IPC Media v Media 10: Ideal Home magazine and Ideal Home Show can both use the name online

What happened

IPC Media owned a registered trademark for "Ideal Home" covering online retail services, built on its long-running Ideal Home magazine. Media 10, which runs the separate Ideal Home Show exhibition, launched an online shop called the Ideal Home Show Shop in 2012. IPC said this infringed its trademark. Media 10 fought back, arguing that IPC's registration was invalid in the first place, because if IPC ever used the "Ideal Home" name fairly for online retail, that use would itself amount to passing off against Media 10's own long-standing reputation in the Ideal Home Show name.

What did the court decide in IPC Media v Media 10?

The Court of Appeal agreed with the original trial judge. Both "Ideal Home" businesses had operated side by side since 1920 without complaint, so some confusion between them was nothing new. Media 10's move into online retail under the Ideal Home Show name did not harm the core function of IPC's trademark, which is to show customers where a product comes from, because that function had already long been shared between the two businesses. Applying the established rule on honest concurrent use (also known as the Budweiser doctrine, after a CJEU case involving two unrelated Budweiser beer brands), the court found no infringement. It also rejected Media 10's argument that IPC's trademark was invalid, since fair use of the mark by IPC would not, on the evidence, amount to passing off.

What we learned from this

• What I'd take from this is that a name, logo or tagline doesn't automatically win an infringement claim just because it's registered. If another business has genuinely and honestly used a similar name in the same market for a long time, that history can matter more than the registration certificate.
• If you've shared a market with a similarly named business for years without trouble, think carefully before suing over a natural expansion of that business, such as moving online, because courts may treat it as more of the same coexistence rather than new infringement.
• The court was careful to limit its decision to the specific overlap in online retail. It did not decide what would happen if either business tried to use the name to move into the other's core trade, magazines versus the live show, so that question remains open.
• Registering a trademark doesn't erase someone else's existing reputation in a similar name. If your registration could only be used fairly by also damaging someone else's established goodwill, that registration itself may be vulnerable to a challenge.

Things to be aware of

The businesses involved

What happened next

• Media 10, owner of the Ideal Home Show, was reported to have won the legal battle brought against it by IPC Media over the Ideal Home trademark.Source: Exhibitionnews, December 2013
• Media 10 declared victory in the dispute brought against it by IPC Media, publisher of Ideal Home magazine.Source: Campaignlive

What others said about it

• Will Chen of lawprof.co notes the key point of the case is that the defence of honest concurrent use applied to defeat the infringement claim.Source: Lawprof
• Gowling WLG points out the ruling means similar online shops can co-exist despite shared branding, where the underlying businesses have never clashed before.Source: Gowlingwlg
• Westlaw Practical Law summarises the Court of Appeal's finding that honest concurrent use made the IDEAL HOME trademark both valid and not infringed.Source: Content