This week, the Court of Appeal has confirmed that two different Ideal Home online shops may legitimately co-exist.
The claimant, IPC Media, is the publisher of the Ideal Home magazine. The defendant, Media 10 Limited, runs the Ideal Home Show. The two businesses, which were never connected, are both independently very well established. The magazine was first published in 1920; the first show took place in 1908.
This dispute, however, arose out of both companies' expansion into the online sphere. Following some forays into online sales and marketing throughout the early 2000s, it was the launch in 2012 by Media 10 of the "Ideal Home Show Shop", on its newly created Home Show Plus website, which prompted the litigation.
At issue was IPC Media's UK trade mark, registered in 2006, for "Ideal Home" for retail services in class 35 including "...enabling customers to conveniently view and purchase these goods from catalogues by mail order or by means of telecommunication including via the internet..."
Media 10 denied infringement and counterclaimed for invalidity on the basis of its prior rights.
At first instance, in the IPEC, Mr John Baldwin QC (sitting as a deputy judge) had drawn parallels with the Budweiser litigation. He held that although there may be some confusion caused by the use of "Ideal Home Show" as a trade mark for online retail shopping, that confusion was no more than may be expected by reason of the concurrent trading by the parties in their core businesses. It was not such as to affect the function of the mark more adversely than it was already affected by the longstanding uses. The mark was therefore not infringed.
On validity, on the relevant facts, the sale of home interest goods by either party was "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 validity therefore also failed.
The Court of Appeal agreed with the judge. Kitchin LJ, giving the leading judgment, characterised the central issue of the appeal as being "whether or not the use by Media 10 of the name Ideal Home Show in relation to internet retail services is liable to have an adverse effect upon the functions of the registered trade mark in light of the very many years during which the words Ideal Home have been used in connection with the parties' respective businesses."
He held that the name "Ideal Home", when used in relation to online retail services, does not denote and has never denoted to average consumers the services of a single entity, but always the services of both parties. Many consumers believe the businesses are one and the same or at least connected.
The provision of online retail services was an entirely natural extension of the businesses of each of them. He adopted the idea from the judgment of Sir Robin Jacob QC in the Court of Appeal Budweiser decision ( RPC 12), that in certain circumstances "the guarantee given by the mark is different". Here, he held that the honest concurrent use by Media 10 of the mark has not, and will not, have an adverse effect upon its essential function of guaranteeing origin.
On validity, Kitchin LJ held that Media 10 had wholly failed to establish that they could have prevented, by way of a passing off action, IPC Media's normal and fair use of the mark "Ideal Home" in relation to online retail services. In 2006, online retail services lay in or around the middle of the spectrum between the parties' respective core businesses and was one in which each party might reasonably wish to expand; such normal and fair use by IPC Media would not, therefore, have amounted to passing off.