Application of Philip Morris Inc.

• Jurisdiction: Ireland
• Judgment Date: 27 May 1970
• Date: 27 May 1970
• Docket Number: [1967. No. 206 ]
• Court: High Court

Application of Philip Morris Inc.

In the Matter of the Trade Marks Act, 1963: PHILIP MORRIS INCORPORATED

Applicant.

[1967. No. 206 Sp.]

Trade mark - Registration - "Bond Street" - Geographical name - Whether proposed mark adapted to distinguish - Whether mark capable of distinguishing - Trade Marks Act, 1963 (No. 9 of 1963), ss. 17, 18.

The applicant sought registration in Part A of the register of trade marks as proprietor of the mark "Bond Street" for tobacco, raw or manufactured, cigarettes, cigars and smokers' articles, alternatively the applicant sought registration in Part B of the register as proprietor of that mark for the same class of goods. The applicant did not furnish any evidence of user of the mark in relation to such goods. The Controller of Patents, Designs and Trade Marks refused the applications and the applicant appealed to the High Court.

Held by Kenny J., in allowing the appeal in part, 1, that, although the words "Bond Street" did not constitute a geographical name, they were not adapted to distinguish the applicant's goods from the goods of others and so were not capable of being registered in Part A of the register.

2. That the words were not incapable of distinguishing the applicant's goods from the goods of others, that the appeal should be allowed in this respect, and that the application should be remitted to the Controller to enable him to proceed with the application for registration in Part B of the register.

Application of Mothercare Ltd. [1968] I.R. 359 considered.

Special Summons.

The applicant appealed to the High Court pursuant to s. 57 of the Trade Marks Act, 1963, from a refusal by the Controller of Patents, Designs and Trade Marks of an application for registration of "Bond Street" as a trade mark in Part A of the register for "tobacco, raw or manufactured; cigarettes, cigars and smokers' articles"—Class 34. The applicant also appealed from a refusal of his alternative application for registration of the proposed mark in Part B of the register. The applicant did not adduce any evidence of user.

Cur. adv. vult.

Kenny J. :—

On the 7th September, 1965, the applicants, Philip Morris Incorporated of the State of Virginia, applied to the Controller for registration of the words "Bond Street" as a trade mark in Part A of the register for "tobacco, raw or manufactured; cigarettes, cigars and smokers' articles." They gave no evidence of user of the words as a trade mark in the State. The Controller objected to the registration of the words because they were geographical names and surnames and because they were not distinctive. He subsequently heard counsel for the applicants and then refused to register them in Part A or in Part B. He has stated the grounds for his decision and the applicants have appealed to this Court.

The history of the registration of these words in this country and in the United Kingdom has been relied on. On the 30th October, 1879, Leopold Morris of No. 22 New Bond Street applied successfully for registration of the words "The Bond Street Cigarette" as a trade mark (No. 21,383), and claimed that he had been using these words for two years before the 13th August, 1875. On the 9th April, 1965, Philip Morris and Company Limited were registered in England in Part A as the owners of a trade mark...