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Tuesday, 10 December 2013

Ideal Home v Ideal Home: built on shaky foundations?

The English cat's ideal
home is his castle ...
That which is ideal is often contrasted in laudatory terms with that which is merely real or practical.  However, there are times when the ideal is less than ideal: one is when the word Ideal, with all its laudatory baggage, is used as part of a trade mark.  Apart from being a literally bog-standard mark for bathroom facilities, the word Ideal features in other contexts too, which sadly had led to some recent litigation.  The case in question is IPC Media Ltd v Media 10 Ltd [2013] EWHC 3796 (IPEC), a 6 December ruling from John Baldwin QC, sitting as a Deputy Judge in the Intellectual Property Enterprise Court for England and Wales. It's not yet available on BAILII, but you can access it here or download it here. This Kat wouldn't have known about it, were it not for the kindness of Nikki Powell (Head of Litigation, Haseltine Lake LLP, who acted for the defendant). Nikki explains the case as follows (with links added by the IPKat):
"In short, the defendant’s use of the words “Ideal Home” in connection with a show or exhibition goes back to 1908, when Lord Northcliffe’s newspaper launched its Daily Mail Ideal Home Exhibition. The exhibition was a great success from the start and under, its current title of the Ideal Home Show, remains so today. Around 12 years later, in 1920, to the intense irritation of Lord Northcliffe, Odhams Press launched a magazine called Ideal Home. The magazine, too, was a success and also remains so today. The use of the words 'Ideal Home' by both parties in the home interest sphere has been widespread from the outset of both businesses.

Having co-existed in the home interest arena for almost a hundred years, let's fast forward to 2006 when IPC Media Limited (the owner of the magazine) applied for and subsequently obtained a registration in class 35 for the sign Ideal Home in respect of:
“The bringing together for the benefit of others, of a variety of house wares, domestic electrical goods and appliances, garden equipment, plants and furniture, home furnishings, lighting apparatus, enabling customers to conveniently view and purchase those goods from catalogues by mail order or by means of telecommunications including via the Internet and television shopping.”
In doing so, IPC Media appeared to be seeking to monopolise the use of the words Ideal Home as a sign in connection with the retail sale by mail order (including sales via the internet) of home interest goods. As part of that strategy, in August 2012, IPC Media brought trade mark infringement proceedings against Media 10 Limited (the present owner of the Ideal Home Show) in connection with the show having launched its online shop, the Ideal Home Show Shop, in mid-2012.

John Baldwin QC, sitting as a Deputy Judge, rejected the claim on the basis that, since about 1920, the name 'Ideal Home' as a trade mark in the home interest field has signified either the business of the show or that of the magazine, depending on the context in which it was used. The judge concluded that any confusion caused by the show’s use of Ideal Home Show as a trade mark for online retailing is no more than might be expected to result from the long concurrent use of the name.

Snowy's ideal home wasn't so ideal after all
when he found his friends were allergic to pollen
In the context of long and widespread use of 'Ideal Home' by both parties, the judge considered the extent to which the parties had sought to make it clear to consumers that their respective businesses were not connected. The December 2013 edition of Ideal Home magazine thus bears a notice on its front and its back to the effect that the magazine contains the opportunity to obtain “2-FOR-1 Ideal Home Show At Christmas Tickets” and includes various material promoting the show, but nothing about IPC Media having a stand there or being otherwise unconnected to the show. The judge held that the content of Ideal Home magazine presented to the consumer a positive indication that the magazine and the show were connected with each other in a material way".
The defendant didn't get its own way entirely, however, since its challenges to the validity of IPC Media's trade mark based on its use being liable to be prevented by an earlier unregistered mark under s.5(4) of the Trade Marks Act 1994, on the mark lacking distinctive character and on non-use, were dismissed.

Says the IPKat, this case is a good example of the common law adage that confusion caused through long term honest concurrent use, in and of itself, is not an actionable wrong or a situation which a court is obliged to remedy. Only where that confusion is engineered in such a way as to seek to benefit from another's name or reputation will the law step in.

Merpel wants to know why no-one told IPC Media not to be so silly as to bring this action in the first place (doesn't it make trade mark owners look a bit, er, selfish?) and why the parties couldn't sort out a sensible coexistence agreement for their mutual benefit. To her this looks like an attempt to use the court as a convenient forum for venting a bit of unseasonal spleen.

Ideal homes here
Two not-so-ideal homes and one pretty decent one here

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