The Waterfront Partnership

Miss World Limited v Channel 4 Television Corporation

Overview of Decision and Ruling:   

In Miss World Limited v Channel 4 Television Corporation[1], the Defendant, Channel 4, had proposed to transmit a programme under the name "Mr Miss World".   The programme followed the fortunes of an English competitor in a beauty pageant for transvestites and transsexuals.    The description of the programme to be found on the Channel 4 website referred to this pageant as: "'Miss International Queen', the Miss World event for transgenders held in Thailand every year".  Miss World learnt of the programme six days prior to transmission and applied for an injunction.   The court handed down its judgment on the application a day before intended transmission. 

Miss World made claims under Section 10(1) [2], 10(2) [3] and 10(3)[4] of the Trade Marks Act 1994.   Whilst the judge formed the view that Section 10(1) and 10(2) claim were arguable, he concluded that it was the Section 10(3) claim that provided "the only real reason for requiring removal of the mark from the programme before transmission at this late stage in these proceedings rather than leaving the claimant to its remedy in damages".   

The judge asserted that Section 10(3) required actual damage to a mark by reason of the use complained of and the Claimant had brought forward evidence to the effect that the association of the Miss World brand with content of the sort included with the Channel 4 programme, would damage the image of that brand and cause it financial loss.   The Judge noted that this was a difficult area because different sections of the public hold very different views as to what is and what is not appropriate to be transmitted at all and what is and is not suitable subject matter with which to be associated.  He also noted that this was a "single television programme, albeit with an expected audience of 2 million and which will, no doubt, soon be forgotten".  Nevertheless, he concluded that there was a triable case on this issue.  

Channel 4 claimed that Section 12(3) of the Human Rights Act 1998 and Article 10 of the European Convention on Human Rights was engaged.  This in broad terms provides that where interlocutory relief might affect the exercise of the Convention right to freedom of expression then such relief should not be granted so as to  "so as to restrain publication before trial unless the court is satisfied that the applicant is likely to establish that publication should not be allowed.".  It also referred to South African decision in Laugh It Off Promotions v. South African Breweries[5] in which the South African Constitutional court had refused to grant relief to the owners of the BLACK LABEL mark against a T-shirt manufacturer producing a T-shirt that parodied that mark that used the words BLACK LABOUR.   

The judge noted that "trade mark legislation is to all intents and purposes the same in South Africa and in England, save that the requirement for detriment is, if anything, weaker in South Africa than it is here".  Nevertheless, he refused to follow the reasoning of that case, which he found somewhat problematic.  Instead, he suggested that the Laugh It Off Promotions should be viewed as a case where the "alleged infringement was so disconnected from the ordinary function as an indication of origin and as an indicator of quality fulfilled by the mark, that it was fanciful to say that the mark qua mark was affected in any way".   The judge also referred to with approval the analysis in Clayton and Tomlinson's Law of Human Rights (2001 edition) that the European Court of Human Rights had recognised three types of expression: political expression, artistic expression and commercial expression and noted that court consistently attached greater importance to political expression than artistic or commercial expression. 

With this in mind whilst the court held that as case such as Laugh It Off Promotions might raise article 10 issues in the United Kingdom, it was far from persuaded that such issues were raised in this case.   Notwithstanding the claim that MISS WORLD was being used as "a spoof or a parody", the judge believed that the term was being used as a descriptive term but one that depended for its descriptive power upon the reputation attached to the MISS WORLD mark.  Given this, the judge considered it to be "very likely" that there had been Section 10(3) infringement. 

Indeed, absent a sign which is really telling a political story, making a political point or identifying some matter of public importance, the judge found had difficulty in seeing how use of a trade mark could of itself engage Article 10 of the Convention.  In any event, Miss World had a strong arguable case that satisfied the requirements Section 10(3) of the Trade Marks Act.

This still left the question of assessing the balance of convenience in granting an injunction.  The judge believed that Miss World had by reason of use of the offending sign in material on the internet and various newspapers already suffered most of the damage it may have suffered by use of that sign.  Also he acknowledged that removal of the sign from the programme a day before transmission would be difficult.  Nevertheless, such removal would not be impossible.  In the circumstances an injunction was granted.  

Importance of Case:

This is one of a number of cases that have come before the English courts recently in which human rights arguments have been raised both generally and to resist an interim injunction, but it is unusual in that it did not involve considerations of comparative advertising[6].   It is particularly interesting that the judge thought that an English court would entertain these arguments in factual situations similar to those that arose in the Laugh It Off Promotions v. South African Breweries case.  

Matthew Harris

Waterfront Solicitors 
 

[1] (April 16, 2007): [2007] EWHC 982 (Pat).  Available at http://www.bailii.org/ew/cases/EWHC/Patents/2007/982.html    

[2] This provision implements Article 5(1)(a) of the EC Trade Marks Directive and provides for infringement where there is use of an identical mark in relation to identical goods and services. 

[3] This provision implements Article 5(1)(b) of the EC Trade Marks Directive and provides for infringement where there is use of an identical or similar mark in relation to identical or similar goods and services and there is a likelihood of confusion.

[4] This provision implements Article 5(3) of the EC Trade Marks Directive, which in broad terms is the anti-dilution provision of European trade mark law.

[5] Case No. CCT 42/04, 2005 (8) BCLR 743 (CC). 

[6] c.f. Red Dot Technologies Ltd v. Apollo Fire Detectors Ltd (April 24, 2007):  [2007] EWHC 1166 (Ch.) and Boehringer Ingelheim Ltd v. Vetplus Ltd (June 20, 2007): [2007] EWCA Civ 583.