HomeInsightsHigh Court declines to grant publicity order in passing off case and considers publicity orders in intellectual property cases in general

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Facts

Philip Warren & Son (PWS) is a family butcher, based in Launceston, Cornwall, which has traded for a considerable period at the high-end of the local retail and wholesale market mainly under the name PHILIP WARREN and PHILIP WARREN & SON and the following logo:

PWS issued proceedings against Lidl Great Britain Ltd (Lidl) for passing off in respect of its use of the sign WARREN & SONS, used largely in the logo form shown below, in respect of a range of fresh meat products sold in its UK stores in significant quantities between 2015 and 2020:

In April 2021, the High Court dismissed PWS’s claim. Key points from the case were that:

  1. Lidl had not chosen the sign because of PWS or to imitate it; in replacing an earlier brand, Lidl had wanted an own-brand mark redolent of an English provincial butcher and WARREN & SONS was one choice out of several fictional ones; Lidl knew of PWS’s existence before deciding to use the brand, but PWS did not have a registered trade mark and Lidl did not think that PWS had a right to object; Lidl registered the mark without objection;
  2. Lidl began to sell products under the WARREN & SONS brand in 2015 and, in 2018, it decided to rebrand the whole range; it surrendered the registered mark in late 2020;
  3. PWS did not alert Lidl to its complaint until 2019 when it sent Lidl a letter before action indicating that large compensation would be sought; and
  4. the court found that the evidence was not strong enough in the various areas where goodwill subsisted to say that Lidl’s actions amounted to a significant operative misrepresentation that had caused material damage to PWS’s goodwill.

After trial, but before judgment, PWS and its lawyers assisted a journalist from the Mail on Sunday/Mail Online with an article on the case (the Mail Article). Despite the outcome of the High Court case being the dismissal of PWS’ claims, the point emphasised in of the Mail Article was that Lidl had been accused of deliberately taking the WARREN & SONS brand from PWS with a view to using PWS’s good name to sell poorer quality produce. This resulted in numerous adverse comments “below the line” and the story was also then picked up by other national and local publications.

Following judgment, amongst other things Lidl applied for a publicity order. In support of this part of its claim, Lidl said that as a result of PWS’ communications to the press the reporting of its conduct had been so unfair that in order to set the record straight the court order ought to make an order that a link to the judgment be published at PWS’s expense in the same news outlets.

Decision

In assessing whether or not a publicity order was appropriate in this case, Mr Daniel Alexander QC, sitting as a Deputy Judge of the Chancery Division, first considered what the ordinary reader would have understood the Mail Article to mean. He stressed, however, that he was not purporting to determine or to bind any other tribunal as to the meaning of the article in a defamation sense, not least because the author of the article was not party to the proceedings.

Mr Alexander QC found that, taken as a whole, the ordinary reader of the article would be likely to have understood that:

  1. there were at least grounds to suppose (sufficient to have come to trial) that Lidl had deliberately imitated PWS’s name, targeting it because of its good reputation as a local English butcher, for the purpose of misleading Lidl’s customers into buying its poor-quality produce on the basis of a belief that it originated with the (higher quality) PWS;
  2. Lidl’s use of the WARREN & SONS mark had caused material confusion in the marketplace over a period and had done damage to PWS’s reputation and business; and
  3. Lidl had not put forward a good substantive defence to the case, saying instead that the claim had been advanced too late and that PWS was too small to be seriously damaged.

Mr Alexander QC also considered the public reaction to the Mail Article, finding that this was generally unfavourable to Lidl, as reflected in the “below the line” comments of which there were over 800. Criticism focused on two key points: (i) that Lidl had “stolen” the mark from PWS deliberately to represent that its goods were specifically from PWS; and (ii) that Lidl had advanced a meritless defence.

Mr Alexander QC noted that usually in these cases, the need for a publicity order arises to ensure that customers are not left with the impression that they would be doing something wrong in buying or using a particular product, to remove the blight from the previously asserted right (Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339). Here, however, the real issue was whether the narrative about the case in the Mail Article was complete; there was no question of people not buying the products the subject of the IP rights because thy were no longer on sale. Lidl was effectively seeking a more balanced narrative. The question was therefore whether it was appropriate for the court to attempt to adjust that narrative and force PWS to ask newspapers to carry a counter-narrative.

Considering the case law, Mr Alexander QC noted that publicity orders can themselves become the subject of comment as to their humiliating nature and can cause the undertakings subject to them to add their own narrative. They can therefore have the reverse effect to that intended, by not “killing” an incorrect story and instead leading to a counter-counter-narrative which may ultimately leave the public in a state of greater uncertainty.

Mr Alexander summarised the relevant principles as follows:

  • The court has a discretionary power to make publicity orders in favour of a successful defendant when it is just and convenient to do so;
  • publicity orders should not be the norm and should only be granted when it is necessary and proportionate;
  • the test in the case of an order sought with respect to a non-infringing product is whether there is a need to dispel commercial uncertainty in the marketplace;
  • the purpose of such an order is not to punish a party, make it “grovel” or lose face; in particular, it is not right to condemn a party to public humiliation before it has had an opportunity to argue its case on appeal;
  • where the need to do so arises as a result of inaccurate reporting by journalists, a party will only be held responsible for such (and therefore liable to seek and pay for the publicity ordered to be provided) if it contributed to that inaccuracy by inaccurate statements and false innuendo;
  • the effect of the authorities is that the court is also likely to take into account the following factors:
    • the extent of publicity given to the case and its outcome, apart from the publicity order;
    • whether any decision the subject of a publicity order may be subject to appeal;
    • the extent to which there is or may be a dispute or agreement over the terms in which any notice should appear; and
    • whether the order would involve more than a measured incursion into any publication’s freedom to decide what it publishes and does not publish and is justified in pursuit of a legitimate aim.

Mr Alexander QC also said that it was appropriate to take into account:

  • whether it is straightforward to encapsulate adequately the effect of a court decision in a brief notice or whether balance requires more by way of narrative;
  • the risk that the order may result in an inaccurate impression, including as to whether the court has endorsed or criticised the conduct of the parties or third parties;
  • the overall effectiveness and impact of a publicity order at remedying the matter;
  • whether other practical and legal remedies are available;
  • what impact a publicity order may have on third parties; and
  • whether a publicity order made at a certain stage in the proceedings, if they have not reached finality, would risk creating a further issue which may make it harder for the parties to settle a case, especially if the parties have indicated a wish to do.

Applying these principles, Mr Alexander QC said that, although there were several factors that pointed in favour of making a publicity order, he found PWS’s submissions more compelling:

  1. responsibility for the aspects of the article complained of was unclear and it would be wrong to make PWS pay for the correction of a narrative for which it might have been only partially responsible;
  2. the Mail Article was not a lead story in the Mail on Sunday/Mail Online;
  3. permission had been given to appeal;
  4. there was no agreement as to the form of the wording, which could lead to further argument;
  5. it was unclear that the Mail on Sunday/Mail Online would be prepared to accept an advertisement that implicitly suggested that a previous article of theirs had been incomplete or inaccurate and it would be wrong to imply criticism without the publishers being given an opportunity to be heard;
  6. a balanced publicity order would need to do more than simply state the outcome of the case and link to the judgment;
  7. there were potential alternative remedies available, such as approaching the relevant publications and agreeing with them to correct or remove the articles;
  8. there was reason to question the effectiveness of a publicity order; it would not necessarily settle the matter once and for all; and
  9. there was prospect that ordering a publicity order might keep the story going with counter-counter narratives; the objective of a publicity order was to draw a line under the matter.

Mr Alexander QC also said that, given that the court was obliged to help the parties to settle, granting a publicity order would not help to achieve this. Costs were already very high and litigating the case to conclusion could take years. Further, both parties had made moves to settle. Continuing with the case was most likely to lead to further financial and reputational risk for Lidl and considerable financial problems for PWS. Accordingly, Mr Alexander hoped that the outcome of this case would not give rise to complacency on Lidl’s part, but pause for thought, especially as customers of both PWS and of Lidl are keen on integrity in marketing.

Mr Alexander concluded that a publicity order is discretionary and that, taking all factors into account, he should not make one, either in relation to the Mail Article or in relation to any of the subsequent articles. (Philip Warren & Son Ltd v Lidl Great Britain Ltd [2021] EWHC 2372 (Ch) (26 August 2021) — to read the judgment in full, click here).