Associated Newspapers Ltd. & Anor v Express Newspapers

Passing off depends on the threatened conduct in its market context. A shared reputation in a mark does not prevent protection where the mark identifies a particular trade source and the defendant’s use is likely to cause deception or false association. Damage need not involve direct substitution of goods; loss of control over the claimant’s business reputation may suffice. For trade marks, a specification limited to newspapers “for sale” does not cover free newspapers for the purposes of identical-goods infringement, although free newspapers may be similar goods for section 10(2). Likelihood of confusion is assessed globally. Evening Mail infringed the relevant registrations, but London Evening Mail did not infringe the Daily Mail or The Mail on Sunday registrations.

Associated Newspapers, proprietor of the Daily Mail, The Mail on Sunday, the Evening Standard and Metro, brought proceedings against Express Newspapers concerning threatened titles for a free London evening newspaper: The Mail, Evening Mail and London Evening Mail.

The claims alleged passing off and infringement of three registered marks: The Mail, Daily Mail and The Mail on Sunday. Express Newspapers disputed reputation, misrepresentation, damage and infringement, and challenged the validity of the The Mail registration. The central issues were whether the threatened use was sufficiently clear to support quia timet relief, whether it was likely to cause confusion or false association, and the extent to which the proposed titles infringed the registrations.

1. Passing off. The threatened use was sufficiently clear to determine liability. The classic requirements identified in Reckitt & Colman v Borden—goodwill or reputation, misrepresentation, and damage or a real likelihood of damage—were satisfied in the London market. The claimant had protectable goodwill in The Mail, Daily Mail and The Mail on Sunday. A reputation need not be exclusive. The existence of other newspapers containing “mail” did not deprive the claimant of protection, although market density may affect the assessment of misrepresentation.
2. The relevant market was London and the South East, where the claimant’s reputation was particularly strong. The differences between a free evening local newspaper and a national paid newspaper did not prevent consumers from believing that the new title came from the same stable. The likely abbreviation of Evening Mail and London Evening Mail to The Mail materially increased that risk.
3. Damage was established through the risk of false association and loss of control over the claimant’s newspaper personality and reputation. Direct substitution or loss of advertising revenue was unnecessary. The passing-off claim therefore succeeded.
4. Validity. The attack on registration No. 1299436 failed. “Mail” and “The Mail” were not descriptive of newspapers and had trade mark significance. The court found it unnecessary to resolve fully the principle stated in Nestle v Unilever concerning uniqueness. Use of The Mail on Sunday constituted genuine use, and the existing specification, “Newspapers for sale in England and Wales only”, was fair.
5. Infringement. Free newspapers were not identical goods to newspapers “for sale”, so section 10(1) was not infringed. They were, however, similar goods for section 10(2). Use of The Mail infringed all three registrations. Evening Mail infringed the Daily Mail and The Mail on Sunday registrations because it could be understood as an evening version of those newspapers. London Evening Mail did not infringe those two registrations because “London” and “Evening” sufficiently distinguished the title when assessed globally.
6. The passing-off claim and most of the infringement claim succeeded. The validity challenge failed. Any injunction had to be confined carefully to the London and South East conduct established by the evidence.