Bus Éireann v Controller of Patents, Designs and Trade Marks and Another
| Jurisdiction | Ireland |
| Judge | Miss Justice Laffoy |
| Judgment Date | 13 June 2007 |
| Neutral Citation | [2007] IEHC 221 |
| Court | High Court |
| Date | 13 June 2007 |
[2007] IEHC 221
THE HIGH COURT
AND
TRADE MARKS ACT 1996 S43
TRADE MARKS RULES 1996 SI 199/1996 r23
TRADE MARKS ACT 1996 S79
TRADE MARKS RULES 1996 SI 199/1996 r18
TRADE MARKS RULES 1996 SI 199/1996 r19
TRADE MARKS RULES 1996 SI 199/1996 r20
TRADE MARKS RULES 1996 SI 199/1996 r21
TRADE MARKS RULES 1996 SI 199/1996 r22
TRADE MARKS RULES 1996 SI 199/1996 r20(1)
TRADE MARKS RULES 1996 SI 199/1996 r22(2)
TRADE MARKS ACT 1996 S8(4)(b)
TRADE MARKS RULES 1996 SI 199/1996 r61(2)
PATENTS ACT 1992 S92
PATENTS ACT 1992 S92(3)
PATENTS (AMDT) ACT 2006 S24
HUNT WESSON INC TRADE MARK APPLICATION 1996 RPC 233
TRADE MARKS ACT 1963 S57
UNILEVER PLC v CONTROLLER OF PATENTS DESIGN AND TRADE MARKS & SUNRIDER CORPORATION 2006 2 ILRM 210 2005 57 11895 2005 IEHC 426
HOGAN & MORGAN ADMINISTRATIVE LAW IN IRELAND 3ED 1998 594
HAUGHEY, IN RE 1971 IR 217
GROMAX PLASTICULTURE LTD v DON LOW NONWOVENS LTD 199 RPC 367
HARRISON'S TRADE MARK APPLICATION 2005 FSR 10
ZOCKOLL GROUP LTD (FORMERLY PHONENAMES LTD) v CONTROLLER OF PATENTS DESIGNS & TRADEMARKS & 1-800-FLOWERS.COM INC UNREP O'SULLIVAN 17.10.2006 2006 IEHC 300
COPYRIGHT ACT 1963 S41(3)
CARRICKDALE HOTEL LTD v CONTROLLER OF PATENTS DESIGNS & TRADE MARKS & PHONOGRAPHIC PERFORMANCE (IRL) LTD 2004 3 IR 410 2004 2 ILRM 401 2004 6 1376
EAST DONEGAL CO-OP v AG 1970 IR 317
INTELLECTUAL PROPERTY
Trade marks
Practice and procedure - Appeal from Controller of Patents - Leave to file additional evidence refused - Factors relevant to application - Allegations of bad faith and mala fides - Minimum protection - Whether opponent had introduced new evidence of fact -Whether applicant given opportunity to respond to assertions - Whether contrary to natural and constitutional justice not to allow evidence in rebuttal -Whether controller had erred in principle - Whether necessity for fair and equitable approach - Trade Marks Act 1963 (No 9), s 79 - Trade Mark Rules 1996 (SI 199/1996), rr 20, 21, 22 & 23 - Relief granted (2005/453SP - Laffoy J -13/6/2007) [2007] IEHC 221
Re Aircoach: Bus Éireann v Controller of Patents
the plaintiff made an application to register the word “Aircoach” as a trade mark in respect of transport services, passenger transport and cargo transport services and other services. The second defendant served a notice of opposition to the registration of the mark pursuant to s 43 of the Trade Marks Act, 1996. The proceedings were brought as an appeal from a decision of the Controller where he refused to grant the applicant leave pursuant to the Trade Marks Rules, 1996 to file additional evidence in the form of a statutory declaration and the exhibits referred to therein.
Held by Miss Justice Laffoy that an order would be given setting aside the decision of the Controller and granting the applicant leave to file the statutory declaration in evidence.
Reporter: E.C
Judgment of Miss Justice Laffoy delivered on 13th June, 2007 .
On 4th October, 1999 the plaintiff (the applicant) made an application to register the word AIRCOACH ("Aircoach") as a trade mark in class 39 in respect of transport services, passenger transport and cargo transport services and other services as set out in the application. On 13th September, 2000 the second defendant (the opponent) served notice of opposition to the registration of the mark pursuant to s. 43 of the Trade Marks Act, 1996 (the Act of 1996). The substantive application and opposition are pending before the first defendant (the Controller). These proceedings are brought by way of appeal from a decision of the Controller made on 27th May, 2005 and the grounds for the decision dated 3rd June, 2005 (the Written Grounds) on an interlocutory application made to him by the applicant, whereby he refused to grant the applicant leave pursuant to Rule 23 of the Trade Marks Rules, 1996 (the 1996 Rules) to file additional evidence in the form of a statutory declaration of Timothy Hayes made on 23rd March, 2005 and the exhibits referred to therein (TH3).
The appeal is brought under s. 79 of the Act of 1996, which provides that the court may on an appeal under the section exercise any power which could have been exercised by the Controller in the proceedings from which the appeal is brought.
The 1996 Rules, insofar as they are relevant for present purposes, provide as follows:
(a) Rules 18 and 19 provide for the filing with the Controller of what might be loosely described as the pleadings on the opposition to an application for registration. The opponent must give notice of opposition, which includes a statement of grounds of opposition, under s. 43 of the Act of 1996 within three months of the publication of the application in the Patents Office Journal. Rule 19 allows another three months for the filing by the applicant of a counter-statement. The entitlement of the opponent and the applicant to adduce evidence, which is distinct from, and arises following the identification of the issues, on "the pleadings", is dealt with in Rules 20 to 23 inclusive.
(b) Rule 20(1) provides that the opponent, who effectively has the status of plaintiff in the opposition proceedings, shall file with the Controller such evidence by way of statutory declaration as he or she desires to adduce in support of his or her opposition within three months of receipt of a copy of the counter-statement.
(c) Rule 21 provides that the applicant shall have three months from receipt of a copy of the Rule 20 evidence to file such evidence by way of statutory declaration as he or she desires to adduce in support of the application.
(d) Rule 22 provides that the opponent may, within two months of a receipt of a copy of the Rule 21 evidence, file evidence by way of a statutory declaration but sub-rule (2) provides as follows:
"Evidence filed by the opponent under this Rule shall be confined to matters strictly in reply".
(e) Rule 23 deals with further evidence and provides as follows:
"No further evidence may be filed unless, in any proceedings before the Controller, the Controller gives leave to either the applicant or the opponent to file evidence upon such terms as to costs or otherwise as the Controller may think fit."
The procedural steps which have been taken before the Controller to the date of the decision in issue in these proceedings are as follows:
(1) As I have stated, the applicant's application was made on 4th October, 1991 and the opponent's notice of opposition was filed on 13th September, 2000. The applicant's counter-statement was filed on 17th January, 2001. In the Written Grounds the Controller identified paragraphs 8 to 10 of the notice of opposition as setting out the principal objections advanced by the opponent. There are certainly the objections which create the contextual background against which this appeal has to be decided.
In paragraph 8 the opponent contended that the applicant had no interest in the trade mark "Aircoach" until it became aware of the Opponent's intention to use that name for a rival service and that the applicant adopted the trade mark unjustly and in bad faith, with the sole objective to cause difficulties for a fledgling competitor without any serious business or legitimate intention to use the trade mark. Specifically, it was alleged that the managing director of the applicant advised the managing director of the opponent that he personally had no knowledge of the applicant running a service under that name. In paragraph 9 it was asserted that the registration of the mark would be contrary to the provisions of s. 8(4)(b) of the Act of 1996, which provides that a trade mark shall not be registered if, or to the extent that, the application is made in bad faith by the applicant. In paragraph 10 it was asserted that the application should be refused on the basis that the applicant does not use, nor does it have any bona fide intention of using, the mark in relation to the services specified in the application.
The applicant has denied those allegations in its counter-statement, asserting that it first used the trade mark in 1989, and that the allegations in para. 8 are wholly unfounded and without justification.
(2) The Rule 20 evidence submitted by the opponent was a statutory declaration of John O'Sullivan, the Managing Director of the opponent, made on 26th April, 2002 (JOS1). In that declaration Mr. O'Sullivan made the mala fides allegation in similar terms to para. 8 of the notice of opposition and contended that the registration should be refused pursuant to s. 8(4)(b) of the Act of 1996.
(3) The Rule 21 evidence filed by the applicant comprised three statutory declarations: a statutory declaration made on 10th October, 2003 by William Lilley, the Managing Director of the applicant; a statutory declaration also made on 10th October, 2003 by Timothy Hayes, the Business Development Manager of the applicant; and a statutory declaration made on 13th October, 2003 by Joseph Fitzgerald, the Area Manager for the applicant in Cork.
(4) The Rule 22 evidence filed by the opponent comprised three statutory declarations: a statutory declaration made on 16th December, 2004 of John O'Sullivan (JOS2); a statutory declaration also...
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