Jaguar Cars Ltd and The Jaguar Collection Ltd v The Controller of Patents Designs and Trade Marks and Manufacture Des Montres Jaguar SA
| Jurisdiction | Ireland |
| Judge | Mr. Justice Clarke |
| Judgment Date | 24 March 2006 |
| Neutral Citation | [2006] IEHC 103 |
| Court | High Court |
| Docket Number | [2004 No. 342 SP] |
| Date | 24 March 2006 |
[2006] IEHC 103
THE HIGH COURT
BETWEEN
AND
TRADE MARKS ACT 1963 S25(2)
TRADE MARKS ACT 1963 S25(1)
MONTEX HOLDINGS LTD v CONTROLLER OF PATENTS DESIGNS & TRADEMARKS & DIESEL SPA 2000 1 IR 577
SMITH HAYDEN & CO LTD, IN RE 1945 63 RPC 97
BALI TRADEMARK 1969 RPC 47
EASTMAN PHOTOGRAPHIC MATERIALS COMPANY LTD v JOHN GRIFFITHS CYCLE CORPORATION LTD 1898 15 RPC 105
HJ LEES & SON (LONDON) LTD, IN RE 1955 72 RPC 75
PLAYERS TRADEMARK 1965 RPC 363
MONTEX HOLDINGS LTD v CONTROLLER OF PATENTS DESIGNS & TRADEMARKS & DIESEL SPA 2001 3 IR 85 2002 1 ILRM 208
RAWHIDE TRADEMARK 1962 RPC 133
TRADE MARKS ACT 1963 S57(2)
INTELLECTUAL PROPERTY
Trade marks
Registration - Opposition - Test applicable in assessing whether entity is proprietor of trademark - Use of ordinary English word -Whether necessarily follows that consumers believe every product bearing trade mark employing that word produced by the same entity - Brand extension - Whether use in promotional activity constitutes extension of brand to new product - Likelihood of confusion - Association between two businesses - Whether use of same or similar typeface leads to likelihood of confusion - Re Nicholson & Sons Ltd's Application (1931) 48RPC 227 considered; Eastman Photographic Materials Co Ltd v John Griffiths Cycle Corp Ltd (1898) 15 RPC 105, HJ Lees & Son(London) Ltd's Application (1955) 72 RPC 75 and Players Trade Mark [1965] RPC 363 distinguished - Trade Marks Act 1963 (No 9),ss 19, 25, 52 and 57 - Appeal dismissed (2004/342SP - Clarke J - 24/3/2006) [2006] IEHC 103, [2006] 1 IR 607; [2007] 1 ILRM 32
Jaguar Cars Ltd v Controller of Patents
Facts: section 19 of the Trademark Act 1963 provides, inter alia, that "it shall not be lawful to register as a trademark...any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of law..." Section 25(2) of the Act of 1963 allows the Controller of Patents, Designs and Trademarks to otherwise refuse an application for registration of an intended use of a trademark in his discretion. The plaintiff was a motor car manufacturer who owned the trademark in the word "jaguar" in respect of motor cars. The first defendant had registered the second defendant as the trademark owner of the word "jaguar" when used to market wristwatches. The plaintiff appealed to the High Court against the decision of the first defendant pursuant to section 57 of the Act of 1963.
Held by Mr Justice Clarke in dismissing the appeal that the character and not the length or extent of the user of a trademark was the only matter that had to be established. The plaintiff had failed to establish that it had any business in the sale of watches bearing the "Jaguar" mark or any variant thereon in the State prior to the date of the second defendant's application for registration so as to exclude the entitlements of the second defendant to apply for registration in respect of an intended use of the same mark.
That, as of the date of application, the extent of brand extension of the "Jaguar" mark to watches by the plaintiff was extremely limited and confined to promotion associated with the sale of automotive products and, accordingly, there was no reasonable likelihood of confusion among a substantial number of persons.
That the question of discretion should only be addressed if and when all grounds for mandatory refusal had been dismissed. There was no evidence of a sufficient level of inappropriate behaviour on the part of the second defendant such as would justify the exercise of discretion against the registration of a mark which was otherwise registrable.
Reporter: P.C.
JUDGMENT of Mr. Justice Clarke delivered 24th March, 2006.
2 1.1 In these proceedings an appeal is brought to the court under s. 57 of the Trademarks Act 1963 from a decision of the first named defendant ("the Controller") on 25th February, 2004. The decision of the Controller was to dismiss the opposition of the plaintiffs ("Jaguar Cars") to the registration sought in Class 14 of the Register of Trademarks by the second named defendant ("Des Montres") of the Trademark "JAGUAR". The first named plaintiff's principal business involves the manufacture distribution and sale of cars under the JAGUAR trademark and also using the well known device of a leaping jaguar. The second named plaintiff is a wholly owned subsidiary of the first named plaintiff and is concerned with the marketing and sale of non automotive products under both of those trademarks.
3 1.2 For the purposes of these proceedings nothing turns on the distinction between the two plaintiff companies and I will refer, unless explicitly stated to the contrary, to either or both of them as "Jaguar Cars". There is little doubt but that the JAGUAR trademark has a lengthy history having been first used on cars in 1935. Such cars have been sold in Ireland since the mid 1950s. While it will be necessary to go into the detail of the various trademarks owned by Jaguar Cars in some more detail in the course of this judgment it is worth noting as part of this introduction that the original trademarks registered on behalf of Jaguar Cars in Ireland were, not surprisingly, in respect of motor cars. It is also clear that Jaguar Cars has, in particular through the second named plaintiff, sought to exploit the name Jaguar and the device traditionally associated with Jaguar Cars in the sale of other high quality products. In that context Jaguar Cars has successfully registered the same or similar trademarks in respect of other products. Such registrations are of more recent origin and the detail of the timing of such registration and the nature of the goods in respect of which such trademarks were registered will be referred to when necessary in the course of this judgment.
4 1.3 Des Montres is a manufacturer of watches and has sought, in Ireland, the registration of the trademark "JAGUAR" in respect of such watches. In that context it is important to note that Jaguar Cars has no registered trademark in Ireland in respect of watches. It would appear that Des Montres has successfully registered trademarks using the name Jaguar in a number of jurisdictions. It would also appear that there are ongoing disputes between the parties in quite a number of different jurisdictions, which disputes have taken different forms and are, of course, subject to the law and practice of each separate jurisdiction and, insofar as that may be relevant in each jurisdiction, to the history of the use of various marks by the parties in that territory.
5 1.4 However against that general background it is important to note that the issues which I have to decide are relatively narrow in focus. A number of grounds of opposition were put forward on behalf of Jaguar Cars as the basis for their opposition before the Controller to the intent that Des Montres be refused the registration sought in respect of watches in Class 14. Some, but not all, of those grounds remain in issue on this appeal. Save to a very limited extent it does not, therefore, appear that those aspects of the proceedings before the Controller, which concerned grounds no longer pursued, are of any relevance to the issues to which I have to decide.
In particular it should be noted that the question of the entitlement of Des Montres to rely on an assignment of an earlier trademark (which issue had been raised in the objection before the Controller) was abandoned. I must therefore, proceed on the assumption that Des Montres has the benefit of the relevant assignment of the trademark.
It is now necessary to turn to the specific grounds of objection pursued on behalf of Jaguar Cars in this appeal.
2 2.1 Three grounds are relied upon. They are:-
(a) that Des Montres is not the proprietor of the mark; and/or
(b) that registration should be refused under s. 19 of the Trademark Act 1963 on the basis of a likelihood of confusion; and/or
(c) in the event that (a) and (b) fail, that the courts discretion under s. 25(2) of the Trademarks Act 1963 should be exercised in favour of allowing the objection on the basis of a contended for lack of bona fides on the part of Des Montres.
3 2.2 In assessing the merits or otherwise of those objections it is common case that I am confined to considering the materials that were before the Controller. It is also common case that any relevant circumstances need to be considered as of the date of the original application to the Controller, that is to say the 4th December, 1991. On that basis I now turn to the issues raised.
2 3.1 Section 25(1) of the Trademarks Act 1963 provides as follows:-
"Any person claiming to be the proprietor of a trademark used or purposed to be used by him who is desirous of registering it must apply in writing to the Controller in the prescribed manner for registration either in part A or B of the register".
3 3.2 In Montex Holdings Limited v. Controller of Patents [2000] 1 I.R. 577 O'Sullivan J. laid down the test as...
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