Prince nails Mail; Primark Eagle stays legal; Scottish case in need of a translator

Via subscription service Lawtel comes His Royal Highness the Prince of Wales v Associated Newspapers Ltd, a Chancery Division decision yesterday from Mr Justice Blackburne. In these proceedings the Prince of Wales sought summary judgment against the Mail on Sunday newspaper in his action for breach of privacy, breach of confidence and copyright infringement (see earlier IPKat posts here and here for background). The Prince kept handwritten journals recording his personal impressions and private opinions of overseas tours, eight of which fell into the hands of Associated Newspapers, which owned The Mail on Sunday. That paper published articles based upon and containing journal extracts from the Prince's Hong Kong tour.

In the earlier proceedings the Prince sued and got judgment in respect of the Hong Kong journal. The judge refused summary judgment regarding the other seven journals, saying the action would have to be heard on its merits. The Court of Appeal meanwhile upheld the decision concerning the Hong Kong journal, holding that the information in the journal was a paradigm example of a confidential document and that the public interest in the disclosure of the journal's contents did not outweigh the confidential nature of the information it contained.

Fortified by the Court of Appeal's ruling, the Prince sought summary judgment regarding the remaining seven journals on the basis that they were not materially different to the Hong Kong journal. Associated Newspapers did not oppose this application. Blackburne J has now held that the Prince, having fully established his claims in respect of the outstanding seven journals, was entitled to injunctive relief to restrain possible further breaches of confidence or infringement of copyright.

Left: The Prince of Wales is such a public figure that public houses are named after him.

The IPKat notes that the House of Lords has not yet given its decision as to whether it will hear Associated Newspapers' appeal. His guess is that it won't since there doesn't seem to be any solid matter of legal importance to clarify. Merpel says, His Royal Highness should get out there and do some blogging: if the public can read his public and publishable opinions for free on the internet, their appetite to pay to read more of his literary output in The Mail on Sunday might be somewhat diminished.

Not to be outdone by Lawtel, arch-rival LexisNexis Butterworths had its own IP case of the day, Lyle & Scott Ltd v Primark Stores Ltd - a Chancery Division decision of Mr Justice Lindsay last Thursday.

Lyle & Scott, which made high-quality up-market clothing, originally had a reputation for the production of knitwear favoured by golfers; more recently it had begun to make efforts to attract a younger, wider market for its products. The company's trade mark featured an eagle emblem. Primark was a pile'em-high-and-sell'em-cheap retailer of clothes for relatively customers. When Lyle & Scott noticed that Primark was selling clothes featuring what appeared to be an eagle emblem, it sued for trade mark infringement. In this application, two primary issues had to be decided: (i) the admissibility of certain surveys which Primark ran in its stores and (ii) whether the balance of convenience fell in favour of granting interim injunctive relief.

Lindsay J took the view that the sort of survey in dispute was admissible but that Primark's wouldn't be, for the reason that it was apparently irrelevant. Interim injunctive relief would not however be granted.

Left: a happy shopper clutches the latest to-kill-for fashion accessory - a stylish Primark plastic carrier bag

Given that Primark had been selling its eagle-emblem goods for some two years, the irreparable damage alleged by Lyle & Scott was more hypothetical than anything else. Anyway, given the large quantities of allegedly infringing goods that Primark was shifting, the balance of convenience lay with it being able to carry on doing so pending the trial.

The IPKat looks forward to the full trial, where the tensions between crabb'd age and youth will doubtless be reflected in the evidence. Says Merpel, it would be good to know what the (de)merits of the survey evidence were, since it's not possible to understand the issue before the court in the absence of that information.

And here's one to fox the IPKat - a decision that's in English, but he really can't understand it at all. That's Systems Division Inc v Teknek Holdings Ltd and others [2007] CSOH 85. As you may have noticed from the neutral citation, this is a Scottish decision, delivered by Lady Smith in the Outer House of the Court of Session last week and accessible in full here. It's so infrequently that Scottish IP cases emerge that the IPKat feels he can't ignore it. Perhaps, says Merpel, some kind Scottish lawyer will explain briefly what it's all about (please post a comment below).

Maclay Murray Spens Guide to Scottish IP Jargon here
Prince nails Mail; Primark Eagle stays legal; Scottish case in need of a translator Prince nails Mail; Primark Eagle stays legal; Scottish case in need of a translator Reviewed by Jeremy on Tuesday, May 22, 2007 Rating: 5


  1. Looks like the Scottish case is more to do with enforcement of foreign judgments generally rather than any IP matter per se but I also can't make head nor tail of it. It appears there have been no Woolf reforms in Scotland to make things easier for the layman!!


    This was an application to recall (withdraw) orders for arrestment and inhibition - asset freezing orders pending trial. Teknek's US company were sued for patent infringement in California and lost. Teknek's UK company and related individuals were added as defendants in the US action after trial, and the patentee now seeks to enforce the US judgment against the UK parties in Scotland.

    The judge recalled the freezing orders on the basis that the patentee has not shown a good arguable case in Scotland, because the US court lacked jurisdiction and also took account of allegations of fraud which the UK parties did not have the opportunity to contest.


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