Who: IPC Media Limited (“IPC”) v Media 10 Limited (“Media 10″)
Where: The Court of Appeal (Civil Division)
When: 12 November 2014
Law stated as at: 4 December 2014
What happened:
The Court of Appeal recently upheld the High Court’s decision in IPC v Media 10 and dismissed both IPC’s claim for infringement, and Media 10’s counterclaim for invalidity, of IPC’s registered trade mark ‘Ideal Home’.
Background
IPC publishes the magazine Ideal Home, whilst Media 10 is the owner of the Ideal Home Show, a popular ‘home interest’ exhibition that has been running since 1908. Both of these well-known businesses are entirely independent of one another and have co-existed since 1920, the year IPC first published the Ideal Home magazine.
In 2006, IPC obtained a trade mark registration for ‘Ideal Home’ for online mail order retail services (the “Mark”). In 2009, IPC launched the Ideal Home Shop, an online shop selling home interest goods.
In 2008, the Ideal Home Show developed its own online shop. This site only provided a platform for consumers to buy products from third parties. However, in 2012, Media 10 launched the Ideal Home Show Shop, a new online shop from which Media 10 sold home interest goods under the Ideal Home Show brand.
At that point, IPC alleged that there had been a major change in the status quo and that it was no longer possible for the parties to co-exist. IPC brought trade mark infringement proceedings on the basis that Media 10 infringed the Mark by selling home interest goods under the Ideal Home Show brand.
Media 10 denied infringement and counterclaimed that the Mark was invalid because of Media 10’s earlier prior rights.
The High Court’s decision
In December 2013, the High Court dismissed IPC’s claim for infringement and Media 10’s claim for invalidity.
On infringement, it held that whilst Media 10’s use of the name Ideal Home Show in connection with online retail shopping may cause confusion, this confusion was “no more than may be expected by reason of the concurrent trading by the parties in their core businesses using ‘Ideal Home’” and it would not affect the function of the Mark any more adversely than it had already been affected because of the longstanding co-existence.
On invalidity, it held that in some instances there could be passing off, for example if IPC launched a home interest show under the name Ideal Home. However, the sale of home interest goods under the brand Ideal Home by either party was “sufficiently in the middle of the spectrum between the respective core businesses for neither party to be able to succeed against the other for a passing off claim”.
Both parties appealed.
The Court of Appeal’s decision
The Court of Appeal upheld the High Court’s decision.
Infringement
Kitchin LJ held that the central issue to be determined in this case was whether or not Media 10’s use of the name ‘Ideal Home Show’ in relation to internet retail services was liable to have “an adverse effect upon the functions of the registered trade mark in the light of the very many years during which the words ‘Ideal Home’ have been used in connection with the parties’ respective businesses”.
He found that selling home interest products online was an entirely natural extension of the businesses of both parties. Furthermore, the scale and the way in which IPC had conducted its online retail business meant that this part of IPC’s business had not generated any separate reputation or goodwill of its own. As such, even when used in relation to online retail services, the words ‘Ideal Home’ denote what they have always denoted (i.e. the services of both of the parties). Therefore, whilst there might be confusion between the parties’ online retail offerings, this confusion will be no different to the confusion that already existed between the two parties. Accordingly, IPC’s infringement claim was dismissed.
Invalidity
Kitchin LJ held that Media 10 had failed to establish that IPC’s use of the mark ‘Ideal Home’ in relation to online retail services could have been prevented by an action for passing off. Again, this was because online retail was an area of business into which both of the parties might want to expand and it was a natural step for IPC to do this. Furthermore, the use of the mark ‘Ideal Home’ in relation to such services had never denoted that the services were entirely those of one of the parties and not the other. As such, neither of the parties “could complain about the normal and fair use by the other of the mark ‘Ideal Home’ in relation to [online retail services]”.
Consequently, Media 10’s invalidity counterclaim was also dismissed.
Why this matters:
This case is an important reminder to organisations that they should actively manage their trade mark portfolios. If an organisation is willing to co-exist with an organisation that has a similar mark, it should ensure that it enters into a co-existence agreement to avoid potential conflicts of use disputes arising at a later date. The co-existence agreement should expressly set out each party’s permitted uses of the marks and should be “future-proofed” as far as possible so as to anticipate areas into which the organisations may wish to expand at a later date.
