The owner of Ideal Home, UK’s best-selling home interest magazine, IPC Media Limited has lost its claim for trade mark infringement against the proprietor of the Ideal Home Show, a popular exhibition which showcases the latest home interest goods, due to almost 100 years of co-existence.

Ideal Homes Linked Together

Evidence showed that the public (and even the claimant’s staff) were often confused, wrongly assuming that the two businesses were linked economically. This will come as no surprise given the use by both of “Ideal Home” in the home interest sector, albeit in relation to different products and services. Moreover, both parties seemed to have perpetuated this mistaken belief to some extent. IPC Media Ltd. and Media 10 Ltd. [2013] EWHC 3796 (IPEC). For example, the claimant included 2-4-1 offers for tickets to the Ideal Home Show in its magazines, while the defendant distributed free copies of Ideal Home magazine at Ideal Home Shows, neither of which mentioned that the two entities were actually unrelated. Both parties were very established and successful and they targeted a similar audience, so much benefit was to be had it seems, by riding on each other’s coat tails whilst their businesses were different.

So why the complaint?

In 2006, the claimant had applied for, and subsequently registered “Ideal Home” as a trade mark in relation to online and mail order retail trade of home interest goods, presumably to corner the online market for home wares under the name. When the owner of the Ideal Home Show launched its own online store under the banner of “Ideal Home Show,” the claimant brought infringement proceedings. The Ideal Home Show is organised by Media 10 Ltd, a privately owned publishing and events company based in Loughton, Essex. The claimant alleged that the infringement was made out because the defendant was using an identical mark for identical services. The claimant also argued that there is a likelihood of confusion because the defendant’s sign is similar to the registered trade mark and is used in relation to identical or similar goods or services to those for which the mark is registered.

The Court agrees confusion is likely

The court rejected both allegations. The first was rejected because the average consumer would see the defendant’s offering as “Ideal Home Show,” rather than just “Ideal Home.” The two marks are therefore not identical. In relation to the allegation of use of a similar mark causing confusion, the claim failed here even though the judge found some confusion to be likely. The court decided that the confusion that may be caused by the defendant’s use of the mark was not such as to affect the function of the claimant’s trade mark any more than it had already been affected through the long standing use by the two businesses. Finally, the claimant argued that its trade mark has a reputation in the UK, and the defendant’s use of the sign is without due cause, and takes unfair advantage of, or is detrimental to the distinctive character or the repute of the trade mark. The court rejected this as well, finding that the reputation of the claimant’s Ideal Home mark was confined to magazines, and if the reputation was considered in the home interest category as a whole, then this was shared between the parties. IPC Media Ltd. and Media 10 Ltd. [2013] EWHC 3796 (IPEC).

Commentary

Clearly the lesson here is that, where two parties have been trading under the same or similar mark for years, and confusion has been tolerated (or even enjoyed – as in this case), it may be difficult for one party to try and regain or acquire exclusive rights to use the mark. It also emphasises that, where parties may enter into a co-existence arrangement, it is adequately “future proofed” to deal with potential overlap situations that may arise in the future as business models and opportunities change over time.

This article was prepared by Seiko Hidaka (seiko.hidaka@nortonrosefulbright.com / +44 20 7444 2432) of Norton Rose Fulbright’s London office.