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Intellectual Property Enterprise Court
You are here: BAILII >> Databases >> Intellectual Property Enterprise Court >> IPC Media Ltd v Media 10 Ltd  EWHC 3796 (IPEC) (06 December 2013)
Cite as:  EWHC 3796 (IPEC)
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INTELLECTUAL PROPERTY ENTERPRISE COURT
B e f o r e :
(sitting as a Deputy Judge)
| IPC MEDIA LIMITED
|- and -
|MEDIA 10 LIMITED
on behalf of the Claimant
James Mellor QC and Jessie Bowhlll (instructed by Haseltine Lake LLP) appeared on
behalf of the Defendant
Hearing dates: 31.10.13 and 01.11.13
Crown Copyright ©
Mr John Baldwin QC:
The bringing together for the benefit of others, of a variety of house wares, domestic electrical goods and appliances, garden equipment, plants and furniture, home furnishings, lighting apparatus, enabling customers to conveniently view and purchase those goods from catalogues by mail order or by means of telecommunications including via the Internet and television shopping.
Its purpose in so doing is reasonably clear; it sought to monopolise the use of Ideal Home as a sign in connection with the retail sale by mail order (including via the internet) of home interest goods. Pursuant to that strategy, it has brought these proceedings in response to the Defendant's, Media 10's, launch of an online shop selling home interest goods.
'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 -
If... the competent authority finds that the relevant class of persons, or at least a significant proportion thereof, identifies goods as originating from a particular undertaking because of the trade mark, it must hold that the requirement for registering the mark laid down in [the relevant legislation] is satisfied.
It is settled case-law that the essential function of a trade mark is to guarantee the identity of the origin of the marked goods or service to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin (see Canon, paragraph 28, and Case C-517/99 Merz & Krell  ECR I-6959, paragraph 22). A trade mark must distinguish the goods or services concerned as originating from a particular undertaking.
Further or alternatively, if and in so far as the Trade Mark encompasses services provided in connection with or in the context of the Defendant's IDEAL HOME SHOW (which on this basis it does), its use was and is liable to be prevented by the law of passing off, and the registration was and remains contrary to section 5(4)(a) of the Trade marks Act 1994,
In this case it is IPC that has taken steps to suggest that it is the sole owner of the IDEAL HOME name, because it has removed the distinguisher (i.e. the context of the Magazine). The effect of this is to deprive Media 10 of the value of the name.
The case law of the CJEU establishes that the proprietor of a trade mark can only succeed in a claim under art.5(l)(a) of the Directive or art.9(l)(a) of the Regulation if six conditions are satisfied: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (Hi) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is identical to the trade mark; (v) it must be in relation to goods or services which are identical to those for which the trade mark is registered; and (vi) it must affect or be liable to affect the functions of the trade mark: see in particular Arsenal Football Club Plc v Reed (C-206/01)  ECR I-10273;  R.P.C. 9 at , Anheuser-Busch  ETMR 27 at , Adam Opel AG v Autec AG Case (C-48/05)  ECR I-1017;  ETMR 33 at —[2.2], Celine SARL v Celine SA (C-17/06)  ECR I-7041;  ETMR 80 at  and UDV North America Inc v Brandtraders NV (C-62/08)  ECR I-1279;  E.T.M.R. 25 at .
In the present case, the dispute is about items (iv) and (vi).
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.
My attention was also drawn to the oft referred to passage in Canon 1999 FSR 332,  and in particular:
the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion
13 In my judgment giving rise to the reference (with which the other members of the court agreed) I said:
"3. But although the names are the same, the beers are not. Their tastes, prices and get-ups have always been different. In markets where they have co-existed, consumers have by and large become aware of the difference, though of course there will always be some small level of confusion."
And the question asked (I repeat the key bit) was on the basis that there had been:
"a long period of honest concurrent use of two identical trade marks for identical goods so that the guarantee of origin of the earlier mark does not mean the mark signifies the goods of the proprietor of the earlier and none other but instead signifies his goods or the goods of the other user,"