Mrs Justice Asplin:
- This dispute arises out of the launch by the Defendant Newquest Media (Southern) Ltd (Newsquest) of a farming newspaper called 'Southern Farmer' in June 2011. The newspaper was renamed 'The Southern Farmer' in May 2012.
- The Claimant, Evegate Publishing Ltd (Evegate) publishes a farming magazine in the South East of England which is called "South East Farmer". Evegate alleges that Newsquest is liable for passing off of the magazine title and trading name and trade mark infringement in relation to its UK registered trade mark 2274147 (UKTM) which is registered in class 16 in respect of "periodicals, magazines and newspapers."
- Newsquest counterclaims for revocation of the UKTM and seeks a declaration that the registration of the UKTM was invalid and that it be removed from the Register. In the alternative, it seeks a declaration that the registration is invalid for periodicals, magazines and newspapers that are not related only to farming and agricultural matters of concern in the South East of England and an order that it be removed from the Register of Trade Marks in respect of such goods. A pleaded allegation of bad faith in the grounds of invalidity is no longer pursued.
- Before turning to the relevant background I should comment on the evidence in this case. There were thirty seven witnesses the vast majority of whom were cross examined. In general, I found the witnesses who were cross examined to be careful, honest and straightforward. I comment on particular aspects of their evidence where necessary below. Unless I make a specific comment, their evidence is accepted.
- However, I found Mr McGrorty to be an evasive and unreliable witness at times. For example, despite the transcripts of some of the calls he made being available, he was unable to accept that he had telephoned a large number of advertisers and encouraged them to provide evidence of confusion between Southern Farmer and South East Farmer by informing them that there was confusion and in some cases, mentioning what they might say. Not only does this go to Mr McGrorty's credibility but also affects the weight to be given to the evidence in question, to which I shall refer below.
- Evegate is a private limited company which was incorporated on 27 June 1994 by Mr Clive Rabson in order to continue to publish a magazine entitled "South East Farmer" which has been in circulation since 1982. Mr Rabson is the managing director and owns 100% of the issued share capital. It also has an online presence via Evegate's website, at www.souteastfarmer.net and has been available as an online magazine since 2008. It regularly has inserts or supplements such as South East Farm Machinery and South East Business.
- South East Farmer is a free subscription based glossy monthly magazine with glossy print quality and an A4 layout. It has a circulation of around 15,000 copies per annum at present of which an average of 13,529 are posted out.
- It was Mr Jamie McGrorty's unchallenged evidence that around 4% of Evegate's revenue from South East Farmer is from subscriptions and 96% from advertising. Mr McGrorty is Evegate's Sales Director. A large quantity of the magazines therefore, are distributed free of charge, whether through the post or at country shows and agricultural stores.
- The South East Farmer is circulated primarily in Kent and Sussex, Hampshire, Surrey, and to a lesser extent Oxfordshire, Berkshire, Buckinghamshire, Essex, Dorset and Wiltshire to farmers and growers. It has subscribers and readers in other areas of the UK as well as France, Germany, Switzerland, New Zealand, Ireland and Holland. However, it was accepted by Mr Clive Rabson in cross examination, that compared with distribution in its core areas of Kent, Surrey and Sussex, distribution to other areas of the UK and Ireland, Holland, New Zealand or other countries was minimal. For non-farmers or growers it is available for an annual subscription fee of £40. The publication is not available for purchase in news-stands, or in shops.
- South East Farmer has had the same name throughout its circulation, however its masthead has changed numerous times over the years. The various mastheads have been:
1983 – 1984:
- - April 1988:
May 1988 – July/August 1994:
- The current masthead has been used since around August 1994 and is shown below:
- The UKTM was applied for on 2 July 2001, and is registered for periodicals, magazines and newspapers in Nice class 16. The Trade Mark application was initially rejected and was only granted after Evegate demonstrated some prior use of the UKTM, something to which I shall return. An image of the UKTM is shown below:
- South East Farmer supports and sponsors various competitions and shows such as the East Kent Ploughing Match where over the years it has sponsored the Best Trade Stand and the Heathfield and District Agricultural Show (Sussex). Since 2006, it has produced the show guide for the Heathfield Agricultural Society printing at least 7,000 each year. It is stated inside each guide, "Show Programme Produced by South East Farmer". Evegate is also one of the sponsors of the Agri-Expo Show which is held in Kent, was the bonanza Prize Sponsor at the National Fruit Show in 2009 and has advertised in the National Fruit Show Annual Handbook in 2003, 2004, 2008, 2009 and 2011. Typically South East Farmer has a stand at ten agricultural shows each year. On such occasions a Land Rover with the UKTM on the side is present, promotional balloons are distributed and a variety of merchandise including mugs, umbrellas and mouse mats bearing the South East Farmer logo are sold and the proceeds donated to the Royal Agricultural Benevolent Society.
- It is undisputed that although the content of the magazine varies, typically, the content is focussed on local or local interests news and stories in respect of the area of primary interest to those based in the South East. However, it does contain regular national interest stories, for example, relating to DEFRA, governmental or EU news, and the supplement, South East Farmer Machinery, included in every copy carries adverts from a wide range of advertisers, which are local, national and international. It also contains reports on national shows such as the National Fruit Show.
- South East Farmer has also, since November 2001 printed and distributed the NAAC Directory of Contractors. 70,000 copies of the directory were distributed in 2010, 2011 and 2012. South East Farmer has an advert in each book and since 2006, has displayed its logo on page 3 of each edition.
- In addition to the Southern Farmer newspaper, Newsquest owns a number of other "Farmer titles", published in print and online, including The Scottish Farmer, The Northern Farmer, Pembrokeshire Farmer and South West Farmer. The Scottish Farmer which has been continually published since 1893 is a paid-for newspaper obtained either by subscription or by purchase from newsagents and the like and has a paid-for circulation of around 17,500 per week.
- It is not disputed that since June 2002, The Scottish Farmer has used the following masthead, designed by Mr Robert Alick Bruce:
- It was the evidence of Mr Simon Dixon-Phillip the managing director/publisher for Newsquest's South West regional operations to which I shall refer, that in 2010 the Newsquest Group decided to roll out The Scottish Farmer model and launch further paid-for 'Farmer' titles across different geographical regions in the UK to create a series of titles. The Northern Farmer (which adopted the same format as The Scottish Farmer) was launched in 2010. The Northern Farmer masthead is shown below:
- Pembrokeshire Farmer was then launched in 2008. The Southern Farmer was launched in June 2011 although it only achieved precise conformity with the brand image in May 2012.
- South West Farmer is a monthly free subscription newspaper that has been published continuously since May 1981. It is another Newsquest title. It circulates in Wiltshire, Dorset, Somerset, Devon, Cornwall and Isles of Scilly. Until 1999 it also circulated in Hampshire, the Isle of Wight and in certain parts of Gloucester. It has a circulation of approximately 18,000 and it is also available online through www.southwestfarmer.co.uk. South West Farmer is made of traditional newspaper material and is tabloid size. It is not alleged that the circulation of the South West Farmer is either a case of passing off or an infringement of the UKTM.
- The South West Farmer masthead has changed a few times over the years. The various mastheads are shown below:
May 1981 – May 1998:
June 1998 – January 2008:
February 2008 - present:
- It was Mr David Husband's unchallenged evidence that he had created and designed the South West Farmer masthead and used green because he thought it obvious for farming. He added the lower bar in order to include the issue number and the upper bar to balance it. Ms Margaret Julia Snow took over from Mr Husband as editor of South West Farmer in 1998/9. She was responsible for updating the newspaper and its masthead. She said in cross examination that it was completed by an in-house designer and that she put the style to her general manager. I accept her evidence in this regard.
- Evegate accepts that the South West Farmer and the South East Farmer effectively co-existed for approximately 30 years. It is said that each concentrated predominantly on its own territory and could reach the general zones in southern England or middle southern England.
The Launch of The Southern Farmer in more detail
- The Newsquest Group decided to launch "Southern Farmer", the subject of this action, in early 2011. It was Mr Dixon-Phillip's evidence that it was agreed that Southern Farmer would adopt the same size, format and business model as The Scottish Farmer and The Northern Farmer. He stated that in discussion with Mr Darren Bruce, the publisher of the Scottish Farmer, amongst others, it was felt that there was an opportunity for a co-ordinated approach for Farmer titles. The Northern Farmer had been developed in a similar way from 2010 and had proved a good business model.
- The Southern Farmer is a paid-for high quality print monthly newspaper with a glossy cover that is available for a yearly subscription fee or for sale in newsagents and similar news-stands. The original "Southern Farmer" masthead was in the following form:
- It was Lottie Elson's evidence that The Southern Farmer name and masthead were designed to match the other titles in the Newsquest Farmer Series. Ms Charlotte Elson, otherwise known as Lottie, is a marketing manager employed by Newsquest who is primarily responsible for the Argus, another Newsquest title. In fact, John Banks, the regional managing director for Newsquest stated that there were a number of meetings about the format of the masthead and that he picked out his favourite. In cross examination he added that he had thought "The" to be superfluous but that it was added later at the suggestion of Mr Bill Browne, to chime with The Scottish Farmer and to create a corporate identity. Mr Browne is the publisher of The Southern Farmer and is the publisher of Newsquest's southern regional operations, based in Salisbury.
- Mr Browne confirmed that following the direction of Paul Davidson, the Newsquest Chief Executive, there was a general drive to roll out the Farmer publications across the country and that Darren Bruce was approached to develop it. He also stated that Newsquest wanted to spread across the Southern region. He contacted Darren Bruce and visited The Northern Farmer before Southern Farmer was launched. He said that the working title was Southern Farmer from February 2011 but that he suggested in April that it should follow the other titles and use "The". He also proposed the similar masthead.
- Around that time, Mr Dixon-Phillip carried out some research into the title name Southern Farmer, online, in print and in trade directories. He also carried out a trade mark search but nothing came up. He stated that he was distantly aware of South East Farmer as a "very localised competitor in the South East." He had already registered the domain name "southernfarmer.co.uk" in January of 2011. He stated that he did not remember seeing South East Farmer's domain name. He did discover Southern Farmers Limited but was satisfied that it was a co-operative and not a publication.
- It was Mr Browne's evidence that Southern Farmer was the first product which he had launched and that he believed that conflict checks had already been carried out.
- In February 2011, Wendy Symons was asked to take on the advertising sales for Southern Farmer in addition to her role with South West Farmer. She started canvassing advertisers. She said that for the most part, she contacted existing customers with promotion offers to advertise in Southern Farmer and South West Farmer. One such example was her email contact with a Max Ford. In that email she pointed out that the new publication was intended to have the appearance of the Scottish and the Northern Farmer. She did exactly the same for Wales Farmer when it was launched in November 2011.
- She sent out Media Information packs which included the strapline, "The voice of farming in the South" under "The Southern Farmer" and included the Newsquest Publication sign and logo akin to a compass. It boasted that The Southern Farmer would be "a compact sized publication with a high gloss cover". Ms Symons accepted that this tied in with the Scottish Farmer and distinguished the publication from the South West Farmer which is newsprint alone and a free paper.
- Mr Jonathan Perkins was then required to follow up on Ms Symons' initial contact. He too had been required to concentrate on national brands and property advertising sales because Newsquest already had established relationships in those sectors. He worked with Wendy Symons who was also the advertising manager for South West Farmer and The Smallholder, another Newsquest title. He met the potential advertisers face to face and gave them a presentation about the new Southern Farmer publication. He took the presentation pack with him. He commented in cross examination that the inclusion of "The" in the title of the publication in the presentation pack, although it was not present in the masthead at the time, made no difference in selling advertising.
- He also accepted that the reference to "High gloss cover" in the promotion pack was important because the advertisers were familiar with South West Farmer which is of a lesser quality. He stated in chief that the intention was to replicate the quality and format of The Scottish Farmer. This was also the evidence of Mr Bill Browne. He stated that Newsquest had learned from The Scottish Farmer that a glossy cover was useful for farmers who might have dirty hands. He, nevertheless, emphasised that the publication was a newspaper despite not being described expressly as such in the media pack. In this regard, he pointed out that the form of the media pack was the same as that used for The Northern Farmer.
- Mr Perkins also stated that he emphasised the details under the heading "Extensive Promotional campaign" which were as follows:
"The Southern Farmer is heavily promoted in its market leading sister publications including: The Southern Daily Echo, the Bournemouth Daily Echo, the Brighton Argus, The Dorset Echo, The Salisbury Journal, The Hampshire Chronicle, The Andover Advertiser and The Basingstoke Gazette."
He said that he informed potential advertisers that the new publication was part of a chain of titles including The Scottish Farmer and told them that Newsquest had identified a new market with potential to develop in the southern counties to which South West Farmer did not extend. Pictures of the other titles including The Scottish Farmer, The Northern Farmer and The Smallholder were in the pack and Mr Perkins left copies of The Scottish Farmer and Northern Farmer with potential advertisers. He also informed them that it was intended that Southern Farmer be sold in newsagents as well as being available by subscription. About 60 -70% of Southern Farmer's initial advertising sales came form Newsquest's Falmouth office where South West Farmer is based. He accepted that he was aware of South East Farmer at the time but considered that it covered the South East rather than the whole southern region.
- Mr Perkins described a particular occasion on which he gave a presentation to Savills at the their offices in Salisbury. Those present included Sophie Clotworthy. Mr Perkins recalled that Savills' Kent representative stated that they would continue to use South East Farmer. The rest of the team decided to take two pages in Southern Farmer in addition to their existing advertising with South West Farmer. Mr Perkins states that he did not encounter any confusion with South East Farmer amongst advertisers.
- Mr McGrorty also spoke with Ms Clotworthy on the telephone about an advertisement she had placed with Southern Farmer. Despite Mr McGrorty's evidence to the effect that Ms Clotworthy was confused, the transcript of their call reveals that Ms Clotworthy fully understood that Southern Farmer was not connected with South East Farmer but is a sister publication of South West Farmer and had chosen to advertise in Southern Farmer because it covered her 'patch' and she had been given an introductory offer because Savills also advertise a great deal in South West Farmer. She described there being a "clear distinction" between the publications. In the light of the transcript, I do not accept that Ms Clotworthy was confused.
- The imminent launch was widely advertised in various other publications owned by the Newsquest Group from around March 2011. In fact, it was Mr McGrorty's evidence that he noticed an advertisement for Southern Farmer in a local newspaper when he was on holiday in Lyme Regis in May 2011.
- In May 2011, Newsquest held a workshop in relation to Southern Farmer which was run by Karen Drinkwater, a regional trainer for Newsquest. Her email of 5 May dealing with a number of questions records amongst other things:
"Publications looked at in the workshop (not necessary your areas –lots of others available in retail outlets)
South East Farmer"
- On 24 May 2011, a letter before claim was sent to the legal department of the Newsquest Group by Evegate's solicitors. No undertakings or name change was forthcoming. It was Mr Bill Browne's evidence that despite participating in the e-version of Ms Drinkwater's workshop he did not consider South East Farmer to be a competitor because he considered it to be quite different from Southern Farmer.
- The Southern Farmer was launched at the South of England Show in June 2011, at which it was promoted from a Newsquest stand (which was next to another Newsquest stand promoting another one of the Newsquest titles called 'The Argus'). Mr Bill Browne stated that posters were added to the stand to make it clear that The Southern Farmer was a Newsquest publication. In fact, the masthead of the first edition contained the sub-title, "A Newsquest Publication" and the Newsquest logo which is akin to a compass. The logo did not appear again. Mr Browne was responsible for the change.
- At the South of England Show, Newsquest collected around 30 survey forms filled out by people who stopped at their stand. Some were also collected at the New Forest Show. None of them reveal confusion with South East Farmer.
- It was Lottie Elson who was required to organise the launch and the stand at the South of England Show. She noted in her second witness statement that no more than a dozen walked by and said that they already subscribed but that it was pointed out that The Southern Farmer was a new publication. She also stated that as much as possible the marketing materials were changed to include the phrase, "a Newsquest publication."
- On 20 May 2011, Mr McGrorty had received an email from Deborah Barber one of the organisers of the South of England Show, inviting both Southern Farmer and the Argus to the President's Lunch at the show. Mr McGrorty stated that this was an example of someone who was well aware of South East Farmer and the farming sector, confusing South East Farmer and Southern Farmer and believing that they were part of the same company or organisation. I refer to Ms Barber's evidence in this regard below. She says that it was merely a typographical error, which given the circumstances she described, I accept.
- In May 2012 the title name was updated to be more consistent with The Northern Farmer and The Scottish Farmer. The current masthead is shown below:
- As I have already mentioned following the launch of The Southern Farmer, the Newsquest Group launched Wales Farmer and in addition, the Three Counties Farmer. It is not disputed that these publications all adopt substantially the same size, format, masthead design and paid-for distribution model as the other publications in the Newsquest Farmer Series.
- In cross examination Mr Rabson accepted that there is a pattern across the Newsquest Farmer titles and that the Southern Farmer branding followed the same style as The Scottish Farmer, The Northern Farmer and Pembrokeshire Farmer and that it was the Newsquest style. Mr Rabson also withdrew the assertion that there was a deliberate attempt to mimic the name and masthead of South East Farmer. In fact, it had been Mr John Banks' evidence in cross examination that there was no attempt to mimic and that Southern Farmer aimed to be unique. He accepted however, that it was inevitable that there would be similar content given the focus on farmers and an overlap in advertising.
The Relevant Law
(a) Passing Off
- The elements of the tort of passing off are well established to be the classical trinity as defined in Reckitt & Colman Products Ltd v Borden Inc (No 3)  RPC 341 by Lord Oliver at 406:
"The law of passing off can be summarised in one short general proposition – no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must 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 are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff… Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is 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 is the same as the source of those offered by the plaintiff."
- In the Court of Appeal in Fine & Country Ltd (formerly Spicerhaart Ltd) v Okotoks Ltd  EWCA (Civ) 672, Lewison LJ set out the legal framework for passing off at  and  in the following way:
"The legal framework
54. The characteristics of an action for passing off were thus described by Lord Diplock in Erven Warnink BV v Townend & Sons (Hull) Ltd  AC 731, 742:
"(1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so."
55. Thus the essence of the action is not confusion, but misrepresentation. Lord Diplock immediately added a very important warning:
"In seeking to formulate general propositions of English law, however, one must be particularly careful to beware of the logical fallacy of the undistributed middle. It does not follow that because all passing off actions can be shown to present these characteristics, all factual situations which present these characteristics give rise to a cause of action for passing off. True it is that their presence indicates what a moral code would censure as dishonest trading, based as it is upon deception of customers and consumers of a trader's wares but in an economic system which has relied on competition to keep down prices and to improve products there may be practical reasons why it should have been the policy of the common law not to run the risk of hampering competition by providing civil remedies to every one competing in the market who has suffered damage to his business or goodwill in consequence of inaccurate statements of whatever kind that may be made by rival traders about their own wares. The market in which the action for passing off originated was no place for the mealy mouthed; advertisements are not on affidavit; exaggerated claims by a trader about the quality of his wares, assertions that they are better than those of his rivals even though he knows this to be untrue, have been permitted by the common law as venial 'puffing' which gives no cause of action to a competitor even though he can show that he has suffered actual damage in his business as a result."
- Therefore, Evegate must show that the name of its farming magazine has become distinctive in the minds of the relevant trade or public in this country, such that use of that name will indicate to that relevant trade or public that the publication is owned and/or affiliated with Evegate and none other. Secondly, it must be shown that there is misrepresentation by the defendant leading or likely to lead a substantial part of the relevant public to believe that its publication is that of or connected with Evegate. In fact, passing off requires there to be a deception. Lord Jauncey made this clear in Reckitt & Colman Products Ltd v. Borden Inc  RPC 341 at 417:
"It is a prerequisite of any successful passing off action that the plaintiff's goods have acquired a reputation in the market and are known by some distinguishing feature. It is also a prerequisite that the misrepresentation has deceived or is likely to deceive and that the plaintiff is likely to suffer damage by such deception. Mere confusion which does not lead to a sale is not sufficient."
Furthermore, the deception must be in the minds of a substantial proportion of the relevant trade and/or public. The evidence of witnesses is relevant only in so far as they are representative of a substantial part of the relevant public: Interflora v Marks & Spencer  ETMR 11  –  per Lewison LJ.
- Hildyard J also addressed the issue of the public in the context of passing off in the Fine & Country case at first instance ( EWHC 2230 (Ch)) at  and  in the following way:
"75 For these purposes, the expressions "the public" or "people" connote customers or purchasers (actual or prospective) of the claimant or others with whom the claimant has business relations. Such people must be taken as they are found: and it is no defence that they would not be misled if they were more literate, careful, perspicacious, wary or prudent (see the Jif case at 415).
76 For the same reason, allowance must be made for the fact that marks are remembered rather by general impressions or by some significant detail than by any precise photographic recollection of the whole; and similarly, people's recollection of the differences and similarities between two signs or marks may be imperfect: the one may yet be mistaken for the other in the memory and the mistake thus induced may be taken to be proof of deception, even though also the product of false recollection."
- He went on acknowledge the difficulty of obtaining evidence at :
"84. The courts recognize, however, that finding and producing actual evidence of confusion is difficult. Members of the public are reluctant to attend court. Moreover, people who are confused and deceived may remain confused and deceived, and there is no reason why this should come to the attention of the parties. Furthermore, members of the public who were once deceived, but then appreciate that they were misled, will frequently have no reason to draw this to the attention of the parties, especially if the realisation comes some time after any relevant dealing with the parties. Finally, persons may be deceived, and decide not to do business with the claimant as a result. They have therefore no reason to contact the parties and inform them of the confusion. For these reasons, evidence of actual confusion and deception is often decisive, but its absence is not."
- It is said by Newsquest that, given the facts in this case the following observations of the House of Lords in Office Cleaning Service Ltd v Westminster Window and General Cleaners Ltd  63 RPC 39 at 43 per Lord Simonds are of relevance:
"So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be. I am ready to believe that in this case genuine mistakes were made. I think they ought not to have been made. In the Vacuum Cleaner case it appeared that ninety per cent of its customers had addressed the Plaintiffs, in the British Vacuum Cleaner Coy., Ltd as the "Vacuum Cleaner Coy". In spite of this fact and of instances of actual confusion Parker J refused to grant an injunction to restrain the New Vacuum Cleaner Coy., Ltd from using the word "vacuum cleaner" in conjunction as part of its registered or other name. So in Turton v Turton (42 Ch. D. 128) the possibility of blunders by the public was held not to disentitle the defendant from trading in his own name though the plaintiff had long traded in the same name. It comes in the end, I think, to no more than this, that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be rendered."
- Mr Baldwin on behalf of Newsquest also referred me to Premier Bags & Luggage Ltd v. Premier Co (UK) Ltd  FSR 5 at , in which Chadwick LJ stated as follows:
"It is essential to keep in mind that, as Millett L.J. put it in Harrods Limited v Harrodian School Limited  RPC 697 at p.711 (lines 33–36) in a passage to which the judge referred:
"… the property which is protected by an action for passing off is not the plaintiff's proprietary right in the name or get up which the defendant has misappropriated but the goodwill and reputation of his business which is likely to be harmed by the defendant's misrepresentation."
The relevant question, in the context of an action for passing off, is not whether there is a risk of confusion because the defendant's name is similar to the claimant's name; the relevant question is whether the defendant's use of his name in connection with his goods or his business will be taken as a representation that his goods or business are, or have some connection with, the goods or business of the claimant — so giving rise to harm, or the risk of harm, to the goodwill and reputation which the claimant is entitled to protect. A risk of confusion is not enough — see the observations of Lord Simonds in Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 R.P.C. 39 at p.43:
. . . . .
More recently, Lloyd J. was right, if I may say so, to point out in HFC Bank Plc v Midland Bank Plc  F.S.R. 176 at p.201, that even actual confusion does not show that there has been misrepresentation by anyone; all that it shows is "that people make assumptions, jump to unjustified conclusions, and put two and two together to make five."
- Jacob LJ also explained in Phones 4u Ltd v Phone4u.co.uk. Internet Ltd  RPC 5 that what may appear to be deception may nonetheless be justified where marks are very descriptive:
"21 In this discussion of "deception/confusion" it should be remembered that there are cases where what at first sight may look like deception and indeed will involve deception, is nonetheless justified in law. I have in mind cases of honest concurrent use and very descriptive marks. Sometimes such cases are described as "mere confusion" but they are not really—they are cases of tolerated deception or a tolerated level of deception.
"23 An example of the latter is Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 R.P.C. 39. The differences between "Office Cleaning Services Ltd" and "Office Cleaning Association," even though the former was well-known, were held to be enough to avoid passing off. . . . . .
In short, therefore, where the "badge" of the plaintiff is descriptive, cases of "mere confusion" caused by the use of a very similar description will not count. A certain amount of deception is to be tolerated for policy reasons—one calls it "mere confusion."
- The third ingredient of the tort is damage. Hildyard J summarised the position in the Fine & Country case at - in the following way:
"89 Before turning to the evidence in this case, I should address the third element required to be established if a claim in passing off is to succeed: damage.
90 In Chelsea Man v. Chelsea Girl  RPC 189 at 202, Slade LJ summarised the kind of damage which, if caused by misrepresentation, is actionable:
"(a) by diverting trade from the plaintiffs to the defendants;
(b) by injuring the trade reputation of the plaintiffs whose men's clothing is admittedly superior in quality to that of the defendants; and
(c) by the injury which is inherently likely to be suffered by any business when on frequent occasions it is confused by customers or potential customers with a business owned by another proprietor or is wrongly connected with that business."
91 Damage may occur even if deception is dispelled before the moment of purchase (or other commitment), if the claimant's goodwill is nonetheless harmed; and dispelled deception is actionable accordingly. Thus damage caused by passing off may successfully be claimed if a customer is deceived into going into one shop thinking it to be another if it can be established that, but for the deception, he or she might have gone in to the claimant's shop.
92 To a considerable extent, the prospect of damage and the fact of deception are intertwined: if deception is shown, damage is likely and usually assumed."
- It is not disputed that in a case of this kind where it is not alleged that there are material changes of circumstances, the date at which the matters fall to be assessed is the date on which the acts complained of were commenced. In this case that is June 2011 when The Southern Farmer was launched. This also applies in relation to trade mark infringement to which I refer below.
(b) Trade Mark Infringement
- Infringement has been alleged both under s.10(2) and s.10(3) of the Trade Marks Act 1994 ('the TMA'). They are in the following form:
(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because-
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered.
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.
(3) A person infringes a registered trade mark if he uses in the course of trade in relation to goods or services a sign which-
(a) is identical with or similar to the trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.'
Section 10(2) of the TMA
- In relation to s.10(2) infringement, in this case, the key issue is whether there is any likelihood of confusion by reason of the similarities of the respective marks and goods for which they are used. It is not alleged that the UKTM and the sign are identical.
- The perspective for the inquiry into the likelihood of confusion is that of the average consumer. I was referred to the relevant principles as summarised by Kitchin J (as he then was) in Julius Sämaan Ltd v. Tetrosyl Ltd  EWHC 529 (Ch)  FSR 849 at :
"In addition, to make good an allegation of infringement under Art.5(1)(b), the proprietor must show there is a likelihood of confusion. The basic principles that I must apply in assessing the likelihood of confusion are now well established and may be summarised as follows:
i) The likelihood of confusion must be appreciated globally, taking account of all the relevant factors: Case C-251/95 Sabel BV v Puma AG  ECR I-6191;  RPC 199 at  to ;
ii) The matter must be judged through the eyes of the average consumer of the goods in issue, who is deemed to be reasonably well informed and reasonably observant and circumspect: Sabel at  to ; Case C-342/97 Lloyd Shuhfabrik Meyer & Co GmbH v Klijsen Handel BV  ECR I-3819;  FSR 77 at  to ;
iii) In order to assess the degree of similarity between the marks concerned the court must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements taking into account the nature of the goods in question and the circumstances in which they are marketed: Lloyd at  to ;
iv) The visual, aural and conceptual similarities of the marks must therefore be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components. The perception of the marks in the mind of the average consumer plays a decisive role in the overall appreciation of the likelihood of confusion: Sabel at  to ;
v) The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details: Sabel at  to ;
vi) There is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character, either per se or because of the use that has been made of it: Sabel at  to ;
vii) The average consumer rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind; further the average consumer's level of attention is likely to vary according to the category of goods in question: Lloyd at  to ;
viii) Appreciation of the likelihood of confusion depends upon the degree of similarity between the goods. A lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, and vice versa: Case C-39/97 Canon Kabushiki Kaisha v. Metro Goldwyn Mayer Inc  RPC 117 at  to ;
ix) Mere association, in the sense that the later mark brings the earlier mark to mind, is not sufficient for the purposes of the assessment: Sabel at ;
x) But the risk that the public might believe that the goods come from the same or economically linked undertakings does constitute a likelihood of confusion within the meaning of the section: Canon at  to ."
- The concept of the "average consumer" has been revisited at some length by Arnold J in Interflora v M&S  EWHC 1291 (Ch) following the decisions in that case in the Court of Appeal. Having conducted a detailed consideration of the authorities, Arnold J went on:
"208. Against this background, a number of points are common ground between the parties. First, the average consumer is, as Lewison LJ put it in Interflora (CA I) at  and , a "legal construct".
209. Secondly, the average consumer provides what the EU legislature has described in recital (18) of the Unfair Commercial Practices Directive as a "benchmark". As counsel for M & S put it, the test is a "normative" one. By assessing matters from the perspective of a consumer who is reasonably well-informed and reasonably observant and circumspect, confusion on the part of those who are ill-informed or unobservant is discounted.
210. Thirdly, as Lewison LJ stressed in Interflora (CA I) at -, in a case concerning ordinary consumer goods and services, the court is able to put itself into the position of the average consumer without requiring expert evidence or a consumer survey. As Chadwick LJ said in BACH and BACH FLOWER REMEDIES Trade Marks  RPC 513 at , in a passage which Lewison LJ emphasised in Interflora (CA I) at -:
"The task for the court is to inform itself, by evidence, of the matters of which a reasonably well informed and reasonably observant and circumspect consumer of the products would know; and then, treating itself as competent to evaluate the effect which those matters would have on the mind of such a person with that knowledge, ask the [relevant] question".
"211. Fourthly, the average consumer test is not a statistical test in the sense that, if the issue is likelihood of confusion, the court is not trying to decide whether a statistical majority of the relevant class of persons is likely to be confused."
- It is not in dispute that the average consumers for the purposes of this case are persons who would be likely to read the publications and/or place advertisements in them. However, there is a dispute about who those likely readers and advertisers would be. Mr Baldwin seeks to restrict them to farmers in the sense of those engaged in agricultural production whereas Ms McFarland takes a wider view. She submits that one should include all those who have an interest in the type of articles which appears South East Farmer. These would include for example, smallholders, those who keep chickens and horses, and those interested in fruit production, fencing, irrigation and machinery as well as traditional farmers. I accept Ms McFarland's wider categorisation. It seems to me that given the content of the South East Farmer, it appeals to a much wider audience than the traditional farmer alone.
- The importance of recognising descriptive elements in a mark was emphasised by the Court of Appeal in Reed Executive Plc v Reed Business Information Ltd  EWCA Civ 159 per Jacob LJ:
" Finally, although I agree with the Judge's questioning of the Court's proposition of fact that "there is a greater likelihood of confusion with very distinctive marks" there is some truth with the opposite proposition. The Court in [Lloyd Schuhfabrik Meyer Case C–342/97  ECR I-3819;  ETMR 690] said:
"In determining the distinctive character of a mark, and accordingly in assessing whether it is highly distinctive, it is necessary to make a global assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment account should be taken of all relevant factors and in particular of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered"
 The last sentence is an acknowledgement of a fact that has long been recognised: where a mark is largely descriptive "small differences may suffice" to avoid confusion (per Lord Simonds in Office Cleaning Services v Westminster Window and General Cleaning (1946) 63 R.P.C. 30 at p.43). This is not a proposition of law but one of fact and is inherent in the nature of the public perception of trade marks."
- The court must make a global assessment having regard to the overall impression of the claimant's trade mark and the alleged infringing sign, bearing in mind their dominant and distinctive components and the extent to which there is any aural, visual or conceptual similarity between them. It is considered that the average consumer normally perceives the mark and the sign as a whole, and does not proceed to analyse them in detail: Lloyd Schuhfabrik Meyer at  and .
- Furthermore, it is important that the use complained of must be assessed in its context, as was confirmed by the CJEU in O2 Holdings Ltd v Hutchison 3G UK Ltd  ECR I-4231:
" It is true that the notion of likelihood of confusion is the same in Arts 4(1)(b) and 5(1)(b) of Directive 89/104 (see, to that effect, Marca Mode CV v Adidas AG (C-425/98)  ECR I-4861;  E.T.M.R. 561 at -).
 Article 4(1)(b) of Directive 89/104 , however, concerns the application for registration of a mark. Once a mark has been registered its proprietor has the right to use it as he sees fit so that, for the purposes of assessing whether the application for registration falls within the ground for refusal laid down in that provision, it is necessary to ascertain whether there is a likelihood of confusion with the opponent's earlier mark in all the circumstances in which the mark applied for might be used if it were to be registered.
 By contrast, in the case provided for in Art.5(1)(b) of Directive 89/104 , the third party user of a sign identical with, or similar to, a registered mark does not assert any trade mark rights over that sign but is using it on an ad hoc basis. In those circumstances, in order to assess whether the proprietor of the registered mark is entitled to oppose that specific use, the assessment must be limited to the circumstances characterising that use, without there being any need to investigate whether another use of the same sign in different circumstances would also be likely to give rise to a likelihood of confusion."
- This guidance was considered and applied by the Court of Appeal by Kitchin LJ in Specsavers International Healthcare Ltd & ors v Asda Stores Ltd  EWCA Civ 24;  ETMR 17 as follows:
" In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context."
Section 10(3) of the Act
- In order to satisfy the cause of action under s.10(3) TMA Evegate must show:
i) that the UKTM has a reputation;
ii) that, on a global appreciation, the relevant section of the public makes a connection or establishes a link between the UKTM and The Southern Farmer masthead (Adidas-Saloman v Fitnessworld  ETMR 10  – );
iii) the link is liable to either a) cause detriment to the distinctive character of the UKTM b) cause detriment to the reputation of the UKTM or c) take unfair advantage of the distinctive character or repute of the UKTM (see Intel v CPM C-252/07  ECR I-8823 at ); and
iv) that the use of the sign is 'without due cause'.
- As regards reputation, it is required that, at the time of the alleged infringement, the trade mark is known by a significant part of the public concerned by the products or services covered by that mark. To decide if this is the case one must take into account all the relevant facts, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made in promoting it. The trade mark does not need to have a reputation throughout the territory, however it must be known by a significant part of the relevant public concerned in a substantial part of that territory (see General Motors Corp v Yplon SA (C-375/97)).
- For infringement to be established Evegate must prove that the average consumer makes a "link" between the allegedly infringing sign and the UKTM as a result of the similarity between them. This is because, in the absence of such a link, the use of the allegedly infringing sign is unlikely to take unfair advantage of or be detrimental to the reputation or distinctive character of the registered mark. Moreover, the link has to be between the UKTM and the usage complained of. In this regard, it is important to bear in mind that the UKTM is a figurative mark and not a word mark and that Newsquest's allegedly infringing sign is more than just the name "The Southern Farmer". It appears in a particular format.
- Whether or not the link is made in any particular case must be determined globally, taking into account all relevant factors. These include:
i) The degree of similarity of the marks; the greater the similarity the more likely it is that the sign will bring the registered mark to mind. However, just because there is similarity, or even if the marks are identical, it cannot be assumed that there will be a link. It must be proved on the facts of the case;
ii) The strength of the reputation of the registered mark in context;
iii) The degree of distinctiveness of the registered mark. In considering this issue, it is necessary to have regard to the scope of any distinctiveness or reputation of the UKTM. The weaker the reputation and distinctive character, the less likely that any link with the UKTM will confer an unfair advantage. The CJEU in L'Oreal v Bellure said at :
"In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark's reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark's distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (see, to that effect, Intel Corporation (C-252/07)  ETMR 13 at  to ).
In Intel itself, the CJEU dealt with the matter as follows:
"54 Likewise, the stronger the distinctive character of the earlier mark, whether inherent or acquired through the use which has been made of it, the more likely it is that, confronted with a later identical or similar mark, the relevant public will call that earlier mark to mind.
55 Accordingly, for the purposes of assessing whether there is a link between the conflicting marks, the degree of the earlier mark's distinctive character must be taken into consideration."
- It is clear from Intel at  and  that one then turns to the question of unfair advantage. This is a question which must also be assessed globally taking into account all of the relevant facts and circumstances of the case. Has unfair advantage of the character or repute of the UKTM been taken, or is there is a serious risk that such injury will occur in the future? The question is whether the use of The Southern Farmer masthead draws some benefit for Newsquest, by "free riding" on the back of the character or repute of the UKTM. The CJEU described the concept thus in Case C-487/078 L'Oreal v Bellure  RPC 1:
' As regards the concept of 'taking unfair advantage of the distinctive character or the repute of the trade mark', also referred to as 'parasitism' or 'free-riding', that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.
 … The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit it, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image.'
- Next, it is necessary to turn to whether there is detriment to the distinctive character or repute of the UKTM. Once again, this is a matter for global assessment by reference to all of the relevant facts and circumstances of the case. It must be proved that there has already been damage to any distinctive character or repute of their marks, or that there is a serious risk that such injury will occur and that the damage takes the form of a change in the economic behaviour of the average consumer of Evegate's publication, or a serious likelihood that such a change will occur in the future.
- Lastly, under s10(3) it is also necessary to consider whether Newsquest's use of The Southern Farmer masthead is "without due cause". This requires that the use adversely affects one of the functions of the UKTM and as such falls outside the scope of 'fair competition in the sector for the goods or services concerned' (see Interflora v Marks & Spencer C-323/09 at  – ).
EVEGATE'S Case In Passing Off
(a) Goodwill and reputation
- In this regard, Ms McFarland on behalf of Evegate submitted that in this case, although goodwill and reputation are not synonymous, they overlap. She submitted that there was a wealth of evidence of goodwill and reputation. She referred in particular, to the long use of the title and masthead, the consistent turnover, the number of readers and subscribers being 13,500 per month and the number of shows attended and sponsored. In this regard, Mr Baldwin sought to highlight that Mr Rabson's evidence was to the effect that the subscription list was relatively static and Mr McGrorty's evidence was that over a five year period the number of paid subscriptions had only increased from 300 to 500, the remainder being distributed free. He says therefore, that Evegate cannot establish that the name South East Farmer has any "attractive force which brings in custom."
- Mr Rabson also gave evidence of a marketing budget of for example, £3,759.52 in 2007/8, £4,397.80 in 2009/2010 £5,684.68 in 2010/11 and £5,891.97 in 2011/2012 upon which Ms McFarland relies and which Mr Baldwin describes as trivial.
- Ms McFarland also relied upon Mr McGrorty's evidence that readers regularly contacted South East Farmer to show their appreciation and that their letters were published under the heading "Readers Comments and Letters." Mr Baldwin points to the fact that the examples were very few. In particular, Ms McFarland also relied upon the oral evidence of Mr Cook, Mr Dungey, Ms Stamp and Ms Calcutt.
- Mr Christopher Allingham Cook is a retired publican who assists an elderly farmer, a Mr Farmer, in East Sussex with the day to day running of his farm. He was aware of South East Farmer and had placed adverts on behalf of Mr Farmer in that publication. He stated that Mr Farmer received South East Farmer through the post and of late had also received The Southern Farmer. He accepted in cross examination that he did not open the packages when they came through the post and that he encountered the publications on the desk together and in that context they looked similar.
- Mr Cook said that Mr Farmer received a letter stating that if he wanted to continue to receive The Southern Farmer, he would have to take out a subscription. He believed the reference to be to South East Farmer and knew that Mr Farmer wanted to continue to receive it and in particular to receive South East Farm Machinery which comes with it. In fact, he contacted The Southern Farmer and it was not until he had given credit card details that he realised his mistake.
- In cross examination he referred frequently to "we" with reference to himself and Mr Farmer who was actually in receipt of the publications. When put to him that if he thought Southern Farmer was South East Farmer, he must have thought that he was receiving two copies of the same thing, he refused to accept it but later went on to state that he appreciated that Mr Farmer was in receipt of three publications but thought that they were all from South East Farmer.
- Mr Baldwin submitted that he was an unreliable witness and cannot stand proxy for the average consumer or a substantial part of the relevant public. He also says that the incident is irrelevant to passing off (and to trade mark infringement) since Mr Cook accepted that he thought that Mr Farmer was receiving Southern Farmer from Evegate because there was only one subscription, not because of any goodwill in connection with the name or confusion between the names.
- I found Mr Cook to be an honest, reliable and straightforward witness who was doing his best to assist the court. I also do not accept Mr Baldwin's submission that Mr Cook could not stand proxy for the average consumer or as part of the relevant public for the purposes of passing off. As I have already mentioned, I do not consider that it is necessary actually to be a farmer engaged in agricultural production in order to qualify. It seems to me that Mr Cook was involved in the day to day running of a farm and was clearly within the category of those who would be likely to read publications such as South East Farmer.
- However, it seems to me that Mr Baldwin's submission that the incident is irrelevant to passing off and infringement is correct. The incident arose because Mr Cook believed there to be a single subscription and not because of any goodwill in connection with South East Farmer or confusion between the names.
- Ms Miranda Stamp is the managing director of an online real cloth nappy shop. At the Royal Berkshire Show in September 2010, she and her husband picked up some free copies of South East Farmer. They had intended to subscribe but did not get round to it on that occasion. She stated that she was delighted however, in May 2011, to discover a publication in her local post office and general store in Berkshire and purchased what she believed to be a copy of South East Farmer. She stated that her husband had been brought up on a farm and that they have tractors and farmyard equipment and that often get industry publications include Farmers Guardian, Famers Weekly and other tractor enthusiast magazines.
- She said that it was not until she attended the Royal Berkshire show in September of 2011 that she realised that what she had been buying was not South East Farmer but Southern Farmer. She stated that it had a similar name, typeface and masthead. She said that she had simply assumed that it was South East Farmer in a different format. However, she accepted that when she read Southern Farmer she knew that it was different but suggested that it was because it was a different version of what she had seen some 8 months before. She nevertheless continued to buy Southern Farmer, although she did not subscribe to it as Mr McGrorty suggests in his witness statement. Thereafter, after their second visit to the Royal Berkshire Show, she and her husband subscribed to South East Farmer.
- In relation to her evidence, Mr Baldwin on behalf of Newsquest submits that in the light of her employment she is far from the core readership or advertising base of South East Farmer and accordingly, cannot stand proxy to any relevant group. It seems to me that given the interest shown in her household in farmyard machinery and the like, she falls within the wider category of reader which in my judgment is relevant when considering the average consumer and the relevant public in this case.
- Mr Baldwin also submitted that her explanation of her understanding of the full page statement in the Southern Farmer that it was a new publication was unimpressive and should be rejected. She stated first that she did not know how old or new South East Farmer was and that secondly, "new" could be a year old and that people advertise things as "new and improved" and accordingly, she did not think much about it. Far from rejecting such evidence, it seems to me that it rings true and that on the balance of probabilities it is more likely than not to be correct.
- Mr Baldwin also criticises her evidence on the basis that although she stated that she was convinced that Southern Farmer was South East Farmer, when she went back to the Royal Berkshire Show in 2012 she asked whether or not the two were the same. In my judgment, Mr Baldwin is seeking to impose too analytical an approach in this regard. I accept Ms Stamp's evidence that she bought Southern Farmer, believing at least that it was South East Farmer in a different format and that when she returned to the Royal Berkshire Show in 2012 sought to confirm whether it was the same or different, before taking out a subscription to South East Farmer. It seems to me therefore, that Ms Stamp was confused.
- Mr Stewart Henry Dungey is a former farmer from the Isle of Wight. He still keeps horses on his 80 acre farm, works in antiques and does holiday lets. He was described as a "modern farmer". Although I do not doubt that Mr Dungey was an honest witness, I found him to be vague and somewhat confused at times. His evidence was that South East Farmer was an excellent farming publication which he had received for many years. He stated that he believed that most farmers on the Isle of Wight also received a copy.
- He went on to state that in October 2012 he had sought to place an advertisement for the sale of a tractor driven generator in South East Farm Machinery and went on to the internet in order to confirm the correct email address. In fact, the email bounced back and he spoke to someone on the telephone who confirmed that he was not in contact with South East Farmer. He now believes that he had contacted Southern Farmer. He called the correct telephone number and asked for confirmation of the email address but quoted email@example.com and had to be corrected.
- In cross examination, Mr Dungey accepted that he thought Southern Farmer and South East Farmer were one and the same and that he had typed Southern Farmer into the Google search engine, having forgotten the name of South East Farmer altogether. In fact, he thought that Southern Farmer, South East Farmer and South West Farmer were all published by the same company, not because he had seen the publications but because he had not given the matter a great deal of thought. He also accepted that he had forgotten the name of the publications he did receive, namely South East Farmer and South East Farm Machinery and did not recall that South East Farmer had "East" in its title. In fact, he did not know which website he had been on, who he had spoken to on the phone or where he had obtained the incorrect email address from.
- Mr Baldwin submits that the incident which Mr Dungey relates, therefore, is neither relevant to passing off or to trade mark infringement. Furthermore, he submits that he was not within the envelope of any goodwill or reputation enjoyed by South East Farmer, and neither stood proxy for the average consumer nor for a substantial part of the relevant public. In this regard, Mr Baldwin referred me to HFC Bank plc v Midland Bank plc  FSR 176 which was a passing off action. Dismissing the action, Lloyd J (as he then was) stated at 197 that it was not helpful to put forward a witness who had not heard of the claimant and therefore, was not within the scope of its goodwill. He added:
"The question is as to the circumstances in which someone to whom HFC is known makes such a mistake."
- Although I do not accept that Mr Dungey was outside the envelope of any goodwill or reputation enjoyed by South East Farmer as a result of having given up agricultural production, or because he did not know of South East Farmer, (he clearly did) I do accept Mr Baldwin's other criticisms of Mr Dungey's evidence. It seems to me that the fact that he could not remember South East Farmer's title when he tried to contact them to place an advertisement, could not recall that South East Farmer had East in its title and thought that South East Farmer, South West Farmer and Southern Farmer were all published by the same company does not support the existence of goodwill and reputation in South East Farmer.
- Ms Calcutt is self employed and works as a Marketing Agent for Fruit Growers. She also acted as Madam Chair of the National Fruit Show for three years and is a member of the Council for the Kent Show. She has 15 years experience for the farming trade press. In July 2011 she approached the Southern Farmer stand at the Kent County Show to enquire why they felt there was a place in the market for another farming magazine given that she considered the market to be saturated and that South East Farmer met the needs of the geographical region represented by the Kent County Show region. She expressed the view that Southern Farmer was trading on the good name of South East Farmer, deliberately taking business away with its high advertising content and appeared to be trying to reproduce its editorials.
- However, when she first saw Southern Farmer at the South of England Show in 2011 she wrote a feedback form in which she stated that she was really pleased to see a new publication supporting the farming sector which she accepted did not accord with the content of her witness statement. She stated that the feedback was written with a view to obtaining work. In my judgment although her explanation may well be true, it does not detract from the fact that the contents of the feedback form otherwise undermines her evidence.
- Mr Baldwin did not cross examine Mr Adrian Shorter. He is the managing director of a company which provides crop protection products and services to farmers and the agricultural industry in the South East. His evidence in chief was South East Farmer has a very established reputation in the farming industry in Sussex, Kent and Surrey. He added that Southern Farmer looked more like a newspaper.
- Ms McFarland also referred me to the witness statement of Caroline Anne Butterfield in respect of whose evidence a Civil Evidence Act notice was served on the basis that she is abroad. She is a studio director for a graphic, web and print design company. She had had a good working relationship with South East Farmer and Mr Rabson for over 20 years and had participated in projects with South East Farmer. She had not heard of Southern Farmer until it was mentioned to her by Mr Rabson. She confirmed that whilst she was not a farmer herself, she had friends and clients in the region who are and confirmed "that South East Farmer's reputation in the South is excellent and very well established. It is a publication that is known to have outstanding journalism and creative research which has deservedly earned them national recognition."
- In relation to Ms Butterfield's evidence, I do accept Mr Baldwin's criticism that she was not within the envelope of goodwill or representative of the average consumer. There was nothing to suggest that Ms Butterfield is a reader with interests in agriculture and related topics.
- Ms McFarland submitted that Evegate's unchallenged evidence as to the circulation of the South East Farmer of approximately 13,500 copies a month, together with the positive comments published in the Comments column of the magazine itself are indicative of goodwill. She also relied on the scope of the content and advertising included in South East Farmer which covers not only local but also national and EU content. With regard to content and scope of advertising, I accept Mr Baldwin's submission that it is not relevant to the question of goodwill.
- She also relied on the evidence of Karen Elizabeth Wheeler. She is the secretary of the Weald of Kent Ploughing Association which organises the annual Weald of Kent Ploughing match. Her evidence was that both she and the Association had had a close relationship with the South East Farmer for some fifteen years because the South East Farmer had supported the match. It sponsored some of the signage, was given a trade stand and advertising space in the show programme and each year sponsored a trophy for the Best Trade Stand.
- Her evidence was that the South East Farmer's reputation in South Essex, Kent, Sussex, Surrey and Hampshire was very well established. In her witness statement she stated that she thought that South East Farmer and Southern Farmer had very similar mastheads despite the difference in colour.
- She also stated that she believed that there would be confusion between the publications and gave as an example the Minutes of the meeting of the Weald of Kent Ploughing Association on 19 April 2010 which she had recorded. She states that although the discussion at the meeting was about advertising in South East Farmer, the minutes record the discussion as referring to Southern Farmer. In cross examination she asserted that everyone would have known that the reference was intended to be to South East Farmer. Furthermore, the incident occurred before the launch of Southern Farmer in 2011.
- Mr McGrorty also makes reference in his witness statement to a Mr Stephen Palmer of Beba Energy, a potential advertiser in South East Farmer. Despite having reserved space in that magazine and having been sent two back issues of it, he sent through editorial notes headed "GH Grain/Southern Farmer."
- Ms McFarland also relies upon the evidence of Ms Rebecca Farmer, Mr McGrorty's wife and an employee of Evegate. She records a telephone call with a subscriber in March of 2012 in which the caller stated that everyone waits for South East Farmer on the doorstep and "nobody wants any mail apart from this one."
- On the other hand, Mr Baldwin on behalf of Newsquest submits that Evegate's goodwill is limited in a number of respects. First, it is said that to the extent that Evegate owns any goodwill and reputation in relation to its title-name, it is extremely weak because in June 2011 when Southern Farmer was launched, readers and advertisers were familiar with similarly descriptive publication names containing the word 'Farmer', and containing geographical indicators used as subsidiary words at beginning of the title-name. To put the matter another way, Mr Baldwin says that a publication name incorporating 'Farmer' and a geographical indicator is not and was not distinctive specifically of Evegate. He says that this is particularly true for Evegate's advertisers and prospective advertisers, many of whom were and are advertisers or prospective advertisers for the other farming publications which are distributed in the southern counties of the UK, including South West Farmer.
- Mr Baldwin submits that Evegate has no right to monopolise the use of entirely descriptive names for farming publications in the southern region. He says that it is insufficient that there may be some low-level confusion as a result of similarity in names. In this regard, he referred me to the undisputed fact that, from 1992, a publication called 'The Southern Farmer' was distributed on behalf of the National Farmers Union in Hampshire, Sussex, Surrey and Middlesex for around 5 years without any issue arising with South East Farmer.
- In this regard, Mr Dixon-Phillip accepted in cross examination that although Newsquest had for example, co-ordinated their "Packet" titles so that they all used the same get up and had done the same with its "Farmer" titles, readers accept sister titles whether or not they are similar. He also accepted that one should avoid confusing the readership by similar title names. He described South East Farmer however, as only offering advertising in one small region and "centric to one market place."
- Furthermore, he pointed to the presence of "Southern Farmers Limited" (an agricultural cooperative which is based in Kent) as highlighting how descriptive the name Southern Farmer is. Again there is no suggestion that Evegate ever took issue with the name of that organisation; indeed it is positively asserted that they have had a good relationship.
- Mr Sean Hart was the General Manager of Southern Farmers Limited until mid 2012. He stated that it is a not for profit organisation which has over 1000 members who are commercially involved in agriculture, forestry, horticulture and related rural industries. He explained that Southern Farmers Limited acts as a disclosed buying agent between its members and suppliers. He accepted in cross examination that Southern Farmers Limited could not be a more apt description of the organisation for which he worked.
- In his witness statement he dealt with a telephone call with one of the co-operative members who was angry that her contact details had been published. He stated that she said that they were in the co-operative's magazine. He pointed out that it does not publish a magazine. He was later informed by Mr McGrorty of the launch of Southern Farmer and thought that the complaint related to that. In cross examination he accepted that the contact details might have been published in Southern Farmers Limited's publication or in their newsletter.
- He also recalled confusion between Southern Farmer and Southern Farmers Limited at the Kent County Show in July 2011. The Southern Farmer had a stall close by to that of Southern Farmers Limited and Mr Hart described a steady flow of the public asking whether there was a connection. He said that he was also concerned with the similarity in the domain name www.southernfarmer.co.uk and www.southernfarmers.co.uk, the latter having been registered in July 2000 and the former in January 2011. However, in cross examination he accepted that pursuit of the Nominet complaint in relation to the domain name, had not been top of his priorities to pursue. He also accepted that the "internet savvy" would find the co-operative. His successor as General Manager, Ms Fifield was contacted by Mr McGrorty. He says that she confirmed that people contact Southern Farmers Limited wanting Southern Farmer. However, Ms Fifield did not give evidence.
- Mr Baldwin submits that all that Mr Hart's evidence reveals is that Southern Farmer is a good name for a newspaper directed to farmers in southern England, that but for a single isolated incident there has been no confusion as a result of the similar web addresses, that publication of details may have been in the co-operative newsletter itself and that there is no actual damage at all.
- In addition, he says that any goodwill owned by Evegate is largely limited to the goodwill associated with the specific design of the South East Farmer masthead which includes the use of the colour green (used since 1984) the font and size of the letters, the thick green lines underneath the text and alongside the words 'South East'. He submits however, that even the South East Farmer masthead is not particularly distinctive when compared with the standard ways in which publications of this sort present their titles, and so any goodwill in the masthead is also relatively weak.
- Secondly, he emphasises that Evegate only owns goodwill in relation to the provision of a glossy free of charge A4-sized magazine delivered through the post, the number of people who actually pay a subscription being minimal. He says therefore, that its goodwill does not extend to newspapers and is not associated with any publications that can be bought from newsstands or otherwise paid-for publications. As such, the existence of a paid-for newspaper that is sold in newsagents is not liable to impinge upon Evegate's goodwill in any significant way. In fact, he points out that there is no evidence that it does so impinge. In any event, he says, if it be the case that readers prefer The Southern Farmer, that is not due to passing off but due to the difference in the quality of the two publications.
- Thirdly, he says that any goodwill and reputation which had attached to the name South East Farmer by June 2011 was confined to Kent, Surrey and Sussex and possibly part of Hampshire. In this regard, he relies upon the evidence of Mr Shorter who stated that South East Farmer had a long history and reputation in Kent, Sussex and Surrey, Ms Wheeler who described it as having a reputation in those counties and in Hampshire, the fact that the agricultural shows attended were all in Kent, Surrey and Sussex and the fact that Mr Rabson accepted in cross examination that national advertisers who advertised in South East Farmer did so in order to target farmers in the South East.
- Taking all the relevant matters in the round, it seems to me that it is quite clear that South East Farmer has goodwill and a reputation. This is apparent from the evidence for example, of Mr Shorter, Ms Wheeler and Ms Stamp. I also take account of South East Farmer's consistent number of subscribers. The goodwill also stems from the activities such as the sponsorship of competitions and shows, the attendance at agricultural shows and the advertising to which I referred at paragraphs 13 and 15 above.
- However, I consider that it is equally clear that that goodwill is limited to a glossy magazine obtained by subscription, which is the manner in which the goods are supplied to the public. This has been the South East Farmer format throughout and other than Ms Stamp who wondered whether what she purchased from her local shop was South East Farmer in another form, which in itself supports the existence of goodwill in the magazine format, there was no evidence of any link between South East Farmer and publications available for sale on the newsstand.
- It is not clear to me, however, that the goodwill is limited to the areas of Kent, Surrey, Sussex and parts of Hampshire. Although the evidence for example, of Mr Shorter and Ms Wheeler was to that effect and Evegate's presence at agricultural shows and active sponsorship is centred on that area, it is clear that they have a wide readership, and that South East Farmer is advertised nationally.
- Under this head, Ms McFarland reminded me that the misrepresentation must be material. She referred to 5-019 of 4th Ed of Wadlow on "The Law of Passing Off". It states as follows:
"The misrepresentation in passing off must be a material one if it is to be actionable. That is to say it must be such as to create a real, tangible risk of damage to the claimant. In practice, this almost invariably means that the misrepresentation must be believed by those to whom it is addressed, and that the addressees must act in reliance upon it. If the supposed misrepresentation does not actually influence the prospective customer then it is most unlikely to be a material one, whether or not the customer is deceived by it . ."
- In opening, Ms McFarland took me to Newsquest's promotion pack for Southern Farmer and pointed out that the proposed circulation area in Dorset, Wiltshire, Hampshire, West and East Sussex, Surrey and Kent and the proposed feature list covering topics very similar to those covered by South East Farmer created an opportunity for misrepresentation from the outset. She says that the differences between the titles and their presentation are insufficient to enable the public to differentiate with ease.
- In this regard, Ms McFarland relies upon evidence of confusion and misrepresentation which she says is caused by the Southern Farmer domain name which she says causes confusion when web searching. In relation to which she highlights the evidence of Mr Dungey and Mr Hart. In this regard, Mr Baldwin submits that reliance cannot be placed upon confusion with Southern Farmers Limited, the co-operative. I agree. It seems to me that Evegate can only rely on a misrepresentation or confusion which arises between its own domain name and that of The Southern Farmer. Even if I am wrong about that, it seems to me that Mr Hart's evidence that pursuing the complaint about the domain name had not been top of his priorities and that the internet "savvy" would find the co-operative reveals no more than low grade confusion. In this regard, I place little weight upon Mr McGrorty's evidence that Ms Fifield, Mr Hart's successor, had told him that people contacted Southern Farmers Limited wanting Southern Farmer. I have already dealt with Mr Dungey's evidence. In the light of the fact that he could not remember the name of the publication which he was searching for online, it seems to me that his evidence cannot be relied upon in support of the element of misrepresentation.
- Ms McFarland also referred me to the evidence of Mr Alan Horton who owns and works for Field Water Installations, a firm that installs irrigation equipment for farmers and growers in the south of England. He is based in Kent and had spent the majority of his career working in the farming industry and has worked for Field Water since 1994. His evidence was that he was a regular advertiser in South East Farmer and on average would spend £300-400 per annum. In January 2012, he went to see Mr McGrorty about advertising. In Evegate's boardroom, he was shown a copy of South East Farmer with which he was very familiar and a copy of Southern Farmer. He asked whether Southern Farmer was one of Evegate's titles because he assumed that it was an offshoot of South East Farmer. He found both the names and the mastheads very similar. However, he accepted in cross examination that he may have assumed a connection between Southern Farmer and Evegate because he was shown the publications in Evegate's boardroom. In my judgment, given the context in which the comparison took place, little weight can be placed upon Mr Horton's evidence.
- Ms McFarland also relied upon the evidence of Ms Stamp to which I have already referred and to that of Ms Bridge to which I refer below.
- She also took me to the evidence of Ms Rebecca Farmer and her mother Mrs Ruth Farmer. Ms Farmer is Mr McGrorty's wife and has worked for Evegate as a researcher for about fifteen years. She and her mother attended the Royal Berkshire Show on behalf of South East Farmer in September 2011. She stated that a couple approached the South East Farmer stand and that the man, Mr Fraser stated that he had already subscribed at the Dorset show for £12 per annum. Mrs Farmer explained that South East Farmer had not attended the Dorset show, that their subscription was not £12 pa and that he may be thinking of the Southern Farmer. Once he had accepted that they were not the same publication, Mr Fraser signed up to receive South East Farmer. Rebecca Farmer's mother who works in adult education, confirmed the incident. Her notes which she made at the time read: "got us a bit muddled with Southern Farm . . . said he had subscribed but it was Southern Farmer . . . said it was newspaper £12 per yr but actually started reading our mags."
- In fact, Mr Fraser, a retired group finance director who has taken up arable farming, says that he has never been to the Dorset show and says that he had never come across South East Farmer. His evidence in this regard was unchallenged. He first subscribed to Southern Farmer in September 2011. He says that he receives many farming publications and does not remember them all. He does recall stopping at a stand at the Royal Berkshire Show and being offered a free magazine. His evidence was that from that point he knew that South East Farmer was different from Southern Farmer to which he had subscribed only a few days before. He stated that he would not have subscribed to Southern Farmer in the mistaken belief that he had subscribed to South East Farmer because he had already done so. He accepted that the titles were similar but stated that he could tell the difference. However, in cross examination he accepted that the whole incident had only lasted a few minutes and that his recollection of it was not good.
- Despite his acceptance that his recollection of the event itself was not good, in the light of Mr Fraser's unchallenged evidence that he had never been to the Dorset Show and had never come across South East Farmer and his evidence that he could tell the difference and would not have subscribed to Southern Farmer in the mistaken belief that it was South East Farmer, on the balance of probabilities I find that Ms Rebecca and Mrs Ruth Farmer were mistaken about him having been confused.
- Ms McFarland also relies upon an incident in May 2012, when Mr McGrorty attended the Heathfield Show on behalf of South East Farmer. He was taking photographs of winning cattle when he struck up a conversation with two girls who were members of the Kent Young Farmers' Association. He states that one of them asked whether he was from Southern Farmer, even though he was carrying a copy of South East Farmer. He went on to relate that the other girl, Lynsey Martin said that she was aware of the two publications and considered them too similar. Neither of the girls gave evidence. In the circumstances, I do not place a great deal of weight upon Mr McGrorty's evidence of the incident.
- Miss Joanna Karen Legg, a studio manager employed by Evegate, recalled an incident at the South of England Show at Ardingly West Sussex in June 2012. She was manning the South East Farmer stand when a man approached her and explained that they had sponsored the class which he had just won. He wanted copies of the photographs of his prize winning cattle, or a copy of the magazine in which they would be printed. Although South East Farmer had advertising around the showground it had not sponsored any of the classes. Ms Legg consulted the official guide book and discovered that Southern Farmer had sponsored the Super Beef class. She says that he pointed to the Southern Farmer logo at the top of the page and said "that's it, that's you isn't it?"
- In this regard, Mr Baldwin says that the evidence does not reveal any misrepresentation at all. He says that the man knew that he had entered a competition sponsored by Southern Farmer and merely gone to the wrong stand and we do not know why he made the mistake. He also says that he cannot stand proxy for the average consumer or any other relevant construct. In my judgment, although the farmer in question may have gone to the wrong stand, his reaction to the logo in the show guidebook which Ms Legg relates and which was unchallenged, does reveal some confusion.
- Ms McFarland also submits that passing off and infringement of a registered trade mark for that matter, can be achieved by oral use and it is not necessary to rely upon the use of a printed sign. In relation to oral use, she emphasised Ms Wheeler's evidence about everyone referring to South East Farmer as Southern Farmer as a shorthand or nickname which she herself used in the minutes which she took before the launch of Southern Farmer. Mr Baldwin however, pointed out that the UKTM is in the form of a device and is not a word mark. Although this may be true in some part, in relation to infringement, it seems to me that the wider use must be relevant in relation to passing off, if in fact, it is sufficiently significant. However, it seems to me that Ms Wheeler's usage which was before the launch of Southern Farmer is not of particular relevance.
- Mr Baldwin reminded me that in passing off it is not enough to show that there is some confusion: the claimant has to establish deception on a substantial scale. In this regard, he says that there are significant differences between the publications which are easily discernible to readers and advertisers. In particular, he drew attention to:
i) The differences in their distribution methods and that one is free: Readers will never have seen South East Farmer on newsstands but receive it free. He submits that this is also important from the perspective of the advertiser because Southern Farmer and South East Farmer reach their audiences in different ways.
ii) Differences in their geographical scope: As Mr Rabson accepted in cross examination, agricultural uses differ across the different regions in the UK, and as such readers will pay attention to the particular geographical focus of farming publications. Therefore, he submits, it is an important difference for both readers and advertisers that Evegate concentrates on the South East whereas The Southern Farmer covers a wider geographical area. By contrast, Ms McFarland says that the geographical focus for distribution is broadly similar.
iii) Differences in the commercial opportunity offered to advertisers: As Mr Dixon-Phillip's evidence made clear, advertising in The Southern Farmer is offered to advertisers either on its own or as a package with advertising in South West Farmer and/or the other publications in the Newsquest Farmer Series. As such advertisers are presented with the potential for much more widespread advertising across the whole of the UK if they advertise in The Southern Farmer, whereas South East Farmer can only offer advertisers the option of advertising in the local South East region. In this regard, Ms McFarland submits that in terms of content, readership and advertisers, it is clear that there are parallels between Southern Farmer and South East Farmer and this was accepted by Mr Banks in cross examination.
iv) Moreover, as Ms Symons and Mr Perkins stated from the outset the advertising for The Southern Farmer was handled by personnel from South West Farmer and was targeted at existing customers of South West Farmer (and also existing customers of the Newsquest Farmer Series and other Newsquest Group titles). The result was that the advertisers well knew that it was a new opportunity which was being offered by Newsquest. In addition, the Southern Farmer masthead includes the phrase, "A Newsquest Publication".
v) Differences in their size and paper type: The Southern Farmer is in the format of a tabloid newspaper albeit with a glossy cover, whereas South East Farmer is a magazine of A4 size.
vi) Further, as Mr Robson and Mr McGrorty explained South East Farmer is always distributed together with a substantial supplement called 'South East Farm Machinery', which is another significant difference between the two publications.
vii) Differences in the signs used: there are a number of differences between the signs themselves. The type-face, size of the letters and colours are different in the respective signs, and The Southern Farmer has no parallel lines within its header. Further, The Southern Farmer masthead has the statement 'A Newsquest Publication' as part of its masthead title. In this regard, Mr Baldwin submits that given that the goodwill associated with Evegate's sign is limited to those very specific aspects of its sign, these differences are important even if some of them they may appear to be relatively small (see the citation from Office Cleaning Service set out above). He also relies upon the inclusion of "A Newsquest Publication" in the Southern Farmer masthead as a factor preventing deception. However, Ms McFarland also relies upon the "unadorned" use of the name for example, in show catalogues, business emails, sponsorship documents, meta data and meta tags when undertaking a normal internet search. She also submits that the use of the sign Southern Farmer with or without the "The" is sufficiently close and confusion to give rise to passing off or at least the risk of misrepresentation. She prays in aid the use of "Farmer" in both cases and the root word "South" at the beginning of the title.
Is the misrepresentation material – was the relevant public deceived?
- In this regard, Evegate relies upon what are said to be numerous examples of confusion. First, Ms McFarland relied upon the evidence of Ms Stamp, Mr Cook and Mr Dungey to which I have already referred. She also relied upon Ms Bridge, Ms Davies and Ms Pamment in this regard.
- Ms Emma Bridge is a viticulturalist who was a banker until 2008. She attended the Fruit Focus event in the East Malling Research centre on 20 July 2011. She approached Evegate's marquee which bore the name "South East Farmer". She asked a gentleman who turned out to be Mr McGrorty whether they were "the ones that have been rather heavily advertising in the Mid Sussex Leader?" She was informed that that was not the case and that Southern Farmer had placed the advertisements. She stated that she was surprised that it was not Evegate which had placed the advertisements. Her evidence was that as a result of the similarity of the titles, the small "Southern" and the large "Farmer" which was very similar to the small "South East" and the large "Farmer" in the South East Farmer logo, she explained that at first glance one would think them to be the same.
- Mr Baldwin points out that in cross examination she stated that she subscribed to neither publication and had read neither of them, nor was she overly familiar with them. He also says that at best, her evidence reveals no confusion between Southern and South East Farmer but merely reveals that she asked whether Evegate had been advertising in the Mid Sussex Leader and accordingly is of no value. He also drew attention to the evidence of Mr Stoker who had overheard Mr McGrorty explaining to Ms Bridge that a number of people had been confused and having discussed the matter with Mr McGrorty stated that although he had not been aware of Southern Farmer before, he thought that the name would cause confusion. Ms Bridge herself also said that that had happened. In my judgement, although very little weight can be placed upon it, Miss Bridge's evidence does reveal very low level confusion.
- Ms Andrea Davies is in the process of setting up a business with her husband and had previously been a cleaner at a cattle farm. She related an incident when she took a telephone call from Mr McGrorty when he explained that he was ringing from South East Farmer about an advertisement. He had already received the picture and the copy. Ms Davies asked him to confirm that South East Farmer had a weekly edition and when he stated that the publication was monthly she replied, "So you're not Southern Farmer Weekly?" In cross-examination she accepted that she could have been mixed up with Farmers' Weekly and that her husband had intended to advertise in that publication, although he had sent through copy and a picture for an advertisement to South East Farmer. However, she reiterated that she had seen both South East Farmer and Southern Farmer at the cattle farm and that she considered the content and the covers to be the same.
- Mr Baldwin submits that Ms Davies' evidence is helpful to Newsquest because it shows confusion between publications with descriptive titles. Otherwise, he submits that she is neither representative of the average consumer nor a part of the relevant public because she was a former part time cleaner who did not subscribe to either publication. In my judgment, Ms Davies' evidence is of little assistance in this case. Her husband was clearly within the category of those who might wish to advertise in publications such as the South East Farmer and The Southern Farmer but her confusion arose as result of becoming involved in the process of placing an advertisement which he had begun, the details of which she was not aware. Her real confusion was with Farmers' Weekly and not Southern Farmer and South East Farmer at all.
- In his witness statement Mr McGrorty also referred to an occasion in 2011 when a Mr Bosch, of GeoTech Developments Ltd, a subscriber to South East Farmer called and left a message in relation to payment to Southern Farmer. In cross examination, Mr McGrorty withdrew the suggestion that there had been confusion, at least in part. In any event, Mrs Cawker the in-house solicitor at Newsquest gave evidence that she had listened to the tape of the voicemail and it was clear to her that Mr Bosch was referring to Southern Farmers in the plural. She contacted Mr Bosch who did not wish to become involved, and stated that he had already been contacted by other solicitors. He also confirmed that he was a member of the Southern Farmers buying group. Once again it seems to me that on the balance of probabilities this does not reflect confusion or for that matter misrepresentation in relation to The Southern Farmer and South East Farmer.
- Mr Grorty also relates a telephone conversation he had with a Mr John Thomas at Biotal. He states that Mr Thomas said "you would have thought that it [Southern Farmer] would be under the same banner." However, the transcript of the conversation reveals that Mr Thomas knew that Southern Farmer was new and had placed an advertisement "mainly . . .. because of the South West involvement." He added, "Because they're stronger than you guys uh, well you haven't got a presence in Wiltshire . ." He went on to add that to the untrained eye one would think that Southern Farmer, South East and South West Farmer were all under the same umbrella and stated, "I thought it was either to do with you guys or whether it was something to do we . . .and the South West Farmer."
- The transcript reveals that Mr McGrorty explained that he had been phoning all the advertisers and explained that he had been asked to find out whether anyone made a link with Southern Farmer. He did not accept in cross examination that all of the evidence had been gathered in that way and that he had sought to create a false impression. In the light of the way in which Mr McGrorty approached the advertisers, including Mr Thomas, I put little weight upon Mr Thomas' evidence. In any event, in my judgment, it does not reveal confusion or deception other than perhaps at a low level.
- Mr McGrorty also contacted Ms Gemma Pamment of HGCA. She had only been in her job for around eight weeks and had sent an email to Mr McGrorty which referred to Southern Farmer instead of South East Farmer. Mr McGrorty commented that she had done him a favour. He also told her that confusion was happening all the time and that she was one of about 50. Although Mr McGrorty refers to her being confused, the transcript does not reveal confusion and when contacted by Mrs Cawker on behalf of Newsquest, Ms Pamment, confirmed in an email that although she had referred to Southern Farmer instead of South East Farmer, she was not confused between the publications and had merely referred to the wrong one.
- In fact, in cross examination, Mr Rabson accepted that South East Farmer is a magazine for farmers in the south east and in his witness statement he accepted that it is common for magazines and newspapers to have titles that describe the content of the publication. He also accepted that there is no better way to convey the message that a publication is of interest to farmers than to include the word in the title and that the word "Farmer" is widely and prominently used on such publications. He also accepted that Farmer is frequently used together with a geographical indicator to suggest the area to be covered by the publication, that similarly named publications owned by different organisations co-exist which suggests that advertisers and consumers are careful to obtain or advertise in the correct publication and differentiate accordingly, that mastheads of farming publications are fairly uniform in style and often have a geographical indicator in smaller font, that the geographical indicator often sits above the main name which starts with a larger capital letter. He also accepted that advertisers are careful to distinguish between publications and that readers are also careful.
- Accordingly, Mr Baldwin submits that there is no deception or misrepresentation here. He says that the farming and agricultural market is a highly specialised and discerning market, both in relation to advertisers and readers. Both advertisers and readers are familiar with newspapers and magazines owned by different companies having more or less descriptive titles with similar names and mastheads. As such they are extremely unlikely to assume that titles with some similarities in their names and mastheads are operated by the same corporate entity. Furthermore, as regards advertisers specifically, Mr Baldwin submits that they are commercially aware and unlikely to be deceived into doing business with the wrong publication purely based on the fact that it has a similar name to another publication.
- In this regard, he highlighted the evidence of Mr Richard Shepherd Barron. He is self employed and works in public relations and advertising predominantly in the South. He writes articles and editorials for South East Business and Evegate's Anglia Business publication and contacted Ms Wendy Symons of Newsquest in order to enquire about Southern Farmer. He stated in his witness statement that he discussed its readership and how it was distributed and sold because such factors affect the kind of advertising one does. He stated that Ms Symons told him about Newsquest's other publications, South West Farmer and the Smallholder and explained that Southern Farmer was part of a "roll out" of farming publications across the United Kingdom. When he mentioned South East Farmer, Ms Symons described it as "a high quality coffee table magazine about property and gossip". He also stated that she had said that farmers in Hampshire had been keen to have a magazine covering their area. In cross examination he was adamant that he had a strong recollection of the conversation which I accept.
- Miss Symons' unchallenged evidence about the conversation is different. Miss Wendy Symons is the Agricultural Sales manager for the Defendant. She says that she is unlikely to have used the expression "roll out" and that she would have referred to Wales rather than Welsh. She also says that she would have referred to suppliers rather than farmers in Hampshire. She did accept that she may have referred to South East Farmer as a high quality coffee table magazine but would not have referred to property or gossip.
- Overall, it seems to me that for the most part, Ms Symons supports Mr Shepherd Barron's evidence. The discrepancies in the account are trivial and not surprising in the light of the fact that no one kept a record of the conversation. Accordingly, I accept Mr Shepherd Barron's evidence as a potential advertiser.
- Ms Clotworthy to whom I have already referred, works for Savills and places advertisements on their behalf. She is based in Savills' Salisbury office. She explained to Mr McGrorty of Evegate, on the telephone, that it was an important factor that The Southern Farmer covered Dorset and Wiltshire, areas not covered by South East Farmer. She stated that she was seeking to reach those new geographical areas. The same was true of Mr Thomas who advertises in farming publications. He too made clear to Mr McGrorty that he had advertised in The Southern Farmer because it covered a different geographical area.
- Mr Baldwin submits that it is clear from the transcript of the conversation that Mr McGrorty was telling Mr Thomas what he wanted him to say. The transcript reveals that despite the fact that the action had been commenced, Mr McGrorty told Mr Thomas that his responses would go no further but that he was wondering whether he could ask someone to give Mr Thomas a call so that he could say, "Yes, I did say that to Jamie; uh, yes I did think that, in the first instance, they were linked" if that's alright." I found Mr McGrorty's answers in this regard in cross examination to be evasive. He said that he was "asking him what his initial thoughts were" and "just explaining to him the type of things which have happened." When pressed, he said that he did not realise that he was suggesting what people might say. It seems to me both from the transcript of the conversation and Mr McGrorty's evasive responses that it is clear that that was what he was doing.
- Both Mr Shorter and Mrs Deborah Barber commented that South East Farmer was a magazine whereas The Southern Farmer was a newspaper. Mr Shorter's evidence was unchallenged. Mrs Barber is a director of the South of England Agricultural Society. Her role includes overseeing the day to day organisation and administration of the Society and its activities including the South of England Show which is a three day annual regional agricultural show held at Ardingly in West Sussex.
- In May 2011 she sent out a number of emails to companies and guests relating to the President's Lunch at the show. One of those emails was sent to Lottie Elson at The Argus and shortly afterwards an email was sent in error to Jamie@southeastfarmer.net. The heading of the email "South of England Show". Her evidence was that she had cut and pasted the content from the previous email and that as soon as it had been sent she realised her error and tried to recall it. Thereafter, she sent a corrected email to Jamie McGrorty. In cross examination she made clear that error had not occurred because of the similarity in the names of the publications but because they were next to each other on the list of those to be contacted. As I have already mentioned, I accept her evidence.
- She stated that at the time she was aware of both Southern Farmer and South East Farmer, that they were both invited to the lunch and that the show advertised in both publications. She stated that she knew that they were two publications owned by separate companies and had merely made a typographical error. She also stated that the publications had different styles, one being more of a magazine and the other a newspaper.
- In fact, South East Farmer has a sponsored link on the South East of England Show website. In cross examination, Mrs Barber explained that the format of the website is very new.
- Mr Thomas Anthony Homewood, a graphic designer employed by Evegate manned the South East Farmer stand at the South of England Show in June 2011 for part of the time. He related an incident when a show steward approached the stand. He asked whether South East Farmer was from the Argus group. Mr Baldwin says that that was quite natural given that the Argus group had been present there for many years and Evegate had not. Mr Rabson accepted in cross examination that the question did not necessarily reveal confusion.
- Mr Homewood also mentioned someone he thought as an exhibitor who stated that he had subscribed the previous year for £12 and had a renewal letter which confirmed that this was the case for the coming year. Mr Homewood later discovered that it was Southern Farmer which offered such a subscription. Mr Homewood accepted in cross examination that the young man might have been "trying it on".
- Mr Rabson also related an incident at the South of England Show when a lady asked for a copy of "the machinery section" pointing to South East Farm Machinery. When asked whether she would also like a copy of South East Farmer itself she said that she already had one. Mr Rabson however, noted that she had Southern Farmer in her pocket. In this regard, he mentioned that South East Farmer and South East Machinery are always packaged together.
- Mr Baldwin submits that these examples if they reveal confusion at all, are trivial and even if the exhibitor did think South East Farmer was Southern Farmer for the purposes of renewal of his subscription this is not an example of passing off because he was not within the envelope of South East Farmer goodwill. He was looking to subscribe to Southern Farmer all along. Nor, is it relevant to the "average consumer" for the purposes of trademark infringement because there is no information about this individual available to the court. I agree. It seems to me that both incidents are examples of low level confusion at best. Furthermore, given the lack of information about the steward, he cannot assist whether in relation to the legal construct of the average consumer or the relevant public for passing off.
- In relation to Ms Rosser-Owen's evidence, Mr Baldwin also submits that if anything it only reveals the occasional query which one gets between companies using descriptive names. Ms Sarah Rosser-Owen is a Data Manager who works for Evegate. She checked Mr McGrorty's voicemails whilst he was away and rang Andrea Nash of Laverstoke Park who had left a voicemail about placing an advertisement in South East Farmer. On being contacted she asked whether there was a "Wendy" there. Wendy is Wendy Symons at Southern Farmer. The relevant part of the transcript of the conversation reveals the following:
[A = Andrea Nash
S = Sarah Rosser-Owen]
"A: Do you have a lady there called Wendy Simmons?
A: Because I've just had, um, a quote through from South East Farmer.
S: Nnno. Not from South East Farmer, It's not Southern Farmer is it that you've . .
A: Southern Farmer, um, oh, no she said South East Farmer was another publication,
- Ms Symons' unchallenged evidence in this regard was that she could tell from the internal order system that she had been contacted by Ms Nash that day and had placed an advertisement for her in Southern Farmer and South West Farmer. It seems to me therefore, that Ms Rosser-Owen's evidence takes the matter not much further forwards. It appears that Ms Nash placed adverts in Southern Farmer, South West Farmer and South East Farmer and when Ms Rosser-Owen contacted her, was concerned to make sure that she was not speaking to the same organisation twice. In fact, Mr McGrorty accepted in cross examination that it seems that Ms Nash was not confused although he maintained that the situation would not have arisen in the first place had the names of the publications been sufficiently different.
- Mr Baldwin points out that Evegate accepts that it has had no problems with the publication and distribution of South West Farmer; despite the fact its name is more similar to South East Farmer than The Southern Farmer. In his witness statement, Mr Rabson stated that there had been no confusion with South West Farmer with advertisers because the personnel were different and the advertisers were never offered a package to advertise in both South West and South East Farmer. He accepted in cross examination that these reasons applied equally to the Southern Farmer. In fact, Mr Rabson accepted that the use of lines both above and below the wording in the South East Farmer masthead was a differentiating feature from the Southern Farmer masthead.
- Mr Baldwin submits that this shows that the relevant public recognise that having descriptive names with a commonplace masthead layout does not denote any particular corporate ownership or affiliation. To the extent that there are any examples of genuine confusion as between The Southern Farmer and South East Farmer, he submitted that this is no more than the kind of low-level confusion that is likely to have arisen in the past between South West Farmer and South East Farmer; this type of low level confusion does not constitute passing off and is of no consequence.
Damage to Evegate
- What is the evidence of real damage or a risk of real damage to Evegate? In fact, Mr Rabson accepted in cross examination that Evegate had not experienced any actual damage although it was difficult to know. This was despite the fact that it had been trading side by side with Southern Farmer for around two years. It was also Mr Rabson's evidence that Southern Farmer was of a lesser quality and therefore, association would cause damage to South East Farmer. In this regard, he relied upon the content of the feedback forms which Newsquest had collated at the South of England show and which referred to poor quality of printing and quantity of adverts.
- In this regard, Mr Baldwin pointed out that it was Mr McGrorty's evidence that he had contacted all of the advertisers in the Southern Farmer in order to ask if they had been confused but did not refer to any who had confirmed that they had moved their business because of confusion.
- In opening, Ms McFarland had relied upon the fact that people like Mr Barry Campion had transferred their advertising business from South East Farmer to Southern Farmer as proof of damage, rather than as evidence of confusion. Mr Campion is a Chartered Surveyor who works as a rural consultant of Clifford Dann and is based in Lewes. Clifford Dann is a firm which had advertised in the South East Farmer on a regular basis. The advertising arrangement with South East Farmer was in place from August or September 2000 until May 2012.
- At that stage, Mr Campion was contacted by Katherine Shanley representing Southern Farmer asking whether Clifford Dann would place advertising in the new publication. Mr Campion and his partners agreed that a change of exposure might attract a different client base as they had advertised in South East Farmer for such a long time and they placed a one page "advertorial" in Southern Farmer. He stated in his witness statement that "at no point did I think that Southern Farmer was connected in any way with South East Farmer." In cross examination he confirmed that he had changed publication because he wanted to reach a different target and thought he would give it a try. He also pointed out that he thought of Southern Farmer as more of a newspaper and that it was bigger.
- Mr Baldwin submits that there is no evidence whether from Mr Campion or any other source of damage as a result of misrepresentation. Mr Campion's evidence was that he chose the new publication for his own reasons.
- Ms Katherine Shanley has been a telesales executive for Southern Farmer since December 2011 and is based in Salisbury. She contacted potential advertisers and having made contact on the telephone would email a Southern Farmer Media pack. The emails had the Southern Farmer Logo which includes "A Newsquest publication" within it. She liaised with Wendy Symons in the Falmouth office who was also selling advertising space in Southern Farmer. Ms Shanley confirmed that from May 2012 she was informed that Southern Farmer would have "The" in the title and introduced herself accordingly.
- The only reference which Ms Shanley could recall to South East Farmer was in relation to a string of emails brought to her attention. She accepted that in a response email a Mr Terry Walsby who works for an advertising agent mentioned that he had confused The Southern Farmer with South East Farmer but went on to ask to see a copy of The Southern Farmer with which he was not familiar. She states that the confusion was cleared up and that Mr Walsby has yet to place any advertising with The Southern Farmer. It is clear that the matter was resolved as soon as Ms Shanley sent Mr Walsby the Southern Farmer media pack which she had failed to do initially.
- She also made reference to having sent an email to a Charlie Evans of Strutt & Parker's London office in December 2012. She spoke to him in January 2013 and emailed him The Southern Farmer media pack. He responded asking whether The Southern Farmer was the same as South East Farmer and asked how the two differed particularly in relation to readership.
- Lastly, she referred to a chain of emails with Kevin Organ of Milk Trading Solutions. She provided him with a quotation for an advertisement at a discounted price for a four month period. In his reply he asked for a lower price and referred to South East Farmer having offered a similar price and said he thought they had a bigger circulation. It seems to me that this is an example of an advertiser seeking a better price and does not reveal confusion or damage at all.
- Ms McFarland drew attention to the Southern Farmer feedback forms which were filled out at the New Forest Show and in particular, relied upon the following:
"Would have liked more depth, the equestrian articles were a bit like stating the obvious"
"Your pig article shows ignorance of the real situation. This is a silly pseudo positive article decorated with pictures of rare breed "happy pits" the supermarkets wouldn't touch with a barge pole."
"Needs more advertising - disappointed in first two issues, hoping will pick up."
She also drew attention to the overlap both in content and in area of the two publications and reminded me of Mr Banks' acceptance in cross examination of a focus in Southern Farmer upon farm machinery which she says of course, is the content of South East Farm Machinery.
- Lastly, Ms McFarland submitted that both the poorer quality of Newsquest's Southern Farmer and the effect of undercutting in pricing can affect adversely Evegate's goodwill. In this regard, she pointed to the poorer quality of the paper itself and she says the contents together with the subscription price of £12 per annum in comparison with South East Farmer's £40 and the evidence of Mr Perkins and Ms Symons of an aggressive marketing campaign with cheaper advertising prices.
Overall Conclusion in relation to Passing Off
- First, I have already decided that Evegate has goodwill and reputation which is vested in South East Farmer, albeit that it attaches to it as a glossy magazine, distributed by way of subscription.
- Secondly, was there a misrepresentation which was likely to deceive a substantial part of the relevant public? In this regard, I prefer the submissions of Mr Baldwin. It seems to me that the evidence of confusion such as it was, was of a low level which arose from the descriptive nature of the names in question.
- In fact, upon proper analysis, there was no evidence that advertisers were confused or deceived at all. Mr Campion, for example was adamant that he appreciated the difference between the publications and chose to branch out and make a change by advertising in The Southern Farmer. Mr Shepherd Barron was equally clear to differentiate between publications. Once Ms Clotworthy's evidence was fully explained it was clear that as a potential advertiser for Savills, she was not confused. Neither was Mr Thomas.
- Other than low level confusion to which I have referred, the only evidence of real confusion amongst readers was that of Ms Stamp, Mr McGrorty's report of the reaction of Lynsey Martin, the gentleman whose cattle had won a class and who wanted to obtain photographs and those unnamed individuals who passed by the Southern Farmer stand at the South of England Show at the launch of Southern Farmer in 2011. By contrast, Mr Shorter and Mrs Barber, for example, were quite clear about the distinction between the publications. As I have already mentioned, I place little weight upon Mr McGrorty's recollection of the incident with Ms Martin. In my judgment, the incident of the owner of the prize winning cattle and unnamed passers by is insufficient to satisfy the level of misrepresentation and deception of a substantial part of the relevant public.
- In this regard, I also take account of Mr Rabson's acceptance in cross examination that Farmer is frequently used together with a geographical indicator to suggest the area to be covered by a publication, that similarly named publications owned by different organisations co-exist which suggests that advertisers and consumers are careful to obtain or advertise in the correct publication and differentiate accordingly, that mastheads of farming publications are fairly uniform in style and often have a geographical indicator in smaller font, that the geographical indicator often sits above the main name which starts with a larger capital letter and that advertisers are careful to distinguish between publications and that readers are also careful. In my judgment, it is also relevant that it is accepted that there have been no problems with the publication and distribution of South West Farmer; despite the fact its name is more similar to South East Farmer than The Southern Farmer.
- Just as Lord Simonds described in the extract from the Office Cleaning Service Ltd case, where words which are in common use are adopted as a trade name, some risk of confusion is inevitable. In such circumstances, a greater degree of discrimination can be expected from the public and in this case, it seems to me that such a level of discrimination is borne out by the evidence.
- In this regard, I take account of the factors to which Mr Baldwin drew my specific attention which render the publications easily discernible to readers and advertisers. They are the differences in distribution methods, geographical scope, size and nature of publication, opportunity for advertising and handling for the most part by the South West Farmer team, the fact that South East Farmer is free and is always distributed with South East Farm Machinery and the differences in the sign used.
- I also bear in mind the extract from the judgment of Jacob LJ in the Phones 4u Ltd case to which I have referred. In this case, although goodwill and reputation attaches to South East Farmer in the limited way in which I have described, the badge which has been adopted by Evegate is descriptive and therefore, instances of "mere confusion"/deception are to be tolerated. It seems to me that that is exactly the situation here.
- It is not necessary therefore, to consider whether damage has been suffered or whether it is likely to be suffered. Had it been necessary, I would have concluded that in accordance with Mr Rabson's fair and straightforward evidence, no actual damage has occurred and that as a result of the differentiating factors to which I have referred, there is no real risk of it. As Hildyard J in Fine & Country pointed out, the prospect of damage and the fact of deception are intertwined. As I have found that there was no deception, it follows that there was no damage or risk of it. This accords with the evidence. It was clear that advertisers differentiated between the publications and to the extent that they had placed their advertisements with Southern Farmer, did so for a change and in some cases, to increase their geographical reach. As far as subscribers are concerned, the only real example was that of Ms Stamp.
- Accordingly, in my judgment, Evegate's claim in passing off must be dismissed.
Allegation of Trade Mark Infringement
- The allegation of trade mark infringement under s.10(2) of the Act turns on the likelihood of confusion by reason of the similarities between the registered mark and the sign complained of in the context in which it is used. Evegate must establish that the average consumer is confused or is likely to be confused, by reason of the similarities between the mark and the sign in the sense of the masthead of The Southern Farmer in the form in which it appeared in 2011, into thinking that the latter is either from the same undertaking as South East Farmer or from an undertaking which is economically linked to Evegate.
- Mr Baldwin emphasises that the form of the actual mark including the way in which it has been used with bars coloured green and words in black is relevant for this purpose. On the other hand, Ms McFarland draws attention to the fact that the sign as registered is monochrome. In my judgment, both as a result of the fact that use must not be stripped of its context and of the global assessment by which the likelihood of confusion must be judged, it is necessary to take into account the way in which the UKTM is generally presented to the average consumer. It is one of many relevant factors therefore, that it always appears with black lettering and green bars.
- Next, it is necessary to consider who the average consumer is in this case. There is no dispute that both readers and advertisers are included. However, in this regard, just as under the head of passing off, Ms McFarland made reference to the breadth of topics covered in South East Farmer and submitted that the average consumer whether reader or advertiser is not limited to those who are farmers alone but extends to all those interested in a wide range of agricultural and smallholding issues including fencing and drainage and extends as far as those who may keep horses or a few chickens. As I have already mentioned, Mr Baldwin took a more restricted view suggesting for example, that Mr Dungey was not a proper farmer and therefore not indicative of the average consumer. In my judgment, just as in the case of the passing off claim, it is clear that the average consumer in this case includes both reader and advertiser and also includes those interested in a range of farming related topics rather than being restricted only to farmers engaged in agricultural production.
- Ms McFarland submits that in fact, the goods are identical in this case. She also says that the mark has a distinctive character which is supported by the fact that there were no objections to its registration. She says that by virtue of its long use, having appeared at least since 1994, it has built up an enhanced reputation and that its geographical indication does not prevent it from having acquired a secondary meaning in the context of publications, magazines and newspapers. Not surprisingly, she says that the dominant elements of both the mark and the sign are "Farmer" and "South"/ "Southern".
- Ms McFarland goes on to submit that the similarities between the mark and the sign are overwhelming and are likely to be appreciated whether viewed side by side or as a result of imperfect recollection. She also relies upon the similarity in the domain name of the South East Farmer and that adopted by Southern Farmer as infringement. She also says that visual, aural and conceptual similarities are all relevant whereas Mr Baldwin submits that in the light of the nature of the UKTM which is not a word mark, only the visual is of relevance. Had the UKTM included a strong element of design, I would have agreed with Mr Baldwin. However, given that the design element in the UKTM is minimal, I consider that visual, aural and conceptual similarities are relevant.
- Ms McFarland submits that all the evidence in relation to passing off is also relevant here. She says that there are actual consumers that have already manifested the incorrect assumption that there is a connection in the course of trade between Evegate and Newsquest because of the similarity of the names of the publications and in particular, she referred me to the evidence of Mr Cook and Ms Davies. In relation to likelihood of confusion she relies upon the conversation between Sarah Rosser Owen and Andrea Nash, between Mr McGrorty and Mr Thomas, and with Sophie Clotworthy and his email with Sarah Kenny and the evidence of Mr Stoker, Ms Davies, Mr Dungey and Ms Stamp. She puts particular emphasis upon it because it is evidence of actual confusion.
- Mr Baldwin submits that there is no likelihood of confusion between the masthead of The Southern Farmer and the UKTM as a result of the factors he referred to under the head of "misrepresentation" in the passing off claim. Further, applying the approach set out in the Sämaan case to which I have referred, he says that the following factors are of particular importance:
(i) the average consumer of these kinds of publications is discerning for the reasons given in relation to passing off;
(ii) the UKTM has no distinctive character or, alternatively a very low level of distinctive character;
(iii) in so far as there is distinctive character in the UKTM, it rests in the use of horizontal parallel lines running below and half above the word Farmer which itself is written in a strongly serifed font. It is these capricious additions which, if anything, add distinctiveness;
(iv) all of the similarities between the UKTM and The Southern Farmer sign are primarily similarities in their descriptive or commonplace elements. As such, to the extent that the UKTM has any distinctive and dominant components, those components are not replicated in The Southern Farmer sign;
(v) there is clearly distinguishing material within The Southern Farmer sign itself – namely the phrase 'A Newsquest Publication';
(vi) the masthead of The Southern Farmer creates a different overall impression from that of the UKTM.
- Further, he emphasised once more that it is relevant that The Southern Farmer and South East Farmer have been trading alongside each other for nearly two years and yet he says that there is no evidence of a significant confusion in the marketplace. Mr Baldwin also points out that if Evegate is right about the infringement, the same would be true for The Scottish Farmer and The Northern Farmer but they do not complain about those publications.
- Mr Baldwin also submitted that the evidence of Mr Stoker, Ms Wheeler and Ms Calcutt constituted opinion evidence as to an alleged likelihood of confusion which is inadmissible and cannot be relied upon in support of its contention that there is a likelihood of confusion. In this regard, he relied upon the extract from The European Ltd v The Economist Newspaper Ltd to which I have referred.
- Mr Baldwin reminded me that the Court of Appeal made it patently clear in Interflora II that unless witnesses can stand proxy for the relevant legal construct their evidence is of no assistance. He also reminded me that Mr Rabson accepted in cross examination that "Farmer" was descriptive and that it is common to have a geographical descriptor sitting inside the name of a publication. He submitted that South East Farmer was not distinctive and that Mr Rabson had accepted that it would be absurd to use the title, for example in the North West.
- He also drew attention to Mr McGrorty's evidence from which he says it is clear that many of the witnesses had already been told that there was confusion and accordingly, their evidence is tainted.
- Taking account of all of the relevant factors in the global assessment of the UKTM and the mark, in my judgment, the average consumer of publications of the category to which South East Farmer belongs, including both readers and advertisers, who is reasonably well informed and reasonably observant and circumspect is not likely to be confused by the alleged similarity between the UKTM as presented to the public and the sign.
- In this regard, I remind myself that the task of the court is to inform itself, by evidence of the matters that the reasonably well informed, reasonably observant and circumspect consumer of this category of publications would know and then, treating itself as competent to evaluate the effect which those matters would have on the mind of such a person with that knowledge, ask the relevant question.
- When conducting the global assessment in this case, I take due account of the context in which the UKTM and the sign appear. These are publications in the agricultural sector. The UKTM and the sign also appear generally in publicity material at agricultural shows. The UKTM appears in the form of the masthead at paragraph 11 above and at the relevant date for infringement, the sign was in the form at paragraph 26.
- As I have already mentioned, the legal construct of the average consumer includes both subscribers and advertisers interested in the range of topics covered in the Southern Farmer and South East Farmer. When considering the passing off claim, I found that there was no evidence that advertisers were confused between Southern Farmer and South East Farmer. The difference in the legal construct of "average consumer" under this head, does not change the lack of underlying evidence.
- I also found that the level of confusion amongst subscribers generally, to the extent that there was any, was at a low level. I have also found that the evidence upon which Ms McFarland relies in particular, under this head, either does not support the conclusion that subscribers who would have the characteristics of the average consumer would be confused or otherwise does not take the matter very far. In particular, Ms McFarland relied upon the evidence of Mr Cook, Ms Davies, Mr Dungey, Ms Stamp, Mr Stoker and Ms Rosser Owen. In all their cases, but for Ms Stamp and Mr Stoker, I found that in fact, their evidence did not support confusion. In Mr Stoker's case, he merely offered his own opinion that the name Southern Farmer would be confusing but did not provide any evidence of actual confusion.
- I also remind myself of the passage from the Reed case to which I have referred in which Jacob LJ made clear that where a mark is largely descriptive, small differences may suffice to avoid confusion. Jacob LJ noted that this a proposition of fact and one which "is inherent in the nature of the public perception of trade marks."
- In the light of the fact that it was accepted by Mr Rabson that South East Farmer was largely descriptive and that it is common especially in the case of newspaper and other periodical titles to include a geographical descriptor in the title and in the light in particular, of the differences in the distribution model, the size and paper type, the differences in the type face, font size and colours used, the lack of parallel bars and the strapline "A Newsquest Publication", in my judgment the average consumer would not be confused.
- Accordingly, the claim for infringement under section 10(2) TMA is dismissed.
- Under this head, Ms McFarland relies upon all the evidence which has gone before. She also submitted that both the poorer quality of Newsquest's Southern Farmer and the effect of undercutting in pricing can affect adversely Evegate's reputation. In this regard, she pointed to the poorer quality of the paper itself and she says the contents together with the subscription price of £12 per annum in comparison with South East Farmer's £40 and the evidence of Mr Perkins and Ms Symons of an aggressive marketing campaign with cheaper advertising prices.
- Mr Baldwin however, submits that South East Farmer does not have the necessary reputation in the mark itself, in order to pass the first hurdle. He says that South East Farmer is a niche, distribution-only farming publication that is circulated to around 13,000 farmers and growers in the south east corner of England. This is a far cry from a trade mark which is known to a significant part of the public concerned with periodicals, magazines and newspapers in a substantial part of the UK.
- Further, even if the UKTM does have the requisite reputation, he says that there is no evidence at all of any detriment being caused to the registered mark as a result of the use of The Southern Farmer sign. He submits that it is not good enough for Evegate to show that some advertisers have chosen to advertise in The Southern Farmer instead of South East Farmer. That is evidence of healthy competition, not trade mark infringement.
- Mr Baldwin also submitted that the suggestion that Southern Farmer is of a lower quality which somehow affected South East Farmer's reputation was hopeless. He pointed out that Southern Farmer follows the same format as the respected Scottish Farmer and that the quality of the paper is high. Further, there was no evidence that anyone would change their perception of South East Farmer as a result of seeing Southern Farmer.
- As to lack of due cause, it is submitted that it is wholly within the ambit of fair competition for Newsquest to launch a publication whose distribution overlaps geographically with that of South East Farmer and whose name is entirely descriptive and consistent in look and feel with the other Newsquest Farmer Series publications.
- First, I have already found that the South East Farmer has goodwill, albeit in relation to a glossy magazine distributed by subscription. Although reputation for the purposes of section 10(3)TMA is different, I accept Ms McFarland's submission that the two concepts overlap and that in this case, the evidence is sufficient to support such a reputation. I am also satisfied that the reputation is known to a significant part of the relevant public in the areas to which I have referred, which I consider to be a substantial part of the UK.
- On a global appreciation, does the average consumer make a connection or establish a link between the UKTM and the Southern Farmer masthead which is liable to cause detriment to the reputation of the UKTM or take unfair advantage of its repute? Lastly, is the use "without due cause"?
- In relation to these matters, I prefer the submissions of Mr Baldwin. In my judgment, there is no evidence to warrant a conclusion that the average consumer makes a link between the UKTM and the Southern Farmer sign as it appears at paragraph 26 above. As Mr Baldwin points out the evidence of advertisers changing publication is of competition and not of any link. The evidence of any link at all, in my judgment was either inadmissible opinion or was tainted by encouragement received from Mr McGrorty. In any event, I do not consider that it would have been sufficient from which to conclude that the average consumer would have made the necessary link between the Southern Farmer masthead and the UKTM.
- I reach this conclusion as a result of a global assessment of the relevant factors. In this regard, I take into account the degree of similarity of the UKTM and the Southern Farmer masthead and the context in which they appear and the fact that it is accepted that the UKTM is descriptive. I take account therefore, of the differences in the mastheads and the format of the publications to which I have already referred.
- Even if that had not been the case, other than feedback forms which suggested that the balance of content and advertising did not please some of the readers, there is no real evidence of detriment caused to the reputation of the UKTM. The Southern Farmer is in the Scottish Farmer mould and as Mr Baldwin pointed out, that has a high reputation. Nor, is there any evidence of unfair advantage being taken of the South East Farmer's repute or of anyone changing their opinion of it as a result of Southern Farmer.
- Lastly, were it relevant, I would have found that the use of The Southern Farmer masthead was not without due cause. Given that it is in the same mould as the Scottish Farmer and the Northern Farmer, I do not consider that the overlap in the geographical area in which it circulates or the fact that its content is similar is sufficient to take it outside the ambit of fair competition.
Section 11(2)(b) defence
- Newsquest has also pleaded a defence to trade mark infringement pursuant to s.11(2)(b) of the Act. Section 11(2)(b) is in the following form:
"A registered trade mark is not infringed by –
. . .
(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services . .
. . .
provided the use is in accordance with honest practices in industrial or commercial matters."
- It is submitted that The Southern Farmer title-name is entirely descriptive of the goods provided, and it has used that name in accordance with honest practices as the look and feel of the masthead was designed to be consistent with the other Newsquest Farmer Series publications.
- As Mr Baldwin points out, the defence only becomes relevant once infringement of a valid registration is established. As a result of my findings, therefore, it is not relevant to consider the defence. Nevertheless, in case I am wrong, I will set out the submissions in this regard. My conclusion if it had been necessary would have been that given all the relevant factors, the use of the Southern Farmer title is descriptive of its geographical ambit and is in accordance with honest practices in commercial matters.
- As Jacob J stated in Nichols Plc's Trade Mark Application  EWHC 1424 (Ch)  R.P.C. 16:
"The problem with saying "registration will not harm the public: if a third party wants to use the mark descriptively he has a defence" is this: that in the practical world powerful traders will naturally assert their rights even in marginal cases. By granting registration of a semi-descriptive or indeed a nearly-but-not-quite-completely descriptive mark one is placing a powerful weapon in powerful hands. Registration will require the public to look to its defences. With such words or phrases the line between trade mark and descriptive use is not always sharp. Moreover, it must not be forgotten that the monopoly extends to confusingly similar marks. In any marginal case defendants, SMEs particularly, are likely to back off when they receive a letter before action. It is cheaper and more certain to do that than stand and fight, even if in principle they have a defence."
- Use in accordance with honest commercial practices has been described as a duty to act fairly. The principles from CJEU case law were summarised by Arnold J in Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery)  EWHC 1879 (Ch) at  –  as follows:
" First, the requirement to act in accordance with honest practices in industrial or commercial matters "constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark proprietor": see Bayerische Motorenwerke AG v Deenik (C-63/97)  ECR I-905;  E.T.M.R. 348 at , Gerolsteiner Brunnen GmbH & Co v Putsch GmbH (C-100/02)  ECR I-691;  ETMR 40;  R.P.C. 39 at , Anheuser-Busch Inc v Budjovický Budvar, Národní Podnik (C-245/02)  ECR I-10989;  ETMR 27 at , Gillette Co v LA-Laboratories Ltd Oy (C-228/03)  ECR I-2337;  E.T.M.R. 67;  F.S.R. 37 at  and Céline Sarl v Céline SA (C-17/06)  ECR I-7041;  ETMR 80 at .
 Secondly, the court should "carry out an overall assessment of all the relevant circumstances", and in particular should assess whether the defendant "can be regarded as unfairly competing with the proprietor of the trade mark": see Gerolsteiner  ETMR 40 at , Anheuser-Busch  ETMR 27 at  and Céline  ETMR 80 at .
 Thirdly, an important factor is whether the use of the sign complained of either gives rise to consumer deception or takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark. If it does, it is unlikely to qualify as being in accordance with honest practices: see Gillette  F.S.R. 37 at , Anheuser-Busch  ETMR 27 at  and Céline  ETMR 80 at .
 Fourthly, a mere likelihood of confusion will not disqualify the use from being in accordance with honest practices if there is a good reason why such a likelihood of confusion should be tolerated. Thus in Gerolsteiner  ETMR 40 , which was an art.6(1)(b) case, the Court of Justice held at :
"The mere fact that there exists a likelihood of aural confusion between a word mark registered in one Member State and an indication of geographical origin from another Member State is therefore insufficient to conclude that the use of that indication in the course of trade is not in accordance with honest practices. In a Community of 15 Member States, with great linguistic diversity, the chance that there exists some phonetic similarity between a trade mark registered in one Member State and an indication of geographical origin from another Member State is already substantial and will be even greater after the impending enlargement."
- There is no dispute that whether or not a defendant has acted in accordance with honest commercial practices is an objective test, to be assessed by reference to all the relevant circumstances of the case. Different factors will be relevant in different cases, and there is no exhaustive list; but previously the court has considered relevant factors to include whether the defendant is justified to use the mark complained of, whether he knew of the claimant's earlier mark, whether he knew that his use would be likely to cause confusion or adversely affect the reputation or distinctive character of the mark, and so on. Ultimately the question is whether the defendant has acted fairly in respect of the trade mark owner's interests in all the circumstances of the case.
- It does not appear to be in issue that The Southern Farmer is descriptive of a geographical area. What Ms McFarland submits is that Newsquest's evidence as to honest practices is extremely slight, which is something to which I will return. In this regard, she also referred me to the judgment of Robert Walker J (as he then was) in United Biscuits (UK) Ltd v Asda Stores Ltd  RPC 513 concerning the Penguin and Puffin biscuits:
"In the Harrods case Millett LJ said at page 706,
"Deception is the gist of the tort of passing off, but it is not necessary for a plaintiff to establish that the defendant consciously intended to deceive the public if that is the probable result of his conduct. Nevertheless, the question why the defendant chose to adopt a particular name or get up is always highly relevant. It is "a question which fails to be asked and answered": see Sodastream Ltd v. Thorn Cascade Co. Ltd.  R.P.C. 459 at page 466 per Kerr LJ. If it is shown that the defendant deliberately sought to take the benefit of the plaintiff's goodwill for himself, the court will not "be astute to say that he cannot succeed in doing that which he is straining every nerve to do": see Slazenger & sons v. Feltham & Co. (1889) 6 R.P.C. 531 at page 538 per Lindley LJ."
Mr. Pollock accepted this as a matter of principle but said that it could have no application to this case. He stressed that Mr Blundell had readily accepted that the original artwork was "too close" to the Penguin get-up and that it had been changed in order to avoid confusion, which the defendant (as well as the plaintiff) wanted to avoid). The evidence did not explore fully how the original artwork came to be so obviously "too close"; apart from Mr. Branckston's design brief, there were very few extant documents (and none as tot eh reasons for adoption of the name Puffin). It is certainly true that changes were made in the first design so as to lessen the risk (initially more or less a certainty) of confusion. But it seems to me likely that Mr. McLeod, Mr. Blundell and their subordinates and independent designers were, under advice, seeking to make only such changes as were needed in order to avoid what they judged to be an unacceptable risk of being attacked for copying, while maintaining Puffin's position as an obvious competitor and parody, and (they hoped) a "brand beater". I cannot escape the conclusion that, while aiming to avoid what the law could characterise as deception, they were taking a conscious decision to live dangerously. That is not in my judgment something that the court is bound to disregard."
- She says that Newsquest took a conscious decision to live dangerously. She pointed to the evidence of Mr Darren Bruce about the 'roll out' of the Farmer brand and pointed out that there was no evidence from some of the individuals who had been referred to.
- Mr Baldwin submits that Mr Darren Bruce's evidence was quite clear as to the growth of the Farmer brand beyond the Scottish Farmer. He explained that The Northern Farmer was launched in 2010 as part of that brand. He also pointed to the evidence of Mr Dixon-Phillip which was corroborated by that of Mr Browne to the effect that Mr Dixon-Phillip had suggested at a strategy meeting in February 2011 that the Southern region should be the next to create a new "Farmer" title on the Scottish Farmer model. It was also clear from his evidence that the focus was on national advertising and not on localised competitors such as South East Farmer. This part of his evidence was not challenged. Mr Dixon-Phillip confirmed in cross examination that their focus was on being able to offer advertisers the opportunity to advertise across all of their "Farmer" titles. Mr Browne stated that South East Farmer was simply not Newsquest's focus and that in fact, the focus was the two national publications being Farmers' Weekly and Farmers' Guardian.
- Mr Dixon-Phillip also confirmed that he had suggested the title as an extension of South West Farmer and had done some research of his own. He also explained that some employees did short and long string searches for him and applied the usual depth and breadth of searches which Newsquest usually undertake. He stated that as nothing of concern arose, he did not involve the Newsquest legal department. He also did a trade mark search and at some point came across Southern Farmers Ltd which did not concern him.
- He also referred me to the email evidence of the Chief Executive of Newsquest, Mr Paul Davidson having decided to develop the Farmer brand and having given Mr Darren Bruce the task of developing "existing and potential farming products around the group." Mr Bruce's evidence in cross examination was that although he was not concerned with the detail of the precise name and masthead for Southern Farmer he was concerned to maintain elements of consistency in all the "Farmer" titles. When Mr Browne took over the task, he was told to follow the overall style of Northern and Scottish Farmer. He also relied upon the evidence of Ms Elson that it was decided from the beginning that the Southern Farmer masthead would emulate The Northern Farmer and The Scottish Farmer.
- Mr Browne's unchallenged evidence was that as soon as Newsquest became aware of Evegate's objection, it did everything it could in its campaign to make clear that the new publication was a Newsquest publication. Having said that the Newsquest logo was dropped after the first edition.
- Accordingly, it is submitted that Newsquest acted fairly, there was no deception caused by the use of the Southern Farmer masthead and no unfair advantage made of the mark. It is said that Newsquest knew of the South East Farmer but not of its trade mark despite having carried out a search. Once it was known of, the "Newsquest publication" strapline was added. In addition, Mr Baldwin says the Southern Farmer is descriptive of its product as is South East Farmer and accordingly, Newsquest did not consider that there was a likelihood of confusion because the mark and the sign were both descriptive of their respective products and in fact, there was no actual confusion or damage.
- Ms McFarland submits that there was no cogent and clear evidence of the steps which one would expect of a commercially prudent man of business before the launch of Southern Farmer, in the terms suggested by Arnold J in Samuel Smiths. She submits that if they did carry proper due diligence they chose to turn a blind eye to the risks of conflict and possible rights of others including both Southern Farmers Ltd and South East Farmer.
- As I have already mentioned, in my judgment, Newsquest sought to replicate the business model of the Scottish and Northern Farmer in the South and Mr Dixon-Phillip together with his staff undertook searches. In such circumstances, in my judgment, there is no evidence upon which to base an allegation that Newsquest acted unfairly in the way described in the Samuel Smith and United Biscuits cases.
Counterclaim for Trade Mark Invalidity
- The grounds of invalidity relied upon by Newsquest are as follows:
(i) The UKTM is devoid of any distinctive character (contrary to s.3(1)(b) TMA).
(ii) The UKTM consists exclusively of words which serve in the trade to designate characteristics of the goods (contrary to s.3(1)(c) TMA).
(iii) The UKTM is of such a nature as to deceive the public about the nature of the goods in respect of periodicals, magazines and newspapers which are not related to farming and agriculture in the South East of England (contrary to s.3(3)(b) TMA).
- The relevant provisions are in the following form:
"Grounds for refusal of registration
3. - (1) The following shall not be registered –
. . . .
(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,
. . . . . .
Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.
. . . .
(3) A trade mark shall not be registered if it is-
. . . . .
(b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service)."
- The correct principles to apply when assessing whether or not a trade mark has acquired distinctive character were set out by the ECJ in Windsurfing Chiemsee C-108/97  Ch 523:
"44. The first point to note is that article 3(3) of the Directive provides that a sign may, through use, acquire a distinctive character which it initially lacked and thus be registered as a trade mark. It is therefore through the use made of it that the sign acquires the distinctive character which is a prerequisite for its registration.
45. Article 3(3) therefore constitutes a major exception to the rule laid down in articles 3(1)(b), (c) and (d) , whereby registration is to be refused in relation to trade marks which are devoid of any distinctive character, descriptive marks, and marks which consist exclusively of indications which have become customary in the current language or in the bona fide and established practices of the trade.
46. Secondly, just as distinctive character is one of the general conditions for registering a trade mark under article 3(1)(b), distinctive character acquired through use means that the mark must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings.
47. It follows that a geographical name may be registered as a trade mark if, following the use which has been made of it, it has come to identify the product in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings. Where that is the case, the geographical designation has gained a new significance and its connotation, no longer purely descriptive, justifies its registration as a trade mark.
49. In determining whether a mark has acquired distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings.
50. In that connection, regard must be had in particular to the specific nature of the geographical name in question. Indeed, where a geographical name is very well known, it can acquire distinctive character under article 3(3) of the Directive only if there has been long-standing and intensive use of the mark by the undertaking applying for registration. A fortiori, where a name is already familiar as an indication of geographical origin in relation to a certain category of goods, an undertaking applying for registration of the name in respect of goods in that category must show that the use of the mark—both long-standing and intensive—is particularly well established.
51. In assessing the distinctive character of a mark in respect of which registration has been applied for, the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.
54. In the light of the foregoing, the answer to the questions on the first sentence of Article 3(3) of the Directive must be that Article 3(3) is to be interpreted as meaning that (i) a trade mark acquires distinctive character following the use which has been made of it where the mark has come to identify the product in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings; (ii) it precludes differentiation as regards distinctiveness by reference to the perceived importance of keeping the geographical name available for use by other undertakings; (iii) in determining whether a trade mark has acquired distinctive character following the use which has been made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings; (iv) if the competent authority finds that a significant proportion of the relevant class of persons identifies goods as originating from a particular undertaking because of the trade mark, it must hold the requirement for registering the mark to be satisfied."
- In this regard, Ms McFarland also referred me to the recent judgment of Arnold J in Starbucks (UK) Ltd v British Sky Broadcasting Group Plc  EWHC 3074 (Ch) in which he summarised the relevant law in relation to Council Regulation (EC) No 207/2009. It is accepted that the principles apply to section 3 in the same way. The relevant extract is as follows:
90 The principles to be applied under Article 7(1)(b) of the CTM Regulation were conveniently summarised by the Court of Justice of the European Union in Case C-265/09 P OHIM v BORCO-Marken-Import Matthiesen GmbH & Co KG  ECR I-8265 as follows:
"29. … the fact that a sign is, in general, capable of constituting a trade mark does not mean that the sign necessarily has distinctive character for the purposes of Article 7(1)(b) of the regulation in relation to a specific product or service (Joined Cases C-456/01 P and C-457/01 P Henkel v. OHIM  ECR I-5089, paragraph 32).
30. Under that provision, marks which are devoid of any distinctive character are not to be registered.
31. According to settled case-law, for a trade mark to possess distinctive character for the purposes of that provision, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings ( Henkel v. OHIM , paragraph 34; Case C-304/06 P Eurohypo v. OHIM  ECR I-3297, paragraph 66; and Case C-398/08 P Audi v. OHIM  ECR I-0000 , paragraph 33).
32. It is settled case-law that that distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception of them by the relevant public (Storck v. OHIM , paragraph 25; Henkel v. OHIM, paragraph 35; and Eurohypo v. OHIM , paragraph 67). Furthermore, the Court has held, as OHIM points out in its appeal, that that method of assessment is also applicable to an analysis of the distinctive character of signs consisting solely of a colour per se, three-dimensional marks and slogans (see, to that effect, respectively, Case C-447/02 P KWS Saat v. OHIM  ECR I-10107, paragraph 78; Storck v. OHIM , paragraph 26; and Audi v. OHIM , paragraphs 35 and 36).
33. However, while the criteria for the assessment of distinctive character are the same for different categories of marks, it may be that, for the purposes of applying those criteria, the relevant public's perception is not necessarily the same in relation to each of those categories and it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories (see Joined Cases C-473/01 P and C-474/01 P and C-474/01 P Procter & Gamble v. OHIM  ECR I-5173 , paragraph 36; Case C-64/02 P OHIM v. Erpo Möbelwerk  ECR I-10031, paragraph 34; Henkel v. OHIM , paragraphs 36 and 38; and Audi v. OHIM , paragraph 37).
34. In that regard, the Court has already stated that difficulties in establishing distinctiveness which may be associated with certain categories of marks because of their very nature – difficulties which it is legitimate to take into account – do not justify laying down specific criteria supplementing or derogating from application of the criterion of distinctiveness as interpreted in the case-law (see OHIM v. Erpo Möbelwerk , paragraph 36, and Audi v. OHIM , paragraph 38).
37. … it should be pointed out that, even though it is apparent from the case-law cited that the Court has recognised that there are certain categories of signs which are less likely prima facie to have distinctive character initially, the Court, nevertheless, has not exempted the trade mark authorities from having to carry out an examination of their distinctive character based on the facts.
45. As is clear from the case-law of the Court, the examination of trade mark applications must not be minimal, but must be stringent and full, in order to prevent trade marks from being improperly registered and, for reasons of legal certainty and good administration, to ensure that trade marks whose use could be successfully challenged before the courts are not registered (see, to that effect, Libertel , paragraph 59, and OHIM v. Erpo Möbelwerk , paragraph 45)."
91 The principles to be applied under Article 7(1)(c) of the CTM Regulation were conveniently summarised by the CJEU in Case C-51/10P Agencja Wydawnicza Technopol sp. z o.o. v OHIM  ECR I-0000,  ETMR 34 as follows:
"33. A sign which, in relation to the goods or services for which its registration as a mark is applied for, has descriptive character for the purposes of Article 7(1)(c) of Regulation No 40/94 is – save where Article 7(3) applies – devoid of any distinctive character as regards those goods or services (as regards Article 3 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks ( OJ 1989 L 40 , p. 1), see, by analogy, Case C-265/00 Campina Melkunie  ECR I-1699 , paragraph 19; as regards Article 7 of Regulation No 40/94 , see Case C-191/01 P OHIM v Wrigley  ECR I-12447 , paragraph 30, and the order in Case C-150/02 P Streamserve v OHIM  ECR I-1461 , paragraph 24).
36. … due account must be taken of the objective pursued by Article 7(1)(c) of Regulation No 40/94 . Each of the grounds for refusal listed in Article 7(1) must be interpreted in the light of the general interest underlying it (see, inter alia , Joined Cases C-456/01 P and C-457/01 P Henkel v OHIM  ECR I-5089 , paragraph 45, and Case C-48/09 P Lego Juris v OHIM  ECR I-0000 , paragraph 43).
37. The general interest underlying Article 7(1)(c) of Regulation No 40/94 is that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services (see, to that effect, OHIM v Wrigley, paragraph 31 and the case-law cited).
38. With a view to ensuring that that objective of free use is fully met, the Court has stated that, in order for OHIM to refuse to register a sign on the basis of Article 7(1)(c) of Regulation No 40/94, it is not necessary that the sign in question actually be in use at the time of the application for registration in a way that is descriptive. It is sufficient that the sign could be used for such purposes (OHIM v Wrigley, paragraph 32; Campina Melkunie, paragraph 38; and the order of 5 February 2010 in Case C-80/09 P Mergel and Others v OHIM , paragraph 37).
39. By the same token, the Court has stated that the application of that ground for refusal does not depend on there being a real, current or serious need to leave a sign or indication free and that it is therefore of no relevance to know the number of competitors who have an interest, or who might have an interest, in using the sign in question (Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee  ECR I-2779 , paragraph 35, and Case C-363/99 Koninklijke KPN Nederland  ECR I-1619 , paragraph 58). It is, furthermore, irrelevant whether there are other, more usual, signs than that at issue for designating the same characteristics of the goods or services referred to in the application for registration ( Koninklijke KPN Nederland , paragraph 57).
46. As was pointed out in paragraph 33 above, the descriptive signs referred to in Article 7(1)(c) of Regulation No 40/94 are also devoid of any distinctive character for the purposes of Article 7(1)(b) of that regulation. Conversely, a sign may be devoid of distinctive character for the purposes of Article 7(1)(b) for reasons other than the fact that it may be descriptive (see, with regard to the identical provision laid down in Article 3 of Directive 89/104, Koninklijke KPN Nederland, paragraph 86, and Campina Melkunie , paragraph 19).
47. There is therefore a measure of overlap between the scope of Article 7(1)(b) of Regulation No 40/94 and the scope of Article 7(1)(c) of that regulation (see, by analogy, Koninklijke KPN Nederland, paragraph 67), Article 7(1)(b) being distinguished from Article 7(1)(c) in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings.
48. In those circumstances, it is important for the correct application of Article 7(1) of Regulation No 40/94 to ensure that the ground for refusal set out in Article 7(1)(c) of that regulation duly continues to be applied only to the situations specifically covered by that ground for refusal.
49. The situations specifically covered by Article 7(1)(c) of Regulation No 40/94 are those in which the sign in respect of which registration as a mark is sought is capable of designating a 'characteristic' of the goods or services referred to in the application. By using, in Article 7(1)(c) of Regulation No 40/94, the terms 'the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service', the legislature made it clear, first, that the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service must all be regarded as characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account.
50. The fact that the legislature chose to use the word 'characteristic' highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 40/94 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court has pointed out, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation No 40/94 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics (see, by analogy, as regards the identical provision laid down in Article 3 of Directive 89/104, Windsurfing Chiemsee, paragraph 31, and Koninklijke KPN Nederland , paragraph 56)."
92 In addition, a sign is caught by the exclusion from registration in Article 7(1)(c) if at least one of its possible meanings designates a characteristic of the goods or services concerned: see Case C-191/01 P OHIM v Wm Wrigley Jr Co  ECR I-12447 at  and Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau  ECR I-1619 at .
93 Counsel for PCCW relied upon two other authorities. First, Case C-273/05 P OHIM v Celltech R&D Ltd  ECR I-1912, in which the CJEU stated at :
"In this case, it must be held that the Court of First Instance properly assessed the descriptive character of the mark CELLTECH considered as a whole and concluded that it was not established that the mark, even understood as meaning 'cell technology', was descriptive of the goods and services referred to in the application for registration. Therefore, it did not infringe Article 7(1)(c) of Regulation No 40/94."
94 Secondly, Case T-207/06 Europig SA v OHIM  ECR II-1961, in which the Court of First Instance (now General Court) said at :
"It follows that, for a sign to be caught by the prohibition set out in [Article 7(1)(c)], there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see PAPERLAB , paragraph 25, and the case-law cited there)."
- In relation to the first two grounds, Mr Baldwin submitted that a trade mark has 'distinctive character' if it acts as a "badge of origin" or in other words has a meaning denoting the origin of the goods (see Dualit Ltd's (Toaster Shapes) Trade Mark Applications  RPC 890). Mr Baldwin also relied upon the definition of distinctive character set down by the European Court of Justice in Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV  FSR 77 at . In summary, he says therefore, that the courts are astute to ensure that descriptive signs may freely be used by all traders wishing to use them. He also points out that distinctiveness must be established throughout a member state and not in a small geographical area. Lastly, he says that if it has acquired any distinctiveness it is only in relation to a glossy magazine.
- Before turning to Evegate's substantive response, I should mention that Ms McFarland referred me to CPR 63.14(3) which contains a mandatory requirement that where a remedy sought would if granted affect an entry in any United Kingdom Patent Office register, the party seeking the remedy must serve on the Comptroller or registrar:
(a) the claim form, counterclaim or application notice;
(b) any other statement of case where relevant (including any amended statement of case); and
(c ) any accompanying documents.
- It is clear from the emails which Mr Baldwin handed up, that only the pleadings were provided and then only during the trial as a result of Ms McFarland's cross examination of Mrs Cawker. The email exchange reveals that the UK Patent Office awaits a copy of this judgment. Ms McFarland submits that the Office has been denied the opportunity to take part in these proceedings by virtue of a failure to comply (albeit innocent) with the mandatory requirements and as a result the counterclaim should be struck out.
- In my judgment, other than provide the entirety of the trial bundles, it is not clear what "accompanying documents" would have been appropriate, given the stage this matter had reached when the Comptroller was given notice of the action. Although the notification was very late, in my judgment, the requirement was fulfilled and it would disproportionate to strike out the counterclaim on this basis. The Comptroller is aware of the action and awaits its outcome.
- To return to the substantive issue, in response to the first two grounds of invalidity Evegate relies upon acquired distinctiveness through use of the UKTM. Ms McFarland submits that as a result, the counterclaim under s3(1)(b) and s3(1)(c) must fail.
- However, Mr Baldwin relies upon the fact that the application to register the UKTM was rejected at first and only accepted on the basis of evidence which is now accepted to be partially incorrect. In this regard, Mr Rabson's evidence is that in fact, the IPO or the Trade Mark Registry as it then was, initially objected to the application on the basis that it raised a preliminary enquiry as to whether the mark was arguably descriptive and non-distinctive. The trade mark attorneys then filed evidence that the mark had been used since 1985. It was then satisfied that it had acquired distinctiveness as a result of use prior to 2002. Mr Rabson accepted that the witness statement which had been sworn by him and filed on that occasion contained an unintentional error. It recorded that the mark had been used since 1978 whereas in fact, it had only been designed in 1994, some seven or eight years before the application. A similar mark with curved ends to the lines had been used since 1982. Mr Rabson accepted that the IPO had not been informed of the error.
- Mr Baldwin submits that Evegate only uses the expression "South East Farmer" because they are providing a publication of interest to farmers in the South East; it relies entirely on the descriptive meaning of those words to inform consumers as to the content of the magazine. He says that this is inconsistent with the expression having become distinctive and having a meaning which has displaced the primary meaning. He also says that its device elements are not distinctive enough to result in the mark automatically being understood by the average consumer to denote commercial origin.
- In relation to what constitutes a 'significant proportion of the relevant class of persons', it must be a significant proportion of consumers within the UK. In Bignell v Just Employment Law Ltd  FSR 6, a trade mark was held to be invalid on the basis that the fact that it had acquired distinctiveness within Surrey and the neighbouring counties was not sufficient evidence that a significant proportion of the relevant class of persons in the UK as a whole would have identified goods as originating from a particular undertaking because of the trade mark.
- In relation to the third ground of invalidity (contrary to s.3(3)(b) of the Act), the provision requires "the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived" if it was used in relation to the relevant goods or services (see Consorzio per Tutela del Formaggio Gorgonzola C-87/97  ECR I-1301 at ). Mr Baldwin submits that the title South East Farmer would be highly misleading if it were used in relation to a farming magazine intended to be relevant to and of interest to farmers in the North West, for example. He submits that the deception is inherent in the mark itself.
- Newsquest's alternative position is that, if the Trade Mark has any distinctive character, it is minimal and can only relate to the very specific features of the masthead (such as the lines on the top and bottom of the UKTM and the font size and style of the lettering). This, it is said, is of relevance when considering The Southern Farmer masthead as it does not contain those specific features.
- In my judgment, 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 7 or 8 years, was sufficient for the purposes of distinctiveness. The distinctiveness, therefore, is attached to features of the masthead itself as used since 1994. Furthermore, the evidence in relation to the reputation and goodwill of Evegate which is for the most part, based upon the use of the UKTM supports that conclusion. I consider this to be the case despite the descriptive nature of the title itself. Furthermore, although the majority of its circulation is in Kent, Surrey, Sussex and parts of Hampshire, it is not restricted to these areas. In fact, as a result, for example of the NAAC Directory, the South East Farmer is advertised nationally and whilst there was evidence of reputation within a limited area, there was no evidence to support the contention that it does not retain distinctiveness outside the South East. Accordingly, I agree with Ms McFarland that the counterclaim under s3(1)(b) and (c) must fail.
- In relation to the third ground, namely s3(3)(b) TMA, in my judgment there is no evidence of actual deceit or any evidence to support the conclusion that there is sufficiently serious risk that the consumer will be deceived. It is insufficient merely for Mr Baldwin to submit that deception is inherent in the UKTM itself. I also consider that my finding as to distinctiveness is inconsistent with deception of the public as to the nature, quality, or geographical origin of the publication. Accordingly, I also agree with Ms McFarland that this head of the counterclaim must also fail.