Evegate Publishing v Newsquest Media, High Court
Evegate or its predecessor had been publishing and supplying a farming magazine called South East Farmer to 15,000 people in the South East of England for about 20 years. Newsquest, which owned other farming titles, came along in 2011 and launched a new one called Southern Farmer. The publications had some differences over style and charges but the names and format of the masthead were very similar. Evegate had a lot of goodwill and a registered trade mark.
The High Court ruled, however, that there was no registered trade mark infringement or passing off by Newsquest. Crucially, in the case of misrepresentation (one of the elements needed to show passing off), it decided that advertisers were not confused or deceived at all. There was also only a low level of confusion amongst consumers. Similarly, for the registered trade mark infringement claim, it decided that the average consumer of those publications who was reasonably well informed and reasonably observant and circumspect would not be likely to be confused by the similarity of sign and name.
The Court referred to the 2004 case of Reed v Reed, and said that where a mark is largely descriptive (as was the case here), small differences may be enough to avoid confusion. In another case – Office Cleaning Service v Westminster from 1946 – the Court said that where words in common use were in a trading name, it was inevitable there would be some risk of confusion. In those cases, it could be expected that the public would carry out a greater degree of discrimination between the marks. The Court in this case also noted that there had been no problems with another publication called South West Farmer even though that was more similar to “South East Farmer” than was “Southern Farmer”.
The conclusion: where the case involves marks containing descriptive words, some risk of confusion must be allowed to happen to avoid the first user unfairly monopolising the words.