Kreuzer v Controller of Patents
| Jurisdiction | Ireland |
| Judge | CostelloJ. |
| Judgment Date | 26 July 1977 |
| Neutral Citation | 1977 WJSC-HC 942 |
| Docket Number | No. 270 Sp./1976 |
| Date | 26 July 1977 |
| Court | High Court |
1977 WJSC-HC 942
THE HIGH COURT
BETWEEN
Judgment delivered 26th July 1977. CostelloJ.
The plaintiffs" in these proceedings are a Kommenditgesellschaft organised under the laws of the Federal Republic of Germany. They applied to register the word "Kreuzer" in Part A of the Register. They were met with the objection that the word was not invented, that it was a surname, and that it was not distinctive. The plaintiffs argued unsuccessfully before the Controller that the word "Kreuzer" was not according to its ordinary signification a surname, that it was distinctive and that it could be registered in Part A by virtue of the provisions of section 17 (1) (d) of the 1963 Act. They asked (again unsuccessfully) in the alternative for a Part B registration. Against the refusals of these applications the applicants appealed to this Court. I will deal firstly with the Part Aapplication.
Section 17 of the 1963 Act provided that a trade mark may be registerif it contains or consists of certain essential features which are set out in the sub paragraphs of sub section 1 of that section. The relevant sub paragraph in the present proceedings is 17 (1) (d). Under this sub paragraph a mark is registerable in Part A if it consists of a word having no direct reference to the character or quality of the goods and which is not according to its ordinary signification a geographical name of a surname. It is, of course, clear that the mere fact that a word is a surname does not bar a Part A registration - it may still be registered pursuant to section 17 (1) (e) upon evidence of distinctiveness being adduced. No such evidence, however, exists in this case and accordingly the debate before the Controller and before me centred on whether the word "Kreuzer" is according to its ordinary signification a surname. If it is, then the applicants accept that the mark cannot be registered in Part A.
The sub paragraph relied on prohibits a registration of a word if according to its ordinary signification it is a surname or if according to its ordinary signification it is a geographical name. The meaning of the words "according to its ordinary signification" in this sub paragraph was first considered by Mr. Justice Kenny in relation to a word where the objection taken was that it was according to its ordinary signification both a surname and a geographical name (see application of Philip Morris: (1970)I.R. 82); and in a later case he again considered an objection raised by the Controller that the word sought to be registered was according to its ordinary signification a surname and a geographical name (See "Farah" Manufacturing Co. Inc., v. The Controller ofPatents: unreported: judgment delivered 22nd of February 1972). In the first case the applicants sought registration in Part A of the mark "Bond Street". No evidence of user was furnished and reliance could not be placed on the provisions of section 17 (1) (e). Mr. Justice Kenny (at p. 84) pointed out that the "ordinary signification" in sub section 17 (1) (d) meant "the meaning which the words have to an Irishman living in this country" and he held that although the term "Bond Street" contained two words which were surnames no one would think of them in this way when they are used together. Dealing with the contention that the mark proposed was according to its ordinary signification a geographical one he observed that "Bond Street" "to most, if not all of use, means a street in London which we associate with expensive goods of high quality". He decided that the words were not a geographical name according to their ordinary signification but refused registration in Part A because the words were not distinctive as required by the section but allowed registration in Part B. In the second case to which I have referred the applicants sought registration of the word "Farah" and were not with the objection that the word was asurname that it was a geographical name and was not adapted to or capable of distinguishing and registration was refused. The evidence established that "Farah" did not appear at all in the Irish Telephone Directory, but that it appeared four times in the London Directory, a similar number of times in the French Directory and twenty two times in the New York Directory. It also appeared that it was the name of a stream in West Afghanistan, of a province in that country, and of a small town there. On appeal, Mr. Justice Kenny pointed out that the first question he had to consider was not whether the word was a surname, but whether it was "according to its ordinary signification" a surname and that those words mean "its ordinary meaning to an Irishman". He pointed out:
"I had never heard of it before the case began and at first I thought it was a variation of Pharoah. I am convinced that no Irishman or woman would think that "Farah" was a surname and it is not accordingly a surname according to its ordinarysignification."
Turning to the objection based on its alleged geographical significance Mr. Justice Kenny observed that the question whether the word according to its ordinary significance was a geographical one means "whether it is this to a person living in Ireland" and he expressed the opinion that "very few people in thiscommunity would think that it was a geographical name." The appeal was successful and registration in Part A was allowed. In the present case it is quite clear that the word sought to be registered is a surname and it is, in fact, the name of the applicant firm. It appears twelve times in the New York Telephone Directory, sixteen times in the Hamburg Telephone Directory, eighteen times in the Berlin Telephone Directory, twice in the Paris Telephone Directory and once in the London Telephone Directory. It does not appear at all in the Irish Telephone Directory. The word "Kreutzer" appears eighteen times, fourteen times and twenty-five times respectively in the Telephone Directories of New York, Hamburg and Berlin. The Controller, having referred to the judgment of Mr. Justice Kenny in the "Farah" case to which I have referred went on:
"In the present case following the words of the Judge I am convinced that many Irishmen and women would think...
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Faberge Incorporated v Controller of Patents, Designs and Trade Marks
... ... 54) and he has been strongly supported on the Irish Bench by Mr. Justice Kenny in Farah manufacturing Co. Incorporated v. Controller of Patents(1972) unreported and other eases, and by Mr. Justice Costello in Kreuzer v. The Controller. I can only add my agreement for the reasons set out above ... 9I may add that Mr. Murphy in the course of his interesting submissions contended that this view, first expressed by Lord Justice Romer, was based on a fundamental error. He submitted that the words "according to its ... ...