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Not Ideal: A Cautionary Tale

The case between IPC Media Limited and Media 10 Limited ([2013] EWHC 3796 (IPEC)) concerns the two parties' concurrent use of the mark IDEAL HOME. IPC Media's predecessor launched the home interest The case between IPC Media Limited and Media 10 Limited ([2013] EWHC 3796 (IPEC)) concerns the two parties' concurrent use of the mark IDEAL HOME. IPC Media's predecessor launched the home interest magazine Ideal Home in about 1920 and it soon became a market leader; a position it continues to enjoy today.

Around twelve years before the launch of the magazine, Lord Northcliffe's newspaper, the Daily Mail, launched what was then the Daily Mail Ideal Home Exhibition.  The London event was a huge success from the outset with sister events springing up in locations around the UK. It later became known as the Ideal Home Show and is now run by Media 10.

With each party using the identical term IDEAL HOME over many years in the home interest field, albeit in different sectors, it may seem inevitable that there would be confusion about whether the businesses were economically linked.  In fact, the court found that even some employees of the businesses assumed that there was a connection between them. It found that the parties did little to dispel this association and at times seemed to encourage it with the magazine giving away tickets for the show and the show giving away copies of the magazine without either taking any pains to educate the public of its independence from the other.

In all this time the question of infringement did not arise until Media 10 launched an online shop selling home interest goods.  IPC Media, having its own online shop, sought to rely on its 2006 registration of IDEAL HOME for retail services in Class 35 to prevent this use and Media 10 brought a counter claim for invalidity.

Media 10 claimed that the mark IDEAL HOME should be declared invalid since it was devoid of distinctive character and descriptive of the services offered and that the use and registration of the mark was liable to be prevented by the law of passing off, based on Media 10's own rights in the mark. The court dismissed the first ground as the long and extensive use of the mark by IPC Media meant that it had acquired a secondary meaning in relation to home interest goods and services. Even though the main extent of the use was generally wider in scope than the retail services for which the mark was registered, the court felt that it would be wrong and artificial to limit the analysis of user in relation to the services in the specification only since the mark had become a household name in the home interest field. The second ground was likewise dismissed as the court found that the sale of home interest goods under the name Ideal Home was in the middle of the spectrum between the respective parties' core businesses so that neither could succeed in a claim of passing off against the other in relation to such goods.

In assessing the infringement claim, the court found that the claim under Section 10(1) of the Trade Marks Act 1994 failed as the marks in question were not identical, being IDEAL HOME and IDEAL HOME SHOW. The claim under Section 10(2) required a likelihood of confusion and the court found that the longstanding concurrent use and the parties' failure to educate the public that the respective businesses were not connected meant the guarantee of origin afforded by the mark was flawed. Whilst the court accepted that there may be some confusion by use of the sign IDEAL HOME for online retail shopping, this could be no more than expected due to the parties' conduct and the function of IPC Media's trade mark would be no more adversely affected than it already was due to the longstanding uses by the separate businesses. Finally, the claim based on IPC Media's reputation in the mark under Section 10(3) failed because of the massive overlap between the parties' respective reputations in the home interest field meaning that the IDEAL HOME mark does not denote the retail services alone of either party. In conclusion the court thought that it would be in the interests of the parties that they themselves take steps to keep confusion to a minimum by use of get up and similar.

This serves as a warning to trade mark owners not to allow a seemingly harmless or even advantageous co-existence to run unchecked where it is not beyond the bounds of possibility that there could be an overlap in interests at some point in the future.

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