In a recent case in the United Kingdom, the Court of Appeal upheld an order granting an interlocutory injunction against a publisher that used the registered trademark of a games manufacturer as the title of a series of books. A key question in determining whether an interlocutory injunction is proper is whether the plaintiffs have shown there to be a serious case to be tried (it is not necessary to show probability of success).

Transworld Publishers Ltd. published two children's novels which included the words DARK FUTURE as part of their titles. Games Workshop Ltd. had registered the trademark DARK FUTURE in respect of games and their own series of books for sale to teenagers and young adults. Prior to Transworld's publication of their novels, Games Workshop had begun negotiations with another company to publish their DARK FUTURE books under license, and Games Workshop consequently moved for an interlocutory injunction against Transworld on the grounds of trademark infringement and passing off. The lower court granted the interlocutory injunction holding that Transworld's actions posed a serious question of trademark infringement and that Games Workshop stood to lose their agreement with their licensee if such injunction were not granted.

Transworld appealed and the Court of Appeal considered the issues of trademark infringement, passing off and the adequacy of an award of damages.

On the first issue, the Court of Appeal found there to be a serious question of trademark infringement to be tried, based on case law which had held that use of another's trademark as a title for a magazine series constituted trademark infringement, thus rejecting the defendant's argument that the title of a book could not function as an indication of the trade origin of the book. The finding that Transworld's use of DARK FUTURE as a title of a series of books could constitute an infringement was a logical extension of an existing doctrine and comparable to use of a title of a periodical magazine which had previously been held to be use of such title as a trademark.

The Court of Appeal also held that there was a serious question to be tried on the issue of passing off, in view of the extent of the reputation and goodwill that Games Workshop had apparently acquired in the trademark DARK FUTURE through substantial use in sales and advertising.

The court learned, as it considered the issue of damages, that Games Workshop had already entered into a formal agreement with the licensee to publish its books, and Transworld thereupon argued that this changed Games Workshop's position, making damages, and not an injunction, the proper remedy. The court reasoned, however, that, since each party's books were aimed at different age groups of readers, Games Workshop could be damaged if their older customers purchased Transworld's children's books by mistake and then, being disappointed with them, declined to purchase more of the DARK FUTURE series books in the future.

The court thus found that injunctive relief was justified and necessary and dismissed the appeal.

This case stands for the proposition that, where another's trademark is used as a title of a series of books, a cause of action may lie, if the mark is used in a manner likely to result in consumers viewing it as a trademark, even though there may not have been any intent to use the title as a trademark.