Montex Holdings Limited v. Controller of Patents, Designs and Trademarks [2000] IEHC 3; [2000] 1 IR 577; [2000] 1 ILRM 481 (14th January, 2000)

JUDGMENT of O’Sullivan J. delivered the 14th day of January 2000. 1. The Plaintiff (hereinafter “the Applicant”) applied to the First Defendant (hereinafter “the Controller”) on the 18th of September 1992 to register the word “DIESEL” as a trademark in part A of the Register of Trademarks for use in connection with jeans, articles of outer and under clothing, headwear, scarves and footwear. 2. The Second Defendant (hereinafter “the Opponent”) filed Notice of Opposition on the 19th of September 1994 which became the subject of a hearing before the Controller on the 23rd of March 1998. 3. On the 22nd of April 1998 the Controller notified the parties that he decided to uphold the Opposition and refuse registration of the mark and by written decision dated the 1st of July 1998 the Controller set out the grounds of his decision and the evidence produced to him. 4. The Applicant appealed by Special Summons dated the 27th of August 1998 which was grounded on an Affidavit of Michael Heery. In addition an Affidavit has been filed in these proceedings by the Controller. 5. At the hearing before the Controller the Opponent criticised a number of the statutory declarations filed on behalf of the Applicant for want of correct form; they alleged that the Applicant failed to show that they were the owners of the mark and further alleged that the Applicant failed to show that registration would not be likely to cause confusion so that the mark should not be registered given that the onus lay on the Applicant to satisfy the Controller on this point. 6. The Applicant, for their part, claimed that the Opponent failed to show a sufficient user by them of the mark in this country to give them standing as Opponents. 7. The Controller decided that the want of form in the statutory declarations was a minor technical error which could be overlooked. He held, further, that the Applicant had established as a matter of probability that they were the owner of the mark; further, that the Opponent had established a sufficient user to entitle them to oppose and he further held that the use of the mark would no doubt cause deception and confusion amongst a substantial number of persons because an identical mark is being used for essentially the same goods in the same class. Accordingly, the Controller upheld the Opposition and refused the registration stating that the mark proposed fails to meet the requirements of Section 19 and also that the refusal was in exercise of the discretion conferred on him by the Act. 8. The Applicant appealed this decision insofar as it found that the mark failed to meet the requirements of Section 19 and also insofar as the refusal was based on the Controller’s discretion. 9. Prior to the hearing, the Solicitors for the Opponent wrote to the Applicant’s Solicitors stating that they intended to raise all issues in the appeal which had been opened before the Controller. 10. The right of the Opponent so to do was challenged by the Applicant before me. 11. In this connection the Opponent relied on Order 94 Rule 48 of the Rules of the Superior Court which so far as relevance specifies that: “Every such appeal to the Court shall be by way of rehearing..” . 12. In response the Applicant referred to Section 38 (2) of the Courts of Justice Act, which in similar terms but submitted that an Appellant had a right to limit the ambit of an appeal and referred to Scarson -v- Maguire (Irish Law Times Reports: Volume page 200) where O’Byrne J., held that where a defeated Defendant appealed only his counterclaim, he was estopped from pleading that he was not guilty of negligence as the decree on the claim against him constituted an estoppel on the record. The learned judge did, however, extend time to serve notice of appeal as regards that decree. 13. All issues were fully opened and argued before me and I made it clear in the course of the hearing that I was prepared to permit the Opponent raise all issues which were canvassed before the Controller. FACTS THE APPLICANT’S USER (1) Michael Heery said he was the managing director of the Applicant which, together with its predecessor in title, had used the mark in respect of goods for which the registration was sought, and in particular on jeans, since 1979 throughout the State. He exhibited a list of retailers who sell the DIESEL jeans of the Applicant, he exhibited samples of the trademark as applied to the Applicant’s goods and gave turnover figures ranging from £22,411.00 in 1989 to £49,973.00 in 1992. 14. He explained that the mark was first owned by Monaghan Textiles Limited of which company he was also a director. The mark was used by that company and another, Banner of Ireland Limited, both of which companies were subsidiaries of Beon Investments Limited which in 1982 was acquired by Mitzi Limited. Banner subsequently changed its name to Mitzi Monaghan Limited. 15. The Applicant acquired the mark and attached goodwill from the Receiver of Monaghan Textiles Limited which had gone into receivership on the 10th of February 1988. He exhibited some invoices in respect of purchases of raw materials for DIESEL jeans predating the 10th of May 1982 (being the date of first use in Ireland claimed by the Opponent) and also some invoices in respect of sales of DIESEL jeans which, again, predate the Opponent’s first claimed use. (2) Martin Ferris was a former partner of the Receiver, Hugh Cooney, who negotiated the sale of the assets of Monaghan Textiles Limited to the Applicant and whilst no documentation of the sale was available, he did recall “certain...transactions pertaining to the sale of goodwill, stocks, trimmings, patterns, trademarks and the database of the company were sold... on foot of the contract for sale or by invoice”. (3) Statutory declarations were made by five ex-employees of Montex Holdings Limited stating that they had been employed by the company from various dates each of which ante-dated the incorporation of that company and declaring that “we” had been selling jeans under the brand name DIESEL to the general public since 1979. (4) Gerry McGirr made a statutory declaration to the effect that he was a clothing retailer and wholesaler in the Irish Market since 1980 and had been purchasing jeans from Montex Holdings Limited and Monaghan Textiles Limited under the brand name DIESEL since 1980 and they had been sold by him on the Irish Market since 1981. (5) A similar declaration was made by Martin McCormack. (6) Finally, in an Affidavit grounding the Special Summons, Michael Heery reaffirms, inter alia , that he was a director of Monaghan Textiles Limited which used the mark in association with jeans since 1979 and he summarises the proceedings before the Controller. THE OPPONENT’S USER (1) In a declaration made on the 22nd of February 1995 Renzo Rosso declares that he is the sole manager of the Opponent which was incorporated in 1978 and which first used the trademark DIESEL in 1978 and has been continuously using it since that date. He exhibits a number of labels and promotional material and refers to the fact that the mark was registered by the Opponent in many countries for a wide range of goods including “articles of clothing, footwear and headgear” he also refers to invoices issued by the Opponent to it’s Irish customers for the years 1982 and 1983 (and following) he refers to extensive world wide sales of clothing bearing the mark by the Opponent and claimed that his company’s said use was well known in Ireland and that the Applicant’s proposed registration thereof would lead to confusion amongst the trade and public. 16. Furthermore, he made the serious allegation that:- “Montex Holdings Limited are not the bona fide proprietors of the trademark DIESEL in Ireland. As stated above, the trademark DIESEL was first used by my company in 1982. Since the work DIESEL is an unusual one for use as a trademark in respect of clothing and the like, I consider it unlikely that the Applicant chose the word DIESEL independently and without being aware of the existence (of) my company and/or it’s reputation in the trademark DIESEL.” 17. The earliest invoice exhibited on behalf of the Opponent is dated the 10th of May 1982. This declaration claims that the “DIESEL” were sold by the Opponent in Italy, Denmark, Sweden, Austria, Germany, Switzerland, Holland, France, the U. K. and the U. S. A. all prior to November 1979 - the Applicant’s first claimed use being in that year (the earliest exhibited invoice being the 8th of February 1980). (2) Richard Farrell made a declaration on the 13th of June 1995 stating that he is the manager of F. X. Kelly Limited of Grafton Street, Dublin 2, that he knows the trademark DIESEL and associates it exclusively with the Opponent. He said his company had since approximately 1987 been selling casual clothing of the Opponent bearing the mark DIESEL purchased, inter alia , from their English agents. (3) A second declaration was made by Renzo Rosso on the 9th of July 1996 in response to the evidence filed on behalf of the Applicant. Much of this declaration is critical of the Applicant’s evidence and need not be summarised here. 18. He refers to a list of retailers exhibited to Michael Heery’s declaration and criticises the latter’s description of sales being “throughout the State” as the vast majority of the retailers listed:- “Are not well known and are, I believe , situated in small provincial towns of relatively low population.” 19. I note in passing that an examination of the relevant exhibit shows the following numbers of retailers in the following locations:- 20. Donegal - 5; Mayo - 5; Offaly - 3; Longford - 2; Meath - 2; Cork County - 2; Cork City - 2; Galway County - 2; Galway City - 2; and 1 each for Cavan, Clare, Tipperary and Dublin City. 21. The Declarant exhibited a list of publications in which the Opponent’s advertisements were published and also repeated his serious charge in relation to the Applicant’s bona fide as follows:- “Mr. Heery in his declaration has not attempted to provide any explanation as to how the trademark DIESEL came to be adopted by the Applicant or it’s alleged predecessor in business. I believe that the adoption of the trademark was not bona fide and consequently any use made of the trademark DIESEL by the Applicant or it’s alleged predecessor in business is not bona fide use.” 22. He alludes to part of the Applicant’s publicity material which refers to “shipyards from Gdansk to Maine” and draws the inference that the Applicant is seeking to trade on the Opponent’s international reputation. (3) Peter Schofield says that he is the commercial manager of an English subsidiary of the Opponent which acts as agents and distributors for them. Prior to May 1995 the Opponent’s agents were James Wood Associates Limited for which company he also acted. He says that the earlier company regularly sold quantities of the Opponent’s DIESEL branded clothing to F. X. Kelly and Company during the period 1988 to 1995 and also that this mark is an internationally renowned trademark for casual clothing and accessories. He also refers to advertising in well known magazines which he believes circulate in this country. (4) Finally, the Opponent relies on the declaration of Tony Forte who is joint managing director of Makullas (previously “the Gap Limited”). These companies operated a chain of 8 clothing stores for many years in Dublin, Limerick, and Cork. He says the trademark DIESEL has been known to him for many years and certainly since the late 1970’s/early 1980’s. He associates it exclusively and has always done so with the Opponent. It is an internationally renowned brand with a reputation for quality. He also says that the Opponent’s clothing bearing the trademark DIESEL has been sold regularly on the Irish Market since at least the early 1980’s and he confirms that in the period 1983 - 1985 that the Gap Limited purchased several consignments of clothing articles from the Opponent bearing the trademark DIESEL. He says he is not aware of any clothing items being sold in Ireland under the trademark DIESEL other than those of the Opponent. THE SUBMISSIONS APPLICANT’S SUBMISSIONS (1) The Applicant submits that the evidence summarised above establishes a sufficient vein of title passing from Monaghan Textiles Limited to the Applicant. Whilst there is no documentary proof, his own declaration and that of Martin Ferris, erstwhile partner of the Receiver of Monaghan Textiles Limited is sufficient to show, on the balance of probabilities, that the trademark and the goodwill attached thereto passed to the Applicant. (2) The statutory declarations of the Applicant’s employees, whilst technically incorrect in that they claim to have employed by the Applicant before it’s incorporation, should be taken, notwithstanding, at their face value, that is, to the clear effect that each of them worked in a factory shop for an employer producing jeans under the brand name DIESEL which were sold to the general public since 1979. It was a matter of irrelevance to the Declarant whether that employer was the Applicant or some predecessor of the Applicant. (3) The first documented sale of the Applicant (by invoice of the 8th of February 1980) predates the first documented sale of the Opponent (by invoice dated the 10th of May 1982) and therefore ownership in this country of that mark and its goodwill vests in the Applicant. (4) The Controller used the wrong test in applying Section 19 . The Section precludes registration only if in addition to demonstrating confusion or deception, it is also shown that the trade mark is “disentitled to protection in a Court of Law”. This latter element had not been established and therefore the Controller should not have refused to register. (5) The Controller was also incorrect in refusing to register in the exercise of his discretion if that was a separate ground of his decision as there was no evidence showing an independent basis for refusal under this heading. THE OPPONENT’S SUBMISSIONS (1) The Application is marked by a lack of bona fides . The use of the word DIESEL in connection with clothing is unusual and the Applicant’s predecessor’s decision to employ it is unlikely to be a mere coincidence. This circumstance at least raises a suspicion. A serious allegation is made, and repeated, in the declarations of the Opponent but is not answered in the Applicant’s response which does attempt to reply to other aspects of the Opponent’s case: the Application should be refused on this ground alone. (2) Not only is there no documentation proving transfer of title to the mark and goodwill to the Applicant, but the declarations in this connection are wanting in precision and the Applicant has failed to establish as a matter of probability that they do indeed own the mark. (3) The declarations of the Applicant’s employees relied on to show sales of clothing as far back as 1979 are also wanting in precision and, given that the onus is on the Applicant throughout to establish that no confusion will occur, this defect should not be overlooked and the evidence should not be taken “at face value” as sought by the Applicant. (4) The Controller did use the correct test: once a likelihood of confusion (and it is patent that where the same mark is used on the same clothing for the same market there must be a likelihood of confusion amongst a substantial number of persons) is established then, without more, registration should be refused; such evidence as does exist in relation to the Opponent’s user of the mark establishes only a very small, and insufficient, amount of user. LAW AND CONCLUSIONS (1) I agree with the Controller that such formal defects as are exhibited in the statutory declarations should be overlooked and for the reasons he gives. (2) I also agree with the Controller that the declarations of the Applicant’s employees, whilst clearly erroneous in claiming to have been employed by the Applicant before its incorporation, should be taken at their face value insofar as I accept them as genuine and bona fide sworn statements to the effect that jeans were sold using the mark to the general public since 1979. (3) I further agree with the Controller that the evidence in relation to the passing of the title to the Applicant of the mark and its goodwill establishes a probability of ownership and I accept that the Applicant has acquired the interest therein which was first owned by Monaghan Textiles Limited. (4) I further accept that the test of ownership in the mark is that ownership vests in the party first using it in this jurisdiction. In this I am following Morritt L. J., in Albassam Trademark (1995: R. P. C.: 511, at page 522) where he said:- “Accordingly it is necessary to start with the common law principles applicable to questions of the ownership of unregistered marks. These are not in doubt and may be shortly stated. First, the owner of a mark which had been used in conjunction with goods was he who first used it. Thus in Nicholas & Sons Limited’s application (1931:48:R. P. C.:227 at p.253) Lawrence L. J. said ‘the cases to which I have referred (and there are others to the like effect) show that it was firmly established at the time when the Act of 1875 was passed that a trader acquired a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and of the extent of his trade and that such right of property would be protected by an injunction restraining any other person from using the mark.’” (5) I further accept, as did the Controller, that the Applicant has established a sufficient user prior to the date of application to entitle it, prima facie , to be registered as owner and secondly, that the Opponent has also established a sufficient user therein, prior to that date, to entitle it to locus standi as opponent. (6) I turn now to deal with the Opponents claim that the application itself is wanting in bona fides. 23. This serious charge was first made by Renzo Rosso in his declaration of the 22nd of February 1995. He pulled no punches. He alleged that the Applicant “ are not the bona fides proprietors of the trademark DIESEL in Ireland”. 24. He gave a reason:- “Since the word DIESEL is an unusual one for use as a trademark in respect of clothing and the like, I consider it unlikely that the Applicants chose the word DIESEL independently and without being aware of the existent (of) my Company and/or its reputation in the trademark DIESEL”. 25. Almost a year later to the day, Michael Heery on behalf of the Applicant made a declaration in response to that of Renzo Rosso. In his declaration Michael Heery criticises some aspects of the declaration of Renzo Rosso including an allegation made at paragraph 9 thereof (that is the paragraph immediately following that in which the charge of lack of bona fides is made) to the effect that the Applicant use of the mark “has been insignificant and therefore insufficient for the Applicant to have acquired a reputation in the market”. Michael Heery in his replying declaration says: “I categorically refute these claims” and “Indeed, would suggest that these claims are in fact true of the Opponent”. He does not, however, deal with the serious allegation of lack of bona fides. 26. It is to be recalled that Michael Heery was a Director of Monaghan Textiles Limited, which was the Company which initially decided to use the mark in connection with the sale of jeans and so forth in this country. He was therefore in a position to explain why this mark was chosen and, if possible, to refute the charge of lack of bona fides in selecting it. 27. As already indicated a further declaration was made by Renzo Rosso on the 9th of July 1996 wherein he again takes up the cudgels on this topic at paragraph 9 in which, were relevant, he swears:- “Mr Heery in his declaration has not attempted to provide any explanation as to how the trademark DIESEL came to be adopted by the Applicant or its alleged predecessor in business. I believe that the adoption of the trademark was not bona fides and consequently any use made of the trademark DIESEL by the Applicant or its alleged predecessor in business is not bona fides use. I’d like to refer to exhibit MH2 of Mr Heery's declaration, which comprises of various labels. I would in particular refer to the label, a copy of which is attached hereto marked exhibit ‘RR3,’. I believe that the word in ‘ALL OVER THE WORLD IN SHIPYARDS FROM GDANSK TO MAINE, THE DEMAND IS OUT FOR THE HARDWORKING PROTECTION OF DIESEL’ is an illustration of how the Applicant is seeking to trade on my company's international reputation in the trademark DIESEL”. 28. Michael Heery did not reply to this second charge in evidence before the Controller. Furthermore, he has sworn an Affidavit supporting the Special Summons for the purposes of the proceedings before this Court. The charge of lack of bona fides is not dealt with in that Affidavit although he does repeat, therein, that he was a Director of Monaghan Textiles Limited. 29. In my opinion, the use of the word DIESEL in connection with jeans and other clothing is not self explanatory. Counsel for the Opponent suggested the Applicant might have come across the Mark at a trade fair or in some such informal way. Whilst it is of course conceivable that the selection by Monaghan Textiles Limited of this word to use as a mark in connection with precisely the same range of clothing and for the same market in exactly the same way as had been done by the Opponent was a mere coincidence, such of itself would have required an explanation on the part of the Applicant. Once, however, a charge of lack of bona fides against the Applicant was made, on this ground, on behalf of the Opponent there could be no doubt, in my view, that such a charge required refutation. Michael Heery was a Director of Monaghan Textiles Limited and was therefore in a position to afford such a reputation if it existed. He did not do so in his declaration made in response to the Opponents case. Even if it could be suggested that this might have been an oversight (and I would not agree that it could be so suggested) there can be no overlooking the fact that Renzo Rosso repeated the charge in a further subsequent declaration and effectively challenged the Applicants to deny the charge by pointing out that “Mr Heery in his declaration has not attempted to provide any explanation as to how the trademark DIESEL came to be adopted by the Applicant or its alleged predecessor in business.” 30. As indicated Michael Heery has sworn a subsequent Affidavit, but once again, he has not attempted to defend or even allude to this serious allegation. 31. In these circumstances I am not satisfied on the evidence before me that the Applicants proposed user of the mark is bona fides and on this ground I would refuse permission for the proposed registration. 32. The foregoing is, of course, sufficient to determine this Appeal, however, in deference to the comprehensive submissions made on the point by Counsel for all three parties, I am prepared to indicate my views on what is the correct test under Section 19 . THE CORRECT TEST The Literal Meaning Section provides as follows:- “ - it shall not be lawful to register as a trademark or as part of a trademark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a Court of law, or would be contrary to law or morality, or any scandalous design”. 33. The plain or literal meaning of these words makes it unlawful to Register a mark which would be disentitled to protection in a Court of law by reason of its being likely to deceive, cause confusion or otherwise. According to this plain meaning once it is established that the use of the mark would be likely to cause confusion or to deceive then it is, ipso facto , disentitled to protection in a Court of Law and registration is prohibited. 34. An alternative interpretation is advanced whereby registration is made unlawful only in cases were in addition to a likelihood of confusion or deception resulting from use, it is also established that the use would be disentitled to protection in a Court of Law on some additional independent basis (involving blame worthiness or the like). 35. This latter interpretation is admittedly not the primary meaning of the text of Section 19 . It relies on the policy of the act (at Sections 15 and ) to permit dual registration of identical or nearly resembling marks in cases of “ honest concurrent use ”. In support of the alternative interpretation of Section 19 , it is therefore submitted that the policy of the act is not simply to prohibit registration for use of the mark as likely to deceive or cause confusion but rather to do so only when the party seeking to register is guilty of something blameworthy which would disentitle it to protection in a Court of Law. 36. The cases are strewn with references to the policy of the act (or of its counterpart in other comparable jurisdictions) to protect the public from being confused or deceived either in relation to the character or origin of goods connected with marks. 37. There are also references, however, to a subsidiary policy which protects vested rights of property of traders for example in GEC v. The GE Company Limited (1972:2:AER:507519) Lord Diplock said:- “But the interest of the public in not being deceived in the origin of goods had and has to be accommodated with the vested right of property of traders in trademarks which they have honestly adopted which by public use have attracted a valuable goodwill”. 38. Prior to the GEC case the leading case in the UK was Berlei (UK) -v- Bali Brassier Inc. (1969:2:aer:812). In Berlei Lord Morris referred with approval to the judgment of Evershed J. in Re. Smith Hayden and Co. Limited Application (1945:63:Rpc:97 at page 101) as follows:- “Section 11 (the equivalent of our Section 19 ) is really a very general provision. Some of the differences between the two sections and the test to be respectively applied were noted by Evershed J in re Smith Hayden and Co Limited application. In regard to S.11 he said:- ‘Having regard to the reputation acquired by the name “Hovis”, is the Court satisfied that the mark applied for, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonable likely to cause deception and confusion amongst a substantial number of persons’. On the facts of that particular case the reference was to the reputation acquired. The reference could also be to the established use made to a name or word. ... So the enquiry becomes whether in 1938 (the Bali case was a case of expungement from the Register) the use of the word or mark “Bali” would have been disentitled to protection in a Court of Justice by reason of the fact that its use would be likely to deceive or cause confusion.” 39. In an earlier case Transfermatic trademark (1966:rpc:568) Buckley J. had seemed to suggest that something, more than mere deceit or confusion was required by Section 11 . Lord Morris firmly rejected this suggestion. “Our attention was called to the interesting judgment of Buckley J. In Transfermatic trademark. As to the decision itself no question now arises. But in the course of his judgment the learned judge said: ‘If an Opponent to registration can show that the circumstances are such that on the ground of likelihood of deceit of confusion, the Applicant could be restrained in a Court of Justice from using the mark sought to be registered, Section 11 must prohibit registration. If all the Opponent could show was that a number of persons might entertain a reasonable doubt whether goods bearing the two marks came from the same source, falling short of grounds for relief against passing off, I, for myself, would require further argument before reaching the conclusion, apart from authority, that the Section would prohibit registration.’ My Lords, I do not think that the words of the learned Judge need be read as saying that potential success in a passing off action is always the test in applying Section 11 or that the evidence must always be such as would warrant success in a passing off action. If his words bore that meaning they would not be in accord with what was said in various cases.” 40. Lord Upjohn in the same case (page 826) also rejected the suggestion in similar terms:- “With all respect to the recent judgment of Buckley J., in Transfermatic Trademark I can not agree with him if he meant to hold that the Applicant seeking to have the mark expunged would have to discharge the burden of establishing a real and substantial likelihood of success in an action to obtain an injunction on the ground of passing off. ... My lords, I think the presence of these words ‘disentitled to protection in a Court of Justice’ whether in their original form or in there phraseology of today are explained by the fact that in order to prevent the registration of a mark or to secure its removal it must be established (here, of course, I am not dealing with questions of onus) not merely that there is likelihood of deception or confusion between two marks judged under the well known test laid down. .... but something more, that is, user at the relevant time by the owner of the existing mark which under the old common law the Court, would protect. Section 11 is, as I have said, for the protection of the public and anyone may object, but if he relies only on similarity he must prove the practical likelihood of confusion to the public and this he can only do, for the purposes of the section, by proving the existing user by another, not necessarily by himself, in respect of which the mark in suit is likely to cause deception or confusion; but is he does not establish likelihood of deception or confusion with some present user of a similar mark the Court would not treat that as sufficient to disentitle the mark in suit to protection. ..... What, then, is the test? ..... It is not necessary in order to find that a mark offends against Section 11 to prove that there is an actual probability of deception leading to a passing off or (I add) am infringement action. It is sufficient if the result of the registration of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt, but the Court has to be satisfied not merely that there is a possibility of confusion; it must be satisfied that there is a real tangible danger of confusion if the mark which it is sought to register is put on the register”. 41. Lord Wilberforce in the same case (831/2) said:- “ (The wording of the section) demonstrates that the hypothesis is accepted that is there is confusion, or the likelihood of it, the mark would ipso facto be disentitled to protection. The words “by reason of” compel this hypothesis, and correspondingly exclude the argument that something more than confusion or its likelihood, must be shown. This negative conclusion is probably enough for the present case but if the enquiring mind desires to know just what the words (be disentitled to protection in a Court of Justice) mean, or why they are there, I do not think there is much doubt as to the answer. They take there origin from Section 6 of the Trademarks Registration Act, 1875, the first Registration Act, which was in the form ‘... The exclusive use of which would not, by reason of their being calculated to deceive or otherwise, be deemed entitled to protection in a Court of Equity....’ Thus evidently referring to the position, as regards protection , which existed before registration of trademarks became possible... There can be no doubt that when the Act of 1875 used with the words ‘entitled to protection in a Court of Equity’ it was referring to the right which, long before the system of registration was introduced, an owner of a trademark had to come to a Court of Equity and ask for his right of property to be protected, a right which, in accordance with general equitable principals, would be denied protection if there was an element of deception in his claim or if it were otherwise not founded on truth.” THE PURPOSIVE MEANING 42. Lord Diplock, who read the leading judgment in the House of Lords in the GEC case, criticised the literal approach and concluded that a purposive construction was the correct one. At p. 517 he said:- “My Lords, the meaning of particular sections in the 1938 Act can, in my view, only be ascertained by applying a purposive construction to the Act as a whole, and construing the actual words used in particular sections (unless it is linguistically impossible), so as to achieve and not so as to thwart the underlying policy to which the Act was intended to give effect”. 43. He approached the interpretation of Section 11 by a consideration of its historical antecedence in trademark law. This included a consideration of Section 10 of the Trademark Registration Act, 1975 which contained, in part, provisions analogous to those of Section 11 of the 1905 Act (equivalent to out Section 19). In dealing with Section 10 Lord Diplock said:- “The second part of the section introduced by the words: ‘It shall not be lawful to register’, imposes an absolute prohibition on the registration of particular matter otherwise falling within the definition contained in Section 10. It is clearly designed to prevent the proprietor obtaining by registration protection for a mark of such a character that a Court of Equity would have exercised its discretion to refuse to grant to its proprietor an injunction to restrain its being infringed by a usurper. Since the mere fact that the use of the mark involved a risk of deceiving the public was not enough to disentitle it to protection against infringement by a usurper provided that the risk of deception was due to concurrent user, there was no conflict between the first and second parts of the section. The reference to the cause of the entitlement to protection, namely, ‘By reason of there being calculated to deceive or otherwise’, does not restrict the ambit of prohibition. (p. 521). Of analogous words in the 1905 Act (in the UK) Diplock L. C. said:- “The crucial words, ‘it shall not be lawful to register’ and ‘the use of which would by reason of its being calculated to deceive or otherwise be disentitled to protection in a Court of Justice’ must, in my view, bear the same meaning as the corresponding words in the 1875 Act”. 44. Subsequently Section 11 of the Trademarks Act, 1938 was enacted in somewhat similar terms. 45. This historical approach to the interpretation of the section (involving emphasis on the equitable discretion of the Court) constitutes the background against which Lord Diplock concluded, inter alia, at page 526:- “If the likelihood of quoting confusion did not exist at the time when the mark was first registered, what was the result of events occurring between that date and the date of application to expunge it, the mark may not be expunged from the register as an entry wrongly remaining on the register, unless the likelihood of causing deception resulted from some blame worthy act of the registered proprietor of the mark or of a predecessor in title of his as registered proprietor”. 46. It will be seen, therefore, that the introduction of the additional requirement of establishing some blame worthy element, arises in the context of an application to expunge the mark from the register. It is of interest, however, to note that in the immediately preceding passage Diplock L. J. dealt with the criteria applicable to original entry as follows:- “If the mark was likely to cause confusion at the time when it was first registered it may be expunged from the register as an ‘entry made in the register without sufficient cause’ unless the proprietor of the mark at that time would have been entitled to have it entered on the register by reason of his honest concurrent use of the mark as a trademark before the original registration of the mark.” 47. The foregoing two citations from the judgment of Diplock L. J. comprise two of four propositions expressing the (then) current state of the law under the Act of 1938. It is interesting to note that the concept of blame worthiness is introduced only in the context of an application to expunge a mark from the register: simple confusion (without associated blameworthiness) appears in principle sufficient to prevent initial registration save in the special case of honest concurrent use. 48. The main thrust of the judgment of Diplock L. J. Therefore insofar as it introduces the concept of blameworthiness, is directed at cases for expungement, rather than initial registration. In fact when considering initial registration no question of blameworthiness arises so far as Diplock L. J. is concerned. 49. This emphasis, namely that the focus of the GEC judgment was on subsequent expungement, is enhanced when Diplock L. J. turns to consider whether his views are in conflict with the judgment in the Berlei case. He said:- “When the Berlei case reached this house the argument, by the common consent of the parties, was confined to the question whether its use had been likely to cause confusion at the time it was first registered. At that time, the previous actual use of the mark by the Bali company had been negligible and it was not suggested that at the date of the original registration the Bali company were entitled to registration of the mark because of there previous honest concurrent use of it. It was thus sufficient for the determination of the appeal in this House that the prohibition in Section 11 related to the original registration of the Bali mark. The question whether it would have applied to the continuance of the mark on the register notwithstanding the original registration had been valid never arose”. (Emphasis added) 50. It is important, I think, to emphasis the last sentence because, at first sight, the Berlei case was also a case dealing with expungement. However, as noted in the foregoing passage the issue dealt with therein was, by agreement, confined to the question relating to confusion at the time it was first registered. Accordingly, the Berlei case, although superficially apparently a case dealing with expungement, is not, on Lord Diplock’s analysis an authority on expungement cases. 51. The policy considerations which drive this interpretation, therefore, apply only to the secondary use of the section; assuming indeed that the section applies to expungement cases at all - itself something that requires a purposive construction of the word ‘register’ as including “permitting the continuance of the entry...on the register” (See per Diplock L. J., GEC case at p.522). 52. The Applicants have relied, in addition, on a number of Australian cases, the chief one being New South Wales Dairy Corporation v. Murray Goulburn Cooperative Company Limited (1990: 24: FCR: 370). 53. As I will indicate shortly, this case produced no clear majority authority favouring the alternative interpretation. The judgment of Mason C. J. (page 384) referred to that of Lord Diplock in the GEC case in the following passage:- “That interpretation of S.11 depended very largely on the legislative history of the statutory provisions as outlined by Lord Diplock in his speech, a legislative history which has its counterpart in Australia. But the interpretation also depended on the presence of the provisions permitting identical or similar marks to remain in the register. The presence of those provisions is inconsistent with the existence of a statutory intention that likelihood of deception or confusion ipso facto leads to disentitlement to protection in a court of justice or to liability to expungement. To my mind, those provisions, ... justify an implication that Section 28(a) (that is the analogous Australian section) looks to supervening likelihood of deception or confusion only if that likelihood is the result of blameworthy conduct on the part of the registered proprietor”. 54. I note, at this point, that New South Wales Dairy Corporation was also an expungement case. Whilst, perhaps, the citation from Mason C. J. referred to above may involve language which suggests the principle would apply to initial registration as well as to expungement, the earlier speech of Lord Diplock had made it clear, in my view, that the GEC case was an authority only in the context of expungement. 55. Seven judges tried the New South Wales Dairy Corporation case. Their several decisions were subsequently analysed by Heerey J. in Nettlefold Advertising PTY Limited v. Nettlefold Science PTY Limited (38: IPR: 493) in a careful and comprehensive judgment. At p. 503 he said:- “On the question whether paragraph (d) of Section 28 imposes a requirement cumulative on paragraph (a), Mason C. J. ... , Brennan J. ... , Dawson and Toohey JJ. ... and Gaudron J. ... gave an affirmative answer. Dean J. ... and McHugh J. ... disagreed. However, Brennan J. drew a distinction between the post registration regime of Section 28, and an application for original registration. In the latter case, His Honour thought that Section 28(a) 'prohibits the original registration of a mark the use of which would be likely to deceive or cause confusion’ - implicitly this would be a sufficient ground in itself. ... In the event the appeal was dismissed, the members of the Court in favour of that result being Dean, Dawson, Toohey and Gaudron JJ. Thus of the majority, only three justices (Dawson, Toohey and Gaudron JJ.) held that paragraph (d) of Section 28 was cumulative on paragraph (a)”. 56. The learned judge went on, at that point, to consider what was to be done “where no clear ratio decidendi appears” ! 57. Insofar as the UK and Australian authorities relied upon show, it is fair to conclude that, whilst there is judicial disagreement as to whether an additional element of “blameworthiness” is required further to the basic requirement of deception, confusion or otherwise, in cases of expungement, there seems to be no clear authority suggesting that an element of blameworthiness is relevant at all in cases involving initial registration, albeit that some language appearing in the judgments may, at first sight, suggest that this might be the case. IRISH AUTHORITIES 58. So far as Irish authority is concerned, I was referred, first, to Coca-Cola Company v. F. Cade and Sons Limited (1957) IR: 196, and in particular to the observation of Maguire C. J. at page 215 as follows:- “If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case”. 59. I was also referred to the judgment of Kenny J. in P . J. Carroll and Co. v. Philip Morris Inc. (1970: IR: 115) which clearly proceeded upon the basis that confusion simpliciter, so to speak, was sufficient to exclude registration. 60. The judgment of Parke J. in La Chemise Lacoste SA v. The Controller of Patents, Designs and Trademarks (1978: ILRM: 8) provides a succinct description of the test under Section 19 as follows:- “The existence of any substantial body of the public (even though a minority) who are likely to be deceived, is sufficient to render the proposed mark unacceptable under Section 19”. 61. Finally, I was referred to the judgment of Murphy J. in Seven-Up v. Bubble Up (1990: ILRM: 204) where the Court held that the mark in question was registerable under Part B. Once again, whilst there are references to the confusion test (the case was primarily concerned with determining whether the use of the mark had demonstrated a capacity to distinguish) there is no suggestion that blameworthiness is a necessary element precedent to exclusion of registration under Section 19. 62. It seems to me, therefore, that insofar as the Irish cases are concerned, they proceed upon the basis that a simple deceit or confusion test is the one contemplated by Section 19. Admittedly, none of these cases have had to deal, head on, with the issue which is squarely raised in the present one. 63. An analogous issue, namely, whether the plain and literal meaning of the words of an Act must be qualified or modified by reference to the policy objectives of that Act, has recently arisen in this country in relation to planning law. In Howard v. Commissioners of Public Works (1994: 1 IR: 101) it was argued that the State was exempted from the application of the Planning Act, not because it was included in Section 4 of the 1963 Act which sets out the list of exempted developments, but because the Act contained at Section 84 a consultative procedure applicable to State authorities so that it was apparent that the policy was to exempt these from the strict requirements of the Act and subject them, instead, to the consultative process. 64. The Supreme Court decided by a three to two majority that the plain words of the statute clearly and unambiguously applied the obligation to obtain planning permission for relevant development to the State and that, notwithstanding other considerations, these words indicated the true intention of the Act. 65. Blayney J. (with whom Finlay C. J. explicitly concurred on this topic) said (page 151):- “As there is no presumption either way in regard to whether the State is or is not bound by the Act of 1963, the interpretation of the Act has to approached in the light of the general principles to be applied in the interpretation of statutes. ‘The cardinal rule for the construction of Acts of Parliament is that they should be construed according to the intention expressed in the Acts themselves. If the words of the statute are themselves precise and unambiguous, then no more can be necessary than to expound those words in their ordinary and natural sense. The words themselves alone do in such a case best declare the intention of the law giver. ... (per Lord Blackburn in Direct United States Cable Company v. Anglo American Telegraph Company (1977: 2 App Cas 394 )’. ... This rule expressed in very similar terms in Maxwell on the Interpretation of Statutes (12th Ed., 1976) at page 28:- ‘The rule of construction is “to intend the legislature to have meant what they have actually expressed”. (per Parke J. in R. v. Banbury (Inhabitants) (1834: 1 AD. and EL. 136 at page 142). The object of all interpretation is to discover the intention of Parliament, “but the intention of Parliament must be deduced from the language used” (per Lord Parker C. J. in Capper v. Baldwin (1965: 2 QB: 53 at p. 61) or “it is well accepted that the beliefs and assumptions of those who frame Acts of Parliament cannot make the law”. (per Lord Morris of Borth-y-Gest in Davies Jenkins and Company Limited v. Davies (1967: 2 WLR: 1139 at p. 1156)’ If the construction of Section 24 of the Act of 1963 is approached in the light of these principles, in my opinion the only reasonable conclusion that can be reached is that the section applies to development by the Commissioners of Public Works. ... It was submitted on behalf of the Commissioners, however, that Section 24 does not apply to them because of the provisions of Section 84. It was argued that it is a necessary implication from the provisions of that section that the Commissioners could not be required to seek planning permission as well as to comply with the provisions of Section 84. ... In my opinion there is no principle in the interpretation of statutes which would permit the Court to construe Section 84 in this way. What the Court is being asked to do is to construe Section 84 as having by implication the effect of excluding the application of Section 24 to the Commissioners”. CONCLUSION 66. The plain meaning of the words of Section 19 are that it is unlawful to register a trade mark which is entitled to protection in a Court of law by reason of its being likely to deceive or cause confusion or otherwise. In my view an analysis of the authorities relied upon by the Applicant to support the contention that Section 19 prohibits initial registration of a trade mark only where, in addition to its use being likely to confuse or deceive, there is an additional element of blameworthiness on the part of the Applicant, do not in fact disclose any clear or settled principle to that effect. Indeed, it seems to me that such observations or dicta as do refer to the introduction of the concept of blameworthiness, apply only in the case of subsequent expungement applications and even in this context there does not appear to be anything like a settled or clear line of authority. 67. The Irish cases appear to proceed on the basis that simple confusion or deception is sufficient to exclude registration under Section 19. 68. Finally, the clear and unambiguous meaning of the words of Section 19 itself, simply exclude registration where it is established that use of the mark would involve confusion, deception or otherwise, thereby disentitling such use to protection in a Court of law. 69. In the present case, I am in agreement with the Controller that it is obvious that the use of the same word on the same type of garments for distribution into the same market must raise the likelihood that a substantial number of persons will be confused, at least in the sense that they will be left in doubt as to whether these are the markets of the Applicant or the opponent. In these circumstances, in my view he was correct in refusing to register the mark. 70. I would therefore disallow this appeal. lgMontex © 2000 Irish High Court BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII