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England and Wales High Court (Chancery Division) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Evegate Publishing Ltd v Newsquest Media (Southern) Ltd  EWHC 1975 (Ch) (10 July 2013)
Cite as:  EWHC 1975 (Ch)
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7 Rolls Building
B e f o r e :
| EVEGATE PUBLISHING LIMITED
|- and -
|NEWSQUEST MEDIA (SOUTHERN) LIMITED
John Baldwin QC and Isabel Jamal (instructed by Newsquest Media (Southern) Limited) for the Defendant
Hearing dates: 2 – 3, 7 – 9 and 13 May 2013
Crown Copyright ©
Mrs Justice Asplin:
1983 – 1984:
May 1988 – July/August 1994:
May 1981 – May 1998:
June 1998 – January 2008:
February 2008 - present:
The Launch of The Southern Farmer in more detail
"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.
"Publications looked at in the workshop (not necessary your areas –lots of others available in retail outlets)
South East Farmer"
The Relevant Law
(a) Passing Off
"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."
"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."
"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  E.T.M.R. 11  –  per Lewison LJ.
"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."
"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."
"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."
"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."
"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."
"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."
(b) Trade Mark Infringement
(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 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 ."
"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."
" 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."
" 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."
" 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
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'.
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."
' 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.'
EVEGATE'S Case In Passing Off
(a) Goodwill and reputation
"The question is as to the circumstances in which someone to whom HFC is known makes such a mistake."
"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 . ."
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?
[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,
Damage to Evegate
"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.
Overall Conclusion in relation to Passing Off
Allegation of Trade Mark Infringement
(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.
Section 11(2)(b) defence
"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."
"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."
" 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."
"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."
Counterclaim for Trade Mark Invalidity
(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).
"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)."
"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."
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)."
(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.
Note 1 which is the same as section 10(2) of the Act. [Back]
Note 1 which is the same as section 10(2) of the Act. [Back]