The London Times has argued before the Commercial Court it is legally entitled to use the words "Times" and "Irish Edition" in promoting a new digital Irish edition of the UK newspaper.
Times Newspaper Ltd (TNL), publisher of the Times, denied the use of the words "The Times Irish Edition" ran the risk of creating confusion with The Irish Times. The UK publisher also argued the Irish newspaper had no arguable case for infringement of its trademarks.
The reason the Times wanted to use the words "Irish edition" was because it wanted to tell potential customers what its product was, Brian Murray SC, for TNL, said. It was necessary for consumers to understand this was a newspaper dedicated to the Irish market and focused on Irish news, he said.
The Times's new product was subscription-only and it could not be said any customer could go through the subscription process in the mistaken belief they were subscribing to The Irish Times, he argued.
Passing off
The Irish Times's legal proceedings were launched to cause maximum damage to the defendant's launch and there was no arguable case
that his client was engaged in “passing off”, Mr Murray argued.
While The Irish Times was invoking its goodwill, it had not specified what element of its goodwill would be damaged by a newspaper called the Times selling Irish news and calling itself an Irish edition, he argued.
Mr Murray was making submissions opposing an application by The Irish Times Ltd (TITL) for injunctions, pending the outcome of a full hearing, arising from the planned launch of the digital publication, to be sold as part of a subscription package with the Sunday Times.
Among the injunctions sought are orders restraining TNL promoting the digital publication using the words "The Times Irish Edition" or any other title confusingly similar to The Irish Times.
Earlier, Jonathan Newman SC, for TITL, said The Irish Times was entitled to protect its brand among everybody who knew it, not just those who now bought it. If his client was wrongly seen as in alliance with the Sunday Times or the Times, that affected its brand.
Masthead revisions
Mr Newman said his side had received an open letter from the defendant's solicitors and welcomed proposals of any nature as both companies had to co-exist in the market. In that letter it was indicated TNL was prepared to make certain revisions to the masthead of the digital edition and would replace the words Irish edition with ROI (Republic of Ireland) edition. It was also proposed app stores would say Times and Sunday Times ROI edition.
Mr Newman said TITL’s complaint “goes a lot further” than the masthead and centred on how the planned publication would be referred to in the period up to its publication.
Mr Justice John Hedigan remarked there was “no such thing as the Republic of Ireland” as the country’s name was Ireland or Éire.
Mr Murray said that while the marketing team did not see ROI as an ideal solution at all, it could be a solution pending the full action.
The hearing continues.
