C. A. Modes v C. A. (Waterford) Ltd

• Jurisdiction: Ireland
• Judgment Date: 01 January 1976
• Date: 01 January 1976
• Docket Number: [1973 No.
• Court: Supreme Court

C. & A. Modes v. C. & A. (Waterford) Ltd.

C. & A. Modes and C. & A. Ireland

Plaintiffs

and

C. & A. (Waterford) Limited and Michael Vincent O'Toole and Samuel McClure

Defendants

[1973 No. 1608 P.]

High Court

Supreme Court

Trade name - Passing-off - Plaintiff's business situated outside the State - Defendant's business within the State - Defendant's intention to deceive - Whether court could protect plaintiff's goodwill within the State.

The first plaintiff was a company which had adopted its present name in 1953. It owned 64 retail drapery shops in Great Britain and one such shop in Belfast, Northern Ireland. The well-known name and mark used on all the first plaintiff's shops and in connection with their goods and the advertisements of their business was the symbol "C & A" which also formed part of the company's name. The first plaintiff advertised its goods extensively in the Republic of Ireland but did not otherwise trade or conduct business there. However, a considerable number of citizens of the Republic travelled regularly in excursion trains to Belfast for the purpose of buying the goods of the first plaintiff. The first defendant was incorporated in the Republic in 1972 and it carried on a retail drapery business there. For the purposes of its business the first defendant used a large motor van with the letters"C & A" printed in large letters on its sides: and those letters formed part of the name of the first defendant. Having failed to have the name of the first defendant changed, the first plaintiff claimed in the High Court an injunction restraining the first defendant from carrying on business under its present name or under any other name so closely resembling the name of the first plaintiff as to be calculated to lead to the first defendant's business being confused with the business of the first plaintiff. At the trial of the action it was

Held by Finlay P., in granting the injunction, 1, that the first plaintiff had a goodwill in the Republic in connection with the use of the symbol "C & A" and that the protection of that goodwill was within the jurisdiction of the court.

Alain Bernadin et Cie v. Pavilion Properties Ltd. [1967] R.P.C. 581 not applied.

Poiret v. Jules Poiret Ltd. (1920) 37 R.P.C. 177 considered.

2. That, by associating its goods and business with those of the first plaintiff, it had been the intention of the first defendant to deceive the public.

3. Even if the first plaintiff's claim were to be regarded as a claim to a quia timet injunction, the first plaintiff had discharged the required onus of proof.

On appeal by the defendants it was

Held by the Supreme Court (O'Higgins C.J., Henchy and Kenny JJ.), in disallowing the appeal, that the first plaintiff's action was based on the infringement of a preexisting right of property and was not equivalent to a claim to a quia timet injunction; and that such infringement would justify nominal damages at least.

Plenary Summons.

The plaintiffs' summons was issued on the 14th June. 1973, and on the same day the plaintiffs issued another plenary summons [1973 No. 1609 P.] in which they named C. & A. (Finance) Ltd. as first defendant and Michael Vincent O'Toole and Samuel McClure as second and third defendants respectively, and in which they claimed similar relief. The two actions were tried together on the 7th May, 1975, by Finlay P. and were both ruled by his judgment and, on appeal, by the judgments delivered in the Supreme Court, infra.

The defendants appealed to the Supreme Court from the judgment and order of the High Court: the appeal was heard on the 24th and 25th November, 1975.

Cur. adv. vult.

Finlay P. 9th June, 1975

These are two actions claiming injunctions and damages for passing-off which, by the consent of the parties, were heard and tried together before me. The plaintiffs in each of the actions are C. & A. Modes (an unlimited company registered in England) and C. & A. Ireland ( an unlimited company registered in Ireland) which is a wholly-owned subsidiary of the first plaintiff. In the first action the first defendant is C. & A. (Waterford) Ltd. (a limited liability company registered in Ireland) and the second and third defendants are the subscribers to that company. In the second action the first defendant is C. & A. (Finance) Ltd. (a limited liability company registered in Ireland) and the second and third defendants, who are the same persons as the second and third defendants in the first action, are the subscribers to that company also. At the hearing before me, the plaintiffs gave evidence and produced certain documents and photographs which were either proved or admitted. No evidence was given on behalf of the defendants.

The following facts were proved or admitted before me. A limited company was incorporated under the Companies Act, 1948, in England with the name C. & A. Modes (West End) Ltd. on the 15th October, 1953. On the 19th November. 1953. that company changed its name to C. & A. Modes Ltd. with the sanction of a special resolution. On the 17th November, 1967, that company was re-registered under the Companies Acts 1948-1967 in England as unlimited and is the first plaintiff in each of the two actions. C. & A. Ireland was registered as an unlimited company on the 22nd November, 1971, under the Companies Act, 1963, and is a wholly-owned subsidiary of C. & A. Modes. C. & A. (Finance) Ltd. was incorporated under the Act of 1963 as a company limited by shares on the 12th October, 1972; its share capital is £1,000 divided into 1,000 shares of £1 each. The original subscribers to the company were the defendants Michael Vincent O'Toole and Samuel McClure, each of whom took one share. C. & A. (Waterford) Ltd. was incorporated pursuant to the Act of 1963 as a company limited by shares on the 3rd November, 1972, with a share capital of £100,000 which was divided into 100,000 shares of £1 each; the original subscribers to the company (each of whom took one share each) were Michael Vincent O'Toole and Samuel McClure. The memorandum and articles of association of each of these two defendant companies were admitted in evidence before me and a perusal of them would indicate that the memorandum and articles of association of each company are identical, apart from the christian name of Michael Vincent O'Toole (which is different in each of the memoranda) and apart from the difference in the amounts of share capital.

C. & A. Modes carries on business as retailers of men's, ladies' and children's clothing in large or super stores at 64 locations in Great Britain and in one in Belfast, Northern Ireland. It is a long and well-established business with a very substantial turnover and it is the successor of a firm originally founded by two Dutch men whose respective first names began with the letters C and A respectively. For upwards of the last ten years this company, which owns 65 shops, has referred to and has carried on all its business and all its advertising under the letters or name "C & A"without the addition of the word "Modes" and without the addition of any other word or name. All the garments retailed through these outlets and all the business activities of these outlets receive extensive advertisement under the name C. & A. This company is registered in England under the Registration of Business Names Act as trading as C. & A.

C. & A. Modes does not own any shop or retail outlet in the Republic of Ireland and C. & A. Ireland has not traded since its incorporation. For some years past the products of C. & A. Modes which are available in their various shops have been advertised on Ulster television and on Welsh television and in the following newspapers and magazines which have circulations within the Republic of Ireland:— Daily Mirror, Daily Mail, Daily Express, News of the World, Sunday Express, The People, Sunday Mirror, Sunday Times and The Observer. In addition, advertising is carried in the magazine known as "Woman" which I am satisfied has a circulation in the Republic, and in the T. V. Times which has a similar circulation.

The shop owned by C. & A. Modes in Northern Ireland is in Donegall Place. Belfast. It is an extremely large retail drapery chain-store bearing as its name simply the letters "C & A" and all advertisements and names attached to garments, or appearing in the windows of the shop. use the same letters and symbol. Amongst the evidence produced by the plaintiffs was that from Mr. Maurice P. Whitlock who had been manager of C. & A. in Belfast from 1954 until his retirement in the month of March of this year; and I am satisfied from his evidence that up to 1969 a very substantial and regular custom from the Republic of Ireland was enjoyed by this store. Up to that time an excursion train travelled each Thursday from Dublin to Belfast, and so great was the influx of customers from the Republic as a result of that excursion that the store ordinarily employed extra part-time staff on Thursdays on the same basis as it did on Saturdays which were normally the busiest shopping days. Similar conditions were experienced on bank-holidays and on particular types of public or special holidays. From 1969 up to the beginning of this year there was a decline in that custom due to the troubles in Northern Ireland, but I was satisfied on the evidence of Mr. Whitlock that after the recent cease-fire in Northern Ireland the custom had again recovered to some extent before he left the firm on the 1st March, 1975.

I was further satisfied on the evidence that C. & A. Modes imported from the Republic of Ireland goods bearing a label and imprint showing that they were manufactured in the Republic of Ireland, and sold them in their stores. The amount involved on existing contracts in the year 1975 was in the nature of 850,000 pieces or separate items; this would be a very small proportion of the overall number of items sold by the company. These goods were obtained from one...