CECIL J. W. RICHARDSON v WILLIAM WEINER, trading as the Irish Leathermac Company

• Jurisdiction: Ireland
• Judgment Date: 18 February 1936
• Date: 18 February 1936
• Court: High Court (Irish Free State)

Richardson v. Weiner.

CECIL J. W. RICHARDSON

Plaintiff

and

WILLIAM WEINER, trading as the Irish Leathermac Company

Defendant.

Trade mark - Registration in Part B of Register - Requisites for - Two years' user - Purpose of user - Word "Leathermac" - Whether "capable of distinguishing the goods of the applicant" - "Distinctive" - Meaning of - "Adapted to distinguish" - "Capable of distinguishing" - Industrial and Commercial Property (Protection) Act, 1927 (No. 16 of 1927), sect. 82,sub-sects. 1, 3; sects. 84, 85, 86, sub-sects. 1, 2; sects. 113, 114.

Witness Action.

The facts, as set out in the statement of claim, were as follows:—

"1. The plaintiff is a wholesale and retail dealer in waterproof goods, who carries on business at 5 Talbot Street, and 32 South George's Street, in the City of Dublin, and the defendant carries on business at 9 Crow Street, in the City of Dublin, as an outfitter.

2. On the 27th day of January, 1934, the defendant registered the word 'Leathermac' as a trade mark in Part B of the register under the provisions of the Industrial and Commercial Property (Protection) Acts, 1927 to 1929, the registered number whereof is 20852, and the said word is registered in respect of Class 8, and in respect of real leather outer garments, real suede outer garments and imitation suede outer garments, to wit, overcoats, jackets, golf jackets, vests and trousers made of such material.

3. The plaintiff was unaware of the application for registration and of the said registration.

4. On the 8th day of December, 1934, an action was commenced by the defendant herein against the plaintiff herein claiming an injunction to restrain the plaintiff from infringing the defendant's said registered trade mark, as, the plaintiff believes, by the advertisement of Richardson's [the plaintiff's] 'Leathermac goods,' and from passing off the plaintiff's goods as the defendant's, and for damages.

5. The plaintiff is aggrieved by the registration of the said word 'Leathermac' as a trade mark on the ground that the said mark was not properly registrable under the said Acts.

6. The words 'Leather macks,' 'Leathermacks' or 'Leathermac' are commonly used in the trade to describe mackintosh waterproof goods having a resemblance to leather.

7. The word 'Leathermac' is not adapted to distinguish, or capable of distinguishing, the goods of the defendant from those of other persons.

8. The word 'Leathermac' used in connection with real leather goods or suede goods is calculated to deceive and the registration thereof is prohibited.

9. The word 'Leathermac' had not, prior to the registration thereof as a trade mark, been used by the defendant in the manner required for registration in Part B of the register established by the said Acts.

The plaintiff claims:—

An order directing that the register of trade marks kept under the above-mentioned Acts may be rectified by the removal of the mark registered therein for Class 8 and number 20852, or that such other order for the rectification of the said register by way of condition, or limitation, or otherwise, may be made, as to the Court shall seem fit."

The defence was as follows:—

"1. The defendant denies that the plaintiff is aggrieved by the registration by the defendant of the defendant's trade mark 'Leathermac' and denies that the said word and mark was not properly registrable under the Industrial and Commercial Property (Protection) Acts, 1927 to 1929, but says that the said word was, on the defendant's application, and after due and proper enquiries by the Controller of Industrial and Commercial Property appointed under the said Acts, duly and properly entered in Part B of the register of trade marks kept pursuant to the said Acts in Class 8 and in respect of the goods therein specified.

2. The defendant denies that the words 'Leather macks,' 'Leathermacks' or 'Leathermac' are commonly used in the alleged or any trade to describe mackintosh waterproof goods having a resemblance to leather.

3. The word 'Leathermac' is adapted to distinguish and is capable of distinguishing the goods of the defendant from those of other persons.

4. The defendant denies that the word 'Leathermac' as a trade mark and as used by the defendant is calculated to deceive, as alleged, or at all, and the defendant further denies that the said word had not, prior to registration thereof as a trade mark, been used by the defendant in the manner required for registration in Part B of the said register and the defendant denies that the said registration of the said word as a trade mark is prohibited.

5. The defendant denies that the plaintiff was unaware of the defendant's application for registration and of the said registration and says that the plaintiff was well aware of the application for, and of the registration of, the said word 'Leathermac' as the registered trade mark of the goods of the defendant.

6. The defendant further in answer to the claim of the plaintiff says that, pursuant to the provisions of the said Acts, the application of the defendant for registration of the said word 'Leathermac' as the trade mark of the goods of the defendant of the nature specified in Class 8 of Part B of the said register was duly advertised and the plaintiff failed and neglected to furnish any objection to such registration or to oppose the said registration in manner provided by the said Acts, and the defendant submits, and will contend at the trial, that the claim of the plaintiff in this action is now barred by the laches and acquiescence on the part of the plaintiff, and further that the plaintiff is now estopped by his conduct from obtaining the relief sought in this action.

7. The...