Trademark

Evegate Publishing Ltd v Newsquest Media (Southern) Ltd: Chancery Division: 10 July 2013

A dispute arose out of the launch by the defendant of a farming newspaper called 'Southern Farmer' in June 2011, renamed 'The Southern Farmer' in 2012. The defendant also used a masthead containing the words 'The Southern Farmer' and used a sign (the sign) and logos to advertise its newspaper. The claimant published a farming magazine in the south-east of England called 'South East Farmer'. Circulation of the magazine was not restricted to those areas.

The claimant alleged that the defendant was liable for passing off its magazine title and trading name and trademark infringement in relation to its UK registered trademark (UKTM), which was registered in class 16 in respect of periodicals, magazines and newspapers. The evidence submitted at the time of the registration of the UKTM contained an error as to the extent of the use of the UKTM, before its registration. The length of use was in the region of seven or eight years. The defendant counterclaimed for revocation of the UKTM and sought a declaration that the registration of the UKTM was invalid and that it be removed from the register. Alternatively, it sought a declaration that the registration was invalid for periodicals, magazines and newspapers that were not related only to farming and agricultural matters in the south-east of England and an order that it be removed from the register of trademarks in respect of such goods.

The issues for consideration were: (i) whether the claim for passing off was proved on the evidence; (ii) whether the claim for trade mark infringement had been established; and (ii) whether the UKTM was invalid. In respect of issue (iii), the defendant contended that the UKTM was devoid of any distinctive character contrary to section 3(1)(b) of the Trade Marks Act 1994 and that it consisted exclusively of words which served in the trade to designate characteristics of the goods, contrary to section 3(1)(c) of the act.

The court ruled: (1) It was settled law that, to establish passing off, first, a plaintiff had to establish a goodwill or reputation attached to the goods or services which he supplied in the mind of the purchasing public by association with the identifying 'get-up'. Secondly, he had to demonstrate a misrepresentation by the defendant to the public, whether or not intentional, leading or likely to lead the public to believe that goods or services offered by him were the goods or services of the plaintiff.

Thirdly, he had to demonstrate that he suffered or was likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services was the same as the source of those offered by the plaintiff. The action was not in confusion but misrepresentation (see [47], [48] of the judgment). On the facts, the claimant had goodwill and reputation which was vested in South East Farmer. However, the evidence of confusion was of a low level. In all the circumstances, it was not necessary to consider whether damage had been suffered or whether it was likely to be suffered. On the evidence, there had been no deception. It followed that there was no damage or risk of it (see [169], [170], [177] of the judgment). The claim in passing off would be dismissed (see [178] of the judgment).

Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341 applied; Fine & Country Ltd v Okotoks Ltd (formerly Spicerhaart Ltd) [2013] All ER (D) 137 (Jun) applied; Premier Luggage and Bags Ltd v Premier Co (UK) Ltd [2003] FSR 5 considered; Phones 4u Ltd v Phone4u.co.uk Internet Ltd [2006] All ER (D) 286 (May) considered; Interflora Inc v Marks and Spencer plc [2013] All ER (D) 238 (May) considered.

(2) In relation to trademark infringement, the key issue was whether there was any likelihood of confusion for the average consumer by reason of the similarities of the respective marks and goods for which they were used (see [47], [48], [58], [59] of the judgment).

Taking account of all of the relevant factors in the global assessment of the UKTM and the mark, the average consumer of publications of the category to which South East Farmer belonged, including both readers and advertisers, who was reasonably well informed and reasonably observant and circumspect was not likely to be confused by the alleged similarity between the UKTM as presented to the public and the sign (see [190] of the judgment). The claim for infringement of trademark would be dismissed (see [197] of the judgment). Julius Samann Ltd v Tetrosyl Ltd [2006] All ER (D) 274 (Mar) applied; O2 Holdings Ltd v Hutchison 3G UK Ltd: C-533/06 [2008] All ER (D) 155 (Jun) applied; Interflora Inc v Marks and Spencer plc [2013] All ER (D) 238 (May) applied; General Motors Corpn v Yplon SA: C-375/97 [1999] All ER (EC) 865 considered; Reed Executive plc v Reed Business Information Ltd [2004] All ER (D) 69 (Mar) considered; Specsavers International Healthcare Ltd v Asda Ltd [2012] EWCA Civ 24 considered.

(3) It was settled law that through the use made of a sign that the sign acquired the distinctive character which was a prerequisite for its registration. In determining whether a mark had acquired distinctive character following the use made of it, the competent authority had to make an overall assessment of the evidence that the mark had come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings (see [226] of the judgment).

Applying settled law and, on the facts, although the evidence submitted at the time of the registration of the UKTM contained an error as to the extent of the use of the UKTM before its registration, the actual length of use which was in the region of seven or eight years, was sufficient for the purposes of distinctiveness. The distinctiveness, therefore, was attached to features of the masthead itself as used since 1994. Furthermore, the evidence in relation to the reputation and goodwill of the claimant which was for the most part, based upon the use of the UKTM supported that conclusion. That was the case despite the descriptive nature of the title itself. Furthermore, although the majority of its circulation was in Kent, Surrey, Sussex and parts of Hampshire, it was not restricted to those areas. There was no evidence to support the contention that it did not retain distinctiveness outside the south-east (see [238] of the judgment).

Accordingly, the court agreed with the claimant that the counterclaim under section 3(1)(b) and (c) of the act had to fail (see [238] of the judgment)

Denise McFarland and Katherine Moggridge (instructed by DMH Stallard LLP) for the claimant; John Baldwin QC and Isabel Jamal (instructed by Newsquest Media (Southern) Limited) for the defendant.