Trademark of ‘The Irish Times’ could be ‘blurred and diluted’

The trademark and values of The Irish Times will be "blurred and diluted" unless orders are granted refraining infringement of its trademarks in a planned digital edition of the London Times, it has been argued before the Commercial Court.

Jonathan Newman SC said The Irish Times has substantial numbers in support of its reputation and business in the State and it is not disputed it has some 6.5 million online users of its website per month, plus 120,000 monthly users of its news app.

The Irish Times has an "enormous presence" in the State both in terms of hard copy and its digital edition while the London Times has a "miniscule" half percent of newspaper sales in the State, counsel said.

His side's concern was that if Times Newspapers Ltd, publishers of the Times of London and the Sunday Times, were allowed use the words "The Times Irish edition" in promoting the planned new digital edition of the London Times, to be sold as part of a seven-day subscription package with the Sunday Times, that would create confusion and blur and dilute The Irish Times trademark and values.

The name of the defendant’s product is going to be “The Times and Sunday Times Irish edition” and it seems unlikely that would not be reduced or abbreviated down by users and the market, he said.

Given the emphasis on Ireland and Irish in connection with the name "The Times", it was likely there would be an abbreviation which was either the same as, or "dangerously close" to The Irish Times.

The defendant is obliged to put "clear water" between it and The Irish Times and the court should grant orders to that effect, counsel argued. The defendant describes itself as "The Times of London" in the US, presumably to distinguish between it and the New York Times, he added.

What the defendant appeared to wish to do was to say: "This is the Times for Ireland" but The Irish Times has the trademark for the words "Irish Times", Mr Newman said.

He was opening proceedings before Mr Justice John Hedigan in which the Irish Times Ltd wants injunctions restraining use of the words "The Times Irish Edition", or any other title confusingly similar to The Irish Times, in a digital edition of the UK publication as well as on a proposed app.

The Irish Times seeks to stop the use of the title, in any manner whatsoever, including by using that name as a domain name, Twitter account or email address. It also wants to restrain Times Newspapers Ltd, promoting or launching a new digital publication with a digital masthead as set out in mock up seen by The Irish Times.

It wants further orders stopping the UK newspaper using the “T” logo at its Twitter account or any logo confusingly similar to the IT logo.

Times Newspapers Ltd is opposing the injunctions application. The company, which previously gave undertakings in relation to certain issues raised, argues there is no entitlement to the injunctions sought.

Earlier, the judge suggested the parties might discuss their differences but he was told later no resolution had been reached.

The case continues on Wednesday.