Choice Broadcasting Ltd v Bauer Audio Ireland Ltd (Approved)

Factual and Procedural Background

This opinion concerns an interlocutory injunction application by the Plaintiff to restrain the Defendant from using the initials "GHR" in its logo or broadcasting radio station until trial. The Plaintiff had previously obtained an interim injunction restraining the Defendant from using the brand name "Greatest Hits Radio" on certain broadcasting platforms in the Republic of Ireland. The Defendant complied with the injunction regarding the full brand name but continued to use the initials "GHR". The Plaintiff sought clarification and extension of the injunction to include the initials "GHR". The Court heard submissions and affidavits from both parties, including financial evidence regarding the Plaintiff's ability to meet an undertaking as to damages. The Court also considered issues relating to passing off and trademark infringement claims made by the Plaintiff.

Legal Issues Presented

1. Whether the interim injunction granted by the Court restrains the Defendant from using the initials "GHR".
2. Whether there is a fair question to be tried that the Defendant's use of the initials "GHR" amounts to passing off of the Plaintiff's brand.
3. Whether there is a fair question to be tried that the Defendant's use of the initials "GHR" infringes the Plaintiff's registered trademark "Classic Hits".
4. Whether the balance of convenience and justice favors extending the injunction to include the initials "GHR".
5. Whether the Plaintiff's undertaking as to damages is adequate and if a fortified undertaking is required.

Arguments of the Parties

Plaintiff's Arguments

• The Defendant's use of the initials "GHR" is inextricably linked to the brand name "Greatest Hits Radio" and thus falls within the scope of the original injunction.
• Alternatively, the Plaintiff seeks an extension of the injunction to include the initials "GHR" based on the criteria for interlocutory injunctions: a fair question to be tried, inadequacy of damages, and balance of convenience.
• The Defendant's use of "GHR" amounts to passing off as it creates a likelihood of confusion with the Plaintiff's brand "Classic Hits Radio".
• The Defendant's use of "GHR" infringes the Plaintiff's registered trademark "Classic Hits" due to conceptual similarity and overlapping market demographics.
• The Plaintiff's undertaking as to damages is sufficient but acknowledges the need for a fortified undertaking from its parent company due to balance sheet insolvency and charges over assets.

Defendant's Arguments

• The original injunction restrains only the use of the full brand name "Greatest Hits Radio" and does not extend to the initials "GHR".
• The initials "GHR" are visually, aurally, and conceptually distinct from the Plaintiff's brand name and trademark, thus no passing off or trademark infringement arises.
• The Defendant will comply with the injunction by not using the full brand name but intends to use "GHR" until trial.
• The Plaintiff's undertaking as to damages is inadequate given the Plaintiff's balance sheet insolvency, significant debts including to its parent company, and charges over assets.
• The Defendant provided evidence estimating its damages from any injunction at a significantly higher figure than the Plaintiff's estimate but did not provide this evidence to the Plaintiff, leading the Court to disregard it.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
P. Elliot & Co. Ltd v. Building and Allied Trades Union [2006] IEHC 340	Principles of clarity in court orders and reasonable doubt in contempt proceedings.	Applied to interpret injunction terms strictly; ambiguity resolved in favor of Defendant.
Muller v. Shell EMP Ireland Ltd [2010] IEHC 238	If two reasonable interpretations exist, the one favorable to the defendant should apply.	Supported the narrow interpretation of the injunction excluding "GHR".
Merck Sharp & Dohme Corp v. Clonmel Healthcare Ltd [2019] IESC 65	Criteria for granting interlocutory injunctions including fair question to be tried, adequacy of damages, balance of convenience/justice.	Framework applied to assess Plaintiff's application for extension of injunction.
McCambridge Ltd v. Joseph Brennan Bakeries [2012] IESC 46	Three-part test for passing off: goodwill, misrepresentation, damage.	Used to analyze passing off claim regarding "GHR".
Jacob Fruitfield Limited v. United Biscuits (UK) Limited [2007] IEHC 368	Elements of passing off: reputation/goodwill, risk of confusion, damage.	Referenced to clarify passing off principles.
Galway Free Range Eggs Ltd v. Kevin O'Brien and Others [2019] IECA 8	Passing off based on brand name similarity, not just get-up or packaging.	Distinguished from present case; Plaintiff’s passing off claim on "GHR" not established.
O'Neill's Irish International Sports Company Ltd v. O'Neill's Footwear Drier Company Ltd [1997] IEHC 75	Passing off includes similarity in name or any other similarity calculated to deceive.	Supported Plaintiff’s argument on passing off involving brand names.
Trade Marks Act 1996, s.14(2)	Defines trademark infringement including identical or similar signs causing likelihood of confusion.	Applied to assess Plaintiff's trademark infringement claim.
Cofresco Frischalterprodukte GmbH & Co. KG v. Controller of Patents [2007] IEHC 187	Principles for assessing likelihood of confusion between trademarks.	Guided Court’s analysis of similarity and likelihood of confusion.
Allergan Inc v. Ocean Healthcare Ltd [2008] IEHC 189	Followed principles on trademark similarity and infringement.	Referenced in trademark infringement analysis.
Nutrimedical BV v. Nualtra Ltd [2017] IEHC 253	Trademark infringement principles under s.22.	Used for trademark infringement framework.
Bristol Myers Squibb Holdings Ireland Unlimited Company v. Norton (Waterford) Ltd trading as Teva Pharmaceutical Ireland [2024] IECA 49	Principles governing adequacy and fortification of undertakings as to damages.	Applied to assess Plaintiff’s undertaking and requirement for fortification.
Nolan v. Dildar Limited [2020] IEHC 243	Purpose and requirements for undertaking as to damages in interlocutory injunctions.	Guided Court’s evaluation of adequacy of Plaintiff’s undertaking.
IBRC v. Quinn [2013] IEHC 437	Undertaking as to damages is given to the court, not the opposing party.	Referenced in undertaking as to damages context.
Martin v. An Bord Pleanála [2002] IEHC 82	Court discretion to refuse interlocutory injunction if undertaking as to damages is inadequate.	Supported discretion in refusing injunction without adequate undertaking.
Szabo v. Kavanagh [2013] IEHC 491	Same as Martin v. An Bord Pleanála on undertaking adequacy.	Applied in undertaking assessment.
Dunne v. Dun Laoghaire Rathdown County Council [2003] 1 I.R. 567	Requirement for evidential basis to challenge adequacy of undertaking as to damages.	Emphasized evidential burden on Defendant to demonstrate inadequacy.
Cheltenham & Gloucester Building Society v. Ricketts [1993] 1 W.L.R. 1545	Undertaking as to damages described as the price for granting interlocutory injunction.	Referenced to explain purpose of undertaking.
Estuary Logistics v. Lowenergy Solutions Ltd [2008] 2 I.R. 806	Approved principles on undertaking as to damages.	Referenced for undertaking principles.
Caldwell v. Tracey [2012] 2 I.R. 417	Same as above on undertaking as to damages.	Referenced in undertaking context.

Court's Reasoning and Analysis

The Court first interpreted the terms of the original interim injunction, concluding that it restrained only the use of the full brand name "Greatest Hits Radio" and did not include the initials "GHR". The Court relied on principles of clear and unambiguous drafting of injunctions and resolved any doubt in favor of the Defendant.

Regarding passing off, the Court applied the established three-part test requiring goodwill, misrepresentation, and damage. It distinguished between passing off based on brand names versus get-up or packaging. The Court found that the Defendant's initials "GHR" were visually and conceptually distinct from the Plaintiff's brand "Classic Hits Radio" and that there was little likelihood the public would associate "GHR" with the Plaintiff. Consequently, no fair issue to be tried on passing off was established.

On trademark infringement, the Court considered the Plaintiff's registered mark "Classic Hits" and the Defendant's sign "GHR". The Court found no identity or similarity sufficient to cause likelihood of confusion, noting absence of visual, aural, or conceptual similarity. Thus, no fair question to be tried on trademark infringement was found.

In balancing justice and convenience, the Court weighed the Plaintiff's existing injunction against the Defendant's right to compete using "GHR". It concluded that the inconvenience to the Defendant of prohibiting use of "GHR" outweighed any harm to the Plaintiff, especially as the Defendant would not answer queries linking "GHR" to "Greatest Hits Radio".

On the undertaking as to damages, the Court examined detailed financial evidence. It acknowledged the Plaintiff was balance sheet insolvent but cashflow solvent, supported by its parent company which offered a fortified undertaking. The Court found the Plaintiff's undertaking as to damages required fortification due to asset charges and financial frailties. The Defendant's evidence on potential damages was not fully considered due to procedural fairness concerns. The Court emphasized the evidential burden on the Defendant to prove inadequacy of the undertaking.

The Court also addressed a related issue regarding a third party's use of "Greatest Hits" branding, finding no lack of candour by the Plaintiff and no relevance to the injunction decision.

Holding and Implications

The Court held as follows:

• The interim injunction granted on 20 June 2025 does not restrain the Defendant from using the initials "GHR".
• The Plaintiff has not established a fair question to be tried that the Defendant's use of "GHR" amounts to passing off or trademark infringement.
• Even if such issues were established, the balance of justice favors refusing to extend the injunction to cover "GHR".
• The Plaintiff's undertaking as to damages is insufficient on its own due to balance sheet insolvency and asset charges; a fortified undertaking from the Plaintiff's parent company is required.

Implications: The Defendant may continue to use the initials "GHR" pending trial. The Plaintiff retains an injunction against use of the full brand name "Greatest Hits Radio". The Court will consider further submissions on the adequacy of the undertaking as to damages related to the interim injunction if contested. No new legal precedent was established; the decision applies established principles to the facts presented.