By Tom Arden
The High Court has temporarily blocked Independent News & Media plc from launching a free Dublin newspaper using “Metro” in its title while a trademark dispute proceeds to trial.
The plaintiffs planned to launch a free newspaper called Metro for hand distribution at busy locations in Dublin. Fortunegreen Limited, the company behind the Irish publication, was a joint venture involving the international Metro group and Associated Newspapers.
A Metro group company held an Irish registered trademark for a stylised “Metro” device. Independent, publisher of the Evening Herald, intended to respond to the new entrant with its own free title under the masthead “Herald Metro Edition”.
Independent said the planned publication was intended to protect its existing business interests. The legal issue at this stage was narrower: whether its proposed use of “Metro” arguably infringed the registered trademark.
Mr Justice Clarke held that there was a serious issue to be tried. Both publications would be free newspapers aimed at broadly similar readers and distributed in similar ways. The judge said it was also possible that consumers would shorten newspaper titles in ordinary use, making “Metro” an important identifying feature of Independent's proposed publication despite the prominence of the Herald branding.
The court then considered whether damages would adequately protect either side before a full trial. It found they would not. Ireland's market for this type of free newspaper was largely untested, making it exceptionally difficult to calculate how either publication would have developed if one party were wrongly restrained or exposed to infringing competition during the crucial launch period.
The balance favoured the Metro publishers. The court considered the potential harm to their launch greater than the harm to Independent from temporarily having to compete under another title.
An injunction was therefore granted restraining Independent from using “Metro” in the name and masthead of its proposed free newspaper or advertising it under that title. Independent was given liberty to return to court with a less prominent alternative use of the word, while the parties were directed towards an early trial.