409

[1957.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [No. 17

Associated Rediijusion, Ld. v. Scottish Television, Ld., and Another. Downloaded from https://academic.oup.com/rpc/article/74/17/409/1661106 by guest on 30 September 2021

IN THE HIGH COURT OF JUSTICE-CHANCERY DIVISION.

Before MR. JUSTICE SALMON.

7th and 8th August, 1957.

ASSOCIATED REDIFFUSION, LD. v. ScOTTISH TELEVISION, LD., AND ANOTHER.

5 Trade Mark-" TV Times" registered in Part B-Motion to restrain use of titles "Scottish TV Times" or "Scottish Television Times "-Interlocutory iniunction granted. Trade Marks Act, 1938, Sees. 4, 9. A.R. Ld., publishers of the "TV Times" giving programmes of the 10 "Independent Television Authority", had registered" TV Times" as a Trade Mark in Part B of the Register. The" TV Times" had a circulation of 2,000,000 weekly in England, but a very small circulation in Scotland, as few places there could receive television. Arrangements having been made for television in Scotland, the Defendants 15 proposed to publish a magazine giving Scottish programmes under the title "Scottish TV Times" or "Scottish Television Times". The Plaintiffs brought action to restrain the use of either title and moved for an interim injunction. Held by Salmon, J., that an injunction should be granted restraining the use by the Defendants of any title of which "TV Times" or "

No. 17] REPORTS OF PATENT, DESIGN, AND TRAI)E MARK CASES [1957.]

Associated Rediffusion, Ld. v. Scottish Television, Ld., and Another.

Salmon, J.-The Plaintiffs are programme contractors to the Independent Television Authority and they publish a weekly magazine called "TV Times ". This magazine contains a programme guide, editorial matter, articles and news which is of interest to television enthusiasts, and. also carries a number of

advertisements, The magazine has been published now for nearly two years, 5 Downloaded from https://academic.oup.com/rpc/article/74/17/409/1661106 by guest on 30 September 2021 it has a growing circulation and has reached, at the moment, a circulation of about 2 million a week. The television transmitting stations in England have a range which is practically limited to this country. None of them, except the one operating in the furthermost North of England, has any range beyond this country, but the station to which 10 I have referred can be received in a small portion of the south-west of Scotland. In these circumstances it is not unnatural that the great bulk of the Plaintiffs' circulation of "TV Times" is in England. A certain number of copies are sold in Scotland; exactly how many it is difficult to determine. Mr. Naish, in his affidavit, says that the average sale for the last three months in Dumfries, 15 Edinburgh, Carlisle and Glasgow is 750 copies a week. Since, however, Carlisle is in England and he does not state how many of the 750 copies are sold in Carlisle, it is not possible to determine from that paragraph what the weekly sales in Scotland in fact amount to. It would appear from Mr. Coltart's affidavit that the weekly sales in Scotland are very small, certainly less than 300. Two 20 hundred and fifty of this 300 are sold in an area which is outside the range of the Scottish television centre to which I will presently refer. The Plaintiffs, however, on 6th March of last year, registered "TV Times" as a Trade Mark under Part B of the Register. This registration is for Great Britain, and therefore of course, extends to Scotland as well as to England. 25 The Plaintiffs, by registering this trade mark, acquired the exclusive use to it, both in England and in Scotland. I understand from the evidence that the blessings of television are now to be bestowed upon Scotland and that arrangements have been made whereby the First-named Defendants will be operating television transmitting stations in Scotland within a very few weeks. 30 When it became known that the First Defendants were to operate a television transmitting centre in Scotland certain negotiations took place beween the Plaintiffs and the First Defendants. It is obvious that it was desirable from the point of view of the First Defendants that there should be published in Scotland a similar magazine to "TV Times", which is published in England. The First 35 Defendants have the copyright in the programmes for the Scottish television transmitting centres and negotiations took place between them and the Plaintiffs, the Plaintiffs being ready and willing and, indeed, anxious, if they could arrange the business on satisfactory terms, to publish a Scottish edition of the "TV " Times ". They already publish a Midland and. Northemedition of the 40 " TV Times ". These negotiations started in the early summer and were continued from about the beginning of May until some way through last month. It is not necessary for me to refer to the negotiations in detail. It appears that the Plaintiffs made an offer for the copyright in the Scottish television programmes to which I have referred, which would have enabled them to publish their magazine 45 in Scotland containing details of the weekly Scottish programmes. The offer was not accepted by the First Defendants; it was, I think, increased on one or two occasions; but a point was reached where the Plaintiffs were prepared to pay no more and where the Defendants were not prepared to do business on the terms offered by the Plaintiffs. Accordingly those negotiations came to nothing. 50 It then appeared that the First Defendants had' arranged with the Second Defendants that the Second Defendants should have the copyright in the Scottish television programmes, and the Second Defendants evinced their intention of 411

[1957.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [No. 17

Associated Rediffusion, Ld. v. Scottish Television, Ld., and Another.

publishing in Scotland a weekly magazine to be called the " Scottish T'V Times ". It is perhaps not very surprising that as soon as the Plaintiffs heard of this project they wrote vigorously to protest that if it was carried out it would amount to an infringement of the Plaintiffs' trade mark. I should say that the Defendants

5 strongly controverted the Plaintiffs' contention and asserted their right to publish Downloaded from https://academic.oup.com/rpc/article/74/17/409/1661106 by guest on 30 September 2021 a magazine under the title of the" Scottish TV Times ". The Defendants have now said, however, that they have changed the name of the proposed publication from "Scottish TV Times" to "Scottish Television Times". In those circum• stances th'e Plaintiffs have issued their writ and have 'brought this motion asking 10 for an injunction restraining the Defendants from publishing a magazine under the title of "Scottish TV 'Times" or "Scottish Television Times". It has been said on behalf of the Defendants that the Plaintiffs here are, un• encumbered by merit.. It has been pointed out that inasmuch as the vast bulk of their present trade is in England the publication and sale of a "Scottish TV J5 "Times" cannot cut into their trade to any appreciable extent, and cannot cause them any real damage; and it has been suggested that the real reason for the Plaintiffs pursuing a dog-in-the-manger attitude is that they are attempting by this policy to revive the negotiations so that they will be able to publish a Scottish edition of their "TV Times ", I am not sure that the motives with which 20 the Plaintiffs have launched this action are relevant, nor am I sure that the reasons why the Defendants are apparently so anxious to use the name " Television " Times" are material. As far as the Defendants. are concerned, it may well be, as has been said, that the name "TV Times" or "Television Times" is considered to be the only apposite name for the publication. 25 I am bound to say that "TV News " or "Television News" suggests itself as a fairly serviceable alternative which, of course, could not in any circumstances infringe any right that the Plaintiffs have. It might be said that the Plaintiffs here have a growing circulation which is at present over 2 million a week, that they enjoy a high reputation, and that one of the Defendants' motives may be 30 that they desire to acquire some of the Plaintiffs' prestige. As far as the Plaintiffs are concerned it may be that their motives in launching this motion are those suggested on behalf of the Defendants. On the other hand it seems to me that the Plaintiffs may well take the view that if a paper is published in Scotland either under the name of the "Scottish Television Times" or the "Scottish TV 35 "Times "-it may not matter a great deal which-the television public is likely to associate that paper with the Plaintiffs. Now the. Plaintiffs do not know what the editorial policy, the advertisement policy, or the commercial policy of the paper may be, and I can well understand that the Plaintiffs might be very disinclined to have their name associated with a periodical over whose policy 40 they have no control. Then, again, we live in an age of rapid technical development. It is true that at the moment the range of television transmission is such that it is not possible for English transmitting stations to be. received in Scotland, except in a small corner in the Ivery south-west, and it will not be (possible for the Scottish 45 television installation to be received in England, but Lt is not beyond the realms of probability th~t in the near fut~re that range, may be greatly increa.sed so ~hat the Scottish stations may be received at Land s End, and the English stations in the furthermost parts of IScotland.This registration of the trade mark is zcod for seven years, and it may well be that within that period the time may 50 ~O'me when Scottish television is competing with British television and the weekly magazine dealing with television published in Scotland may be competing with the one published in England, both in England and in Scotland. It is possible tha t the Plaintiffs, [or that reason, als,o desire to preserve. such rights as they 412

No. 17] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [1957.]

Associated Rediffusion, Ld. v. Scottish Television, Ld., and Another.

may have in that name in Scotland, As I have said, it is not necessary for me to try and determine-and, indeed, it would be irnpossible in an interlocutory motion to determine-s-the motives that may be activating the Plaintiffs or the Defendants. Ali I have to do is to decide this case according to the legal rights

of the parties. 5 Downloaded from https://academic.oup.com/rpc/article/74/17/409/1661106 by guest on 30 September 2021 Before I refer to the Trade :Marks Act I ought perhaps to say that as far as I can see the only novel feature in this case is that at the moment the Plaintiffs are operating substantially in the English market and the Defendants propose to operate substantially in the Scottish market. As far as I know in all the reported cases, and certainly in all those leases that have been cited to ,me, the Plaintiffs 10 and the Defendants have been usually actual competitors in the same market, or potential competitors in the same market. There is that novel. feature a:bout this case. The rights of the parties are determined, I think, by Sees, 4 and 5 of the Trade Marks Act of 1938. Sec. 5 says in effect that except as provided by Sec. 5 (2) 15 the rights of a registered owner of a Trade Mark registered in Part B of the Register shall be the same as the rights of a registered owner of Trade Marks registered in 'Part A of the Register. Those rights are dealt with in Sec. 40f the Act, and it is well that I should read the material words in that section: "The registration ... of a person in 20 "Part A of the Register as (proprietor of a trade mark _. . . in respect of any "goods shall, if valid, give or :be deemed to have given to that person the "exclusive right to the use of the trade mark in relation to those goods and, ,,' without prejudice to the generality of the foregoir.g 'words, that right shall be 40' deemed to be infringed by any person who, not being the proprietor of the 25 " t~ade mark or a registered user thereof using by way of the permitted use, uses' "a mark identical with it or so nearly resembling it as to be likely to deceive "or cause confusion, in the course of trade, in relation to any goods in respect ",of which it is registered, and in such manner as to render the use of the mark "likely to be taken either---{a) as being used as a trade mark; or (b) in a case 30 "in which the use is use upon the goods or in phys.cal relation thereto or in an " advertising circular or other advertisement issued Ito the 'public, as importing a "reference to some pers-on having the right either as proprietor or as registered "user to use the trade mark or to goods with which such a person as aforesaid " is connected in the course of trade ". 35 The first thing to be observed about that section is that it confers upon the registered owner of the Trade Mark the exclusive right to the use of the Trade Mark in relation to the goods in respect of which it is registered. This Trade Mark is registered in respect of printed periodical publications relating ito matters connected with television broadcasts, It follows that the Plantiffs have the exclu- 40 sive rights to the use of the Trade Mark, amongst other places, in the whole of Scotland in respect of rprinted periodical publications relating to matters con• neoted with television broadcasts. The section states that anyone who without the permission of the owner uses a mark identical with it infringes the exclusive right to which I have referred. 45 It is to be observed that the exclusive right, and the infringement of tbe exclusive right by the use of an identical mark, does not depend at all upon any trade being carried on by the registered owner. Indeed, it is enough for the Plaintiffs' purpose if the mark is registered and valid. Accordingly if the Defendants had taken the identical mark, namely, "TV Times ", there could be no force in the 50 fact that at the moment the Plaintiffs are not selling goods in any substantial quantity in Scotland. 413

[1957.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [No. 17

Associated Redifjusion, Ld. v. Scottish Television, Ld., and Another.

One of the main points' taken by the Defendants is this. They say: "This IS " a case in which we have not taken the identical mark. ", and in that they are undoubtedly right: they have not taken, nor do they propose to take, the identical mark. They say : "Accordingly we can only be liable if the mark which woe have

5 "taken so nearly resembles the registered mark as to be likely to deceive or Downloaded from https://academic.oup.com/rpc/article/74/17/409/1661106 by guest on 30 September 2021 "cause confusion in the course of trade and is likely to suggest to the public " that there is a connection between the Defendants' publication and the Plaintiffs" "publication, or some connection between the Defendants' publication and the ,,' Plaintiffs themselves". 10 It has been very powerfully argued that, as the Plaintiffs have to bring them- selves within the second limb of the section to which II have referred, as they cannot rely on a taking of the identical mark, in view of the fact that the Plain• tiffs and the Defend/ants (so it is argued on behalf of the D-efendants) are not in any real sense competitors of the trade, inasmuch as no appreciable number of 15 copies of the Plaintiffs' publication are sold in Scotland, it is impossible to say that the use of the words "Scottish TV Times" or " Scottish Television Times ,.. is likely to deceive or cause confusion in the course of trade. I have come ,to the conclusion that the Plaintiffs are right when they say that for this purpose it is irrelevant to consider whether they trade in Scotland or 20 whether they do not. I have come to that conclusion for this reason. It is obvious that if the identical mark were taken it would not matter what trade the Plaintiffs 'were doing or where they were doing it. It would not matter whether they were doing no trade at all. Supposing a mark were taken which 'was SQ close Ito the registered trade mark that you could only tell the difference 25 between the two with a magnifying glass, can it be that there is an infringement by taking the identical mark whether or not there is any trade being done by the Plaintiff, but only an infringement by taking the other mark if the Plaintiff is in fact trading in competition with the Defendants? I think that such a construction would make nonsense of the section. 30 The test to be applied in considering infringements of trademarks has been laid down in many cases and the principles have been enunciated many times, but they are conveniently set out in the judgment of Lord Radcliffe in the case of de Cordova & Ors. v. Vick Chemical Coy, (1951) 68 'R.P.C. 103. The material passage starts at the bottom of p. 105 and II will read it : "They "~that is, the 35 Appellants-" have not used the 'mark itself on the goods that they have sold, .. , but a mark is infringed by anoth.er trader if, even without using the whole of it "upon or in connection with his goods, he uses one or more of its essential "features. The identification of an essential feature depends partly on the Court's " own judgment and partly on the burden of the evidence that is placed before it. 40 "A trademark is undoubtedly a visual device; but it is well-established law that ,,' the ascertainment of an essential feature is not to be by ocular test alone. Since "words can form part, or indeed the whole, of a mark, it is impossible to "exclude consideration of the sound or significance of those words. Thus it "has long been accepted that if a word forming part of a mark has come in 45 "jrade to be used to identify the goods of the owner of the mark, it is an infringe• "mentof the mark itself to use that word as the mark or part of the mark of " another trader, for confusion is' likely to result". Lord Radcliffe then cites some words from the spe-ech of Lord Cranworth in the well known case of Seixo v. Provezende (1866) L.R. 1 Ch. 192, at p. 197: 50 "If the goods of a manufacturer have, from the mark or device he has used, ~, become known in the market Iby a particular name, I think that the adoption by " a rival trader of any mark which will cause his goods to bear the same name in 414

No. 17] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [1957.] .

Associated Redifusion, Ld. v. Scottish Television, Ld., and Another.

" the market, may be as much a violation or the rights of that rival as theactual "copy of his device". Lord Radcliffe continues: "The likelihood of confusion 'or deception in such "cases is not disproved by placing the two marks side by side and demonstrating "how small is the chance of error in any customer who places his order for 5 Downloaded from https://academic.oup.com/rpc/article/74/17/409/1661106 by guest on 30 September 2021 "goods with both the marks clearly before hirn, for orders are not placed, or 'It are often not placed, under such conditions. It is more useful to observe that " in most persons the eye is not an accurate recorder of visual detail, and that "marks are remembered rather by general impressions or by some significant 'cdetail than by any photographic recollection of the whole ". 10 It seems tome that the essential feature of the Plaintiffs' Trade Mark is the Juxtaposition of the words "T~V Times". No, one I think: could pretend-and I am sure the Plaintiffs do not-that they have any right in the name" Television" or "TV" lby itself, still less could they have any right in the name "Times" by itself. The essential element, or the essential feature, of this Trade Mark, 15 as it seems to me, particularly as it is in respect of printed 'periodical publications relating to matters connected with television broadcasts, is the use of the two names together, "TV Times". There is a good deal of evidence bef'oreme that the: use of the words "Scottish "TV Timcs " would be likely to cause confusion in the minds of many people 20 and would be likely to lead many people to suppose that the " Scottish TV Times" was the Scottish edition of the Plaintiffs' publication. Does it make any differ• ence that the Defendants, who may have thought that "TV Times", even with " Scottish" Ibefore it, was sailing rather too close to the wind, having originally protested their right to the words "Scottish TV Times.", have now decided to 25 call the publication "Scottish 'Television Times "? In my judgment it does not. Bearing in mind the passage in the judgment rof Lord Radcliffe to 'which I have referred, and the (passage in Lord Cranwell's speech which Lord Radcliffe quotes, it is plain, I think, that the question I have to pose myself is not "If two people "saw these papers side by side would they confuse them? ", but, "Is the use 30 "of the name 'Scottish Television Times' likely to lead to confusion, likely to "cause people to think that that publication is or Inlay be the Scottish edition " of the Plaintiffs' journal?". I do not believe (that it makes any difference that the word "Television" is written in the name rather than "T'V". Whatever the Defendants call it I think it is plain-and I think it must be very plain to 35 the Defendants-that the vast bulk of the Ipublic will refer to that 'paper as the "TV Times". This is an age when corruption of words and shortening devices are very common, and I very much doubt if one person in ,one hundred uses the full word "television", and (the process is not slowing down. Indeed, the time may not be very distant when the word "television " has almost an archaic 40 a ring as "petroleum" has today. At any rate, I have very little doubt that if the words written on the paper were the "Scottish Television Times" the vast bulk of the public would refer to it as the "TV Times" or possibly the "Scottish " TV Times ". " Television." and "TV" are admittedly synonymous. That really disposes of this case except, of course, that it is still possible for 45 the Defendants to escape if they can satisfy the burden of proof which would enable them to rely on Sec. 5 (2) of the Trade Marks Act. That reads as follows, and I still omit the immaterial 'words: "No injunction or other relief "shall be granted to the Plaintiff if the Defendant establishes to the satisfaction :: of t~e court that the ll:se of which the Plaint!ff .complains is not. likely to 50 deceive or cause confusion or to be taken as indicating a connection In the "course of trade between the goods and some person having the right either as "pro.prietor or as registered user to use the trade mark.". 415

[1957.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [No. 17

Associated Redifjusion, Ld. \. Scottish Television, Ld., and Another. ------

That is .always a heavy burden, but when the Defendant has come within what I call the second limb of Sec. 4 it would be particularly difficult for him to escape liability under Sec. 5 (2), and in the circumstances of this case, and on this evidence, I think impossible, because it is not and cannot be disputed that

5 already some confusion has heen caused, some people have taken the view that Downloaded from https://academic.oup.com/rpc/article/74/17/409/1661106 by guest on 30 September 2021 the paper which the Defendants intend to publish, notice of which has been given in the pres1s, is connected with ,the Plaintiffs and is, indeed, the Scottish edition of the Plaintiffs' ; and, there is a good deal of evidence that if the paper is published under the name of " Scottish TV Times" or " Scottish Television 10 "Times" many people are likely to be deceived and confused in the future. I think it is probably true, as is admitted on ibehalf of the Plaintiffs, that there may not be a great deal of confusion. It is possible that before very long the confusion might be cleared away, but it seems to me that if there is in fact likely to be confusion and there is always, of course, subject to the principle of de 15 minimis-if ,there are in fact a substantial number of people likely to be deceived. likely to think that there is a connection between the two publications, then there is an infringement. It has been argued that this is a difficult case and a novel case novel In the sense to which I alluded a moment ago, and it is said, very persuasively, that ~ 20 ought not to grant an interim injunction because when the case comes for trial it may be that when it is further argued another Judge may take a different view. and it is said ,that on balance of convenience it would be better that there should be no interim injunction. I have formed a clear view in t,his case, rightly or wrongly, and I feel that I ought to give effect to it. As for the balance of con- 25 wnience. I am not at all persuaded that on balance of convenience it would be better not to grant an injunction than to grant it. After all, the Defendants have not yet published the paper using the word " Scottish Television Times " and it may be-l do not know, but it may be--that some other equally suitable ti.tle will suggest itself to them. 30 For those reasons I have come to the conclusion that I ought to grant the injunction for which the Plaintiff's ask. Falconer.-Will the injunction go in the form asked for in the second notice of motion, namely, that both Defendants be restrained from "publishing, advert­ " ising, offering for sale or selling any newspaper under the title ' Scottish TV 35 " 'Times' or any title of which 'TV Times' forms part, or the title ' Scot,tish '' ' Television Times ' "? Salmon, J.-Yes. The Defendants' Counsel having intimated that an application would be made to remove the Plaintiffs' Trade Mark from the Register it was ordered that the 40 c0sts of the motion should be reserved for the Trial Judge.

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