The Court of Appeal recently dismissed both the appeal and cross-appeal in the trade mark battle between IPC Media and Media 10 Limited.
The dispute between the two parties concerned the mark “Ideal Home” which both parties have been using for around 100 years. IPC Media Ltd publishes the Ideal Home Magazine and Media 10 Ltd has been running the Ideal Home Show since 1908.
In 2012 Media 10 Ltd launched an online retail operation spurring IPC Media Ltd, as the registered proprietor of the “Ideal Home” trade mark, to commence infringement proceedings claiming that it was no longer possible for the parties to co-exist. In an interesting twist, the defendant (Media 10 Ltd) then decided to counterclaim that the registered mark was invalid, on the basis of passing off at the time of application for registration.
In the first instance, the Intellectual Property Enterprise Court refused the claim and counter-claim. The Court of Appeal was equally unimpressed and subsequently dismissed appeals by both parties.
The Court of Appeal held that the defendant’s use of the mark did not and would not have an adverse effect on the registered mark. The use of “Ideal Home” had historically denoted the business of both parties and this had not been affected by the introduction of online retail. The Court also confirmed the validity of the claimant’s mark and held that the defendant had failed to evidence passing off.
This is a rare case in which the use of an identical mark by two parties would not have an adverse effect on the function of the mark. This is largely owing to the longstanding use by each party of the mark and the significant reputation and goodwill attaching to each brand.
A similar case relating to the “Budweiser” trade mark was settled by the UK Supreme Court back in 2013 when the Court found that both parties could use the mark simultaneously in the UK given that the two companies had been using the marks in good faith for nearly 30 years and therefore their use did not confuse customers.
So what does this mean for businesses?
This case really highlights the importance of actively managing an organisation’s trade mark portfolio, both with regards to registered and unregistered marks. Businesses should ensure that they are pro-active in managing their intellectual property and recognising that even longstanding established brands are open to challenge.
In addition, if two organisations with similar marks are willing to co-exist then to minimise future challenges this should be recorded in a co-existence agreement which expressly sets out each party’s permitted current and future uses of the marks.
Author: Sophie McKibbin