Infringement And Descriptive Words

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...