The winning entry goes like this:
THE HIGH COURT
BETWEEN
Hola, S.L, t/a HELLO! Magazine
Applicant
- and -
DF Media Limited (DFML) t/a
GOODBYE! Magazine
Respondent
MR.
JUSTICE JOHNSON:
1. Hola,
S.L, is the proprietor of Trade Mark registration No. 3950638 HELLO! which is
registered for “magazines with celebrity content.” DFML has been using a
GOODBYE! sign on its magazine which also features celebrity content. Hola
claims that DFML has infringed its Trade Mark.
2. Hola
owns a well known magazine titled HELLO! Since 1988 HELLO! has built up a
considerable reputation with a readership of two million in the UK. The
magazine provides “respectful coverage” (if there is such a thing) of
celebrities and royals.
3. At the other end of the spectrum is DFML
and its publication GOODBYE! It features Z list celebrities snorting Class A
drugs, tumbling out of nightclubs and engaging in extra-marital affairs
(behaviours that HELLO! would usually prefer to keep swept under the carpet).
The magazine is only two months old and sales have been slow.
4. Hola
alleges that DFML has infringed its Trade Mark. This infringement claim is
based on the considerable reputation Hola enjoys in the HELLO! mark and the
conceptual similarity between the marks. Both publications offer mindless
glimpses into the lives of celebrities. Hola maintains that consumers will
associate the GOODBYE! mark with Hola’s HELLO! mark; thereby taking unfair
advantage of the repute of the HELLO! mark.
5. The
Marks:
 |
| Earlier Mark |
 |
| Later Mark |
6. Visually,
the signs are similar (duh!). The words “HELLO” and “GOODBYE” are composed of a
bright white bold font on a fire engine red background (who needs Pantone
colour references anyway?). A distinctive exclamation mark has been placed at
the end of each word.
7. Conceptually,
“HELLO” is a greeting used in the English language. “GOODBYE” is a means of
saying farewell and is an antonym of “HELLO.” In Adidas v Fitnessworld it was
established that Article 5(2) of Directive 89/104/EEC protected
against the use of a similar mark without a finding of confusion on the part of
the consumer - it is sufficient that the “relevant section of the public establishes
a link between the sign and the mark.”
8. The
GOODBYE! mark dilutes the distinctive character of the HELLO! mark. Picture the
following scenario. An avid reader of HELLO! Magazine is browsing the magazine
rack of her local supermarket. She picks up GOODBYE! and immediately recalls
the HELLO! mark. Because of the
similarities between the two marks, and the fact that both magazines focus on
celebrity content, she assumes the two publications are related. She finds
GOODBYE! somewhat tacky, the facts to have been distorted and the quality of
journalism to be low.
9. She
shudders when she sees HELLO! beside GOODBYE! Having just skimmed through
GOODBYE!, she believes it is associated with HELLO! Suddenly, the power of
attraction of the HELLO! mark has been severely reduced and its repute has been
tarnished by the GOODBYE! mark. The GOODBYE! mark has caused detriment to the
distinctive character of the HELLO! mark. She decides not to buy HELLO! and
leaves the supermarket with a copy of OK! Magazine; the lesser evil of the
three (or so she thinks: all three magazines are painful to read).
10. Clearly
the GOODBYE! mark has taken unfair advantage of the distinctive character and
the repute of the HELLO! mark. DFML could easily have chosen to use a different
mark. Instead, DFML decided to “ride on the celebrity coattails” of the HELLO!
mark. This is “free-riding” at its finest and is what Article 5(2) of the
Directive is supposed to protect against (L’Oréal SA v Bellure NV).
11. Why
anybody would read either of the above magazines is beyond my
comprehension. Leaving aside my personal
opinion on the content of both magazines, this Court finds in favour of Hola,
S.L. and upholds the claim of infringement.
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