 2000 by Mr Con Daly the second named Defendant in these proceedings and a director of the first named Defendant, on behalf of the first named Defendant. A further affidavit on behalf of the Plaintiffs was sworn on the 14th July 2000 by Mr Eoin MacGiolla Ri internal legal advisor of the first named Plaintiff.

5. As appears at paragraphs 12 and 17 of the affidavit of Mr Con Daly, the Defendants decided after the commencement of these proceedings to change the business name, “ Local Ireland – Online ” to, “ Locally Irish ” and in future to use only this name, “Locally Irish ”. This name is presented as two separate words with the second word always presented in bold type and sometimes with the initial letter in each word presented in upper case but always with the remaining letters in each word presented in lower case. No shading or colour differentiation is made between the two words. This get-up is accompanied by a logo consisting of two concentric crescents differentiated by colour or shading with a dark arrow like device entering between the horns of the inner crescent and the entire casting a dark lateral shadow and resting upon a white partial mirror image of itself. Sometimes the crescents face left with the arrow shaft in the two o’clock position and sometimes right with the arrow shaft in the ten o’clock position and are presented as standing vertically on a surface, colour or shading differentiated and either clear or with a variety of art work including a map of Ireland showing county outlines and names.

6. In addition a new domain name, “ locallyirish.com”, “with all international variants”, has been registered with Network Solutions. Why, and as regards the domain name, when, these changes were made is a matter of a very considerable dispute between the parties which I cannot resolve on this application and in respect of which I therefore draw no inferences whatsoever. For the purposes of this application it is sufficient to record that the Plaintiffs contend that notwithstanding the differences in get-up and logo which they claim are in any event insufficient, the use by the Defendants of the business name, “ LocallyIrish” and the domain name, “ locallyirish.com”, or the business name, “Local Ireland-Online” and the domain name “ localireland-online.com”, amounts to parasitic and imitative trading by the Defendants or one or other of them, is a material infringement of the Plaintiffs’ property rights, and constitutes the tort of, “ passing off ”. In the Affidavit of Mr. Gerry McGovern sworn in these proceedings on behalf of the Plaintiffs’ on the 6th of July 2000 it is asserted that since December 1998 the first named Plaintiff has built up and operated an Internet Information Service, now covering the whole island of Ireland, featuring some 1700 towns and villages and with 3000 subject classifications. It is stated on oath that this website is the second most busy website in the State with approximately 205,000 separate visits to the site per month. Corroboration of this statistic is provided in the form of a User Audit Certificate for the month of March 2000, furnished by A.B.C. Electronic Media Audits Limited, of Hertfordshire, England. The first named Plaintiff estimates that approximately 23 per centum of all visits to its website are by residents of this Jurisdiction.

7. The basis for this estimate is not stated, however, it is clear from the website extracts exhibited in the Affidavit of Mr. Gerry McGovern that a considerable part of the information featured on the website would be of immediate interest to persons in this Jurisdiction, for example, sports news, business news, share prices, business and service directories, mortgage stores, theatre arts and entertainment guides, news and weather. At paragraph 6 of his Affidavit sworn in these proceedings on behalf of the first named Defendant on the 13th of July 2000, Mr. Con Daly submits that the emphasis of the plaintiffs website is on geneological services and a diary of local events and festivals. While such services and information are indeed provided by the plaintiffs website it is clear from the Affidavit evidence that such information forms but a small part of the overall information provided on the Plaintiffs website.

8. It is stated upon oath in the Affidavit of Mr. Gerry McGovern that since September 1998 the first named Plaintiff has spent in the region of £594,000.00 on advertising its business name and services in Ireland and abroad. Corroborative evidence for such expenditure abroad is provided in the form of a Preliminary Market Report, covering advertising and promotion of the Plaintiffs business name and services in the United States of America on and about the 17th March 2000. In the State this advertising is stated to have been in the print media on television and in outdoor advertisements. A further sum of £200,000 is stated to have been committed to be spent in launching the Plaintiffs’ website accommodation service and the Court was informed by Counsel for the plaintiffs that some of this £200,000 has already been spent.

9. It is further averred that since its incorporation the first named Plaintiff has invested over £3 million in employing persons to devise software, to gather and present information and to negotiate and conclude agreements with Local Partners or Franchisees. It is stated that the purpose of these agreements is to enable such Local Partners or Franchisees to establish their own web presence as part of the plaintiffs website and to offer advertising and subscription based business listings through which local businesses can obtain an internet presence via the plaintiffs website. It is sworn that to date two such agreements have been concluded and are in operation while a further eight such agreements are at an advanced stage of negotiation. In addition the plaintiffs say that they actively seeking another twenty such Local Partners or Franchisees. The Plaintiffs claim that having regard to this extensive use made of the website of the first named Plaintiff and to the substantial marketing advertising and promotion of the business name “ Local Ireland” or alternatively “ Localireland”, they have established a substantial and exclusive reputation in this business name its get-up and its related logo and that the business and services conducted and sold by them under this business name and associated domain names are associated in the minds of the purchasing public exclusively with the Plaintiffs or one of them.

10. The Plaintiffs claim may be summarised as follows: the similarity of the business names and associated domain names, the similarity of the get-up, the similarity of the logo of the first named Defendant and the first named Plaintiff, and the similarity of the services offered, that is, “a subscription listing of commercial undertakings accessible through the central website of the provider ”, would, as a reasonable probability, result in customers and prospective customers of the first named Plaintiff being misled into thinking that the services offered by the Defendants or one of them was as a Branch or Licensee of the first named Plaintiff or was otherwise linked with or connected to the first named Plaintiff. The Plaintiffs having pointed to one identified instance of confusion go on to say that they truly believe that further confusion of the business of the Defendants with their business is in the above circumstances inevitable. They claim that the result of such confusion would be to cause damage to their business for which an award of damages would be an insufficient remedy. Such damage is claimed under four headings which I venture to summarise as follows:-

That they would lose and the Defendants as business rivals would to a definite but unquantifiable extent gain the benefit of their very substantial expenditure on advertising promotion and research as already detailed ;
That their inability to control the quality of the service provided by the Defendants, which customers and potential customers were misled into believing was part of or associated with their business, could discourage customers dissatisfied with the quality of the Defendants’ services from using the Plaintiffs business subscription listing or other services in the future;
That the activities of the Defendants if permitted to continue would in all probability result in similar activity on the part of others so that the Plaintiffs would entirely loose the benefit of their reputation or that reputation would become so swamped and debased that the loss to them would be incalculable in monetary terms, and,
That their application for the registration of a European Union Trademark in the name, “Local Ireland” might not be accepted as a result of the activities of the Defendants which included a similar application in respect of the name, “Local Ireland-Online”.
11. The Defendants case, as set out in the replying Affidavit of Mr. Con Daly, and here again I am summarising, is that there is no misrepresentation involved in their use of the business name, “Local Ireland-Online ”, or in the business name, “ Locally Irish ”, particularly having regard to their getup and logo. In his Affidavit on behalf of the first named Defendants Mr. Con Daly avers that these business names, their getup and logo, their associated domain name and the services provided by the first named Defendant are so clearly distinct from the business name, getup and logo of the Plaintiffs, their associated domain names and the services provided by them, that persons are not likely to be misled into believing that the services of the first named Defendant are the services provided by the first named Plaintiff or that the first named Defendant is a Branch or Licensee of the first named Plaintiff or is in any way associated with it.

12. Counsel for the Defendants argued that the Plaintiffs, having adopted a business name containing words in common use are not entitled to an unfair monopoly in those words and that accordingly the Court should accept the differences in the business names getup and logos, even if the Court should consider them to be small, which the Defendants submit which they are not, as none the less sufficient to distinguish the business of the Defendants from that of the Plaintiffs. This is particularly so, Counsel argued, having regard to what the Defendants alleged to be differences in the services provided and what the Defendants submit are different areas from which the businesses are carried on. Counsel for the Defendants referred to the cases of, Reddaway and Company -v- Banham , (1896) A.C. 199, ( H of L ); Office Cleaning Services Limited -v- Westminster Office Cleaning Association , (1946) 1. AER 320, and B.S. -v- Irish Auto Trader , (1995) 2.ILRM. 252, in support of this argument.

13. Despite the suggestion by Counsel for both sides that the outcome of this application for interlocutory relief is likely to determine the dispute there was no agreement to treat the hearing of this Motion as the trial of the Action. In such circumstances, having regard to the decision of the Supreme Court in the Campus Oil Limited -v- The Minister for Industry and Energy , (2), (1983) I.R.88, I am not entitled at this juncture to inquire into the merits of the case or to consider the probabilities of success of any party at the trial of the Action. Provided that the Plaintiffs, upon whom the onus of proof lies, have shown to the satisfaction of this Court, that there is a fair bona fide question to be tried as between them and the Defendants and that if they are correct in this contention that the continuance of the Defendants activities until the trial and determination of the Action is likely to cause substantial damage to them for which an award of damages at the trial would not be adequate compensation, I am obliged, as the law now stands, to determine this Application solely on the balance of convenience, that is on the relevant extent of the damage to one or other party if the injunction is or is not granted.

14. It seems to me somewhat regrettable that in the present case where most if not all of the relevant facts appear to be before the Court on Affidavit, that the parties by agreeing to treat the hearing of this Motion as the trial of this Action, “did not use the interlocutory injunction as a simple quick and relatively and cheap way of asking the Court who is right”. (See, Kerly’s , Law of Trade Marks and Trade Names, (12th Edition: (1986), page 322 note 84).

15. I am satisfied that the Plaintiffs have raised so far as this may be done on Affidavit, a strong prima facie case that as regards the business name, “ Local Ireland ”, and its associated domain names that there already exists in this jurisdiction as well as abroad a large body of the public which in the words Barron, J., in the case of Muckross Park Hotel Limited -v- Randles and Others , (High Court: 10/11/1992, unreported judgment available), “ know it and what it stands for ”, namely the Internet Information Service of the Plaintiffs’. I am also satisfied that the Plaintiffs’ have made out a strong prima facie case that they have in this jurisdiction as well as abroad a very valuable reputation in the business name, “ Localireland” or alternatively, “ Local Ireland ”, and its associated domain names.

16. I am satisfied that the Plaintiffs have made out a bona fide case to be tried that the use by the Defendants or either of them of the business name, “ Local Ireland-Online ”, and its associated domain name, “ localireland.com”, which takes over and incorporates the name of the first named Plaintiff as a whole, would result in a very high probability of deception as amounting to, “ a misrepresentation by the Defendants to the public (whether or not intentional) leading or likely to lead the public to believe that the services offered by (them) are the services of the Plaintiff(s)”, ( See, Reckitt and Coleman Products Limited -v- Borden , (1990) 1 AER873 at 880), or that the Defendants in providing such services are in some way associated with the Plaintiffs’ business, for example as a Branch or Licensee of the Plaintiffs’.

17. I am further satisfied that the Plaintiffs’ have made out a fair bona fide case to be tried that the use by the Defendants’ or either of them of the business name, ” Locally Irish “, and its associated domain name, ” locallyirish.com”, are so close to the business name and domain name of the first named Plaintiff that no sufficient or real distinction could reasonably be said to exist between them, particularly having regard to the similarity of the relevant service, that is, ” the subscription listing of commercial undertakings accessible through the central web of the provider “, carried on by the first named Plaintiff and the first named Defendant and that as a matter of reasonable probability the public are likely to be similarly misled. I do not consider the fact that the Plaintiffs’ also provide other services under the same business name and associated the domain name lessens the force to their argument.

18. In the case of the business name, ” Locally Irish “, and the business name, ” Local Ireland-Online “, and their associated domain names, I am satisfied that the Plaintiffs’ have established a fair bona fide case to be tried that the getup and logo of the Defendants’ is in the case of each business name so similar to their getup and logo as to lead to similar public confusion to the detriment of the Plaintiffs’ between their services and business and those of the first named Defendant, or alternatively, that the Defendants’ getup and logo is not in the case of either business enough to constitute a sufficient distinction between the Defendants’ services and business and those of the Plaintiffs’ so as to prevent the public from being misled to the detriment of the Plaintiffs’.

19. I am further satisfied, particularly having regard to the decisions in Polycell Products Limited -v- O’Carroll and Others , (1959) IJR, 34; and Mitchelstown Co-operative Agricultural Society Limited -v- Golden Vale Food Products Limited , (High Court: 12/12/1985 per Costello J), that the Plaintiffs’ have made out a strong prima facie case that on the balance of probability if customers and potential customers are misled as alleged that the Plaintiffs’ as a reasonably foreseeable consequence of the misrepresentation on the part of the Defendants’ or one of them will suffer in the interval pending the hearing and determination of this action serious permanent injury to or a complete swamping and loss of their reputation for which an award of damages at the trial of the action would be an altogether inadequate compensation to the Plaintiffs’.

20. I am satisfied that the Defendants’ bona fide intend to defend this claim and that their defence as disclosed in the Affidavit of Mr. Con Daly is neither frivolous nor vexatious. If the Court grants the injunctive relief sought by the Plaintiffs’ it is probable that the Defendants’, if they wish seriously to remain in the market as a provider of the relevant services will be constrained at the very earliest possible opportunity to choose, establish and promote a new business name, getup and logo, and to choose and register a new domain name or names. This will undoubtedly result in considerable loss and expense to the Defendants’ which they estimate is likely to be in the region of £10,000. In addition the Defendants’ will probably loose some market advantage vis a vis the Plaintiffs’ and other possible entrants into this particular market niche. They will in all probability loose whatever reputation (if any) which they may have established in the very short period during which they have been using their existing business names and domain names.

21. Notwithstanding the undertaking as to damages which the Plaintiffs’ must give to this Court as a condition of being granted any interlocutory relief, and in this respect the Defendants’ accept at paragraph 8 of the Affidavit of Mr. Con Daly, ” that the Plaintiffs’ have vast resources at their command “, the extent of the loss to the Defendants’ in having to start de novo as soon as possible in a new guise, or in the interval pending the determination of this action continuing but without trading maintaining their existing business names and associated domain names in the hope of being able to continue with those names would if quantifiable, not be such as would be adequately compensated by an award of damages should the Plaintiffs’ not succeed in obtaining a perpetual injunction at the trial of this action. It is averred at paragraph 17 of the Affidavit of Mr. Con Daly as follows:-

“More than any medium, good ideas from new players for the development of the internet can be thwarted easily. In practice if there is delay or a perception of indecisiveness as to name or identity a new competitive business may be stillborn despite the uniqueness of its focus and the quality of its execution”.

22. This is not denied by Mr. Eoin Mac Giolla Ri at paragraph 11 of his Affidavit on behalf of the Plaintiffs’ sworn on the 14th of July 2000, where he considers what was averred at paragraph 17 of the Affidavit of Mr. Con Daly.

23. In the circumstances I am satisfied that damages would not be an adequate remedy for either party in these proceedings and so I must consider whether on the special facts of this particular case the damage suffered by the Plaintiffs’, should the Court decline to make the Order sought, would on the balance of probability be greater than the damage suffered by the Defendants’ should the Court grant the Order sought.

24. The Plaintiffs’ have given clear and to a considerable extent independantly corroberated evidence of a present widespread Trade and reputation enjoyed by them both here and abroad in the name ” Local Ireland ” and its associated domain names as hereinbefore set-out. The first named Defendant while referring to “the goodwill established to date”, has offered no evidence of any kind in support of this claim. The first named Defendant was incorporated only on the 26th June 2000, a week before the “cease and desist letter” and at the date of that letter was still in search of employees. Given this time factor and the paucity of the evidence offered by the first named Defendant as regards trade, investment and reputation, on the balance of probability I feel that I am entitled to proceed upon the basis of the first named Defendant having very little or no present reputation in the names ” Local Ireland – Online ” and ” Locally Irish ” and their associated domain names, such as would be adversely affected by the granting of an interlocutory injunction.

25. Given the evidence, with some independent corroberation, advanced by the Plaintiffs’ for a real and present awareness on the part of and use by the public in this jurisdiction and abroad of the Plaintiffs’ web site, and of the very significant absence of any such evidence on the part of the first named Defendant, it seems to me that the likelyhood of confusion and hence damage can at present and for the foreseeable future only operate to the disadvantage of the Plaintiffs’.

26. The probable likely financial consequence, especially in the sense of investment thrown away, of damage to the Plaintiffs’ actual existing trade and reputation must in my judgment be altogether disproportionate to any similar consequence, (if any) to the first named Defendant.

27. The Plaintiffs’ aver that approximately 3¾ million pounds has been spent in developing their services and in promoting and advertising their business name both here and abroad. Of this sum, £594,000 is claimed to have been expended on advertising alone. In contrast, at paragraph 10 of the Affidavit of Mr. Con Daly it is averred that the first named Defendant, “has invested considerable sums in its business”. No details or figures are given. The only figures mentioned in this Affidavit amount to a sum of approximately £10,000 and relate to money spent and indebtedness occurred, in apparantly equal proportions in changing the business name of the first named Defendant from, ” Local Ireland – Online ” to ” Locally Irish “.

28. In my judgment it is important to note that the Defendants would not be excluded from the market in the relevant services should the Court grant the interloctory relief sought by the Plaintiffs’. They would be perfectly at liberty to continue to offer the relevant services under a new business name and domain name. The period during which the first named Defendant has been using the business name ” Local Ireland – Online ” and even more so the business name ” Locally Irish “, with their associated domain names has been for a period of months only whereas the first named Plaintiff has been using its present business and domain names since at least December 1998. I do not doubt as submitted by the Defendants that the services of professionals and printers in this field are at a premium in the present period of major economic boom, but having regard to the rapidity with which the first named Defendant was able to change its business and domain name in July of this year, I see no reason to doubt that a further such name change could be accomplished with equal facility and dispatch should the Court be disposed to grant the relif sought by the Plaintiffs’ in this Motion and the Defendant be determined to continue in the market as providers of the relevant services.

29. At paragraph 18 of the Affidavit of Mr. Con Daly, the first named Defendant accepts that the Plaintiffs’, “have vast resources at their command”. In these circumstances there can be no doubt as to the value of any undertaking as to damages which the Plaintiffs’ might give to this Court and no doubt as to the ability of the Plaintiffs’ to meet an award of damages in favour of the Defendants on the largest scale which this Court may reasonably

contemplate. By comparison, there is no evidence which would enable the Court to conclude that the Defendants’ or either of them have or has a similar ability.
30. In the circumstances I am driven to the conclusion that the balance of convience clearly lies in granting rather than in refusing the injunctive relief sought by the Plaintiffs’. Subject to an undertaking by the Plaintiffs’ jointly and severally to discharge whatever sum or sums, by way of damages as the Defendants and each of them may be awarded at the trial of this Action should the Court determine that the granting of an injunction was not justified, the Court will make an Order restraining the Defendants and each of them, by themselves their officers, servants or agents or otherwise howsoever from commencing and alternatively or additionally from carrying on business under the name style or title ” Local Ireland – Online Limited ” ” localireland – online.com “, ” Locally Irish Limited” or ” locallyirish.com” or any other name style or title in which the words ” local” and ” Ireland or their cognates appear sequentially in either order: or form posessing, holding,operating, managing or controlling an Internet address or domain name under the name style or title ” localireland – online.com ” or ” locallyirish.com” pending the final determination of this Action or until further Order.

Sweeney v. National University of Ireland Cork t/a Cork University Press

[2000] IEHC 70; [2001] 2 IR 6; [2001] 1 ILRM 310 (9th October, 2000)

JUDGMENT of T.C. Smyth J. delivered the 9th day of October 2000
1. The Plaintiff is the Trustee of the Estate of James Joyce. The Defendant, is a constituent college of the National University of Ireland and trades as Cork University Press. The Defendant is minded to put into the market an anthology entitled “Irish Writing in the Twentieth Century: A Reader” (hereinafter referred to as “the Anthology”). Edited by David Pierce, Department of English, University College of Ripon and York, St. John. The Defendant which is the publisher has a publishing officer, one Sara Wilbourne. The Cork University Press is a non profit making publishing house, publishing non academic texts with charitable status as part of the National University of Ireland, Cork. It was intended that the Anthology should contain extracts from a number of works by James Joyce.

2. The Estate of James Joyce is the owner of the copyright in the works of James Joyce, and in particular, the work known as “Ulysses” by James Joyce, and all drafts of Ulysses. The chain of title which establishes the Plaintiff’s entitlement to sue to protect the works, and in particular the copyright in the works of James Joyce is set out in paragraphs (10) and (11) of the Plaintiffs affidavit sworn on 9th September 2000. The sole beneficiary of the Estate of James Joyce is his grandson Stephen James Joyce. The trustees and beneficiary perceive the role of the Estate to be the guardian of the literary heritage James Joyce entrusted to it. The Estate is sought to preserve and protect the spirit, letter and integrity of his works. The Plaintiff considers he has the responsibility of the literary works of James Joyce vested in the Estate.

3. By letter dated 11th April 2000 Sara Wilbourne wrote to Stephen James Joyce requesting permission for the inclusion of a number of pieces from James Joyce’s works in the Anthology then proposed. The letter indicates the editions which the Defendant then proposed using, and that she would be happy to send Mr. Joyce proofs, if permission was granted. Specifically the letter states:-

“The text is mainly for student use and will be priced at £25 to suit that market, with the option of a hardback edition in the United States. We require world English language rights, and our combined print run will not exceed 10,000 copies.”
(emphasis added)
4. The reasonable inference to be drawn from this letter is that the consent of Mr. Stephen James Joyce was required prior to publication and that the copy right was in the Estate. Mr. Joyce replied by letter dated 22nd April 2000 indicating that permission would be forthcoming on certain conditions and a licence fee of £7,000 Sterling, in respect of which he stated:-

“- It’s take it or leave it,
– We are not prepared to argue or haggle over the amount of this fee”.

5. A further letter from Mr. Joyce dated 12th May was largely to the same effect, but expressly stipulating that, as regards Ulysses, the version of the proposed 1922 original edition to by used. The letter concludes by stating that:-

“If we could agree on sources, that is editions from which extracts and the story are to be reproduced, we will let you know the Estate’s other requirements which will not cause you any problems.”

6. The response to these letters came from Mr. Pierce by letter dated 16th June 2000 enquiring if the fee could be reduced otherwise the number of extracts might have to be cut. There was an unequivocal refusal by Mr. Joyce in a letter of 20th June 2000. The Defendant’s response is a faxed letter of 22nd June 2000 in which Miss Wilbourne states that “the fees you have quoted are extraordinarily high and we will not pay them.” A counter offer was proposed and the letter concludes:-

“If you decide to persist with your original figure we will be not be seeking permission from you to use the extracts.”

7. Mr. Joyce’s response to that letter was of the same date and to say that:-

‘permission is refused to include any James Joyce in this volume unless our financial terms are accepted’.

8. Mr. Joyce followed this up by a letter of the 27th June indicating that the Estate’s fee had now gone up to £7500 sterling in any event because of the actions of third parties in engaging in unauthorised “exploitation of my grandfather and his image”. Mr. Joyce also wrote a letter dated 10th July 2000 reiterating his refusal of permission and specifically drew the attention of the Defendant to the fact that all of James Joyce’s work is covered by copyright throughout the European Union until 2011. Mr. Joyce’s letter to this effect is addressed to both Miss Wilbourne and Mr. Pierce.

9. The Defendant it appears then considered that their aspirations might find realisation by pursuing another route. One Danis Rose a Joycean Scholar, had edited some work of James Joyce and in particular Ulysses, which was published by McMillan Publishing Limited (hereinafter referred to as McMillan) under the Picador imprint, this book is entitled “James Joyce Ulysses A Reader’s Edition” edited by Danis Rose. It was published in 1997. It was and is for some two years or more past or thereabouts freely available in bookstores throughout Ireland. Lilliput Press Limited in Ireland published a text identical to that of McMillan in or about the year 1997. Neither the publication of McMillan or Lilliput Press Limited were proceeded against before publication and Lilliput Press Limited not at all. The Plaintiff says that in the case of the McMillan publication, the book was for sale to the public before they became aware of the publication. Notwithstanding the fact that proceedings concerning both breach of copyright and passing off the works of James Joyce have been taken by the Plaintiff against both McMillan and Danis Rose in England, Danis Rose has given his consent to the Defendant for the use of his edition of Ulysses; and when asked, McMillan effectively informed the Defendant of the dispute between the Joyce Estate and Danis Rose and McMillan but indicated it would not object to the Defendant’s use of the text it had published as expressly edited by Danis Rose. The proceedings in England are not settled but an offer to settle on terms has been disclosed; those proceedings are pending and await hearing.

10. On or about 24th August Mr. Joyce learned as a result of an enquiry by him of David Pierce that he ( Mr. Pierce) had just completed editing the Anthology. On the day following the Plaintiffs Solicitors wrote seeking confirmation that no extracts from the works of James Joyce had been included in the proposed Anthology and that no such exploitation of the works of James Joyce would be made without first obtaining the permission of the Estate. Because the Plaintiff believed that the Anthology was with the printers an urgent response was sought by the Plaintiff’s Solicitors.

11. The response of the Defendant, through its Solicitors was that certain writings were out of copyright, and that copyright was only revived for those works which were in copyright in a European member state as of 1st July 1995, and that certain Joyce works were not the subject to copyright on that date. The letter also stated that ” only excerpts which were not the subject of copyright or from the Readers Edition will be included in the Anthology .” As no unequivocal assurance, such as was sought by the Plaintiffs and his Solicitors letters of 6th and 8th September 2000 was forthcoming, and did not elicit the undertakings sought, proceedings issued on 11th September 2000 and an interim injunction was sought and obtained on that date restraining the Defendant its servants or agents from:

1. Infringing the Plaintiffs copyright in the work known as “Ulysses” by James Joyce or any other work by James Joyce in which the Plaintiff has copyright.
2. From passing off or attempting to pass off or causing, assisting or enabling others to pass off a work not being a work of or authorised by James Joyce or his Estate as and for such a work whether by the use in relation thereto of the name James Joyce or the title of Ulysses or otherwise howsoever.
12. The extracts in the Anthology of the work of James Joyce are confined to extracts from Ulysses and is a discrete section from p 323 to p 346 and there is one reference in the index at p 1344, there may or may not be other references or cross references in the Anthology, which have not been brought to my attention and which time did not permit me to check for myself. It is clearly stated in the Anthology that the extracts are from the Danis Rose edition of Ulysses by James Joyce, both in the text and index. Each excerpt is preceded by a short note of introduction prepared, it would seem, by Mr. David Pierce.

13. The Defendants defence in substance is that it acquired the right to publish certain exerpts from the Danis Rose edition of Ulysses from Danis Rose via his licensee. The Defendant pleads and relies upon Regulation 14(2) of the European Communities (Term of Protection of Copyright) Regulations, 1995 (hereinafter referred to the as the Regulations) and submits that it is not liable to the Plaintiff, which it regards as “the alleged owner of the revived copyright in Ulysses” that it has a complete and bona fide defence to the copyright claim in this action.

14. The Defendant also contends that in any event it is entitled under statute to publish portions of the text of Ulysses insofar as they do not constitute a substantial part of the work. This is a matter of fact and degree that can only be established a full hearing of the action. The Defendant further contends that it is entitled to reproduce portion of the text of Ulysses for the purposes of private study and research, or criticism and review, if the exerpts are accompanied by an acknowledgement of James Joyce’s authorship of the work Ulysses.

15. The foregoing is a very brief résumé of the facts, assertions, opinions and contentions contained in no less than some thirteen Affidavits filed in this suit to date. The omission to record all points of view and the sworn statements that are the Affidavits is not to fail to recognise that there are several matters of fact and points of law that call for resolution upon a full hearing of the action.

16. It is very properly conceded by Mr. Gallagher for the Defendant that there is a serious issue to be tried; but that an injunction ought not be granted for a number of reasons:-

1. Damages are an adequate remedy.
2. That the Defendant’s application for a permit or license to Stephen James Joyce in the first instance is not to be construed as an admission that the Estate was the only source from which a permit could be obtained.
3. That the Plaintiff’s title to sue was open to question.
4. That the Danis Rose licence/permit was a valid subsisting entitlement of copyright independent and separate form any right(s) of the Plaintiff or the Estate of James Joyce.
5. The Defendant had spent some £92,000 in producing the Anthology and had orders of some £104,000 and as the Anthology was aimed at the student market it was imperative to have the book launched and available at the beginning of the academic year.
6. That the balance of convenience favoured the status quo which is that the Anthology is completely printed and the only inhibition to sale is the Interim Injunction of 11th September 2000.

Mr. Gallagher in his very detailed succinct submissions relied on the several matters contained in the Affidavits and in particular the averments in paragraph (38) to (48) in the Affidavit of Sara Wilbourne, sworn in 19th September 2000 under the heading ‘Damage to the Estate’.
7. That the applications for interim and interlocutory relief are vexatious and oppressive in particular having regard to the fact that both McMillan and Lilliput Press Limited have not been pursued over several years since publication of the Danis Rose edition which has been in circulation since 1997.
8. That the real gravamen of the Plaintiff is related to the passing off action and that this has been met by clear and unambiguous statement in the introduction to the extracts in the Anthology and that there can be no confusion that it is the Danis Rose edition of Joyce’s Ulysses that is being used.
17. The Plaintiffs contentions were put very firmly and concisely by Mr. Donal O’Donnell as follows:-

1. Copyright is a legal right which unlike some other legal rights cannot be compulsorily acquired. In this regard reliance placed on the views of Keane J. (as he then was) in Photographic Performance Limited -v- Cody [1994] 2ILRN241 at 247 to the following effect :-
“The right of the creator of a literary, dramatic, musical or artistic work not to have his or her creation stolen or plagiarised is a right of private property within the meaning of Articles 40.3.2° and 43.1 of the Constitution, as is the similar right of a person who has employed his or her technical skills and/or capital in the sound recording of a musical work. As such, they can hardly be abolished in their entirety, although it was doubtless within the competence of the Oireachtas to regulate their exercise in the interests of the common good. In addition and even in the absence of any statutory machinery, it is the duty of the organs of the State, including the Courts, to ensure, as best they may, that these rights are protected from unjust attack and, in the case of injustice done vindicated.”

2. Damages are not an adequate remedy: further in the matter of a passing off action reliance is placed on a dictum of Costello J., in Michelstownn Co-operative Agricultural Society Limited -v- Golden Vale Food Products (unreported 12/12/1985) to the effect that ,
“it is axiomatic that in most passing off actions damages are an inadequate remedy for a successful Plaintiff and I think it is clear that Plaintiffs must suffer some disadvantage which could not be compensated for in damages if an injunction is now refused”.

3. An Injunction on the hearing of the action will be of no real use or effect if publication and sale of the Anthology proceed, for at that stage the right of the Plaintiff will have been breached: the Plaintiff ought not by circumstances be forced to accept damages when it has a right that it is unwilling to relinquish and trade for damages.
4. The Defendant by seeking permission in April 2000 acknowledged the right of the Plaintiff to the copyright in Ulysses by James Joyce.
5. That whatever right, Danis Rose may have, and the Plaintiff denies that he or McMillan have any right, such is a derivative entitlement and does not give legal sanction to the use by the Defendant of the work of James Joyce and that the integrity of the work though largely referable to the language used is not so confined.
6. The terms of SI 158 of 1995, the Regulations, arise form the implementation at national level of Council Directive 93/98 EEC of 29th October 1993 harmonising the term of protection of copyright and certain related rights. Mr. O’Donnell drew particular attention to paragraphs 5, 11, 26 and 27 of the Directive, as well as to Articles 10(1) and (2) and Article 13(1): Paragraph 26 in the preamble provides as follows:-
“(26) Whereas Member States should remain free to adopt provisions on the interpretation adaptation and further execution of contracts on the exploitation of protected works and that other subject matter which were concluded before the extension of the term of protection resulting from this Directive.”
(emphasis added)
7. Section 2 of the Intellectual Property (Miscellaneous Provisions) Act 1998 amends by substitution Section 26 of the Copyright Act 1963 and provides that:-
“26-(1) In any action brought by virtue of this Part of this Act the presumptions set out in subsections (2) to (7) of this section shall apply.
(2) (a) Copyright shall be presumed to subsist in a work unless the contrary is proved.”
18. The proceedings inter alia seek a declaration under Section 8 of the Act of 1963 aforesaid.

8. That the balance of convenience favoured the Plaintiff because arguments about the status quo are those which existed prior to action brought. The Plaintiff contends that the unequivocal refusal by the Plaintiff by letter dated 10th July together with the fax message of 28th July 2000 from McMillan and the letter of 28th August 2000 from the Plaintiffs Solicitors were all more than sufficient warning to desist from the course of action undertaken by the Defendant. The Plaintiff says the Defendant undertook a known risk and if, as seems clear proceeded to increase its commitment of funds it must accept the known possible consequences.
19. The work Ulysses was first published in 1922. James Joyce died on the 13th of January 1941. Copyright in the text of the 1922 edition of Ulysses and all other editions and other works published before James Joyce died expired on 1st January 1992, i.e. 50 years after the end of the year in which he died (S8(4) Copyright Act 1963). With effect from 1st July 1995 all the copyrights which expired were revived by virtue of the European Communities (were revived by virtue of the Regulations which extended copyright protection to the life of the author plus 70 years.

20. Article 14 of the Regulations provides that any person who before the 29th October 1993 undertook the exploitation of the literary work or made preparations of a substantial nature to exploit such a work at a time when such work was not protected ( shall not be liable ) to the owner of the copyright as revived.

21. Only in a full hearing of the action can the following points be properly determined:-

1. Did Danis Rose between 1st January 1992 when Ulysses was out of copyright and before 29th October 1993 make preparations of a substantial nature (this must be a matter of fact and degree). Evidence that of Danis Rose did make preparations of a substantial nature (the Affidavit of Danis Rose sworn on 19/9/2000, in paragraph (3) and in paragraph (7) of Miss Wilbourne’s Affidavit of 19/9/2000 are prima facie evidence which may or may not be bore out by the application of objective criteria upon a hearing.
2. Does Article 14(1) confer an express independent right capable of lawful assignment or does it merely provide immunity from suit to the person, who in the period unprotected by the original law of copyright, has:-
(i) Undertook the exploitation of a literary work, or
(ii) Made preparations of a substantial nature to exploit a literary work.
3. Is the revived copyright a statutory graft upon the original and if so has a precedence in law over whatever right or entitlement that Article 14(1) confers.
4. Is the consent of Danis Rose in the absence of objection by McMillan a right acquired under 14(1) and if so did it lie with Danis Rose or McMillan to assign such right outside the protected period.
22. These are only some of the many issues that require determination on full hearing.

23. The principles upon which injunctive relief can be granted were not disputed or that there existed a fair question to be tried. Both parties relied on and quoted from the Judgment of Laffoy J. in Symonds Cider & English Wine Co. Ltd. -v- Showerings (Ireland) Ltd. [1997] 1ILRN 481.

24. It seems to me that the governing principle is to first consider if the Plaintiff were to succeed in his claim for a permanent injunction at the trial whether an award of damages, for the loss he would have sustained before the trial as a result of the continuing acts of the Defendant, would be adequate compensation.

25. The nature of copyright is such that while the owner may voluntarily permit licence of consent to the use in whole or part of a protected work (for a fee or otherwise) it is a right that can not be wrested from the owner by a person even tendering the fee in full. The terms and conditions, if not agreed upon, cannot be imposed by the applicant proceeding in the face of objection and seeking to publish in whole or part a protected work in the hope or knowledge that it can pay a sum of money. The Courts cannot by failing to recognise and uphold the right condemn – most particularly at interlocutory stage when so many facts are in dispute, and points of law require determination – the owner of the right to be content until the hearing of the action to permit the breach of a right in respect of which there is a statutory presumption.

26. For the Defendant it was submitted that if an interlocutory injunction is granted it will most seriously frustrate and damage the enterprise undertaken. In my judgment the granting of an interlocutory injunction could not determine the final outcome of the whole proceedings. It may very well cause loss and damage to the Defendant. Both parties expressed to me their willingness and ability to meet a claim in damages by their respective undertakings.

27. The Defendant queried the nature and extent of the loss of the Plaintiff. This is stated in the original grounding Affidavit of the Plaintiff thus:-

“…the Estate seeks to protect the integrity of the reputation of James Joyce as a major literary figure, and to protect the spirit, letter and integrity of his works. I say and believe that this matter is not simply about the amount of a licence fee for the use of a given set of extracts; it is more importantly about the source of the material for the extracts and the input the Estate would have in relation to the treatment of those sources. The Estate would not licence the use of extracts from the Danis Rose edition in any circumstances, and regardless of any fee proffered, because it takes such fundamental issue with the manner in which James Joyce’s great work Ulysses has been violated in that edition.”

28. In my opinion this alleged loss is not quantifiable or capable of being compensated by an award of damages. In coming to this view I am not unmindful of the reputation of the Defendant or its primary educational role. The fact that the book is intended not to make a loss and be profitable does not make it primary or sole purpose commercial. However in all the circumstances of the case the Plaintiff is entitled to succeed and have the relief sought by way of injunction and I order accordingly.

 

Local Ireland Ltd v. Local Ireland-Online Ltd. [2000] IEHC 67; [2000] 4 IR 567 (2nd October, 2000)
THE HIGH COURT
No. 2000 7854P
BETWEEN
LOCAL IRELAND LIMITED AND NUA LIMITED
PLAINTIFFS
AND
LOCAL IRELAND-ONLINE LIMITED AND
CON DALY TRADING AS DALY FINANCIAL
DEFENDANTS
Judgment of Mr Justice Herbert delivered on the 2nd day of October 2000
1. The second named Plaintiff in these proceedings, Nua Limited, which was incorporated on the 20th of September 1995 developed in or about September 1996 an Internet Information Classification System which would provide users of the internet requiring information which related to Ireland with a simple and charge free means of accessing that information without having to engage in random searches through an ever expanding volume of information on the internet relating to Ireland. For this service the Second named Plaintiff devised the business name, “Localireland”, alternatively “Local ireland”, sometimes written as a single word and sometimes as two separate words. In either case by way of a distinctive logo the initial letter, “L” is presented in upper case with a swirl device like a crook or concentric crescents with one pair of the adjacent horns joined by a transverse line integrated into the right upper quarter of the vertical stroke of the letter and with the horizontal stroke of the letter presented as an equilateral triangle. The other eleven letters are always presented in lower case. The first five letters, including the initial “L” are always presented in bold type and where colour printing is used are always in a darker shade of colour.

2. In February 1997 a serious of electronic addresses for this system, generally known as, “domain names” were registered by the second named Plaintiff with an international control organisation known as, “Network Solutions” . These domain names are “local.ie”; “localireland.com” ; “local-ireland.com” ; “local-ireland.org”, and “local-ireland.net” .

3. The first named Plaintiff, Local Ireland Limited was incorporated on the 24th November 1998, initially under the name “Chingola Limited”, which was changed on the 11th December 1998 to its present name as a step in a joint venture business arrangement with Telecom Eireann now as known as Eircom plc. By an Intellectual Property License Agreement, dated 4th December 1998, the second named Plaintiff granted to the first named Plaintiff a non exclusive, non transferable licence in respect of its intellectual property rights in the reputation and goodwill in the name, get up and logo, “ Localireland” alternatively “Local-ireland”, and in the domain names, “Localireland.com” and “local.ie”. On the 23rd June 2000 the first named Plaintiff became aware, as a result of a reply received by them to a newspaper advertisement, that an entity describing itself as, “Local Ireland-Online” alternatively “local ireland-online” was seeking staff. Contact was established with this entity which proved to be the first named Defendant a company which was incorporated on the 20th of June 2000. On behalf of the first named Defendant it was confirmed that it was trading and proposed to continue to trade under the business name, “Local Ireland-Online”, offering a subscription business listing service through which local businesses would become accessible on the internet through the central web site of the first named Defendant. The Plaintiffs subsequently ascertained that a domain name, “localireland-online.com” had been registered by the second named Defendant on his own behalf on the 30th June 2000. It was subsequently confirmed that the first named Defendant was using and intended to continue to use this domain name.

A “cease and desist” letter, dated 27th June 2000 was sent to the first named Defendant and was acknowledged by a letter dated the 3rd of July 2000 from a firm of solicitors acting on behalf of both the Defendants. A similar letter dated the 4th July 2000 was sent to the second named Defendant. The Defendants maintain a legal right to use and unequivocally indicated an intention to continue to use the business name, “Local Ireland-Online” and the domain name, “localireland-online.com”. The first named Defendant presented this business name as three separate words, with the middle word in bold type and separated by a hyphen from the final word. Sometimes the initial letter of each word was presented in upper case but otherwise each word was presented in lower case.
4. On the 6th of July 2000 the Plaintiffs issued a plenary summons and also a notice of motion. The notice of motion claimed an interlocutory injunction and was grounded on the affidavit of Mr Gerry McGovern, Chief Executive Officer of each of the Plaintiffs, sworn on the 6th of July 2000. By an Order of this Court, (Mr Justice McCracken) made ex parte on the 6th of July 2000 the notice of motion was made returnable for the 10th of July 2000. The plenary summons, the notice of motion, the grounding affidavit and exhibits were served on each of the Defendants on the 7th of July 2000. An appearance was entered on behalf of both the Defendants on the 10th of July 2000. A Replying Affidavit was sworn on the 13th July 2000 by Mr Con Daly the second named Defendant in these proceedings and a director of the first named Defendant, on behalf of the first named Defendant. A further affidavit on behalf of the Plaintiffs was sworn on the 14th July 2000 by Mr Eoin MacGiolla Ri internal legal advisor of the first named Plaintiff.

5. As appears at paragraphs 12 and 17 of the affidavit of Mr Con Daly, the Defendants decided after the commencement of these proceedings to change the business name, “ Local Ireland – Online ” to, “ Locally Irish ” and in future to use only this name, “Locally Irish ”. This name is presented as two separate words with the second word always presented in bold type and sometimes with the initial letter in each word presented in upper case but always with the remaining letters in each word presented in lower case. No shading or colour differentiation is made between the two words. This get-up is accompanied by a logo consisting of two concentric crescents differentiated by colour or shading with a dark arrow like device entering between the horns of the inner crescent and the entire casting a dark lateral shadow and resting upon a white partial mirror image of itself. Sometimes the crescents face left with the arrow shaft in the two o’clock position and sometimes right with the arrow shaft in the ten o’clock position and are presented as standing vertically on a surface, colour or shading differentiated and either clear or with a variety of art work including a map of Ireland showing county outlines and names.

6. In addition a new domain name, “ locallyirish.com”, “with all international variants”, has been registered with Network Solutions. Why, and as regards the domain name, when, these changes were made is a matter of a very considerable dispute between the parties which I cannot resolve on this application and in respect of which I therefore draw no inferences whatsoever. For the purposes of this application it is sufficient to record that the Plaintiffs contend that notwithstanding the differences in get-up and logo which they claim are in any event insufficient, the use by the Defendants of the business name, “ LocallyIrish” and the domain name, “ locallyirish.com”, or the business name, “Local Ireland-Online” and the domain name “ localireland-online.com”, amounts to parasitic and imitative trading by the Defendants or one or other of them, is a material infringement of the Plaintiffs’ property rights, and constitutes the tort of, “ passing off ”. In the Affidavit of Mr. Gerry McGovern sworn in these proceedings on behalf of the Plaintiffs’ on the 6th of July 2000 it is asserted that since December 1998 the first named Plaintiff has built up and operated an Internet Information Service, now covering the whole island of Ireland, featuring some 1700 towns and villages and with 3000 subject classifications. It is stated on oath that this website is the second most busy website in the State with approximately 205,000 separate visits to the site per month. Corroboration of this statistic is provided in the form of a User Audit Certificate for the month of March 2000, furnished by A.B.C. Electronic Media Audits Limited, of Hertfordshire, England. The first named Plaintiff estimates that approximately 23 per centum of all visits to its website are by residents of this Jurisdiction.

7. The basis for this estimate is not stated, however, it is clear from the website extracts exhibited in the Affidavit of Mr. Gerry McGovern that a considerable part of the information featured on the website would be of immediate interest to persons in this Jurisdiction, for example, sports news, business news, share prices, business and service directories, mortgage stores, theatre arts and entertainment guides, news and weather. At paragraph 6 of his Affidavit sworn in these proceedings on behalf of the first named Defendant on the 13th of July 2000, Mr. Con Daly submits that the emphasis of the plaintiffs website is on geneological services and a diary of local events and festivals. While such services and information are indeed provided by the plaintiffs website it is clear from the Affidavit evidence that such information forms but a small part of the overall information provided on the Plaintiffs website.

8. It is stated upon oath in the Affidavit of Mr. Gerry McGovern that since September 1998 the first named Plaintiff has spent in the region of £594,000.00 on advertising its business name and services in Ireland and abroad. Corroborative evidence for such expenditure abroad is provided in the form of a Preliminary Market Report, covering advertising and promotion of the Plaintiffs business name and services in the United States of America on and about the 17th March 2000. In the State this advertising is stated to have been in the print media on television and in outdoor advertisements. A further sum of £200,000 is stated to have been committed to be spent in launching the Plaintiffs’ website accommodation service and the Court was informed by Counsel for the plaintiffs that some of this £200,000 has already been spent.

9. It is further averred that since its incorporation the first named Plaintiff has invested over £3 million in employing persons to devise software, to gather and present information and to negotiate and conclude agreements with Local Partners or Franchisees. It is stated that the purpose of these agreements is to enable such Local Partners or Franchisees to establish their own web presence as part of the plaintiffs website and to offer advertising and subscription based business listings through which local businesses can obtain an internet presence via the plaintiffs website. It is sworn that to date two such agreements have been concluded and are in operation while a further eight such agreements are at an advanced stage of negotiation. In addition the plaintiffs say that they actively seeking another twenty such Local Partners or Franchisees. The Plaintiffs claim that having regard to this extensive use made of the website of the first named Plaintiff and to the substantial marketing advertising and promotion of the business name “ Local Ireland” or alternatively “ Localireland”, they have established a substantial and exclusive reputation in this business name its get-up and its related logo and that the business and services conducted and sold by them under this business name and associated domain names are associated in the minds of the purchasing public exclusively with the Plaintiffs or one of them.

10. The Plaintiffs claim may be summarised as follows: the similarity of the business names and associated domain names, the similarity of the get-up, the similarity of the logo of the first named Defendant and the first named Plaintiff, and the similarity of the services offered, that is, “a subscription listing of commercial undertakings accessible through the central website of the provider ”, would, as a reasonable probability, result in customers and prospective customers of the first named Plaintiff being misled into thinking that the services offered by the Defendants or one of them was as a Branch or Licensee of the first named Plaintiff or was otherwise linked with or connected to the first named Plaintiff. The Plaintiffs having pointed to one identified instance of confusion go on to say that they truly believe that further confusion of the business of the Defendants with their business is in the above circumstances inevitable. They claim that the result of such confusion would be to cause damage to their business for which an award of damages would be an insufficient remedy. Such damage is claimed under four headings which I venture to summarise as follows:-

That they would lose and the Defendants as business rivals would to a definite but unquantifiable extent gain the benefit of their very substantial expenditure on advertising promotion and research as already detailed ;
That their inability to control the quality of the service provided by the Defendants, which customers and potential customers were misled into believing was part of or associated with their business, could discourage customers dissatisfied with the quality of the Defendants’ services from using the Plaintiffs business subscription listing or other services in the future;
That the activities of the Defendants if permitted to continue would in all probability result in similar activity on the part of others so that the Plaintiffs would entirely loose the benefit of their reputation or that reputation would become so swamped and debased that the loss to them would be incalculable in monetary terms, and,
That their application for the registration of a European Union Trademark in the name, “Local Ireland” might not be accepted as a result of the activities of the Defendants which included a similar application in respect of the name, “Local Ireland-Online”.
11. The Defendants case, as set out in the replying Affidavit of Mr. Con Daly, and here again I am summarising, is that there is no misrepresentation involved in their use of the business name, “Local Ireland-Online ”, or in the business name, “ Locally Irish ”, particularly having regard to their getup and logo. In his Affidavit on behalf of the first named Defendants Mr. Con Daly avers that these business names, their getup and logo, their associated domain name and the services provided by the first named Defendant are so clearly distinct from the business name, getup and logo of the Plaintiffs, their associated domain names and the services provided by them, that persons are not likely to be misled into believing that the services of the first named Defendant are the services provided by the first named Plaintiff or that the first named Defendant is a Branch or Licensee of the first named Plaintiff or is in any way associated with it.

12. Counsel for the Defendants argued that the Plaintiffs, having adopted a business name containing words in common use are not entitled to an unfair monopoly in those words and that accordingly the Court should accept the differences in the business names getup and logos, even if the Court should consider them to be small, which the Defendants submit which they are not, as none the less sufficient to distinguish the business of the Defendants from that of the Plaintiffs. This is particularly so, Counsel argued, having regard to what the Defendants alleged to be differences in the services provided and what the Defendants submit are different areas from which the businesses are carried on. Counsel for the Defendants referred to the cases of, Reddaway and Company -v- Banham , (1896) A.C. 199, ( H of L ); Office Cleaning Services Limited -v- Westminster Office Cleaning Association , (1946) 1. AER 320, and B.S. -v- Irish Auto Trader , (1995) 2.ILRM. 252, in support of this argument.

13. Despite the suggestion by Counsel for both sides that the outcome of this application for interlocutory relief is likely to determine the dispute there was no agreement to treat the hearing of this Motion as the trial of the Action. In such circumstances, having regard to the decision of the Supreme Court in the Campus Oil Limited -v- The Minister for Industry and Energy , (2), (1983) I.R.88, I am not entitled at this juncture to inquire into the merits of the case or to consider the probabilities of success of any party at the trial of the Action. Provided that the Plaintiffs, upon whom the onus of proof lies, have shown to the satisfaction of this Court, that there is a fair bona fide question to be tried as between them and the Defendants and that if they are correct in this contention that the continuance of the Defendants activities until the trial and determination of the Action is likely to cause substantial damage to them for which an award of damages at the trial would not be adequate compensation, I am obliged, as the law now stands, to determine this Application solely on the balance of convenience, that is on the relevant extent of the damage to one or other party if the injunction is or is not granted.

14. It seems to me somewhat regrettable that in the present case where most if not all of the relevant facts appear to be before the Court on Affidavit, that the parties by agreeing to treat the hearing of this Motion as the trial of this Action, “did not use the interlocutory injunction as a simple quick and relatively and cheap way of asking the Court who is right”. (See, Kerly’s , Law of Trade Marks and Trade Names, (12th Edition: (1986), page 322 note 84).

15. I am satisfied that the Plaintiffs have raised so far as this may be done on Affidavit, a strong prima facie case that as regards the business name, “ Local Ireland ”, and its associated domain names that there already exists in this jurisdiction as well as abroad a large body of the public which in the words Barron, J., in the case of Muckross Park Hotel Limited -v- Randles and Others , (High Court: 10/11/1992, unreported judgment available), “ know it and what it stands for ”, namely the Internet Information Service of the Plaintiffs’. I am also satisfied that the Plaintiffs’ have made out a strong prima facie case that they have in this jurisdiction as well as abroad a very valuable reputation in the business name, “ Localireland” or alternatively, “ Local Ireland ”, and its associated domain names.

16. I am satisfied that the Plaintiffs have made out a bona fide case to be tried that the use by the Defendants or either of them of the business name, “ Local Ireland-Online ”, and its associated domain name, “ localireland.com”, which takes over and incorporates the name of the first named Plaintiff as a whole, would result in a very high probability of deception as amounting to, “ a misrepresentation by the Defendants to the public (whether or not intentional) leading or likely to lead the public to believe that the services offered by (them) are the services of the Plaintiff(s)”, ( See, Reckitt and Coleman Products Limited -v- Borden , (1990) 1 AER873 at 880), or that the Defendants in providing such services are in some way associated with the Plaintiffs’ business, for example as a Branch or Licensee of the Plaintiffs’.

17. I am further satisfied that the Plaintiffs’ have made out a fair bona fide case to be tried that the use by the Defendants’ or either of them of the business name, ” Locally Irish “, and its associated domain name, ” locallyirish.com”, are so close to the business name and domain name of the first named Plaintiff that no sufficient or real distinction could reasonably be said to exist between them, particularly having regard to the similarity of the relevant service, that is, ” the subscription listing of commercial undertakings accessible through the central web of the provider “, carried on by the first named Plaintiff and the first named Defendant and that as a matter of reasonable probability the public are likely to be similarly misled. I do not consider the fact that the Plaintiffs’ also provide other services under the same business name and associated the domain name lessens the force to their argument.

18. In the case of the business name, ” Locally Irish “, and the business name, ” Local Ireland-Online “, and their associated domain names, I am satisfied that the Plaintiffs’ have established a fair bona fide case to be tried that the getup and logo of the Defendants’ is in the case of each business name so similar to their getup and logo as to lead to similar public confusion to the detriment of the Plaintiffs’ between their services and business and those of the first named Defendant, or alternatively, that the Defendants’ getup and logo is not in the case of either business enough to constitute a sufficient distinction between the Defendants’ services and business and those of the Plaintiffs’ so as to prevent the public from being misled to the detriment of the Plaintiffs’.

19. I am further satisfied, particularly having regard to the decisions in Polycell Products Limited -v- O’Carroll and Others , (1959) IJR, 34; and Mitchelstown Co-operative Agricultural Society Limited -v- Golden Vale Food Products Limited , (High Court: 12/12/1985 per Costello J), that the Plaintiffs’ have made out a strong prima facie case that on the balance of probability if customers and potential customers are misled as alleged that the Plaintiffs’ as a reasonably foreseeable consequence of the misrepresentation on the part of the Defendants’ or one of them will suffer in the interval pending the hearing and determination of this action serious permanent injury to or a complete swamping and loss of their reputation for which an award of damages at the trial of the action would be an altogether inadequate compensation to the Plaintiffs’.

20. I am satisfied that the Defendants’ bona fide intend to defend this claim and that their defence as disclosed in the Affidavit of Mr. Con Daly is neither frivolous nor vexatious. If the Court grants the injunctive relief sought by the Plaintiffs’ it is probable that the Defendants’, if they wish seriously to remain in the market as a provider of the relevant services will be constrained at the very earliest possible opportunity to choose, establish and promote a new business name, getup and logo, and to choose and register a new domain name or names. This will undoubtedly result in considerable loss and expense to the Defendants’ which they estimate is likely to be in the region of £10,000. In addition the Defendants’ will probably loose some market advantage vis a vis the Plaintiffs’ and other possible entrants into this particular market niche. They will in all probability loose whatever reputation (if any) which they may have established in the very short period during which they have been using their existing business names and domain names.

21. Notwithstanding the undertaking as to damages which the Plaintiffs’ must give to this Court as a condition of being granted any interlocutory relief, and in this respect the Defendants’ accept at paragraph 8 of the Affidavit of Mr. Con Daly, ” that the Plaintiffs’ have vast resources at their command “, the extent of the loss to the Defendants’ in having to start de novo as soon as possible in a new guise, or in the interval pending the determination of this action continuing but without trading maintaining their existing business names and associated domain names in the hope of being able to continue with those names would if quantifiable, not be such as would be adequately compensated by an award of damages should the Plaintiffs’ not succeed in obtaining a perpetual injunction at the trial of this action. It is averred at paragraph 17 of the Affidavit of Mr. Con Daly as follows:-

“More than any medium, good ideas from new players for the development of the internet can be thwarted easily. In practice if there is delay or a perception of indecisiveness as to name or identity a new competitive business may be stillborn despite the uniqueness of its focus and the quality of its execution”.

22. This is not denied by Mr. Eoin Mac Giolla Ri at paragraph 11 of his Affidavit on behalf of the Plaintiffs’ sworn on the 14th of July 2000, where he considers what was averred at paragraph 17 of the Affidavit of Mr. Con Daly.

23. In the circumstances I am satisfied that damages would not be an adequate remedy for either party in these proceedings and so I must consider whether on the special facts of this particular case the damage suffered by the Plaintiffs’, should the Court decline to make the Order sought, would on the balance of probability be greater than the damage suffered by the Defendants’ should the Court grant the Order sought.

24. The Plaintiffs’ have given clear and to a considerable extent independantly corroberated evidence of a present widespread Trade and reputation enjoyed by them both here and abroad in the name ” Local Ireland ” and its associated domain names as hereinbefore set-out. The first named Defendant while referring to “the goodwill established to date”, has offered no evidence of any kind in support of this claim. The first named Defendant was incorporated only on the 26th June 2000, a week before the “cease and desist letter” and at the date of that letter was still in search of employees. Given this time factor and the paucity of the evidence offered by the first named Defendant as regards trade, investment and reputation, on the balance of probability I feel that I am entitled to proceed upon the basis of the first named Defendant having very little or no present reputation in the names ” Local Ireland – Online ” and ” Locally Irish ” and their associated domain names, such as would be adversely affected by the granting of an interlocutory injunction.

25. Given the evidence, with some independent corroberation, advanced by the Plaintiffs’ for a real and present awareness on the part of and use by the public in this jurisdiction and abroad of the Plaintiffs’ web site, and of the very significant absence of any such evidence on the part of the first named Defendant, it seems to me that the likelyhood of confusion and hence damage can at present and for the foreseeable future only operate to the disadvantage of the Plaintiffs’.

26. The probable likely financial consequence, especially in the sense of investment thrown away, of damage to the Plaintiffs’ actual existing trade and reputation must in my judgment be altogether disproportionate to any similar consequence, (if any) to the first named Defendant.

27. The Plaintiffs’ aver that approximately 3¾ million pounds has been spent in developing their services and in promoting and advertising their business name both here and abroad. Of this sum, £594,000 is claimed to have been expended on advertising alone. In contrast, at paragraph 10 of the Affidavit of Mr. Con Daly it is averred that the first named Defendant, “has invested considerable sums in its business”. No details or figures are given. The only figures mentioned in this Affidavit amount to a sum of approximately £10,000 and relate to money spent and indebtedness occurred, in apparantly equal proportions in changing the business name of the first named Defendant from, ” Local Ireland – Online ” to ” Locally Irish “.

28. In my judgment it is important to note that the Defendants would not be excluded from the market in the relevant services should the Court grant the interloctory relief sought by the Plaintiffs’. They would be perfectly at liberty to continue to offer the relevant services under a new business name and domain name. The period during which the first named Defendant has been using the business name ” Local Ireland – Online ” and even more so the business name ” Locally Irish “, with their associated domain names has been for a period of months only whereas the first named Plaintiff has been using its present business and domain names since at least December 1998. I do not doubt as submitted by the Defendants that the services of professionals and printers in this field are at a premium in the present period of major economic boom, but having regard to the rapidity with which the first named Defendant was able to change its business and domain name in July of this year, I see no reason to doubt that a further such name change could be accomplished with equal facility and dispatch should the Court be disposed to grant the relif sought by the Plaintiffs’ in this Motion and the Defendant be determined to continue in the market as providers of the relevant services.

29. At paragraph 18 of the Affidavit of Mr. Con Daly, the first named Defendant accepts that the Plaintiffs’, “have vast resources at their command”. In these circumstances there can be no doubt as to the value of any undertaking as to damages which the Plaintiffs’ might give to this Court and no doubt as to the ability of the Plaintiffs’ to meet an award of damages in favour of the Defendants on the largest scale which this Court may reasonably

contemplate. By comparison, there is no evidence which would enable the Court to conclude that the Defendants’ or either of them have or has a similar ability.
30. In the circumstances I am driven to the conclusion that the balance of convience clearly lies in granting rather than in refusing the injunctive relief sought by the Plaintiffs’. Subject to an undertaking by the Plaintiffs’ jointly and severally to discharge whatever sum or sums, by way of damages as the Defendants and each of them may be awarded at the trial of this Action should the Court determine that the granting of an injunction was not justified, the Court will make an Order restraining the Defendants and each of them, by themselves their officers, servants or agents or otherwise howsoever from commencing and alternatively or additionally from carrying on business under the name style or title ” Local Ireland – Online Limited ” ” localireland – online.com “, ” Locally Irish Limited” or ” locallyirish.com” or any other name style or title in which the words ” local” and ” Ireland or their cognates appear sequentially in either order: or form posessing, holding,operating, managing or controlling an Internet address or domain name under the name style or title ” localireland – online.com ” or ” locallyirish.com” pending the final determination of this Action or until further Order.