Paper claims it is ‘entitled’ to use words ‘Irish Edition’

The London Times has alleged 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, denies that the use of the words “The Times Irish Edition” runs the risk of creating confusion with The Irish Times. The UK publisher also argues the Irish newspaper has no arguable case for infringement of its trademarks.

The reason The Times wants to use the words “Irish edition” is because it wants to tell potential customers what its product is, said Brian Murray, counsel for TNL. It is necessary for consumers to understand this is a newspaper dedicated towards the Irish market and focused on Irish news, he added.

The Times’ new product is subscription only and, without a subscription, it will not be possible to read a complete article, counsel said. It could not be said any customer could go through that subscription process in the mistaken belief they were subscribing to the Irish Times, he argued.

The Irish Times’ legal proceedings were launched to cause maximum damage to the defendant’s launch and there was no arguable case to be made his client was engaged in “passing off”, counsel submitted.

While the Irish Times was invoking its goodwill, it had not specified exactly 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.

Counsel was making submissions opposing an application by The Irish Times Ltd for injunctions, pending the outcome of a full hearing, arising from the planned launch of the new 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, for the Irish Times Ltd, said the Irish Times is entitled to protect its brand among everybody who knows it and not just those who buy it now. If his client was wrongly seen as being in alliance with the Sunday Times or The Times, that affected its brand.

Mr Newman said his side had received an open letter from the defendants’ solicitors and welcomed proposals of any nature as both companies have to co-exist in the market.

In that letter, it was indicated that 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 will say Times and Sunday Times ROI edition.

Mr Newman said the complainy by the Irish Times Ltd “goes a lot further” than the masthead and centres on how the planned publication will be referred to in period up to its publication.

The defendant’s proposal was not sufficient but any proposal was welcome, he said.

Mr Justice Hedigan remarked that there is “no such thing as the Republic of Ireland” as the name of the country is Ireland or Eire. “Republic of Ireland is a soccer team,” he said.

Mr Murray agreed, legally, there is no such place as the Republic of Ireland. While the marketing team did not see ROI as an ideal solution at all, it could be a solution pending the full action, he said.

The hearing continues.