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 "<Scottish. Television 20 "Times" formed part. The costs of the motion were reserved to the Trial Judge. De Cordova v. Vick Chemical Coy. (1951) 68 R.P.IC. 103 considered and applied. This motion came on in the Vacation Court before Salmon, J. Aldous, Q.C., and D. Falconer (instructed by Swepstone Walsh & Son) appeared 25 for the Applicants (Plaintiffs). Milner Holland, Q.C., and W. A. Bagnall (instructed by Slaughter & May) appeared for the Respondents (Defendants). The issues, facts and arguments, so far as material to this report, appear sufficiently from the Judgment. 410 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.