Faberge Incorporated v Controller of Patents, Designs and Trade Marks
| Jurisdiction | Ireland |
| Judge | O'HIGGINS C.J. |
| Judgment Date | 02 December 1977 |
| Neutral Citation | 1977 WJSC-SC 616 |
| Court | Supreme Court |
| Date | 02 December 1977 |
1977 WJSC-SC 616
THE SUPREME COURT
O'Higgins C.J.
Griffin J.
Parke J.
and
JUDGMENT delivered on the 2nd day of December 1977 O'HIGGINS C.J.
This matter comes before this Court by way of appeal by the Defendant from the decision and order of Mr. Justice Kenny sitting as a Judge of the High Court and exercising the jurisdiction of that Court under the Trade Marks Act 1963(hereinafter called "the Act").
The Plaintiffs, a corporation of the State of Minnesota, and engaged in the manufacture of perfumes and toilet preparations, applied for registration as a trade mark for perfumes, cosmetic preparations, non-medical toilet preparations and toilet soap, of the word "Kiku". The word "kiku" is a word in the Japanese language and means chrysanthemum. The Plaintiffs"application initially was for registration in Part A of the Register butlaterregistration in Part B was sought as an alternative. The Controller refused the application. The Plaintiffs then issued a Special Summons naming the Controller as Defendant and appealing against his decision to the High Court under the provisions of Section 57 of the Act. This Special Summons and Appeal was heard and determined by Mr. Justice Kenny who came to the conclusion that the Controller was wrong in refusing registration and who granted a declaration that the word "kiku" was registrable as a trade mark in Part A of the Register. The learned Judge, however, gave to the Controller as Defendant leave to appeal to this Court under the provisions of Section 57(5) of the Act on a specified question of law. The question of law specified by the learned Judge was "whether when a word for which registration as a trade mark is sought is one in a foreign language the Controller and the Court must treat the application as one for the registration of the corresponding English or Irish word".
The Defendant has availed of this leave to appeal to bring this appeal before this Court so that the specifiedquestion of law may be determined.
The Trade Marks Act, 1963, replaced the trade mark provisions of the Industrial and Commercial Property Protection Act, 1927, which in turn had replaced the earlier statutory provisions of the Trade Marks Act, 1905, 1914 and 1919. The general purpose of the Act is to provide by the registration of a person as the proprietor of a trade mark in either Part A or Part B of the Register, for the exclusive use of that mark by that person within the State and also to protect the public within the State from certain forms of deception.
As the question specified by the learned trial Judge arose out of his consideration of the Plaintiffs" claim to registration in Part A of the Register, it is only necessary to consider the statutory provisions which apply to such registration. These are contained in Section 17 of the Act. This Section provides that for a trade mark to be registrable in Part A of the Register it must satisfy at least one of five conditions. These conditions or "essential particulars" are set out in sub-paragraphs (a),(b), (c), (d) and (e) of sub-section (1) of Section 17. The first three sub-paragraphs do not apply in the circumstances of this particular case and therefore need not 1 be considered. The last sub-paragraph, while it may have been regarded as relevant in the earlier stages of these proceedings, does not appear to have any relevance to the specific question now raised. In my view, this specific question falls to be considered in relation to the applicability of sub-paragraph (d) to thePlaintiffs" claim for registration. This sub-paragraph makes a trade mark registrable if it is "a word or words having no direct reference to the character or quality of the goods, and not being...
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