The High Court has granted an injunction to the publishers of a new free newspaper preventing the Evening Herald from publishing a rival freesheet incorporating the word "metro" in its title.
A number of companies which are planning to launch Metro had sought to prevent Independent News & Media (IN&M) from bringing out a rival free newspaper which they intended to call Herald Metro edition. The plaintiffs claimed it would be an infringement of a registered trademark.
Yesterday, Mr Justice Frank Clarke granted an injunction to Metro International, Tidnings AB Metro and Fortunegreen Ltd.
However, while granting the order, which applies pending the outcome of a full hearing of legal proceedings, the judge indicated it was open to IN&M to design a different masthead which included the word "metro" but which would not give rise to a likelihood of confusion.
Mr Justice Clarke said that Metro International published 57 freesheet newspapers in 18 countries throughout Europe, North America, South America and Asia.
He said that Associated Newspapers also publishes freesheet newspapers using the title Metro in 13 cities in the United Kingdom.
Fortunegreen is a joint venture between Metro International, Associated Newspapers and The Irish Times Ltd.
He said that IN&M is the publisher of the Evening Herald. While the Independent has used the word "metro" in certain editions of some of its newspapers, there was no evidence of previous use of the term in the main title of a newspaper.
He also noted the intention of IN&M to publish its freesheet newspaper was, at least in significant part, a reaction to the proposal by Fortunegreen to publish its Metro.
The judge said the only legal issue he had to decide in the application was whether the trademark Metro, which had been registered by Tidnings AB Metro, would be infringed by the use of the term in the Independent's planned freesheet.
Because the market for free newspapers of the type which both parties sought to publish was unexplored in Ireland at this stage, he believed any question of damages, to either side, would require to be assessed against a significantly speculative background and that damages would not fully compensate either party.
He believed the consequences for Fortunegreen of not obtaining an injunction at this stage but succeeding at trial would be significantly greater than the corresponding consequences for IN&M of being injuncted pending trial but being released from that injunction upon being successful.
The judge said the question of whether the presence of the word "metro" in the title would be likely to cause confusion was one of degree having regard to the prominence of the word.
He was satisfied a masthead of the type proposed by the Independent group was arguably an infringement sufficient to establish a serious issue to be tried between the parties.
As no other, less prominent, use of the term "metro" was proposed, he would grant the plaintiffs the injunction as sought in the complaint.
However, he added, it might be possible to devise a masthead which might include the word "metro" in such a way as would not establish infringement of trademark.
He granted IN&M leave to apply at 36 hours' notice to come back to him with an application to vary the order.
