John Baldwin QC and Isabel Jamal recently appeared in the High Court for the successful defendant in Evegate Publishing Limited v Newsquest Media (Southern) Limited [2013] EWHC 1975 (Ch). The case concerned the publishing of a farming newspaper by the defendant, initially called ‘Southern Farmer’ and later called ‘The Southern Farmer’. The claimant alleged that the title of the defendant’s newspaper amounted to passing off of their magazine title and trade name ‘South East Farmer’ and infringement of their UK figurative trade mark comprising the words ‘South East Farmer’. The defendants sought revocation of the trade mark, and/or a declaration that it was invalid for periodicals, magazines and newspapers that were not related solely to farming and agricultural matters in the South East of England.
With regard to the passing off claim, although the judge held that the claimant’s magazine title and trade name had some limited goodwill, she concluded that the evidence of confusion did not show sufficient misrepresentation to constitute passing off. The inherent descriptiveness in the names resulted in a greater degree of discrimination from the public such that no damage had occurred and there was no risk of it occurring. Accordingly she dismissed the passing off claim.
Similarly with regard to the trade mark infringement claim, the judge held that in the circumstances there was no risk that the average consumer would be confused, or that they would make a link between the marks, and further the judge rejected the 10(3) trade mark infringement claim. She also held that, in any event, the defendant’s use of the mark fell within the s.11(2)(b) defence. She thus also dismissed the trade mark claims.
Finally the judge rejected the claims for invalidity of the mark, holding that the trade mark had acquired distinctiveness through use.