Future Publishing Ltd v The Edge Interactive Media Inc & Ors

Copyright subsists in a logo where its design reflects more than negligible effort or relevant skill. Deliberate and continuing breaches of contractual restrictions protecting goodwill may be fundamental where they deprive the innocent party of a substantial contractual benefit and cause serious reputational harm. Persistent repudiatory breaches may be accepted by termination despite earlier attempts to obtain performance. Passing off may arise from misleading statements and confusing use of a mark. Genuine trade mark use requires evidence capable of preserving or creating market share.

The claimant publisher used the name and logo EDGE for its computer-gaming magazine. The defendants, controlled by Dr Langdell, used similar logos and made statements suggesting an association between their businesses and the claimant’s magazine.

The claimant alleged breach of contract, passing off, copyright infringement and non-use of registered trade marks. The central issues were originality, contractual repudiation, confusion and misleading representations, and genuine use of the marks in the United Kingdom.

The claimant succeeded on all claims pursued at trial.

1. The EDGE logo was artistically original because its stretched font was combined with a distinctive slash and projection. The defendants’ versions were copies. UK sales of merchandise bearing the logo engaged section 16(1)(b) of the Copyright, Designs and Patents Act 1988, and an injunction was justified.
2. The defendants’ logo use and statements were confusing and breached the concurrent trading agreement and deed. The obligations protected the claimant’s goodwill and were critically important continuing obligations. The deliberate, continuing breaches, intended confusion and resulting reputational damage constituted fundamental breaches. The claimant validly terminated the agreement, since the repudiation continued.
3. The defendants’ statements represented an association with the claimant which did not exist. Literal truth of some statements did not prevent them being misleading. Damage could be inferred where goodwill was used and eroded.
4. Under sections 46(1)(b) and 100 of the Trade Marks Act 1994, the defendants failed to prove genuine UK use. Assertions, uncorroborated sales figures, websites and trap purchases did not establish use capable of preserving or creating market share.