Who: Evegate Publishing Ltd v Newsquest Media (Southern) Limited
Where: High Court
When: 10 July 2013
Law stated as at: 1 August 2013
What happened:
On 10th July 2013, the High Court decided on a case brought by the publisher of the magazine South East Farmer (Evegate), against another publisher, Newsquest, which publishes Southern Farmer magazine. Both magazines are in monthly circulation, are issued in glossy print and are available either by annual subscription or in news-stands in shops. Evegate, as the claimant, alleged that there were too many similarities with Newsquest’s offering, and as such, brought proceedings for passing off and trade mark infringement.
The passing off claim
The judge in this case, Asplin J, noted that the elements of passing off require there to have been some sort of goodwill or reputation attached to the relevant goods or services and that the offending party has misrepresented to the public, whether intentionally or unintentionally, which has caused, or might cause, the public to believe the goods or services offered by the offending party are in fact those of the claimant. If this can be proved, then the claimant must show that it has been caused damage as a result of the public’s incorrect belief.
Clearly Evegate believed that the rival Southern Farmer magazine was sufficiently similar to its own South East Farmer publication for a passing off claim to be successful. Indeed, the judge found that South East Farmer did have the sufficient goodwill and reputation as (a) various witnesses attested to the strong reputation of the magazine; (b) it had a consistent number of subscribers; (c) the brand has been proliferated through sponsorship of and advertising at various agricultural event; (d) it was shown to have a wide readership; and (e) is advertised nationally (not just in Kent, Surrey, Sussex and Hampshire).
However, Asplin J was not convinced that there had been a misrepresentation likely to deceive a substantial part of the relevant public. Any confusion only existed on a low level: one reader who had previously picked up a copy of South East Farmer purported to have since purchased Southern Farmer thinking that it was the same magazine, just rebranded; and Evegate’s employees reported two incidents of confusion at an agricultural show. However, this was not sufficient in the judge’s opinion.
She held that the word ‘Farmer’ is frequently used in conjunction with a geographical indicator to suggest the areas covered by the publication and that similarly named publications owned by different publishers were also in circulation. Specifically, the judge noted that the magazine South West Farmer is more similar to South East Farmer but had not caused such alleged confusion or deception.
Ultimately, it was decided that where words which are in common use are used as a trade name, there is always going to be scope for some confusion. Additionally, the judge believed there to be various factors which enabled the two titles to be distinguished by readers and advertisers alike, such as differences in distribution methods, geographical scope, the size and nature of the publication, the opportunity for advertising, the fact that South East Farmer is free and differences in the logo.
Given all these factors, the High Court found there to have been no misrepresentation and therefore it was not necessary to consider whether damage was suffered or likely to be suffered by Evegate as the passing off claim could not be established.
Trade mark Infringement
The second element of Evegate’s claim related to alleged infringement of its registered trade mark. The requirements for such infringement are either, in summary:
(a) that a third party uses a sign which is identical to the registered trade mark and used for similar goods or services, or that is similar to the registered trade mark and used for similar or identical goods or services and there is a likelihood of confusion for the public; or
(b) that the sign is identical or similar to the registered trade mark where the mark has a reputation in the UK which may be taken unfair advantage of or is detrimented by the infringer’s use.
In relation to claim (a), Asplin J found that the average consumer of publications such as South East Farmer (who may be either a subscriber or an advertisers) is reasonably well-informed and reasonably observant and circumspect, and is therefore unlikely to be sufficiently confused by the alleged similarity between the South East Farmer trade mark and the Southern Farmer sign.
What is noteworthy is that the judge took into account previous case law which clarified that where a mark is largely descriptive, such as the description of a farming magazine based in a certain geographical location, it is possible that there will be similarities in name and so small differences in an alternative sign may suffice to avoid confusion. Therefore, differences in the distribution model, size and paper type, type face, font size and colours used, in addition to the strapline ‘A Newsquest Publication’ were all sufficient to differentiate Southern Farmer from the registered trade mark of South East Farmer so as not to cause confusion.
In relation to claim (b), Asplin J realised that although the concept of reputation for the purposes trade mark infringement is different to that of passing off, both concepts can nevertheless overlap. Indeed, in the same way that there was enough evidence to suggest that Evegate’s publication had the requisite goodwill and reputation for the passing off claim, she held that the magazine had the sufficient reputation in the trade mark context, and that this extended across the UK. Despite this, however, she found that there was no evidence to conclude that an average consumer would mistake the registered trade mark and Newsquest’s Southern Farmer sign; any cases of advertisers changing publication was due to competition and not any link between the two and any further proof of a link was held to be inadmissible opinion. As such, the required similarity did not exist.
Defences potentially available
For the above reasons, both claims of trade mark infringement were rejected by the High Court. However, for the sake of certainty, Asplin J considered whether Newsquest would have had a defence had the trade mark been infringed. In doing so she applied the rule in the Trade Marks Act 1984 that it is not possible to for a trade mark owner to prohibit another party from referencing the kind, quality or other characteristics of the goods or services while trading provided the use is in accordance with honest practices in industrial or commercial matters. As the Southern Farmer title was geographically descriptive and because Newsquest was merely replicating the business model of its Scottish Farmer and Northern Farmer publications, and so was acting in accordance with honest commercial practices, Newsquest would have had a valid defence to any trade mark infringement in any event.
Why it matters:
The decision of the High Court in this case underlines the difficulty of making successful passing off or trade mark infringement claims.
This challenge becomes even greater when the claimant has used descriptive words as part of their branding. The judgment seems to acknowledge that it is not fair to exclude a purely descriptive title, in this case based on physical location and profession, even if it is registered as a trade mark, because it is conceivable that others will, in good faith, use a relatively similar name.
This case therefore acts as a reminder to marketers that care needs to be taken when selecting new brand names and trade mark considerations should be one of the many considerations taken into account. Generally speaking, if a brand anticipates building up a considerable amount of goodwill and they do not want competitors using a similar brand, whether intentionally or unintentionally, it is always a good policy to avoid the use of names which are descriptive in terms of the characteristics of the good or service.
