Evegate Publishing Ltd v Newsquest Media (Southern) Ltd
| Jurisdiction | England & Wales |
| Judge | Mrs Justice Asplin |
| Judgment Date | 10 July 2013 |
| Neutral Citation | [2013] EWHC 1975 (Ch) |
| Docket Number | Case No: HC11C03696 |
| Court | Chancery Division |
| Date | 10 July 2013 |
[2013] EWHC 1975 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
Rolls Building
7 Rolls Building
Fetter Lane
London
EC4A 1NL
Mrs Justice Asplin
Case No: HC11C03696
Denise McFarland and Katherine Moggridge (instructed by DMH Stallard LLP) for the Claimant
John Baldwin QC and Isabel Jamal (instructed by Newsquest Media (Southern) Limited) for the Defendant
Hearing dates: 2–3, 7–9 and 13 May 2013
Introduction
This dispute arises out of the launch by the Defendant Newquest Media (Southern) Ltd (Newsquest) of a farming newspaper called 'Southern Farmer' in June 2011. The newspaper was renamed 'The Southern Farmer' in May 2012.
The Claimant, Evegate Publishing Ltd (Evegate) publishes a farming magazine in the South East of England which is called "South East Farmer". Evegate alleges that Newsquest is liable for passing off of the magazine title and trading name and trade mark infringement in relation to its UK registered trade mark 2274147 (UKTM) which is registered in class 16 in respect of "periodicals, magazines and newspapers."
Newsquest counterclaims for revocation of the UKTM and seeks a declaration that the registration of the UKTM was invalid and that it be removed from the Register. In the alternative, it seeks a declaration that the registration is invalid for periodicals, magazines and newspapers that are not related only to farming and agricultural matters of concern in the South East of England and an order that it be removed from the Register of Trade Marks in respect of such goods. A pleaded allegation of bad faith in the grounds of invalidity is no longer pursued.
Before turning to the relevant background I should comment on the evidence in this case. There were thirty seven witnesses the vast majority of whom were cross examined. In general, I found the witnesses who were cross examined to be careful, honest and straightforward. I comment on particular aspects of their evidence where necessary below. Unless I make a specific comment, their evidence is accepted.
However, I found Mr McGrorty to be an evasive and unreliable witness at times. For example, despite the transcripts of some of the calls he made being available, he was unable to accept that he had telephoned a large number of advertisers and encouraged them to provide evidence of confusion between Southern Farmer and South East Farmer by informing them that there was confusion and in some cases, mentioning what they might say. Not only does this go to Mr McGrorty's credibility but also affects the weight to be given to the evidence in question, to which I shall refer below.
Relevant background
Evegate is a private limited company which was incorporated on 27 June 1994 by Mr Clive Rabson in order to continue to publish a magazine entitled "South East Farmer" which has been in circulation since 1982. Mr Rabson is the managing director and owns 100% of the issued share capital. It also has an online presence via Evegate's website, at www.souteastfarmer.net and has been available as an online magazine since 2008. It regularly has inserts or supplements such as South East Farm Machinery and South East Business.
South East Farmer is a free subscription based glossy monthly magazine with glossy print quality and an A4 layout. It has a circulation of around 15,000 copies per annum at present of which an average of 13,529 are posted out.
It was Mr Jamie McGrorty's unchallenged evidence that around 4% of Evegate's revenue from South East Farmer is from subscriptions and 96% from advertising. Mr McGrorty is Evegate's Sales Director. A large quantity of the magazines therefore, are distributed free of charge, whether through the post or at country shows and agricultural stores.
The South East Farmer is circulated primarily in Kent and Sussex, Hampshire, Surrey, and to a lesser extent Oxfordshire, Berkshire, Buckinghamshire, Essex, Dorset and Wiltshire to farmers and growers. It has subscribers and readers in other areas of the UK as well as France, Germany, Switzerland, New Zealand, Ireland and Holland. However, it was accepted by Mr Clive Rabson in cross examination, that compared with distribution in its core areas of Kent, Surrey and Sussex, distribution to other areas of the UK and Ireland, Holland, New Zealand or other countries was minimal. For non-farmers or growers it is available for an annual subscription fee of £40. The publication is not available for purchase in news-stands, or in shops.
South East Farmer has had the same name throughout its circulation, however its masthead has changed numerous times over the years. The various mastheads have been:
– 1984:
— April 1988:
May 1988 — July/August 1994:
The current masthead has been used since around August 1994 and is shown below:
The UKTM was applied for on 2 July 2001, and is registered for periodicals, magazines and newspapers in Nice class 16. The Trade Mark application was initially rejected and was only granted after Evegate demonstrated some prior use of the UKTM, something to which I shall return. An image of the UKTM is shown below:
South East Farmer supports and sponsors various competitions and shows such as the East Kent Ploughing Match where over the years it has sponsored the Best Trade Stand and the Heathfield and District Agricultural Show (Sussex). Since 2006, it has produced the show guide for the Heathfield Agricultural Society printing at least 7,000 each year. It is stated inside each guide, "Show Programme Produced by South East Farmer". Evegate is also one of the sponsors of the Agri-Expo Show which is held in Kent, was the bonanza Prize Sponsor at the National Fruit Show in 2009 and has advertised in the National Fruit Show Annual Handbook in 2003, 2004, 2008, 2009 and 2011. Typically South East Farmer has a stand at ten agricultural shows each year. On such occasions a Land Rover with the UKTM on the side is present, promotional balloons are distributed and a variety of merchandise including mugs, umbrellas and mouse mats bearing the South East Farmer logo are sold and the proceeds donated to the Royal Agricultural Benevolent Society.
It is undisputed that although the content of the magazine varies, typically, the content is focussed on local or local interests news and stories in respect of the area of primary interest to those based in the South East. However, it does contain regular national interest stories, for example, relating to DEFRA, governmental or EU news, and the supplement, South East Farmer Machinery, included in every copy carries adverts from a wide range of advertisers, which are local, national and international. It also contains reports on national shows such as the National Fruit Show.
South East Farmer has also, since November 2001 printed and distributed the NAAC Directory of Contractors. 70,000 copies of the directory were distributed in 2010, 2011 and 2012. South East Farmer has an advert in each book and since 2006, has displayed its logo on page 3 of each edition.
In addition to the Southern Farmer newspaper, Newsquest owns a number of other "Farmer titles", published in print and online, including The Scottish Farmer, The Northern Farmer, Pembrokeshire Farmer and South West Farmer. The Scottish Farmer which has been continually published since 1893 is a paid-for newspaper obtained either by subscription or by purchase from newsagents and the like and has a paid-for circulation of around 17,500 per week.
It is not disputed that since June 2002, The Scottish Farmer has used the following masthead, designed by Mr Robert Alick Bruce:
It was the evidence of Mr Simon Dixon-Phillip the managing director/publisher for Newsquest's South West regional operations to which I shall refer, that in 2010 the Newsquest Group decided to roll out The Scottish Farmer model and launch further paid-for 'Farmer' titles across different geographical regions in the UK to create a series of titles. The Northern Farmer (which adopted the same format as The Scottish Farmer) was launched in 2010. The Northern Farmer masthead is shown below:
Pembrokeshire Farmer was then launched in 2008. The Southern Farmer was launched in June 2011 although it only achieved precise conformity with the brand image in May 2012.
South West Farmer is a monthly free subscription newspaper that has been published continuously since May 1981. It is another Newsquest title. It circulates in Wiltshire, Dorset, Somerset, Devon, Cornwall and Isles of Scilly. Until 1999 it also circulated in Hampshire, the Isle of Wight and in certain parts of Gloucester. It has a circulation of approximately 18,000 and it is also available online through www.southwestfarmer.co.uk. South West Farmer is made of traditional newspaper material and is tabloid size. It is not alleged that the circulation of the South West Farmer is either a case of passing off or an infringement of the UKTM.
The South West Farmer masthead has changed a few times over the years. The various mastheads are shown below:
May 1981 — May 1998:
June 1998 — January 2008:
February 2008 — present:
It was Mr David Husband's unchallenged evidence that he had created and designed the South West Farmer masthead and used green because he thought it obvious for farming. He added the lower bar in order to include the issue number and the upper bar to balance it. Ms Margaret Julia Snow took over from Mr Husband as editor of South West Farmer in 1998/9. She was responsible for updating the newspaper and its masthead. She said in cross examination that it was completed by an in-house designer and that she put the style to her general manager. I accept her evidence in this regard.
Evegate accepts that the South West...
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