The "South-East Farmer v Southern Farmer" case highlights the difficulties in making a passing off or trade mark infringement claim when the mark comprises descriptive words:
The Law
The Jif Lemon case set out neatly the elements of the tort of passing off. There must be:
- goodwill or reputation attached to the goods or services (in this case a glossy farming magazine);
- misrepresentation by the defendant to the public leading, or likely to lead the public to believe that the goods offered by him are the goods of the claimant; and
- damage to the claimant as a result of the public believing that the defendant's goods are the same as the claimant's.
The Facts
Evegate Publishing Ltd ("Evegate") published a free glossy monthly magazine called South-East Farmer. It had a circulation of around 15,000 copies per year. South-East Farmer was not widely available and could not be purchased on news-stands or in shops. The publication had been in circulation since 1982.
Newsquest Media (Southern) Ltd ("Newsquest") owned a number of publications aimed at the farming industry. These included Scottish Farmer and Northern Farmer. In 2011 they launched Southern Farmer. Southern Farmer followed the same business model as their other 'farmer titles'. It was a paid-for high-quality print monthly newspaper with a glossy cover. It was available for a yearly subscription or could be purchased at news-stands or shops.
Evegate brought proceedings against Newsquest alleging passing off of the South East Farmer magazine title and trade name by Southern Farmer.
Asplin J rejected Evegate's claim for passing off on the following grounds:
Goodwill Asplin J found Evegate's publication to have goodwill and a reputation stemming from the numerous sponsorships and activities that they were engaged in (such as attending agricultural shows or sponsoring agricultural competitions) as well as the fact that they published the National Association of Agricultural Contractors Directory in each publication. This goodwill, however, was only limited to a glossy magazine obtained by subscription.
2. Misrepresentation Asplin J found that no misrepresentation had occurred that could have resulted in in the deception of the relevant public. Any confusion that had occurred was at a sufficiently low level. There was no evidence at all that advertisers had been deceived and only minimal evidence that any readers had been. Asplin J considered the fact that Evegate's own MD accepted that the term 'Farmer' was frequently used in publications within this category alongside a geographical indicator to suggest the distribution area. It was also relevant that other publications, including South West Farmer had not had any problems with the publication of South East Farmer despite the fact that it shared more similarities than Evegate's publication. Asplin J considered the Phones4U Ltd case and the judgment of Jacob LJ in that case. She decided that even though goodwill in the Evegate mark existed, the badge which had been adopted by Evegate was descriptive and therefore instances of mere confusion were to be tolerated.
3. Damage As there had been no misrepresentation it was unnecessary to consider damage.
This case underlines the problems faced by a claimant in a passing off claim where the mark in question comprises descriptive words. Asplin J reiterated the decision in Office Cleaning Services where Lord Simonds said that "where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words." She also mentioned the decision in Phones4U Ltd in which Jacob LJ held that "where the "badge" of a plaintiff is descriptive, cases of "mere confusion" caused by the use of a very similar description will not count. A certain amount of deception is to be tolerated for policy reasons – one calls it "mere confusion".
Cases referred to:
Evegate Publishing Ltd v Newsquest Media (Southern) Ltd [2013] EWHC 1975 (Ch)
Phones 4u Ltd v Phone4u.co.uk Internet Ltd [2007] RPC 5
Office Cleaning Service Ltd v Westminster Window and General Cleaners Ltd [1946] 63 RPC 39
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
