An Post v Irish Permanent Plc

• Jurisdiction: Ireland
• Judge: Mr. Justice Kinlen
• Judgment Date: 01 January 1995
• Neutral Citation: 1995 WJSC-HC 61
• Docket Number: [1994 No. 5510P],No. 5510P/1994
• Court: High Court
• Date: 01 January 1995

AN POST v. IRISH PERMANENT PLC

BETWEEN

AN POST NATIONAL TREASURY MANAGEMENT AGENCY AND THE MINISTER FOR FINANCE

PLAINTIFFS

AND

THE IRISH PERMANENT PLC

DEFENDANT

1995 WJSC-HC 61

No. 5510P/1994

HIGH COURT

Synopsis:

INJUNCTION

Interlocutory

Fair question - Convenience - Balance - Investments - Certificates - Passing off defendant's certificate as those of plain tiffs - Savings certificates, being generic term, used by plain tiffs for many years - No delay by plaintiffs - (1994/5510 P - Kinlen J. - 18/11/94) - [1995] 1 IR 140 - [1995] 1 ILRM 336

|An Post v. Irish Permanent Plc.|

PASSING OFF

Investments

Certificates - Descriptions - Duplication - Public - Confusion - Savings certificates - Description associated with State scheme - Savings certificates, being generic term, used by plaintiffs for many years - (1994/5510 P - Kinlen J. - 18/11/94) - [1995] 1 IR 140

|An Post v. Irish Permanent Plc.|

Citations:

COCA COLA CO V F CADE & SONS LTD 1957 IR 196

UNITED BISCUITS LTD V IRISH BISCUITS LTD 1971 IR 16

C & A MODES & C & A IRELAND V C & A (WATERFORD) LTD 1976 IR 198

MITCHELSTOWN CO-OP AGRICULTURAL SOCIETY V GOLDENVALE FOOD PRODUCTS UNREP COSTELLO 12.12.85 1985/9/2534

NOLAN TRANSPORT (OAKLANDS) LTD V HALLIGAN & ORS UNREP KEANE 22.3.94 1994/5/1550

GABICCI PLC V DUNNES STORES UNREP CARROLL 31.7.91 1993/11/3606

PAYTON & CO LTD V SNELLING LAMPARD & CO LTD 1901 AC 308

PAYTON & CO LTD V SNELLING LAMPARD & CO LTD 1900 RPC 48

WADLOW ON THE LAW OF PASSING OFF (1990)

WARNICK V J TOWNSEND & SONS 1979 2 AER 927

MCCAIN INTERNATIONAL LTD V COUNTY CLARE FOODS LTD 1981 RPC 69

IMPERIAL GROUP PLC & ANOR V PHILIP MORRIS LTD & ANOR 1984 RPC 293

FINANCIAL TIMES LTD V EVENING STANDARD CO LTD 1991 FSR 7

GLAZOR PLC V YARDLEY & CO LTD 1992 FSR 501

ADVANCE MAGAZINE PUBLISHING PLC V REDWOOD PUBLISHING LTD 1993 FSR 449

FORTNUM MASON PLC V FORTNUM LTD 1994 FSR 438

VON HAYTER MOTOR UNDERWRITING AGENCIES LTD V RBHS AGENCIES LTD & ANOR 1977 FSR 285

REDDAWAY & ANOR V BANHAM & ANOR 1896 AC 199

BOLLINGER & ORS V COSTA BRAVA WINE CO LTD 1961 RPC 116

TAITTINGER & ORS V ALLBEV LTD & ORS 1994 4 AER 5

FINANCE ACT 1929

TREATY OF ROME ART 92

TREATY OF ROME ART 86

COMPETITION ACT 1991 S5

CAMPUS OIL LTD V MIN FOR INDUSTRY (NO 2) 1983 IR 88

AMERICAN CYANAMID V ETHICOM 1975 AC 396

MCMAHON & BINCHY ON THE IRISH LAW OF TORT 2ED 816

EDUCATIONAL CO OF IRELAND LTD V FITZPATRICK 1961 IR 323

ESSO PETROLEUM CO (IRL) LTD V FOGARTY 1965 IR 531

KERLY ON THE LAW OF TRADEMARKS & TRADENAMES 10ED 287

MUCKROSS PARK LTD V RANDLES & DROMHALL HOTEL CO LTD UNREP BARRON 10.11.92 1993/4/1086

WORCESTER ROYAL PORCELAIN CO LTD V LOCK & ORS 1902 RPC 489

PARKER-KNOLL LTD V KNOLL INTERNATIONAL LTD 1962 RPC 265

SPALDING & ORS V A W GAMAGE LTD 1915 32 RPC 273

BOLLINGER V COSTA BRAVA WINE CO LTD 1959 3 AER 800, 1960 CH 262

JOHN WALKER & SONS LTD V HENRY OST & CO LTD 1972 RPC 106, 1971 WLR 917

COMMISSIONERS OF INLAND REVENUE V MULLER & CO MARGARINE LTD 1901 AC 217

FINANCE ACT 1926 S46(7) UK

FINANCE ACT 1928 S29(4) UK

FINANCE ACT 1931 S43(3) UK

BELEW V CEMENT LTD 1948 IR 61

GIBBINGS V HUNGERFORD 1904 1 IR 211

PAYTON & CO LTD V SNELLING LAMPARD & CO LTD 1900 17 RPC 635

VINE PRODUCTS LTD V MACKENZIE & CO LTD 1969 RPC 1

WALL V FEELEY UNREP COSTELLO 26.10.83 1984/3/974

1 Judgment of Mr. Justice Kinlen delivered the 18th day of November 1994

2 The First-named Plaintiff is a body incorporated under statute within the State and carries on the business previously carried on by the Minister for Post and Telegraphs as sellers and suppliers of, inter alia, financial products, including financial savings products.

3 The Second-named Plaintiff is also a body incorporated under statute within the State and carries on the business (previously carried on by the Minister for Finance) inter alia, of the raising and purchase of monies towards the payment of Exchequer borrowings.

4 The Third-named Plaintiff is the Minister having power, pursuant to statute, to issue securities products towards the financing and management of the national debt inter alia, pursuant to the Finance Act, 1929.The Plaintiffs and their respective predecessors in title have been promoting and selling in the State a financial savings product being a security product under the the name "Savings Certificates". They had been issued by the Third-named Plaintiff through the First and Second-named Plaintiffs (and previous to the year 1984 through the Minister for Post and Telegraphs). The sales of the product has been very substantial and has exceeded the sum of £2 billion in the past three years. The said securities products have been promoted and advertised widely for sale by means of radio and print advertising. Substantial sums of money have been expended in the promotion and advertising of the product. It is sold through the First-named Plaintiff's branch and other offices but also a small proportion are sold through banks and through certain stockbrokers throughout the entire of the State. The Plaintiffs allege that they have acquired a significant, substantial and exclusive reputation in what they describe as the name and trademark "Savings Certificates" and the consequent goodwill of immense value.

5 The Defendant was a building society incorporated within the State and this year became a public limited company. At all material times they had carried on business in the provision of, inter alia, financial securities of savings products of a kind similar to those provided by the Plaintiffs. However, on the 4th July, 1994 it issued and sold "Savings Certificates". Most of the literature indicated that they could be purchased through or emanated from the Irish Permanent.

6 The Defence filed is a traverse and states that the words "Savings Certificates" are not capable of constituting a trademark. On the contrary they state that they are a generic and/or descriptive name in which the Plaintiffs have no rights or no exclusive rights. The Defendant contends that in so far as it has sold or supplied savings products having similar characteristics to the products supplied and sold by the Plaintiffs or any of them, the product of the Defendant is sold and/or supplied under or by reference to the name or title "Irish Permanent Savings Certificates" and/or have sold and/or supplied the said products as being the Defendant's products.

7 It is admitted that the adoption and subsequent use by the Defendant of the words "Savings Certificates" was deliberate but it was contended that the said words are and were at all material times used in conjunction with and/or association with the words Irish Permanent or, alternatively, in a manner or context which clearly identifies the product thereby described as being the Defendant's product. It is denied that the use by the Defendant of the words "Savings Certificates" in relation to its products has led to or is likely to lead to the alleged or any deception or confusion among the purchasing public or that the Defendant has passed off its goods or any of them as/or for the goods of the Plaintiffs or has otherwise deceived or confused the public into believing that the product being promoted and sold by the Defendant, through its branch offices and otherwise, is the Plaintiffs" product. They also plead that if the words "Savings Certificates" confers a uniquie and/or fiscal advantages to the State, it is contrary to E.E.C. law and in particular Article 92 of the E.C. Treaty and further or in the alternative that they enjoy a dominant position in the market for the sale and supply of "Savings Certificates". They say that this is contrary to Article 86 of the E.C. Treaty and Section 5 of the Competition Act, 1991.They give the particulars of an abuse of a dominant position and they bring a counterclaim based on an alleged breach by the Plaintiffs of Article 86 of the E.C. Treaty and Section 5 of the Competition Act, 1991.The Court was provided with a very large number of Affidavits but it was agreed by both parties that the Court need only look at a certain number which were opened to the Court. A list of such Affidavits will be appended to this judgment.

8 There were two surveys which were carried out. The first was carried out by the Market Research Bureau of Ireland ("M.R.B.I."). In fact this consisted of two separate surveys, one concerning, in the main, the reputation attaching to savings certificates and the second with a different sample to gauge the extent of confusion. These two reports of M.R.B.I. are exhibited in the Affidavit of Aine O'Donoghue, sworn the 20th September, 1994. She states:-

"Allowing for the statistical variation which applies to sample surveys I believe the two surveys establish the following:-"

(a) That an overwhelming number of those who have heard of Savings Certificates (9 out of every 10) associate Savings Certificates with An Post;

(b) Of 554 persons who were aware of Savings Certificates 446 (approximately 81%) indicated that if they saw an advertisement promoting Savings Certificates they would assume it was an advertisement promoting An Post's Savings Certificates;

(c) Of 107 persons aware of the Irish Permanent product 3 in every 10 of these were confused between that product and Savings Certificates from An Post.

(d) Confusion stems from amongst other things the use by Irish Permanent of the Plaintiffs" brand name "Savings Certificates".

9 Robert Philpott of M.R.C. (Ireland) Limited has a replying Affidavit in which he criticises the findings of Ms. O'Donoghue. His organisation carried out a survey for the Defendant. In paragraph 5 of his Affidavit, sworn on the 7th October, 1994, he highlights the findings resulting from his firm's survey:-

Finding 1 An Post has the principal share of the market for savings certificates which is illustrated by the fact that of the 112 persons who had the savings certificates...