Not the “ideal” situation: Court of Appeal decides trade mark dispute

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The dispute in IPC Media Ltd v Media 10 Ltd [1] concerned the mark “Ideal Home”. Both parties had used the mark for about 100 years; the claimant used “Ideal Home” as a title for its home interest magazine, whilst the defendant had launched the Ideal Home Exhibition 12 years earlier. The claimant, as registered proprietor of the trade mark IDEAL HOME, commenced proceedings in 2012 when the defendant began an online retail operation, claiming infringement of the mark. The claimant stated that the previous co-existence had been tolerable, but the defendant’s additional business venture into online retail meant that the parties were now in direct competition. The defendant counterclaimed, seeking a declaration of invalidity on the basis that it had the right to sue the claimant for passing off at the time of the application for the mark. In the original decision, the Intellectual Property Enterprise Court refused the claim and counterclaim.

Upon appeal by both parties, the Court of Appeal dismissed both the appeal and the cross-appeal.

The Court held that this was a case of honest concurrent use, and that the defendant’s use of its mark had not had – and would not have – an adverse effect on the functions of the registered mark. The guarantee of origin provided by the mark had not changed as a result of the defendant’s change in activity, nor had the likelihood of confusion. The use of “Ideal Home” had always denoted the business of both the claimant and the defendant.

In turn, the claimant’s mark was held to be valid, as the defendant had failed to show that, at the date of the application for registration of the mark, a normal and fair use by the claimant of the IDEAL HOME mark for online retail would have constituted passing off.

This is one of those rare cases in which the use of an identical mark by two entities was honest and where it would not have an adverse effect on the essential function of a mark. The case recalls the dispute between the American brewer, Anhesuser-Busch and the Czech brewer, Budejovicky Budvar, concerning the use of the BUDWEISER mark, in which the court held that neither could stop the other from using the Budweiser name in England, owing to the longstanding use by each of the mark in this country.

It is interesting to note that the Court of Appeal took no issue with the fact that the circumstances of the use by the parties may suggest that the services are of one business and that, in any event, many consumers did believe that the businesses are one and the same or are at least connected. The reputation and goodwill attaching to each business in relation to the “Ideal Home” mark was very substantial and, despite this misapprehension, neither party could complain about the honest use by the other of the mark, particularly after almost a century of harmonious co-existence. The Court also stated that provision of online retail services is an entirely natural extension of a brand that has already been used in relation to other sales distribution channels.

[1] [2014] EWCA Civ 1439