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Using identical trade marks is far from ‘Ideal’

The case of IPC Media Limited v Media 10 Limited ([2014] EWCA Civ 1439) concerned the use of the term ‘Ideal Home’ by two different businesses and highlighted the importance of taking early action against another business that uses the same brand.

The Claimant/Appellant in the appeal and cross appeal was IPC Media Limited (“IPC”).  IPC was the publisher of the Ideal Home magazine (in which it sold home merchandise), first published in 1920.  This was IPC’s core business, although it later branched out into mail order and then in 2009 it set up an online website using the term ‘Ideal Home’.  The sales from the mail order and online business were found to be modest when compared to the sales of the magazine.  For instance, the value of the sales through the mail order business had ranged between £25,000 and £45,000 each year and through the online shop sales were £86,000 in 2010 and £66,000 in 2011.

In 2006, IPC filed for (and obtained) a trade mark for the words ‘Ideal Home’, including for retail services in class 35.

The Defendant/Respondent was Media 10 Limited (“Media 10”), the organiser of an exhibition originally known as the Daily Mail Ideal Home Exhibition when it started in 1908.  This was later renamed the Ideal Home Show. By the time the Ideal Home magazine was launched by IPC, in total over 250,000 paying customers had attended the show. Media 10 started using the brand for online retailing when it launched its online shop in May 2012, under the mark ‘Ideal Home Show Shop’.

IPC claimed that Media 10’s use of the term ‘Ideal Home Show’ for its online shop infringed its registered trade mark on the basis that it was confusingly similar.   Media 10 counterclaimed for a declaration of invalidity, claiming that, at the date of filing the trade mark application in 2006, it had developed goodwill in its brand which gave it a right to prevent IPC from using its registered trade mark. In the circumstances, it could invalidate the registered trade mark being relied upon by IPC.  In the alternative, it argued that there was no likelihood of confusion and, in any event, it was entitled to rely upon the doctrine of ‘honest concurrent use’.  Media 10 argued that the long standing use of its brand in conjunction with IPC’s long standing use, meant that the use of its mark for online retail services did not adversely effect the origin function of the IPC registered trade mark (which is a prerequisite for a finding of trade mark infringement).

At first instance the Deputy Judge held that there was no trade mark infringement and rejected the invalidity argument, finding, among other things:

Trade Mark Infringement

  1. the trade mark ‘Ideal Home’ when used in the home interest category may convey a different meaning depending on whether the context is a magazine or exhibition/show.  He accepted that there was a real possibility that a consumer, whilst recognising the different meanings in different contexts, would not actually perceive them to be different in a material way (i.e. believing the two are connected to each other in some way);
  2. for a long period of time the parties had chosen not to take steps to differentiate the two brands and make it clear to consumers that their respective businesses were not connected in any material way.  Consequently, a significant proportion of the public may consider the trade mark to refer to both parties and the consumers may even think that they were connected;
  3. due to such a connection being made, the parties had allowed some confusion between the businesses.  As the parties initially operated in a different space, this confusion was of little consequence as it was merely “an administrative inconvenience” (this may explain why the parties did not take action against the other in the early days);
  4. in 2006 when IPC filed its trade mark, the Ideal Home mark did not signify one business but the business of either the magazine or the show.  He said that his conclusion was not altered by the fact that the trade mark specification was broader than the core business of IPC. As a result, he did not consider that the use by Media 10 of its mark affected the origin function of the trade mark and so there was no trade mark infringement;
  5. although there may be some confusion caused by the use of Ideal Home Show as a trade mark for online retail shopping, this is no more than might be expected by reason of the concurrent trading by the parties; andInvalidity attack on the trade mark
  6. the invalidity attack failed as he did not think Media 10 could show passing off where IPC only used the term Ideal Home.  He said that “the sale of home interest goods by either party under the Ideal Home name is, in my judgment, sufficiently in the middle of the spectrum between the respective core business for neither party to be able to succeed against the other in a passing off claim”.

Both parties appealed, and the Court of Appeal agreed with the Deputy Judge and dismissed both appeals, finding that the central issue was whether the later use of the Ideal Home mark by Media 10 adversely affected the function of IPC’s trade mark.  IPC argued that the first instance judge fell into error no fewer than six times and failed to recognise that there was a major change in the status quo in May 2012 when Media 10 expanded into online mail order retail.  This was a major departure for Media 10.  For the first time, it was selling goods under its own brand and not the brand of third parties.

The Court of Appeal considered previous case law relating to honest concurrent use of two marks and accepted the conclusions of the judge at first instance.  The Court said that “this is one of those rare cases in which the use of the mark complained is indeed honest and that it has not had and will not have an adverse effect upon the essential function of the registered trade mark.”  In particular, it noted that online retail services are so closely related to the activities the parties have carried on for many years, that the marks still provide to consumers just the same guarantee as they always have.  Whilst there may be some confusion between the parties’ online retail businesses, it is the inevitable consequence of the use by two separate entities of the same or closely similar marks.

As for the invalidity claim based on a right to sue in passing off, the Court of Appeal held that Media 10 had to show, as of October 2006, such a right based on the normal and fair use of the mark by IPC in relation to any services for which it is registered was liable to be prevented by such a claim.  Given that retail services were a natural extension of both businesses, there would have been no claim in passing off and so the invalidity action failed.

Roy Crozier, Partner in the Intellectual Property Group said: “Although in this case a significant period of time had passed, it does clearly highlight the long term dangers of not taking action against third parties using an identical or similar brand given that businesses naturally expand beyond their original core business. When brand-owners become aware of conflicting marks they need to ensure that appropriate action is taken swiftly, as delays may make it harder to enforce their rights in the future. As part of an early warning strategy we recommend putting in place a watch service which will alert a brand-owner of future trade mark registrations by third parties around the world.”