A recent decision of the English Court of Appeal has dealt with the
concept of concurrent good faith use of a trademark.
IPC Media Limited ("IPC")
IPC is the publisher of IDEAL HOME magazine which is directed to
the home interest market. The magazine is very well known and has
been published since 1920. Substantial goodwill is associated with
Since 2005, IPC has operated a website which contains various
online features and provides advice relating to home decoration and
improvement and lifestyle. In 2009, IPC launched an online shopping
guide called IDEAL HOME shop which allows customers to view and
purchase a variety of home interest goods over the Internet. In
2006, IPC applied for and subsequently obtained a trademark
registration for the words IDEAL HOME in association with retail
services relating to the provision of a variety of house wares and
related goods by mail order or via the Internet.
Media Ten Limited ("Media Ten")
In 1908, the Daily Mail newspaper commenced to operate the DAILY
MAIL IDEAL HOME Exhibition (the "Exhibition"). The
Exhibition has been very successful and its name was changed to the
IDEAL HOME SHOW in the 1990s. Media Ten purchased the Exhibition in
2009. In 2000, the Ideal Home Show opened a website under the name
Ideal Home and in 2008 this was updated to include an online shop.
In May 2012, Media Ten launched a revised website with a dedicated
website shop under the IDEAL HOME Show name.
As a result of the activity in 2012, IPC brought an action for
infringement, Media Ten denied infringement and counterclaimed for
a declaration of invalidity of the trademark registration.
The action proceeded to trial. The trial judge dismissed the
action and the counterclaim. In substance it was concluded that a
significant number of consumers would recognize the name IDEAL HOME
when used in relation to home interest products as the trademark of
the magazine or of the Exhibition and further if they thought about
it could believe that the magazine and show were part of the same
business or otherwise connected. As a result, Media Ten was
entitled to rely upon the doctrine of honest concurrent use as
established in the Budweiser case.
IPC appealed from the decision to the Court of Appeal. The
appeal was dismissed and the court relied on its previous decision
on the Budweiser case. Although, it was observed that the Budweiser
case was slightly different since in that case, while there was
honest concurrent use of the Budweiser mark, the respective
products of the two brewers – Budvar established in the Czech
Republic and Anheuser-Busch – were clearly identifiable as
being produced by different companies.
Notwithstanding this difference, the court found that this was
one of those rare cases where the use of the mark complained of was
honest and that it did not and will not have an adverse effect upon
the registered trademark because the guarantee of origin of the
mark remains the same as it always has been. The guarantee in this
case was different from the typical case since the same mark was
used by separate entities.
The Canadian Position
Section 21 of the Canadian Trademarks Act is directed to
protecting the rights of a person who has, in good faith, used a
confusing trade mark or trade name prior to the date of filing of
the application for registration of a registered trade mark. In
proceedings relating to a registered trademark, which has become
incontestable by virtue of the expiration of the five year period
set out in the Act, if the Federal Court considers that it is not
contrary to the public interest that the continued use of the
confusing trademark or tradename should be permitted in a defined
territorial area concurrently with the use of the registered
trademark, the court may permit the continued use of the
unregistered trademark within that area with an adequate specified
distinction from the registered trademark.
There are no decisions interpreting this section but it would
seem to be potentially applicable to cases similar to the IDEAL
HOME case or the Budweiser case.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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