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1. The second named Plaintiff in these proceedings, Nua Limited, which was incorporated on the 20th of September 1995 developed in or about September 1996 an Internet Information Classification System which would provide users of the internet requiring information which related to Ireland with a simple and charge free means of accessing that information without having to engage in random searches through an ever expanding volume of information on the internet relating to Ireland. For this service the Second named Plaintiff devised the business name, “Localireland”, alternatively “Local ireland”, sometimes written as a single word and sometimes as two separate words. In either case by way of a distinctive logo the initial letter, “L” is presented in upper case with a swirl device like a crook or concentric crescents with one pair of the adjacent horns joined by a transverse line integrated into the right upper quarter of the vertical stroke of the letter and with the horizontal stroke of the letter presented as an equilateral triangle. The other eleven letters are always presented in lower case. The first five letters, including the initial “L” are always presented in bold type and where colour printing is used are always in a darker shade of colour.

2. In February 1997 a serious of electronic addresses for this system, generally known as, “domain names” were registered by the second named Plaintiff with an international control organisation known as, “Network Solutions” . These domain names are “local.ie”; “localireland.com” ; “local-ireland.com” ; “local-ireland.org”, and “local-ireland.net” .

3. The first named Plaintiff, Local Ireland Limited was incorporated on the 24th November 1998, initially under the name “Chingola Limited”, which was changed on the 11th December 1998 to its present name as a step in a joint venture business arrangement with Telecom Eireann now as known as Eircom plc. By an Intellectual Property License Agreement, dated 4th December 1998, the second named Plaintiff granted to the first named Plaintiff a non exclusive, non transferable licence in respect of its intellectual property rights in the reputation and goodwill in the name, get up and logo, “ Localireland” alternatively “Local-ireland”, and in the domain names, “Localireland.com” and “local.ie”. On the 23rd June 2000 the first named Plaintiff became aware, as a result of a reply received by them to a newspaper advertisement, that an entity describing itself as, “Local Ireland-Online” alternatively “local ireland-online” was seeking staff. Contact was established with this entity which proved to be the first named Defendant a company which was incorporated on the 20th of June 2000. On behalf of the first named Defendant it was confirmed that it was trading and proposed to continue to trade under the business name, “Local Ireland-Online”, offering a subscription business listing service through which local businesses would become accessible on the internet through the central web site of the first named Defendant. The Plaintiffs subsequently ascertained that a domain name, “localireland-online.com” had been registered by the second named Defendant on his own behalf on the 30th June 2000. It was subsequently confirmed that the first named Defendant was using and intended to continue to use this domain name.

4. On the 6th of July 2000 the Plaintiffs issued a plenary summons and also a notice of motion. The notice of motion claimed an interlocutory injunction and was grounded on the affidavit of Mr Gerry McGovern, Chief Executive Officer of each of the Plaintiffs, sworn on the 6th of July 2000. By an Order of this Court, (Mr Justice McCracken) made ex parte on the 6th of July 2000 the notice of motion was made returnable for the 10th of July 2000. The plenary summons, the notice of motion, the grounding affidavit and exhibits were served on each of the Defendants on the 7th of July 2000. An appearance was entered on behalf of both the Defendants on the 10th of July 2000. A Replying Affidavit was sworn on the 13th July 2000 by Mr Con Daly the second named Defendant in these proceedings and a director of the first named Defendant, on behalf of the first named Defendant. A further affidavit on behalf of the Plaintiffs was sworn on the 14th July 2000 by Mr Eoin MacGiolla Ri internal legal advisor of the first named Plaintiff.

5. As appears at paragraphs 12 and 17 of the affidavit of Mr Con Daly, the Defendants decided after the commencement of these proceedings to change the business name, “ Local Ireland - Online ” to, “ Locally Irish ” and in future to use only this name, “Locally Irish ”. This name is presented as two separate words with the second word always presented in bold type and sometimes with the initial letter in each word presented in upper case but always with the remaining letters in each word presented in lower case. No shading or colour differentiation is made between the two words. This get-up is accompanied by a logo consisting of two concentric crescents differentiated by colour or shading with a dark arrow like device entering between the horns of the inner crescent and the entire casting a dark lateral shadow and resting upon a white partial mirror image of itself. Sometimes the crescents face left with the arrow shaft in the two o’clock position and sometimes right with the arrow shaft in the ten o’clock position and are presented as standing vertically on a surface, colour or shading differentiated and either clear or with a variety of art work including a map of Ireland showing county outlines and names.

6. In addition a new domain name, “ locallyirish.com”, “with all international variants”, has been registered with Network Solutions. Why, and as regards the domain name, when, these changes were made is a matter of a very considerable dispute between the parties which I cannot resolve on this application and in respect of which I therefore draw no inferences whatsoever. For the purposes of this application it is sufficient to record that the Plaintiffs contend that notwithstanding the differences in get-up and logo which they claim are in any event insufficient, the use by the Defendants of the business name, “ LocallyIrish” and the domain name, “ locallyirish.com”, or the business name, “Local Ireland-Online” and the domain name “ localireland-online.com”, amounts to parasitic and imitative trading by the Defendants or one or other of them, is a material infringement of the Plaintiffs' property rights, and constitutes the tort of, “ passing off ”. In the Affidavit of Mr. Gerry McGovern sworn in these proceedings on behalf of the Plaintiffs' on the 6th of July 2000 it is asserted that since December 1998 the first named Plaintiff has built up and operated an Internet Information Service, now covering the whole island of Ireland, featuring some 1700 towns and villages and with 3000 subject classifications. It is stated on oath that this website is the second most busy website in the State with approximately 205,000 separate visits to the site per month. Corroboration of this statistic is provided in the form of a User Audit Certificate for the month of March 2000, furnished by A.B.C. Electronic Media Audits Limited, of Hertfordshire, England. The first named Plaintiff estimates that approximately 23 per centum of all visits to its website are by residents of this Jurisdiction.

7. The basis for this estimate is not stated, however, it is clear from the website extracts exhibited in the Affidavit of Mr. Gerry McGovern that a considerable part of the information featured on the website would be of immediate interest to persons in this Jurisdiction, for example, sports news, business news, share prices, business and service directories, mortgage stores, theatre arts and entertainment guides, news and weather. At paragraph 6 of his Affidavit sworn in these proceedings on behalf of the first named Defendant on the 13th of July 2000, Mr. Con Daly submits that the emphasis of the plaintiffs website is on geneological services and a diary of local events and festivals. While such services and information are indeed provided by the plaintiffs website it is clear from the Affidavit evidence that such information forms but a small part of the overall information provided on the Plaintiffs website.

8. It is stated upon oath in the Affidavit of Mr. Gerry McGovern that since September 1998 the first named Plaintiff has spent in the region of £594,000.00 on advertising its business name and services in Ireland and abroad. Corroborative evidence for such expenditure abroad is provided in the form of a Preliminary Market Report, covering advertising and promotion of the Plaintiffs business name and services in the United States of America on and about the 17th March 2000. In the State this advertising is stated to have been in the print media on television and in outdoor advertisements. A further sum of £200,000 is stated to have been committed to be spent in launching the Plaintiffs’ website accommodation service and the Court was informed by Counsel for the plaintiffs that some of this £200,000 has already been spent.

9. It is further averred that since its incorporation the first named Plaintiff has invested over £3 million in employing persons to devise software, to gather and present information and to negotiate and conclude agreements with Local Partners or Franchisees. It is stated that the purpose of these agreements is to enable such Local Partners or Franchisees to establish their own web presence as part of the plaintiffs website and to offer advertising and subscription based business listings through which local businesses can obtain an internet presence via the plaintiffs website. It is sworn that to date two such agreements have been concluded and are in operation while a further eight such agreements are at an advanced stage of negotiation. In addition the plaintiffs say that they actively seeking another twenty such Local Partners or Franchisees. The Plaintiffs claim that having regard to this extensive use made of the website of the first named Plaintiff and to the substantial marketing advertising and promotion of the business name “ Local Ireland” or alternatively “ Localireland”, they have established a substantial and exclusive reputation in this business name its get-up and its related logo and that the business and services conducted and sold by them under this business name and associated domain names are associated in the minds of the purchasing public exclusively with the Plaintiffs or one of them.

10. The Plaintiffs claim may be summarised as follows: the similarity of the business names and associated domain names, the similarity of the get-up, the similarity of the logo of the first named Defendant and the first named Plaintiff, and the similarity of the services offered, that is, “a subscription listing of commercial undertakings accessible through the central website of the provider ”, would, as a reasonable probability, result in customers and prospective customers of the first named Plaintiff being misled into thinking that the services offered by the Defendants or one of them was as a Branch or Licensee of the first named Plaintiff or was otherwise linked with or connected to the first named Plaintiff. The Plaintiffs having pointed to one identified instance of confusion go on to say that they truly believe that further confusion of the business of the Defendants with their business is in the above circumstances inevitable. They claim that the result of such confusion would be to cause damage to their business for which an award of damages would be an insufficient remedy. Such damage is claimed under four headings which I venture to summarise as follows:-

11. The Defendants case, as set out in the replying Affidavit of Mr. Con Daly, and here again I am summarising, is that there is no misrepresentation involved in their use of the business name, “Local Ireland-Online ”, or in the business name, “ Locally Irish ”, particularly having regard to their getup and logo. In his Affidavit on behalf of the first named Defendants Mr. Con Daly avers that these business names, their getup and logo, their associated domain name and the services provided by the first named Defendant are so clearly distinct from the business name, getup and logo of the Plaintiffs, their associated domain names and the services provided by them, that persons are not likely to be misled into believing that the services of the first named Defendant are the services provided by the first named Plaintiff or that the first named Defendant is a Branch or Licensee of the first named Plaintiff or is in any way associated with it.

12. Counsel for the Defendants argued that the Plaintiffs, having adopted a business name containing words in common use are not entitled to an unfair monopoly in those words and that accordingly the Court should accept the differences in the business names getup and logos, even if the Court should consider them to be small, which the Defendants submit which they are not, as none the less sufficient to distinguish the business of the Defendants from that of the Plaintiffs. This is particularly so, Counsel argued, having regard to what the Defendants alleged to be differences in the services provided and what the Defendants submit are different areas from which the businesses are carried on. Counsel for the Defendants referred to the cases of, Reddaway and Company -v- Banham , (1896) AC 199, ( H of L ); Office Cleaning Services Limited -v- Westminster Office Cleaning Association , (1946) 1. AER 320, and B.S. -v- Irish Auto Trader , (1995) 2.ILRM. 252, in support of this argument.

13. Despite the suggestion by Counsel for both sides that the outcome of this application for interlocutory relief is likely to determine the dispute there was no agreement to treat the hearing of this Motion as the trial of the Action. In such circumstances, having regard to the decision of the Supreme Court in the Campus Oil Limited -v- The Minister for Industry and Energy , (2), (1983) I.R.88, I am not entitled at this juncture to inquire into the merits of the case or to consider the probabilities of success of any party at the trial of the Action. Provided that the Plaintiffs, upon whom the onus of proof lies, have shown to the satisfaction of this Court, that there is a fair bona fide question to be tried as between them and the Defendants and that if they are correct in this contention that the continuance of the Defendants activities until the trial and determination of the Action is likely to cause substantial damage to them for which an award of damages at the trial would not be adequate compensation, I am obliged, as the law now stands, to determine this Application solely on the balance of convenience, that is on the relevant extent of the damage to one or other party if the injunction is or is not granted.

14. It seems to me somewhat regrettable that in the present case where most if not all of the relevant facts appear to be before the Court on Affidavit, that the parties by agreeing to treat the hearing of this Motion as the trial of this Action, “did not use the interlocutory injunction as a simple quick and relatively and cheap way of asking the Court who is right”. (See, Kerly’s , Law of Trade Marks and Trade Names, (12th Edition: (1986), page 322 note 84).

15. I am satisfied that the Plaintiffs have raised so far as this may be done on Affidavit, a strong prima facie case that as regards the business name, “ Local Ireland ”, and its associated domain names that there already exists in this jurisdiction as well as abroad a large body of the public which in the words Barron, J., in the case of Muckross Park Hotel Limited -v- Randles and Others , (High Court: 10/11/1992, unreported judgment available), “ know it and what it stands for ”, namely the Internet Information Service of the Plaintiffs'. I am also satisfied that the Plaintiffs' have made out a strong prima facie case that they have in this jurisdiction as well as abroad a very valuable reputation in the business name, “ Localireland” or alternatively, “ Local Ireland ”, and its associated domain names.

16. I am satisfied that the Plaintiffs have made out a bona fide case to be tried that the use by the Defendants or either of them of the business name, “ Local Ireland-Online ”, and its associated domain name, “ localireland.com”, which takes over and incorporates the name of the first named Plaintiff as a whole, would result in a very high probability of deception as amounting to, “ a misrepresentation by the Defendants to the public (whether or not intentional) leading or likely to lead the public to believe that the services offered by (them) are the services of the Plaintiff(s)”, ( See, Reckitt and Coleman Products Limited -v- Borden , (1990) 1 AER873 at 880), or that the Defendants in providing such services are in some way associated with the Plaintiffs' business, for example as a Branch or Licensee of the Plaintiffs'.

17. I am further satisfied that the Plaintiffs' have made out a fair bona fide case to be tried that the use by the Defendants' or either of them of the business name, " Locally Irish ", and its associated domain name, " locallyirish.com", are so close to the business name and domain name of the first named Plaintiff that no sufficient or real distinction could reasonably be said to exist between them, particularly having regard to the similarity of the relevant service, that is, " the subscription listing of commercial undertakings accessible through the central web of the provider ", carried on by the first named Plaintiff and the first named Defendant and that as a matter of reasonable probability the public are likely to be similarly misled. I do not consider the fact that the Plaintiffs' also provide other services under the same business name and associated the domain name lessens the force to their argument.

18. In the case of the business name, " Locally Irish ", and the business name, " Local Ireland-Online ", and their associated domain names, I am satisfied that the Plaintiffs' have established a fair bona fide case to be tried that the getup and logo of the Defendants' is in the case of each business name so similar to their getup and logo as to lead to similar public confusion to the detriment of the Plaintiffs' between their services and business and those of the first named Defendant, or alternatively, that the Defendants' getup and logo is not in the case of either business enough to constitute a sufficient distinction between the Defendants' services and business and those of the Plaintiffs' so as to prevent the public from being misled to the detriment of the Plaintiffs'.

19. I am further satisfied, particularly having regard to the decisions in Polycell Products Limited -v- O'Carroll and Others , (1959) IJR, 34; and Mitchelstown Co-operative Agricultural Society Limited -v- Golden Vale Food Products Limited , (High Court: 12/12/1985 per Costello J), that the Plaintiffs' have made out a strong prima facie case that on the balance of probability if customers and potential customers are misled as alleged that the Plaintiffs' as a reasonably foreseeable consequence of the misrepresentation on the part of the Defendants' or one of them will suffer in the interval pending the hearing and determination of this action serious permanent injury to or a complete swamping and loss of their reputation for which an award of damages at the trial of the action would be an altogether inadequate compensation to the Plaintiffs'.

20. I am satisfied that the Defendants' bona fide intend to defend this claim and that their defence as disclosed in the Affidavit of Mr. Con Daly is neither frivolous nor vexatious. If the Court grants the injunctive relief sought by the Plaintiffs' it is probable that the Defendants', if they wish seriously to remain in the market as a provider of the relevant services will be constrained at the very earliest possible opportunity to choose, establish and promote a new business name, getup and logo, and to choose and register a new domain name or names. This will undoubtedly result in considerable loss and expense to the Defendants' which they estimate is likely to be in the region of £10,000. In addition the Defendants' will probably loose some market advantage vis a vis the Plaintiffs' and other possible entrants into this particular market niche. They will in all probability loose whatever reputation (if any) which they may have established in the very short period during which they have been using their existing business names and domain names.

21. Notwithstanding the undertaking as to damages which the Plaintiffs' must give to this Court as a condition of being granted any interlocutory relief, and in this respect the Defendants' accept at paragraph 8 of the Affidavit of Mr. Con Daly, " that the Plaintiffs' have vast resources at their command ", the extent of the loss to the Defendants' in having to start de novo as soon as possible in a new guise, or in the interval pending the determination of this action continuing but without trading maintaining their existing business names and associated domain names in the hope of being able to continue with those names would if quantifiable, not be such as would be adequately compensated by an award of damages should the Plaintiffs' not succeed in obtaining a perpetual injunction at the trial of this action. It is averred at paragraph 17 of the Affidavit of Mr. Con Daly as follows:-

22. This is not denied by Mr. Eoin Mac Giolla Ri at paragraph 11 of his Affidavit on behalf of the Plaintiffs' sworn on the 14th of July 2000, where he considers what was averred at paragraph 17 of the Affidavit of Mr. Con Daly.

23. In the circumstances I am satisfied that damages would not be an adequate remedy for either party in these proceedings and so I must consider whether on the special facts of this particular case the damage suffered by the Plaintiffs', should the Court decline to make the Order sought, would on the balance of probability be greater than the damage suffered by the Defendants' should the Court grant the Order sought.

24. The Plaintiffs' have given clear and to a considerable extent independantly corroberated evidence of a present widespread Trade and reputation enjoyed by them both here and abroad in the name " Local Ireland " and its associated domain names as hereinbefore set-out. The first named Defendant while referring to "the goodwill established to date", has offered no evidence of any kind in support of this claim. The first named Defendant was incorporated only on the 26th June 2000, a week before the "cease and desist letter" and at the date of that letter was still in search of employees. Given this time factor and the paucity of the evidence offered by the first named Defendant as regards trade, investment and reputation, on the balance of probability I feel that I am entitled to proceed upon the basis of the first named Defendant having very little or no present reputation in the names " Local Ireland - Online " and " Locally Irish " and their associated domain names, such as would be adversely affected by the granting of an interlocutory injunction.

25. Given the evidence, with some independent corroberation, advanced by the Plaintiffs' for a real and present awareness on the part of and use by the public in this jurisdiction and abroad of the Plaintiffs' web site, and of the very significant absence of any such evidence on the part of the first named Defendant, it seems to me that the likelyhood of confusion and hence damage can at present and for the foreseeable future only operate to the disadvantage of the Plaintiffs'.

26. The probable likely financial consequence, especially in the sense of investment thrown away, of damage to the Plaintiffs' actual existing trade and reputation must in my judgment be altogether disproportionate to any similar consequence, (if any) to the first named Defendant.

27. The Plaintiffs' aver that approximately 3¾ million pounds has been spent in developing their services and in promoting and advertising their business name both here and abroad. Of this sum, £594,000 is claimed to have been expended on advertising alone. In contrast, at paragraph 10 of the Affidavit of Mr. Con Daly it is averred that the first named Defendant, "has invested considerable sums in its business". No details or figures are given. The only figures mentioned in this Affidavit amount to a sum of approximately £10,000 and relate to money spent and indebtedness occurred, in apparantly equal proportions in changing the business name of the first named Defendant from, " Local Ireland - Online " to " Locally Irish ".

28. In my judgment it is important to note that the Defendants would not be excluded from the market in the relevant services should the Court grant the interloctory relief sought by the Plaintiffs'. They would be perfectly at liberty to continue to offer the relevant services under a new business name and domain name. The period during which the first named Defendant has been using the business name " Local Ireland - Online " and even more so the business name " Locally Irish ", with their associated domain names has been for a period of months only whereas the first named Plaintiff has been using its present business and domain names since at least December 1998. I do not doubt as submitted by the Defendants that the services of professionals and printers in this field are at a premium in the present period of major economic boom, but having regard to the rapidity with which the first named Defendant was able to change its business and domain name in July of this year, I see no reason to doubt that a further such name change could be accomplished with equal facility and dispatch should the Court be disposed to grant the relif sought by the Plaintiffs' in this Motion and the Defendant be determined to continue in the market as providers of the relevant services.

29. At paragraph 18 of the Affidavit of Mr. Con Daly, the first named Defendant accepts that the Plaintiffs', "have vast resources at their command". In these circumstances there can be no doubt as to the value of any undertaking as to damages which the Plaintiffs' might give to this Court and no doubt as to the ability of the Plaintiffs' to meet an award of damages in favour of the Defendants on the largest scale which this Court may reasonably

30. In the circumstances I am driven to the conclusion that the balance of convience clearly lies in granting rather than in refusing the injunctive relief sought by the Plaintiffs'. Subject to an undertaking by the Plaintiffs' jointly and severally to discharge whatever sum or sums, by way of damages as the Defendants and each of them may be awarded at the trial of this Action should the Court determine that the granting of an injunction was not justified, the Court will make an Order restraining the Defendants and each of them, by themselves their officers, servants or agents or otherwise howsoever from commencing and alternatively or additionally from carrying on business under the name style or title " Local Ireland - Online Limited " " localireland - online.com ", " Locally Irish Limited" or " locallyirish.com" or any other name style or title in which the words " local" and " Ireland or their cognates appear sequentially in either order: or form posessing, holding,operating, managing or controlling an Internet address or domain name under the name style or title " localireland - online.com " or " locallyirish.com" pending the final determination of this Action or until further Order.