Coca-Cola Company v F. Cade & Sons Ltd

• Jurisdiction: Ireland
• Judgment Date: 07 December 1957
• Date: 07 December 1957
• Court: Supreme Court

Supreme Court.

Coca-Cola Co. v. F. Cade and Sons Ltd.

In the Matter of an Application No. 51398 by F. Cade & Sons Limited for registration of a trade mark, And In the Matter of the Industrial and Commercial Property (Protection) Act, 1927. COCA-COLA COMPANY

Plaintiffs

and

F. CADE & SONS LTD.

Defendants.

Trade mark - Application for registration of trade mark, "Cada Cola," in respect of non-alcoholic beverage - Opposition by owners of registered mark, "Coca-Cola," used in respect of similar beverage - Application allowed by Controller - Appeal - Industrial and Commercial Property (Protection) Act, 1927 (No. 16 of 1927) s. 84.

Summary Summons.

By an application, dated the 31st May, 1951, Messrs F. Cade and Sons Ltd., of Cork, applied to register a trade mark in Part A of the Register of Trade Marks and in Class 32 for use in connection with non-alcoholic cola drinks. The mark sought to be registered was a rectangular label bearing upon it the words, "Cada Cola," in black type, the second word being placed below and slightly to the right of the first word and having across the bottom of the label, in less prominent type, the applicants' name and the addresses, "Cork and Killarney." The application was accepted by the Controller of Industrial and Commercial Property, and it was duly advertised in the issue of the official journal of Industrial and Commercial Property of the 19th December, 1951, with a note appended that the registration of the trade mark would give no right to the exclusive use of the word, "cola."

On the 18th March, 1952, the Coca-Cola Company of Atlanta, Georgia, United States of America, gave notice of opposition to the registration. The notice set out that the opponent Company were the registered proprietors of the trade mark, "Coca-Cola," registered on the 11th July, 1922, in Part A. of the Register, in class 3 for a syrup (not alcoholic and not medicated) for use in making beverages and were also registered, on the 9th June, 1928, in class 3 for aerated beverages. The said registrations were duly renewed in class 32. The trade mark of the opponents consisted of the words, "Coca-Cola," written in cursive script with flourishes and was unframed. The main ground of opposition was that the mark which the applicants were seeking to register comprised as its essential feature the words, "Cada Cola," and that these words so nearly resembled the registered mark, "Coca-Cola," as to be calculated to deceive.

The applicants, in their counter-statement, dated the 1st April, 1952, denied that their mark was calculated to deceive. They submitted that there was neither in the applicants nor in any other person or body any exclusive right to the word, "Cola"; they averred that the words,"Cada Cola," were an alteration of "Cade's Cola"—a product which they had marketed since 1947—with the object of giving the name of the product more alliteration, rhyme and rhythm. They also claimed that their mark was reasonably adapted to distinguish their beverage from the beverage of the opponent Company.

On the 25th February, 1953, the Controller of Industrial and Commercial Property dismissed the opposition and decided to register the applicants' mark. The plaintiffs issued a summary summons on the 14th March, 1953, and the special endorsement of claim thereon was as follows:—"The plaintiffs' claim is by way of appeal from a decision of the Controller of Industrial and Commercial Property dated the 25th February 1953 in this matter for:—

1. An order that the said Controller dismissing the opposition of the plaintiffs to the registration of the above-numbered trade mark and deciding to register the same be reversed and discharged in its entirety.

2. An order that the registration of the said trade mark be refused.

3. An order that the defendants do pay to the plaintiffs the costs of these proceedings and of the proceedings before the Controller.

4. Other and further relief."

The applicants, F. Cade & Sons Limited, applied for registration of the trade mark, "Cada Cola," in Part A, class 32, of the Register of Trade Marks established by the Industrial and Commercial Property (Protection) Act, 1927, in respect of "non-alcoholic cola drinks." The mark was first used in Ireland on the 21st May, 1921. The application was opposed by the Coca-Cola Company, the manufacturers of syrups and aerated beverages, who were registered as proprietors of the trade mark, "Coca-Cola," on the 11th July, 1922, in Part A, class 3 (duly renewed in class 32), of the Register for a syrup (not alcoholic and not medicated) for use in making beverages and on the 9th June, 1928, for aerated beverages. They contended that the trade mark of the applicants used in connection with beverages so nearly resembled their registered trade mark that it was calculated to deceive and to lead purchasers of "Cada Cola" to believe that they were buying the beverage of the Coca-Cola Company sold under the trade mark, "Coca-Cola."The applicants, in their counter-statement, stated that they had been manufacturing, selling and advertising aerated and other beverages in Cork since 1845 and selling and advertising a cola drink, called "Cade's Kola," since 1947, and that in the year 1951 the name of the cola beverage was changed to "Cada Cola," to give the title more alliteration, rhyme and rhythm. They further stated that there was no intention to deceive the public into confusing their product with that of any other producer and claimed that the mark which they were seeking to register was reasonably adapted to distinguish their beverage from those of the Coca-Cola Company. The Controller of Industrial and Commercial Property accepted the application to register the applicants' trade mark and the High Court affirmed his decision. On appeal by the respondents to the Supreme Court it was

Held by the Supreme Court (Maguire C.J., O'Byrne, Lavery, Kingsmill Moore and O'Daly JJ.), dismissing the appeal and affirming the High Court (Dixon J.), that there was not a likelihood of the appellants' mark causing deception or confusion.

Cur. adv. vult.

Dixon J. :—

The trade mark which the applicants seek to register includes the words, "Cada Cola," of which the second word is, admittedly, an ordinary word available for the use of anyone. In respect of it the applicants have, accordingly, agreed to a disclaimer to the effect that registration of the trade mark will give them no right to the exclusive use of that word. The first word, "Cada," is an invented word—stated to be derived from the firm name, "Cade,"of the applicants—and the combination of the two words may, therefore, be treated as invented. In addition, the trade mark also includes, in a less prominent way, the name and address of the applicants, although not written in any distinctive way. The mark as a whole could be considered distinctive. The trade mark would, therefore, be capable of registration under the provisions of s. 82 of the Industrial and Commercial Property (Protection) Act, 1927. Such registration is, however, opposed by the proprietors of the registered trade mark, "Coca-Cola."The substantial ground of the opposition and, I think, the only one that is legally relevant, is that registration would be contrary to and prohibited by s. 96 of the Act of 1927. That section, so far as material, provides that, except by order of the Court, no trade mark shall be registered in respect of any goods or description of goods which is identical with one belonging to a different proprietor which is already on the register with respect to such goods or description of goods, or so nearly resembling such a trade mark as to be calculated to deceive.

The opponents claim that the trade mark proposed for registration does so nearly resemble the registered mark as to be calculated to deceive. It will be noted that the section in question appears to contemplate that in some circumstances the Court may permit registration notwithstanding that the proposed mark is identical with or too nearly resembles a registered mark. What those circumstances are was not discussed in the argument, which proceeded on the basis that, whatever those circumstances are, they are not applicable to the present matter. The case comes before me by way of appeal from the Controller's disallowance of the opposition, and it is not an application involving the jurisdiction to permit registration under s. 96. Both of the trade marks in question relate to the same description of goods, viz., "non-alcoholic cola drinks."

There is little or no evidence of the use of either mark, so far as this country is concerned. The application for registration gives the date of the first user as the day prior to the date of the application, that is the 21st May, 1951. It appears, however, from their statutory declaration, that the applicants have specialised for more than 100 years in producing aerated beverages in Cork for the market in the south of Ireland. It was also alleged that they had been, in particular, selling and advertising a cola drink since 1947; and in April, 1951, they decided to change the name of this drink from "Cade's Kola" to "Cada Cola"to give the title "more alliteration, rhyme and rhythm."

On the other hand, "Coca-Cola" has, it appears, a very large sale in the United States of America and many other countries abroad and is widely advertised, under that name, including, as the statutory declaration phrases it, advertisement"in periodicals which have an international circulation."These periodicals are not particularised but the inference is, presumably, intended that they circulate in this country. So far as the sales in this country are concerned, prior to 1951 the evidence on behalf of the opponents, if not evasive on the point, is certainly very vague and unsatisfactory as to the extent of such sales. Such information as is given suggests only very limited and localised sales. In the year 1951—the month is...