THE HIGH COURT
2003 No. 10438P
BETWEEN
MISS WORLD LIMITED, MARGARET HUMPRHIES AND ANDREA ROCHE
PLAINTIFFS
AND
MISS IRELAND BEAUTY PAGEANT LIMITED AND KIERAN MURRAY
DEFENDANTS

JUDGMENT of Miss Justice Laffoy delivered on 10th February, 2004.
The Application	
	This is the plaintiffs’ application for an interlocutory injunction restraining the defendants from passing off any of their events or pageants as or for the Miss Ireland pageant of the plaintiffs and from passing off any of their events, pageants or products as being associated with the Miss Ireland pageant of the plaintiffs.  The plaintiffs also seek certain ancillary interlocutory orders, namely:
(1)	an injunction requiring the cancellation of the defendants’ domain name and e-mail address, which include in the name and address the term “Miss Ireland”, and, pending cancellation, the disconnection of the domain name from any active internet address; 
(2)	an injunction requiring the defendants to cease operating any business under any name or style consisting of or including the term “Miss Ireland” or any other confusingly similar name;
(3)	an injunction requiring the defendants to remove the term “Miss Ireland” from all business documentation; and 
(4)	an injunction requiring the defendants to remove from their websites the term “Miss Ireland” and any references to the Miss World competition that could cause visitors to that website to believe that the defendants are franchisees of the first named plaintiff and restraining the defendants from doing any act or thing that could cause confusion in this respect in the future.  
The first named plaintiff is a private company incorporated under the laws of Jersey, having its principal place of business in the United Kingdom.  Its business is the organisation and running of the Miss World beauty pageant and other beauty pageants, including the Miss Ireland beauty pageant.  The second and third named plaintiffs carry on business in the State and are currently the franchisees of the first named plaintiff to organise a beauty pageant in Ireland to select a representative, designated as “Miss Ireland”, to participate in the Miss World contest.  
The first named defendant, a limited liability company, was incorporated in the State in 1998.  The second named defendant is a director and shareholder of the first named defendant.  Formerly he held the franchise from the first named plaintiff to organise a beauty pageant in Ireland to select a representative, designated as “Miss Ireland”, to participate in the Miss World contest.  Currently he holds franchises to send contestants to represent Ireland at three international beauty pageants: the Miss Universe contest, the Miss Europe contest and the Miss International contest.  
These proceedings were initiated by a plenary summons issued on 16th September 2003.  On the same day, the notice of motion which is before the court, which was first returnable for 24th September 2003, was issued.  Six affidavits have been filed on behalf of the plaintiff and six on behalf of the defendants.  The principal affidavits filed on behalf of the plaintiffs were sworn by Julia Morley (Mrs. Morley), the chairperson and a director of the first named plaintiff.  The second named defendant swore the principal affidavits in reply.  As is to be expected in a matter of this nature, the affidavits are disputative, argumentative and raise a plethora of conflicts of fact.  It is not the function of the court to attempt to resolve such conflicts on this application.  The function of the Court is to determine whether – 
(a)	the plaintiffs have raised a fair and bona fide question to be tried, 
(b)	if they have, in the event of being refused an injunction and succeeding in the action, the plaintiffs would be adequately compensated by damages, 
(c)	if they would not, in the event of the injunction being granted and the plaintiffs failing to succeed in the action, the defendants would be adequately compensated by damages, and 
(d)	the balance of convenience lies in favour of granting or refusing the injunction.
Both sides drew the Court’s attention to the following statement of Finlay C.J. in Westman Holdings Limited v. McCormack [1992] 1 I.R. 151 (at pp. 157-158):
“Having regard to the decision of this Court in Campus Oil v. The Minister for Energy (No. 2) [1983] I.R. 88, I am satisfied that once a conclusion is reached that the plaintiff seeking an interlocutory injunction has raised a fair question to be tried at the hearing of the action in which, if he succeeded, he would be entitled to a permanent injunction that the Court should not express any view on the strength of the contending submissions leading to the raising of such a fair and bona fide question, but should proceed to consider the other matters which then arise in relation to the granting of an interlocutory injunction.”
Fair question to be tried
The wrong which the plaintiffs allege and contend the Court should intervene to remedy is passing off.  There is agreement as to what the plaintiffs will have to prove in order to succeed in the action.  Both sides referred the court to the three part test formulated by Lord Oliver in Reckitt & Colman Products Limited v. Borden Inc. & Others [1990] 1 All ER 873.  In his speech (at p. 880) Lord Oliver said:
“The law of passing off can be summarised in one short proposition, no man may pass off his goods as those of another.  More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed.  These are three in number.  First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying “get-up” (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get up is recognised by the public as distinctive specifically of the plaintiff’s goods or services.  Second, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff.  Whether the public is aware of the plaintiff’s identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff.  For example, if the public is accustomed to rely on a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name.  Third, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.”
First element of the test:  reputation/goodwill
Counsel for the defendants laid particular emphasis on the requirement that, to establish a goodwill or reputation, the brand name must be recognised by the public as distinctive specifically of the plaintiffs’ services.  For the plaintiffs to succeed in their action, he submitted, they must establish that the name Miss Ireland is exclusively associated with them; in other words, that it is distinctive of their business.  He urged that the evidence before the Court shows that the name Miss Ireland could not on any basis be said to be exclusively associated with the plaintiffs and that, accordingly, the plaintiffs have not established that there is a serious issue to be tried.  
The history of the involvement of the Miss World organisation (the expression adopted by Mrs. Morley to collectively describe the first named plaintiff and its predecessor, Mecca Limited) with the Miss Ireland pageant is outlined in the affidavits of Mrs. Morley.  She averred that Mecca Limited inaugurated the Miss Ireland pageant in 1949 in Belfast, two years before the Miss World pageant was first held.  The winner was to participate in the National Bathing Beauty Contest held in Morecambe in Lancashire, which she averred was run by the Miss World organisation in conjunction with the Sunday Dispatch, a newspaper then in circulation throughout Ireland, and the Borough of Morecambe and Heysham.  In the late 1950s Mecca Limited took over sole control of the Miss Ireland competition, which she believes was run by Mecca Limited “together with the Sunday Dispatch” up to that time.  Subsequently, the Miss World organisation decided to franchise out the running of the Miss Ireland pageant.  To date, there have been five successive franchisees namely:
(1)	Ann Murray (1976 and 1977)
(2)	Starlight Magazine (1978 and 1979)
(3)	Krish Naidoo (1980 to 1996), who traded under the name Miss Ireland Beauty Pageant, 
(4)	the second named defendant (1997 to 2002); and
(5)	the second and third named plaintiffs (2003, when the second named defendant’s franchise was not renewed, to date).
The winner of the Miss Ireland pageant, who was exclusively known as Miss Ireland in Ireland, represented Ireland in the Miss World contest each year.  In December 2003 Miss Ireland who was selected at the plaintiffs’ pageant held in August 2003 won the Miss World title, thereby, Mrs. Morley averred, increasing the goodwill and reputation of the Miss Ireland contest.  During the years in which the franchise from the Miss World organisation was held by Mr. Naidoo and the second named defendant, contestants to represent Ireland at other international beauty competitions, for example, the Miss Universe pageant, were also chosen at the Miss Ireland pageant.  However, this happened with the permission of the Miss World organisation.  The contestants so selected were not known as “Miss Ireland”.  The winner of the Miss Ireland pageant was solely entitled to the title Miss Ireland in Ireland and went on to represent Ireland at the Miss World contest.  On one occasion only, in 1980, a person other than a franchisee of the Miss World organisation ran a Miss Ireland competition in parallel with that run for the Miss World organisation: Ann Murray, an ex franchisee of the Miss World organisation held a competition under the name Miss Ireland in that year to select a representative for the Miss Universe contest.  While Mr. Naidoo was the franchisee he clearly and publicly acknowledged that the Miss Ireland title was owned by the first plaintiff and was licensed to him. 
It emerged during the legal submissions that the involvement of Mecca Limited in the competition held in Morecombe was the subject of proceedings in the Chancery Division of the High Court of Justice in the 1960s in which the Borough claimed exclusive title to the name Miss Great Britain:  The Borough of Morecambe and Heysham v. Mecca Limited [1962] RPC 145 – interlocutory application; Morecambe and Heysham v. Mecca Limited [1966] RPC 423 – trial.  In the Morecambe case the plaintiff sought to restrain Mecca Limited from conducting a pageant under the name “Miss Britain”, but was unsuccessful both at the interlocutory stage and at the trial.
In urging that the evidence does not establish that the name Miss Ireland is exclusively owned by and associated with the plaintiffs and that the plaintiffs’ claim must, accordingly, fail in limine, counsel for the defendants advanced a variety of arguments, some legal and some factual, including the following.  
First, relying on a passage from the judgment of Wilberforce J. at the interlocutory stage of the Morecombe case to the effect that the name “Miss Great Britain” consisted of words of common parlance and was not specifically indicative of any particular product, it was submitted that the name Miss Ireland is primarily a descriptive name and could not be said to be inherently distinctive.  However, in his judgment in the Morecambe case, following the trial of the action, Buckley J. took a different view.  He stated (at p. 438):
“The plaintiffs contend, and I think contend correctly, that the title here used by them is in the nature of a fancy expression, one in which they have acquired a certain measure of goodwill or, at any rate, one which is in a certain measure associated with the goodwill which they have in their contest . . .”
	Secondly, it was submitted that certain facts can be extrapolated from the judgments in the Morecambe case, which it is contended are findings which bind the first named plaintiff as the successor of Mecca Ltd., which controvert assertions made by Mrs. Morley as to the creation of and the use thereafter of the name Miss Ireland.  Counsel for the plaintiffs argued that this approach is not a proper use of the authority.	Thirdly, it was submitted that facts deposed to by Mrs. Morley proved the concurrent use of the Miss Ireland title during the 1980s and indicated that the first named plaintiff did not have exclusive rights.  Counsel for the defendants exemplified the following matters:  
(a)	the single instance in 1980 when two Miss Ireland contests were held in parallel; 
(b)	the fact that, when a trade mark, a device mark, including the words “Miss Ireland” was registered in the name of the first named plaintiff under the Trade Marks Act, 1963 in 1986, a disclaimer was registered to the effect that registration gave no right to the exclusive use of the words “Ireland” and “Miss”, a fact which counsel for the plaintiffs contended should carry no weight as it is attributable to the nature of the trade mark legislation in force in 1986; 
(c)	the fact that an agreement entered into between Miss Universe Inc. and the first named plaintiff in 1982, which was exhibited by Mrs. Morley, contained a provision whereby Miss Universe Inc. appointed the first named plaintiff its exclusive franchisee to supply a contestant from Ireland to compete in the annual Miss Universe contest, who would be designated by the title of “Miss Ireland”, a fact which counsel for the plaintiffs submitted was not inconsistent with the first named plaintiff’s claim to exclusive use of the title in Ireland; and 
(d)	the terms of the franchise agreement which over the years the first named plaintiff entered into with successive franchisees, in which there is no reference to a “Miss Ireland” contest or to the name “Miss Ireland” being the property of the first named plaintiff, which Mrs. Morley attributed to the agreement being the standard form of agreement designed to serve in all countries of the world, including countries in which the Miss World Organisation does not claim to have acquired exclusive rights in national titles.
	In mentioning some only of the features of the evidence and the legal principles applicable to which counsel for the defendants has drawn attention in support of his contention that the evidence does not establish that the name “Miss Ireland” is exclusively associated with the first named plaintiff, I may not have done justice to the very thorough and comprehensive submission made on behalf of the defendants.  However, it seems to me, that while the features outlined challenge the plaintiffs’ assertion that the first named plaintiff has exclusive rights in the Miss Ireland name and brand in Ireland, there remains a fair and bona fide issue to be tried that there is goodwill attached to the plaintiffs’ Miss Ireland pageant in the mind of the public by association with the name “Miss Ireland” which is recognised by the public as distinctive specifically to the plaintiffs’ national pageant in Ireland.

The respective positions of the plaintiffs and defendants clarified
	At this juncture, it would be useful to record matters which have been clarified by the parties in the course of the hearing.  The first named plaintiff is not claiming: 
(a)	that it has the sole and exclusive right to hold beauty pageants or contests in Ireland, or
(b)	that it has the sole and exclusive right to use the Miss Ireland title outside Ireland, or
(c)	that it has exclusive rights in respect of the usual format of beauty pageants.
On this application, the defendants do not – 
(i)	put in issue the right of the plaintiffs to the Miss World title or the first named plaintiff’s right to licence the running of national contests to select national candidates for the Miss World pageant (although they reserve the right to raise an issue as to the first named plaintiff’s entitlement to terminate its arrangement with the defendants at the trial), nor
(ii)	seek to establish that they are the sole owners of the Miss Ireland name (although they reserve the right to make the case that they purchased the right to hold what they described as “the omnibus pageant”, formerly run by Mr. Naidoo, for the purposes of finding entrants to represent Ireland at each of the four international beauty contests previously mentioned).
The defendants assert an entitlement to use the Miss Ireland name in connection with beauty pageants and competitions and intend to hold their next pageant later in the Spring of 2004.  The defendants have not run a pageant since the franchise from the first named plaintiff expired at the end of 2002.  They had intended to run an event in October, 2003 but they gave an undertaking to the Court in these proceedings not to do so.  
Second element of the test:  misrepresentation/confusion
I return now to the issue of whether the plaintiffs have established that there is a fair and bona fide question to be tried and, in particular, to the second element of the test as to the existence of passing off.  
Consideration of the second test must be predicated on the assumption that the plaintiffs have an exclusive right to use the name Miss Ireland in connection with their beauty pageant in Ireland, which remains to be proved at the trial of the action.  It was submitted on behalf of the plaintiffs that the use of a name that is identical to that of an established business on and in relation to the identical field of endeavour or business within the same territory, will inevitably cause confusion which will amount to the kind of misrepresentation envisaged in the test.  In the instant case, it was submitted, the defendants propose to confer on representatives selected at their pageant the identical title which the plaintiffs have used for over fifty years and, in addition, they propose to use an identical name to that of the plaintiffs’ pageant for their pageant, which will be very similar in format to that of the plaintiffs. 
 On behalf of the defendants, it was submitted that the authorities suggest that a relatively small change in the title will be sufficient to differentiate a defendant’s activities from those of a plaintiff.  In support of this proposition counsel for the defendants relied on an Australian case involving the first named plaintiffs, Miss World (Jersey) Ltd. v. Misses of the World Pageants Inc. (Federal Court of Australia, 1st February, 1988), in which Pincus J. said:
“Both ‘Miss’ and ‘World’ are of course very ordinary and common words.  The applicants have chosen for their mark a word consisting of a title held by a large proportion of the women and girls in English speaking countries, combined with the name of our planet.  It is my view that a court would not readily expand the prima facie scope of protection afforded by registration of the relevant mark [the Miss World Mark] by conceding a monopoly also over similar titles such as ‘Mrs.’ or ‘Mr.’ in connection with such contest.”
	While infringement of a trade mark was at issue in that case, it was submitted that the principle is also of relevance in the context of passing off.  The defendants also rely on the fact that at an early stage, in a letter dated the 23rd September, 2003 from their solicitors to the plaintiffs’ solicitors, they made it clear that they were prepared to differentiate their pageant from the plaintiffs’ pageants, the suggestion made being in the following terms:
“Generally we would advise that if your clients are prepared clearly to identify the competition that they wish to run as Miss Ireland World, our clients could then entitle their competitions Miss Ireland Universe, and Miss Ireland International and so forth.  Obviously, however, your client is not entitled to prevent our client continuing on with such contests.”
	That remains the defendants’ position.  However, counsel for the plaintiffs submitted that the recognition by the defendants that clarification is necessary to distinguish the business of the plaintiffs and the business of the defendants is implicit recognition of the likelihood of confusion.  
	It seems to me that the plaintiffs have established that there is a fair and bona fide question to be tried that, even with the clarification suggested, the public will confuse the defendants’ business with the plaintiffs’ business.
Third element of test: damage
	As to the third element, in essence, as regards the principal relief sought by the plaintiffs, an order prohibiting the defendants from running a pageant in Ireland under the name “Miss Ireland Pageant”, this is a quia timet application.  It seems to me that the plaintiffs have established that there is a fair and bona fide question to be tried that their goodwill would be likely to be adversely affected if the defendants were to run a pageant so styled, which, of itself, would give rise to an assumption of resulting damage (C & A Modes v. C & A Waterford Ltd [1976] I.R. 198, per Henchy J. at p. 213).  As was pointed out by Murphy J. in Falcon Travel Limited .v. Owners Abroad Group plc. [1991] 1 I.R. 175 at p. 182, it is the appropriation of goodwill which constitutes the damage necessary to sustain an action for passing off.
Adequacy of damages/balance of convenience
	In B & S Ltd. v. Irish Autotrader Ltd. [1995] 2 I.R. 142, McCracken J., having outlined the tests in relation to adequacy of damages and balance of convenience which the courts apply in determining whether an interlocutory injunction should be granted by reference to the judgment of Lord Diplock in American Cyanamid v. Ethicon Ltd. [1975] A.C. 396, went on to say:
“While Lord Diplock only used the phrase, ‘balance of convenience’ when considering the position if damages were not an adequate remedy for either party, I would be more inclined to the view that the entire test rests on a balance of convenience, but that the adequacy of damages is a very important element, and may frequently be the decisive element in considering where the balance of convenience lies.”
	I respectfully agree.
	I think it would be helpful at this stage to reiterate the parameters of the plaintiffs’ claim.  The plaintiffs claim the exclusive use of the name “Miss Ireland” in association with their beauty pageant in Ireland.  They do not claim that the defendants are not entitled to conduct a beauty pageant in Ireland, adopting the usual format of such an event.  They do not claim that the defendants are not entitled to honour their commitments to the promoters of the international pageants, from whom they hold franchises.  In particular, they do not claim that a representative selected at a pageant run by the defendants for such an international pageant, for example, the Miss Universe pageant, is not entitled to be designated Miss Ireland at the international pageant held outside Ireland.  What the plaintiffs claim is that the defendant is not entitled to use a name in which the words “Miss” and “Ireland” are conjoined in association with a pageant conducted in Ireland or to designate the winner at such pageant as “Miss Ireland” in Ireland.  However, the defendants contend that, in order to maintain their credibility, the Irish entrant to Miss Universe must be entitled to designate herself by reference to the geographical name, Ireland, within the State because, otherwise, it would be impossible to express and recognise her national status and the fact that she has won a nationwide competition.
	The submissions made by the parties on the issue of adequacy of damages must be analysed in the context of the claim being advanced by the plaintiffs.  From the plaintiffs’ perspective, the question is whether, if the defendants are permitted to run a rival Miss Ireland pageant and select three representatives for three international pageants, each of whom is entitled to designate herself as “Miss Ireland” in Ireland in the year 2004 and in each subsequent year until these proceedings are concluded, the plaintiffs would be adequately compensated by an award of damages for the consequential damage to their goodwill, adverse effect on their ability to attract publicity, sponsorship and media interest, and dilution of the worth of the title.  It seems to me that it would be impossible, not merely difficult, to quantify in damages loss of this nature.
	From the defendants’ perspective, the issue is whether, if prevented from using the name Miss Ireland in connection with their pageant and from designating each of the representatives selected for the international pageants as “Miss Ireland” in Ireland, and it transpires that they should not have been so prevented, any consequential impact on the development of their goodwill and business and any other damage would be adequately compensated in damages.  Equally, it seems to me that such loss would be impossible to quantify.
	The defendants have questioned the plaintiffs’ ability to meet an award of damages which might ultimately be made in the defendants’ favour, primarily on the basis that the first named plaintiff is a company incorporated in Jersey and the accounts are not readily available to the defendants.  There is before the Court an affidavit of Michael Macario, the Financial Director of the first named plaintiff, who avers that he has knowledge of its accounts and he can confirm that it is solvent and in good standing and has a long and successful trading history.  I reject the defendants’ argument on the ability of the plaintiffs to meet their undertaking.
	Therefore, whether to grant an interlocutory injunction or not must be decided on the balance of convenience.  I think the balance of convenience lies in favour of the plaintiffs because the first named plaintiff has been in the marketplace in its own right, either directly or through franchisees, for over fifty years and has run a Miss Ireland pageant each year during that period.  The second named defendant has not been in the marketplace, other than as a franchisee of the first named plaintiff, and the defendants have never run a Miss Ireland pageant in their own right.
Decision
	There will be an order in the terms sought by the plaintiffs in paragraphs 1, 4, 5, 6 and 8 of the Notice of Motion save that, in relation to the domain name, the order will direct the disconnection of the domain name from any active internet address.