GEEKCORE v GEEK STORE – Relying on unregistered trade mark rights
Wilson Gunn client AP & Co Limited has won its opposition case against Yellow Bulldog Limited.
“We would all like to live in an Ideal Home. But life is rarely that simple. It can become complicated when a trader seeks to monopolise the expression Ideal Home and another trader not only wants to use it himself but also has an existing business which does use it.”
These are the opening words of Mr John Baldwin QC, sitting as a Deputy Judge in the Intellectual Property Enterprise Court (formerly the Patents County Court), in his judgment determining the competing rights to the use of the expression IDEAL HOME in relation to retail services connected with the sale of “a variety of house wares, domestic electrical goods and appliances, garden equipment, plants and furniture, home furnishings, lighting apparatus”.
The claimant in this action for trade mark infringement was IPC Media Limited, publishers of the well-known ‘Ideal Home’ magazine and owner of a UK registration of IDEAL HOME covering the aforementioned retail services. The defendant was Media 10 Limited who operate the equally well-known ‘Ideal Home Show’ and who counterclaimed with an attack on the validity of IPC Media’s registration.
Historically, the ‘Ideal Home Show’ started life in 1908 as the Daily Mail Ideal Home Exhibition and was the first exhibition of its kind in the world. Some 12 years later Odhams Press launched a magazine with the title ‘Ideal Home’ which quickly became established amongst consumers as the leading magazine in its sector. Thus, for the best part of 100 years the brands lived side by side without coming to blows until now.
According to the judgment there is a widespread belief amongst consumers that the businesses of the Magazine and the Show are connected with each other. As a result there is some confusion between the two businesses by reason of their respective uses of IDEAL HOME, but such confusion was of little consequence because the respective businesses of publishing a consumer interest magazine and running a consumer home interest show are different.
Media 10’s attack on the validity of the registration failed on two counts. First, the claim that Ideal Home is devoid of any distinctive character and/or is descriptive of the services covered by the registration was rejected on account of the mark IDEAL HOME having acquired a secondary meaning as a result of its extensive use as a trade mark over a very long period of time.
Second, the claim that IPC Media’s use of Ideal Home was, at the date of application for registration, a misrepresentation was also rejected. It was decided that the sale of home interest goods by either party under the Ideal Home name was “sufficiently in the middle of the spectrum between the respective core businesses for neither party to be able to succeed against the other in a passing off claim.”
Mr Baldwin QC reached the conclusion that “although there may be some confusion caused by use of Ideal Home Show as a trade mark for online retail shopping, that confusion is no more than may be expected by reason of the concurrent trading by the parties in their core businesses using Ideal Home, and is not such as to affect the function of IPC Media’s trade mark more adversely than it is already affected by virtue of the long standing uses by these separate businesses.”
This judgment, which can be read at http://www.bailii.org/ew/cases/EWHC/IPEC/2013/3796.html, is consistent with the earlier Budweiser cases which considered the principles of honest concurrent use.
If you need trade mark or IP advice click here and contact us today