IPC Media Ltd v Media 10 Ltd [2014] EWCA Civ 1439 (12 November 2014)

IPC Media Ltd v Media 10 Ltd [2014] EWCA Civ 1439 (12 November 2014)

The long period of honest concurrent use of 'Ideal Home' by both parties in closely related fields means the mark does not solely indicate the goods/services of one user; the guarantee of origin is different and not impaired. Media 10's use of 'Ideal Home Show' for online retail services does not adversely affect the essential function of IPC's registered trade mark, and normal and fair use by IPC would not be prevented by passing off. Both infringement and invalidity claims fail.

Citation
[2014] EWCA Civ 1439
Parties
Claimant/appellant: IPC Media Limited; Defendant/respondent: Media 10 Limited
Jurisdiction
England and Wales
Judgment Date
12 November 2014
Procedural Posture
Appeal / Court of Appeal (civil Division)
Outcome
Appeal and cross-appeal dismissed
Legal Topics
Trademark Infringement, Passing Off, Honest Concurrent Use, Likelihood of Confusion
Intellectual Property Trademark Law Trademark Infringement Passing Off Honest Concurrent Use Likelihood of Confusion

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Parties

IPC Media Limited

Claimant/appellant

Media 10 Limited

Defendant/respondent

Procedural Posture

Appeal / Court of Appeal (civil Division)

Legal Issues

  1. 1 Whether Media 10's use of 'Ideal Home Show' for online retail services infringes IPC's registered trade mark under Article 5(1)(b) of Directive 2008/95/EC and section 10(1),(2),(3) of the Trade Marks Act 1994
  2. 2 Whether IPC's trade mark registration is invalid under Article 4(4)(b) of the Directive and section 5(4)(a) of the Act due to passing off

Ratio Decidendi

The long period of honest concurrent use of 'Ideal Home' by both parties in closely related fields means the mark does not solely indicate the goods/services of one user; the guarantee of origin is different and not impaired. Media 10's use of 'Ideal Home Show' for online retail services does not adversely affect the essential function of IPC's registered trade mark, and normal and fair use by IPC would not be prevented by passing off. Both infringement and invalidity claims fail.

Court Disposition

Appeal and cross-appeal dismissed

Orders

  • Claim for infringement of registered trade mark dismissed
  • Counterclaim for invalidity/rectification dismissed