Irish Distillers Ltd v Cooley Distillery Plc
| Jurisdiction | Ireland |
| Judge | Mr Justice Roderick Murphy |
| Judgment Date | 04 July 2008 |
| Neutral Citation | [2008] IEHC 236 |
| Docket Number | [No. 191P/2008] |
| Court | High Court |
| Date | 04 July 2008 |
[2008] IEHC 236
THE HIGH COURT
TRADE MARK ACT 1996 S6(1)
COPYRIGHT & RELATED RIGHTS ACT 2000 S3(1)(a)
INDUSTRIAL DESIGNS ACT 2001 S89
EEC REG 40/94 ART 9(1)(b)
EEC REG 40/94 ART 9(1)(c)
EEC REG 40/94 ART 9(2)
FEDERAL LAW NO 3520-1 ON TRADEMARKS, SERVICE MARKS & APPELLATIONS OF ORIGIN OF GOODS 1992 (RUSSIAN FEDERATION)
FEDERAL SERVICE FOR INTELLECTUAL PROPERTY, PATENTS AND TRADEMARKS (ROSPATENT) RULE 32 2003 (RUSSIAN FEDERATION)
FEDERAL SERVICE FOR INTELLECTUAL PROPERTY, PATENTS AND TRADEMARKS (ROSPATENT) ANNUAL REPORT 2000 PARA 15.3 (RUSSIAN FEDERATION)
FEDERAL LAW NO 135-FZ ON PROTECTION OF COMPETITION 2006 (RUSSIAN FEDERATION)
COPYRIGHT & RELATED RIGHTS ACT 2000 S45
COPYRIGHT & RELATED RIGHTS ACT 2000 S139
COPYRIGHT & RELATED RIGHTS ACT 2000 S139(4)
EEC REG 40/94 ART 1
EEC REG 40/94 ART 2
EEC REG 40/94 ART 4
TRADE MARK ACT 1996 S14
TRADE MARK ACT 1996 S14(2)(b)
TRADE MARK ACT 1996 S14(4)
INTELLECTUAL PROPERTY
Trademarks
Registered community trade mark - Copyright - Application for injunction restraining defendant from infringing copyright of plaintiff in label of plaintiff's whiskey - Whether defendant infringed plaintiff's copyright - Distinguishing features-General visual impressions of label - Test to be applied - Visual impact of labels - Whether substantial similarities between labels - Whether names of products reduced risk of confusion - Whether on balance of probability there existed likelihood of confusion on part of public including likelihood of association on part of substantial section of public and trade - Trade Mark Act 1996 (No 6), ss 6(1) and 14(2)(b) - European Communities (Enforcement of Intellectual Property Rights) Regulations 2006 (SI 360/2006), art 9 (1)(b) - Copyright and Related Rights Act 2000 (No 28), ss 31(1)(a), 45 and 139 - Council Regulation EC/40/94 art 1, 2 and 4 - Injunction granted (2008/191P- Murphy J - 4/7/2008) [2008] IEHC 236
Irish Distillers Ltd v Cooley Distillery plc
Facts: The plaintiff sought an injunction to restrain the defendant from infringing the copyright of the plaintiff in the label of Jameson Irish Whiskey by producing a label appearing of the defendants St. Patrick Irish Whiskey sold for a Russian market. The plaintiff alleged that it was the owner in the copyright of the label and that it possessed a very substantial reputation and goodwill as to its label. It was alleged that the defendant had infringed the plaintiffs copyright, community trade mark and had passed off its goods and that the conduct of the defendant had very significantly damaged the value of the plaintiffs copyright. The defendant argued that the label was necessarily generic and that no intellectual property rights attached to them.
Held by Murphy J. that on the evidence and on the balance of probabilities that there existed a likelihood of confusion on the part of the public in the association of the sign of St. Patrick with the trademark Jameson. The plaintiff was entitled to maintain its proceedings within this jurisdiction
Reporter: E.F.
dated the 4th day of July 2008 .
By plenary summons dated the 10th January 2008 the plaintiff sought an injunction restraining the defendant from infringing the copyright of the plaintiff in the label of the plaintiff's Jameson Irish Whiskey including by the production and distribution of the label appearing on the defendants St. Patrick Irish Whiskey. The plaintiff also sought ancillary orders and damages.
The plaintiff's label was registered by the Office for Harmonisation in the Internal Market on the 23rd March, 1998, number 0099887 and containing the following words in different fonts as scheduled to the plenary summons.
"John Jameson & Son"
The bottle together with label, epaulette and cap were the subject of registration bearing number 001605625 and registered by the Office for Harmonisation in the Internal Market on the 9th July, 2001. The description in English was as follows:-
"Bottle: green; label: green, cream, black, gold, white, burgundy. The registration was in respect of whiskey."
By statement of claim delivered the 7th February, 2008, the plaintiff pleaded that it was the owner of the copyright subsisting in respect of the Irish Whiskey label depicted in the first schedule ("the Jameson label") by virtue of that label being an original literary and/or artistic work (or, strictly without prejudice to the foregoing, comprising literary and/or artistic works) within the meaning of the Copyright and Related Rights Act 2000 and was the proprietor of the community trade mark registered under number 99887 (Jameson label) and number 1605625 (Jameson bottle) pursuant to the Community Trade Mark Regulation 40/94 (the Regulation).
The plaintiff pleaded that it possesses a very substantial reputation and goodwill associated with the get up of its Jameson range of Irish whiskey products and, in particular, the Jameson label. In the year ended December 2007, worldwide sales were in excess of the thirty two million standard bottles. In the fiscal year ended June 2007, some €56, 000, 000 was spent on advertising of Jameson Irish Whiskey products worldwide. The Jameson label featured prominently in a substantial portion of the plaintiff's advertising.
It was pleaded that the get up of the plaintiff's Jameson range of Irish whiskey products and, in particular, the Jameson label, constituted well known marks within the meaning of s. 6(1) of the Trade Mark Act,1996 and that the defendant had infringed the plaintiff's copyright in its Jameson label, the plaintiff's community trade mark and the plaintiff's well known marks and, further, had passed off its goods as being those of the business of the plaintiff.
The defendant, a company incorporated with limited liability with its registered office at Riverstown, Dundalk, Co. Louth carries on the business of the production of Irish whiskey, in so far as relevant, under the brand name "St. Patrick" at its premises in Co. Louth.
The defendant admitted that its St. Patrick Whiskey was being bottled by it with the get up and labelling as depicted in the 3rd Schedule, the rights of which are as follows:-
"ST. PATRICK
5, April, (RED CREST) 433 AD
IRISH WHISKEY
Distilled, blended and bottled in Ireland
…
Cooley Distillery plc, Co. Louth, Ireland.
Established 1987
Traditional distillation."
It is pleaded that the defendant admitted to receiving orders for the whiskey and that the bottles had been "sold and shipped for the Russian market", in which market they were sold by a Russian business. It was pleaded that the defendant intended to continue to sell to the Russian market.
The particulars of the infringement was that the label on the St. Patrick's whiskey, as depicted, constituted a copy of a substantial part of the Jameson label. In producing the labels for application to the St. Patrick whiskey bottles without the plaintiff's consent, the defendant was making copies of the Jameson label in the State and thereby infringing the plaintiff's copyright contrary to s. 31(1)(a) of the Act of 2000, as inserted by s.89 of the Industrial Designs Act2001. There was a likelihood of confusion on the part of a substantial section of the public and the trade, including a likelihood of association, contrary to Article 9(1)(b) of the Regulation.
The plaintiff's community trademarks have a reputation in the community and in using the get up and labelling of its St. Patrick's product the defendant is in the community (in particular, the State) without any legitimate cause taking unfair advantage of, and acting to the detriment of the distinctive character and the reputation of the plaintiff's community trade marks contrary to Article 9(1)(c) of the Regulation.
The defendant's wrongful use of the get up and labelling of its St. Patrick's product included, contrary to Article 9(2) of the Regulation:-
"The application of that get up and labelling by the defendant to the bottles of St. Patrick whiskey in the State, the offering and putting on the market of those bottles, and the stocking of them for those purposes, in the State; and the export of these bottles of St. Patrick whiskey from the State."
In using the get up and labelling of its St. Patrick's product, the defendant was using in the State a trade mark which was similar to the plaintiff's well known marks in respect of Irish whiskey, and there was a likelihood of confusion on the part of a substantial section of the public and the trade. The defendant was producing and dealing in a product in the State, this served to misrepresent to a substantial number of potential or actual customers of the plaintiff, members of the trade and public in Russia, that the defendant's products are the produce of the business of the plaintiff, and the defendant is thereby acting contrary to common law. The plaintiff apprehends that, in the future, potential or actual customers may include members of the public and trade located elsewhere.
In the event that it were established that the relevant acts of the defendant were not taking place or would not take place in the State but in Russia, it was contended that the acts were, in addition to being actionable in this State, also actionable in Russia pursuant to the laws of Russia.
The plaintiff's particulars of loss and damage are based on the understanding that the defendant had sold and shipped 7, 000 cases...
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