IPC Media Ltd v Media 10 Ltd [2013] EWHC 3796 (IPEC)

[2013] EWHC 3796 (IPEC)Case No CC12P093184Date 6 December 2013
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Before
Mr John Baldwin QC(sitting as a Deputy Judge)
Between
IPC MEDIA LIMITEDClaimantMEDIA 10 LIMITEDDefendant
James Abrahams and Isabel Jamal (instructed by Arnold & Porter (UK) LLP) appeared for ClaimantJames Mellor QC and Jessie Bowhlll (instructed by Haseltine Lake LLP) appeared onbehalf of the DefendantHearing Hearing dates: 31.10.13 and 01.11.13
J UDGMENTMr John Baldwin QC:
[1]We would all like to live in an Ideal Home. But life is rarely that simple. It can become complicated when a trader seeks to monopolise the expression Ideal Home and another trader not only wants to use it himself but also has an existing business which does use it.[2]In 2006 the Claimant, IPC Media, applied for and subsequently obtained registration in class 35 for the sign Ideal Home in respect of: The bringing together for the benefit of others, of a variety of house wares, domestic electrical goods and appliances, garden equipment, plants and furniture, home furnishings, lighting apparatus, enabling customers to conveniently view and purchase those goods from catalogues by mail order or by means of telecommunications including via the Internet and television shopping. 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.[3]Another purpose of the registration was to benefit IPC Media’s wider business in the publication of magazines. In about 1920, and to the intense irritation of the Lord Northcliffe, Odhams Press launched a magazine called Ideal Home. It was aimed at the post World War 1 middle class who aspired not only to own their own home but also to be proud of it Ideal Home magazine quickly became established amongst consumers as the pre-eminent magazine in its sector. It has been characterised as the first ever mass-market home interest magazine and it has been the market leader for many years. It currently has an average monthly circulation of about 200,000 copies with a readership some 5 times that number. It is supported by an annual promotional spend of about £1 million and currently generates nearly three times that amount in advertising revenue.[4]Since at least the 1960s Ideal Home magazine, like many other magazines and newspapers, has contained what are known as Reader Offers, that is to say promotions whereby consumers can purchase by mail order goods sold by reference to the Ideal Home sign. Some of the goods sold have been branded, some not branded but all of them appear to have been sold by reference to the Ideal Home sign. The value of such sales in recent years has been between about £25,000 and £45,000, i.e. quite small in relation to the revenue generated by the magazine itself. IPC Media rely on these reader offers to support a submission that it owns a goodwill in connection with the retailing of goods under the Ideal Home sign.[5]These Reader Offers form a fairly small part of a magazine which is packed with details, including sourcing and pricing, about various products of interest to the consumer in this sector. Thus the majority of items which can be bought using information in Ideal Home are available for purchase from the original supplier and under the supplier’s trade marks. The magazine comprises a useful compendium of such items; it is a good source of reference for consumers looking for products for their own ideal home.[6]In about October 2005 IPC Media launched an Ideal Home website and digital editions of the magazine have been available since May 2010. Furthermore, in January 2009 IPC Media launched an online shop which offers consumers the opportunity to view and purchase a range of home interest products via the internet. The service is called the Ideal Home Shop and the sales value generated in 2010 and 2011 was £86,000 and £66,000 respectively - again relatively small figures in the context of the business under the Ideal Home mark and the overall home interest market - estimated to be in excess of £10 billion.[7]Ms Newcombe, the managing director of IPC Southbank, a division of IPC Media, gave evidence about the success of Ideal Home magazine and its associated activities. She was an impressive witness and I am satisfied on the evidence (indeed, it was not seriously challenged) that, in the context of magazines, the words Ideal Home signify to a substantial number of the relevant public the magazine published by and connected with IPC Media. I am also satisfied that this meaning in this context would be appreciated by the average consumer for the purposes of trade mark law. But the matter is not as straightforward as that, and this takes us back to why, way back in 1920, Lord Northcliffe was angry.[8]Some 12 years prior to the launch of Ideal Home magazine, Lord Northcliffe’s newspaper launched the first of what was to become for many an institution, the Daily Mail Ideal Home Exhibition. It was a success from the start, the first exhibition of its kind in the world and with over a quarter of a million paying customers going through the turnstiles when Ideal Home magazine first went on sale. Originally run from The Grand Hall (later renamed Olympia) in Hammersmith, it moved to Earls Court in the 1980s where it continues to prosper to this day. The Ideal Home Exhibition turned into a Show sometime in the 1990s, apparently to reflect a more modem image, and it has become widely known as the Ideal Home Show or, simply and when it was clear from the context that the reference was to an Exhibition or Show, the Ideal Home.[9]Although similar in some respects to other trade or wholesale fairs, from the outset, that is to say, from 1908, one of the main purposes of the Exhibition was the retail sale to the general public of novel and popular home interest commodities. There can be little doubt that the project has been very successful; in 2013 the Spring Show at Earls Court attracted some 265,000 visitors during its 18 day run and their spend during that short period totalled the impressive figure of some £239 million.[10]For most of the last 10 years there has been both a Spring and an Autumn Ideal Home Show at Earls Court. Over the last 60 years or so there have been sister Exhibitions/Shows at other venues round the UK including Glasgow, Manchester and Birmingham, each of them using similar branding and associating themselves with the Ideal Home Show in London. It was this Ideal Home Show business which was bought by Media 10 in 2009.[11]Mr Newton, the managing director of Media 10, gave evidence and he too knows his business. I am satisfied on the evidence (indeed, it was not seriously challenged) that, in the context of Exhibitions or Shows, the words Ideal Home signify to a substantial number of the relevant public the Show operated by and connected with Media 10. I am also satisfied that this meaning in this context would be appreciated by the average consumer for the purposes of trade mark law.[12]Thus I have concluded that the words Ideal Home when used as a trade mark in the home interest category may convey a different meaning depending on whether the context is a magazine or an exhibition/show. A real possibility, however, is that a consumer, whilst recognising the different meanings in the different contexts, does not actually perceive them to be different in a material way, i.e. believes that the Ideal Home magazine and the Ideal Home Show are connected to each other in some way. Such is likely to depend on how the respective entities have been marketed over the years.[13]By its Defence, Media 10 pleaded that the parties had co-existed without confusion during a long period of honest concurrent use which had educated consumers to the effect that the two businesses were different. Moreover the Defence pleaded that, in relation to the Show and the business connected therewith, sometimes prominence is given to the word ‘Ideal' such that consumers have been educated that use in this way indicates the Defendant’s business and not that associated with the Magazine. There was very little evidence to support either of these pleaded contentions.[14]By its Reply, IPC Media not only denied any coexistence without confusion but positively averred that there is and always has been widespread confusion amongst the relevant trade and public to the effect that the Ideal Home Show and the Ideal Home Magazine are part of the same commercial enterprise and/or are somehow economically linked. It averred that the public had not been educated to know that the two entities are different and that IPC Media regularly comes across customers, including its own staff, who are so confused. Media 10’s counsel submitted that this averral was a complete volte face from the position alleged in the Particulars of Claim, but I am not sure that it was. The Particulars of Claim did not specifically address the issue. What it did allege was that until December 2011, IPC Media’s Ideal Home Business and the Ideal Home Show were able to co-exist as they traded in wholly separate goods and services.[15]IPC Media gave disclosure of emails in which it had sought information from its staff as to whether or not any members of staff were aware of any confusion between the Magazine and the Show. The impression given by this disclosure is that very many of IPC Media’s employees as well as their relatives, friends and others with whom they have come into contact believe or have believed that Ideal Home Magazine and the Ideal Home Show are connected businesses.[16]Given the very long and widespread usage of Ideal Home as(i) the name of a best selling magazine showcasing home interest products and where to buy them and(ii) the name of a hugely popular show showcasing home interest products with opportunities to buy them, it would, to my mind, not be surprising if many consumers did think the two businesses were connected. In this context it is relevant to take into account the extent to which the parties have attempted to make it clear to consumers that their respective businesses are not connected in a material way.[17]The current (December 2013) edition of Ideal Home magazine is presented in a clear plastic wrapper bearing on front and back a notice to the effect that the magazine contains the opportunity to obtain “2-FOR-1 Ideal Home Show At Christmas Tickets”. The list of contents on page 5 directs the reader to page 188 - Visit The Ideal Home Show At Christmas. On that page 188, below a banner which repeats the expression IDEAL HOME OFFERS, there is flattering comment about the Ideal Home Show, a picture of the festive venue at Earls Court, details about how to ‘Get your 2-4-1 Tickets’ and suggestions as to what to do on your visit, but not including any reference to IPC Media’s stand or to the fact that IPC Media has nothing to do with the Show. I was told in evidence that all of that content was written and prepared by IPC Media employees without any input from Media 10. To my mind the content of Ideal Home magazine presents to the consumer a positive indication that the magazine and the show are connected with each other in a material way.[18]The previous (November 2013) edition is to like effect. It even includes, bound into the magazine, a complimentary ticket to the Ideal Home Show worth £16.50. I found nothing and my attention was not drawn to anything which might suggest to a reader that the magazine and the show were not connected.[19]I did not hear evidence from those responsible for the content of the pages of Ideal Home magazine promoting Ideal Home Show and neither was I shown any disclosure about their brief. However, it is in my judgment reasonable to infer that IPC Media recognises some commercial advantage in not making clear that its magazine and the Ideal Home Show are not connected.[20]I turn now to Media 10 and consider the steps it takes or has taken to make clear that its Ideal Home Show is not connected with Ideal Home magazine. No such steps emerged from disclosure or the evidence. Indeed, I was told that all purchasers of tickets to the Show are given a free copy of Ideal Home magazine and I was shown extracts from the Show Guides illustrating how IPC Media’s Ideal Home room sets are described. There is much which might lead a consumer to think that the similarly named magazine and show are connected businesses. Moreover, in most of the recent years Ideal Home magazine has had a strong presence at the Show. As might be expected, IPC Media makes prominent use of the Ideal Home name at the Ideal Home Show and my attention was drawn to nothing which would lead the ordinary consumer to think that the Magazine and the Show, both using the expression Ideal Home, were not connected with each other in a material way.[21]There was some suggestion in the cross examination of the witnesses that one side or the other was at fault for what I find is a widespread belief amongst consumers that the businesses of the Magazine and the Show are connected with each other. I do not think that either party is at fault. It seems to me that for some time the parties have chosen to conduct their businesses without taking any steps or any effective steps to educate consumers about the true position with regard to the ownership or control of the different businesses.[22]In my judgment the average consumer in the home interest goods market would recognise the name Ideal Home when used in connection with home interest products as a trade mark for either a magazine or a show and would or may well think, if they thought about it at all, that it identified the business of a single entity or, more likely, the businesses of connected entities. In my judgment there are a sufficiently large number of such consumers who would think that there is such a connection that they cannot be ignored.[23]The consequence of this is that there is some confusion between the two businesses by reason of their respective uses of the words Ideal Home. It may well be, however, that since the respective businesses of publishing a consumer home interest magazine and running a consumer home interest show are different, then this confusion was of little consequence - it was more in the nature of an administrative inconvenience than anything else.[24]IPC Media contends that this situation of tolerable coexistence has now changed. It contends that with the launch of an online retail shop under the Ideal Home Show banner, Media 10 is for the first time directly competing with IPC Media’s business, as it is for the first time offering for sale home interest goods under the Ideal Home brand. It points out that although the Ideal Home Show might be the occasion of a retail spend of over £220 million, all those goods were sold by and were the responsibility of third party exhibitors, Media 10 merely bringing these exhibitors together and providing the venue. IPC Media likens the Ideal Home Show to a street market. It points out that Media 10 has no reputation, goodwill or track record in relation to the sale of its own home interest goods. It contrasts that position with its own business and its retail sales, via the Reader Offers pages, during the last 50 years and via the internet over the last year or so.[25]Media 10 has a number of answers to the claim. On the commercial level, it argues that what it is now doing is no more than a natural extension of what it has been doing previously; that just as the internet has offered IPC Media the opportunity for an online shop, so it has offered that same opportunity to Media 10. It refers to examples from the early 1990s when the Daily Mail carried out some mail order marketing which, in addition to promoting the Exhibition, offered readers the opportunity to purchase goods from ‘Ideal Home Plus', an entity which had been set up to deal with sales. It refers to the fact that in the mid 1990s its predecessors introduced the Ideal Home Show credit card - clearly related to consumer purchasing - and that around that time there was also offered a personal loan service under the Ideal Home Personal Loan brand. It refers to the fact that in 2008 the Show’s website was updated to include an online shop, albeit this shop merely enabled the purchase of goods from third parties rather than from the show organisers. It refers to and gives evidence of the fact that for many consumers, the Ideal Home Show is primarily a shopping experience. It invites the conclusion that the Ideal Home Show name is intimately associated with the retail of home interest goods and that its reputation and goodwill extends to such, whether or not it or a third party is actually responsible for the supply of goods.[26]On the legal level, Media 10’s first attack is on the validity of the trade mark registration relied upon and it is to that I now turn.[27]There are two attacks. The first alleges that Ideal Home is devoid of any distinctive character and/or consists exclusively of signs or indications which serve to designate the kind and/or quality and/or intended purpose of the goods or services and that the registration was in breach of section 3(1)(b) and/or (c) of the Trade Marks Act 1994.[28]Mr Abrahams, counsel for IPC Media, drew my attention to the remarks of Arnold J in Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2012] EWHC 3074 (Ch) to the effect that a sign only falls foul of these provisions if there is: ‘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 [94]-[95][29]He also pointed out IPC Media’s long use (albeit in the context of a magazine) and drew my attention in the context of acquired distinctiveness to Windsurfing Chiemsee Produktions [1999] ECR I-2779; [2000] Ch 523; Case C-108/97, in particular [47], where it is pointed out that the question is whether the mark “has gained a new significance and its connotation, no longer purely descriptive, justifies its registration as a trade mark”.[30]He also drew my attention to [52] of that case where it is pointed out that: 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.[31]I believe it to be accepted that the same principle applies to services, the registration in issue being in respect of retail services.[32]In view of the somewhat unusual facts of this case I was concerned with the reference in this citation to ‘goods originating from a particular undertaking’ and also to the well known passage in Libertel, Case C-104/01 at [62] in the context of the essential function of a trade mark: 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 [2001] ECR I-6959, paragraph 22). A trade mark must distinguish the goods or services concerned as originating from a particular undertaking.[33]My concern stemmed from the fact that in the context of retailing home interest goods, Ideal Home might be taken as a reference to either IPC Media or Media 10 or both of them and, accordingly, the requirement of ‘without any possibility of confusion' would not be satisfied. However, counsel for both parties were ad idem and they satisfied me that the references in Windsurfing Chiemsee and Libertel were in the context of the inherent characteristics of the relevant mark. They argued and I accept that cases concerning conflicting rights of third parties are more appropriately dealt with by the relative grounds for refusal of a registration in section 5 of the Trade Marks Act. In particular, Mr Mellor QC, counsel for Media 10, urged me to focus attention upon section 5(4)(a) and the fact that his clients could, in 2006, restrain, by an action in passing off, IPC Media’s use of the Ideal Home trade mark in relation to services in the specification.[34]In connection with the absolute grounds for refusal of a registration in section 3 of the Act, I accept that the term Ideal Home is an apt descriptor of a nice place to live. But I am satisfied on the evidence that, by reason of the massive user by both IPC Media in connection with Ideal Home Magazine and Media 10 in connection with the Ideal Home Show (and their respective predecessors in title), the sign Ideal Home, when used in connection with a business in home interest goods, has acquired a secondary meaning. I accept that the businesses in which the sign has been used are much wider in scope than the specification of services for which registration was granted. But the sign has the status of a household name in connection with home interest goods. Moreover, it would in my view be artificial and wrong to limit the analysis to user in relation only to the services in the specification. Ideal Home, in my judgment, is a sign which has trade mark significance when used as a trade mark in connection with home interest goods and services generally and, accordingly, the attack based on absolute grounds fails.[35]I turn now to the second attack relied upon which is in these terms: 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,[36]Mr Abrahams was scathing about this attack. He pointed out that his clients had been selling goods by mail order since at least 1965, that use of the internet was merely another way of a customer communicating requirements to his clients, and that in any event Media 10 did not have any retail business or goodwill associated therewith on which to base a passing off action until 2012, some 4 years after the date of registration. So he not only asserted that his clients were the senior user, but also that in any event Media 10 had no goodwill at the relevant time on which it could rely.[37]Mr Mellor QC dismissed Mr Abraham’s approach, pointing out that he had not understood the subtlety of the argument. He relied on McAlpine [2004] EWHC 630 (Ch) and, in particular, on the fact that Alfred McAlpine was restrained from dropping the name Alfred and trading simply as McAlpine to the detriment of Sir Robert McAlpine, the other construction business which used the McAlpine name.[38]Mann J gave judgment for Sir Robert because Alfred had taken steps to suggest that it was the sole owner of the McAlpine name, thereby depriving Robert of some value by blurring or diminishing Robert’s rights. Mr Mellor QC submitted there was a direct parallel with this case. He put it like this in his skeleton argument: 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.[39]Mr Mellor argued that IPC Media’s application for registration was, just as was the name change in the McAlpine case, a claim that IPC Media owned the entirety of the goodwill associated with Ideal Home when that sign was used in connection with the services in the specification. His difficulty, however, is that section 5(4)(a) of the Act is concerned with the use of the mark being prevented by passing off, whereas his complaint appears to be in relation to the application for registration itself (and, possibly, this action reliant upon it) rather than in relation to any use of the mark.[40]In my judgment there is a significant difference between this case and the McAlpine case; it is that IPC Media has not done anything with its Ideal Home mark. It has not done anything with the mark which increases the likelihood of it representing itself as the sole owner of the goodwill associated with the business under which the mark has been used. I accept that IPC Media has mainly used the Ideal Home sign in connection with a magazine, but the sign it uses is Ideal Home, not Ideal Home Magazine.[41]I asked Mr Mellor QC to outline a scenario in which Media 10 could successfully sue IPC Media in passing off for use of the Ideal Home mark. He pointed out that his clients had an existing and very extensive goodwill in connection with the Ideal Home name and the Ideal Home Show. He submitted that there would be a misrepresentation if IPC Media set up an internet mail order business under the Ideal Home name if that business had any connection with the Show. He submitted that IPC Media’s registration was wide enough to cover such an activity, which was no more than normal and fair use of the mark within the scope of the registration, and that such use would lead to deception and passing off, and therefore the whole registration must fall.[42]I do not accept Mr Mellor QC’s argument under section 5(4)(a). It seems to me that he is relying on a misrepresentation being caused by the potential use by IPC Media of something in addition to the Ideal Home mark itself, something extra which itself is the cause or source of the misrepresentation. I do not consider that to be the right approach to the section[43]I do not intend by this conclusion to suggest there would be no passing off if, for example, IPC Media were to launch a home interest show tinder the name Ideal Home, or if Media 10 were to launch a consumer magazine under the name Ideal Home. Such would depend on the circumstances surrounding that launch. But the sale of home interest goods by either party under the Ideal Home name is, in my judgment, sufficiently in the middle of the spectrum between the respective core businesses for neither party to be able to succeed against the other in a passing off claim. The attack on the validity of the registration fails.[44]I turn now to the issue of trade mark infringement. IPC Media complains of a number of signs used by Media 10 but accepts that it cannot succeed unless it can establish infringement by reason of use of the expression Ideal Home Show in relation to the services complained of. Infringement pursuant to section 10(1), (2) and (3) of the Trade marks Act, is alleged, IPC Media’s primary contention being that the sign used by Media 10 is Ideal Home.[45]Regarding section 10(1) and using the language of the equivalent Directive and Regulation, Arnold J in Interflora v Marks & Spencer [2013] EWHC 1291 (Ch), [177] said this: 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) [2002] E.C.R. I-10273; [2003] R.P.C. 9 at [51], Anheuser-Busch [2005] E.T.M.R. 27 at [59], Adam Opel AG v Autec AG Case (C-48/05) [2007] E.C.R. I-1017; [2007] E.T.M.R. 33 at [18]—[2.2], Celine SARL v Celine SA (C-17/06) [2007] E.C.R. I-7041; [2007] E.T.M.R. 80 at [16] and UDV North America Inc v Brandtraders NV (C-62/08) [2009] E.C.R. I-1279; [2010] E.T.M.R. 25 at [42]. In the present case, the dispute is about items (iv) and (vi).[46]Regarding identity, it is common ground that the appropriate test is that laid down by the CJEU in LTJ Diffusion SA v Sadas Vertbaudet SA (0291/00) [2003] E.C.R. I- 2799; [2003] F.S.R. 34. A sign is to be regarded as identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.[47]Mr Abrahams accepts that Ideal Home Show, as a sign, is not identical to Ideal Home but contends that the word Show in the expression is an entirely descriptive appendage, in the same way that Soap is to Palmolive in the expression Palmolive Soap. He submits that Show would not be seen as part of the website owner’s trade mark but as simply describing its primary business - organising a show. He submits that the average consumer would see Ideal Home as being the trade mark of the website owner (i.e. Media 10).[48]I have considered the materials which are complained of in this action in the context in which they are used and reminded myself of what Jacob LJ said about the matter in Reed [2004] EWCA Civ 159, [33] - [40]. I am satisfied that the average consumer would perceive that the sign being used in connection with the online offering is Ideal Home Show. That is the identifier of the entity which the average consumer would perceive to be responsible for the web pages in issue.[49]Accordingly, IPC Media fail to establish double identity and the case on section 10(1) infringement fails.[50]Infringement under section 10(2) requires IPC Media to establish a likelihood of confusion and the matters to be taken into account are now well established - see e.g. Interflora v Marks & Spencer [2013] EWHC 1291 (Ch), [182] - [185]; Specsavers v Asda [2012] FSR 19, [87] where Kitchin LJ said: 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. 51. 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[51]It must be remembered, however, that trade marks are concerned with guarantees, and that the confusion with which section 10(2) is concerned is confusion which affects or is likely to affect the functions of the trade mark (including origin, advertising and investment functions).[52]Mr Abrahams submitted that it was obvious that an average consumer who knew of the Ideal Home trade mark for retail services and who saw Ideal Home Show being used in relation to such services would be confused and would believe that they were the same or, at least, economically linked. He referred to two examples in the evidence of customers of the Ideal Home Show Shop contacting IPC Media in relation to administrative matters and suggested that it was likely that there were many more such examples which had not come to anyone’s notice. My impression was that, implicit within Mr Abraham’s submission, and because Ideal Home is the name of a well known magazine, Ideal Home would be known as a trade mark for retail services. Even if I am wrong about this latter, it does not in my judgment matter since I am satisfied that the reputation of Ideal Home in connection with a magazine swamps any small reputation IPC Media might have in connection with retail sales of consumer goods under that mark, and that its reputation in connection with the magazine is relevant.[53]Mr Mellor QC described the evidence in support of the allegation of a likelihood of confusion as pitiful. He submitted that it was no more than what he described as the low level of confusion between Ideal Home magazine and Ideal Home Show which has been prevalent for years and that the parties just had to tolerate it. He relied upon the doctrine of honest concurrent use and submitted that this case was equivalent to or stronger on the facts than the Budweiser battles. He said that the distinguishing factor which had enabled the parties to coexist peacefully for almost a century was the context in which each party used the sign (i.e. in matters extraneous to the mark itself, just as in Budweiser).[54]Mr Abrahams was dismissive of the honest concurrent use argument. He submitted that any concurrent use between the magazine and the show was not relevant, and that use in relation to retail services was not concurrent since Media 10’s only started in May 2012. He submitted that the case was simple and that a finding of a likelihood of confusion was inevitable given the fact that the sign Ideal Home Show included prominent use of the Ideal Home registered mark.[55]I found useful guidance on the applicability of the honest concurrent use principles in Budweiser [2012] EWCA Civ 880, particularly in the judgment of Sir Robin Jacob. However, there is an important difference between the facts in Budweiser and those in the present case. In Budweiser, both parties’ products were beer but they were different kinds of beer. Sir Robin expressed it thus at [13]: 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,”
[56]In the present case, the names are the same (ignoring the ‘show’ difference for the moment) and the concurrent use has been in the same general area of business, i.e. home interest goods, but the respective individual uses have been different - one has been in relation to a monthly magazine showcasing and relating to home interest products and the other in relation to an exhibition showcasing and relating to home interest products. Furthermore, and as I have already mentioned, the parties have not marketed their products or services or otherwise conducted themselves in a way which might have educated consumer that the respective businesses were not connected. Indeed, my conclusion is that there has been a tendency to encourage the reverse.[57]To my mind, the key point of similarity between this case and Budweiser is that the name Ideal Home as a trade mark in the field of home interest goods or services has never (or, at least, since about 1920) signified only one business; it has signified either the business of the magazine or that of the show. In circumstances where the context shows the name is a reference to a magazine and not a show (or vice versa), then that context provides a partial answer. It is only a partial answer because it may not tell the consumer that the magazine and the show are the responsibility of unrelated undertakings; in some circumstances it will, but in others it will not.[58]My conclusion from the evidence is that the scenario just outlined was the position in 2006 when IPC Media applied for the trade mark registration in suit. Furthermore, that conclusion is not altered by the fact that the specification of services for which registration is sought is different from that of the core businesses of either party or, in particular, the business of operating a show. In my judgment, the almost total overlap in subject matter of the two businesses (showcasing (in a wide sense) home interest goods to consumers) together with the nature of that subject matter (every day type products) has the consequence that it is not realistic to consider the services within the specification in suit to be so different from those with which the parties are already engaged that the average consumer would be alerted and think that the guarantee of origin provided by the registered mark would be different from that provided by and associated with Ideal Home in the wider field of home interest goods generally.[59]This brings me to Mr Mellor QC’s submission to the effect that Media 10’s use of Ideal Home Show in connection with its online shopping business does not impair the guarantee of origin provided by IPC Media’s Ideal Home trade mark. I accept that submission. The fact of the matter is that by reason of the concurrent use by both parties over many years, the guarantee of origin afforded by the mark and protected by the registration was flawed (or, if flawed is not the appropriate description, was not the same as the guarantee provided by a trade mark in the normal circumstances of a single user of a mark).[60]My conclusion therefore is that although there may be some confusion caused by use of Ideal Home Show as a trade mark for online retail shopping, that confusion is no more than may be expected by reason of the concurrent trading by the parties in their core businesses using Ideal Home, and is not such as to affect the function of IPC Media’s trade mark more adversely than it is already affected by virtue of the long standing uses by these separate businesses.[61]Mr Abrahams also relied upon section 10(3) of the Act and the fact that Ideal Home is a trade mark with a reputation. He submitted that it was established by the evidence that Ideal Home was “known by a significant part of the public concerned by the products or services covered by that trade mark” (cf General Motors v Yplon Case C -375/97, [26]), that it was self-evident that the use complained of would give rise to a “link” between the sign and the trade mark in the mind of the average consumer, and that he had established the first type of injury described by the Court of Justice in L’Oreal v Bellure Case C -487/07; [2009] ECR I-5185, that is to say ‘dilution’, ‘whittling away’ or ‘blurring’. He submitted that the use by Media 10 of Ideal Home Show Shop “cannot fail to reduce the ability of [the Ideal Home] mark to denote the retail services of the proprietor alone”.[62]The difficulty with the argument is that the reputation in Ideal Home arises primarily from use in connection with the magazine, no separate reputation in connection with the services of the registration having been established. Moreover, as soon as the matters spreads out into a reputation in connection with home interest goods and the showcasing thereof, there is a massive overlap between the reputation belonging to IPC Media and that belonging to Media 10. The consequence is that, as I concluded when dealing with the attack on the validity of the registration, Ideal Home as a mark does not “denote the retail services of the proprietor alone”, using the language of Mr Abrahams’ written submission. In these circumstances and given the findings that I have made, the case on section 10(3) infringement cannot succeed.[63]I accept that the consequences of my conclusions open up the possibility of some confusion between the online retail businesses of IPC Media and Media 10. It should be in the interests of both parties for that confusion to be kept to the minimum by appropriate measures such as choice of get up and the like. Furthermore, the conclusions I have reached in this judgment may have little relevance should either party venture into the core business of the other. Although I heard no argument upon the matter, such might give rise to a significant change in the status quo and so might be different in kind from the matters which are the subject of this action.

Cited in 1 later judgment