Marie Claire Netherlands B.v v Controller of Patents, Designs and Trade Marks and Others
|Mr Justice Barrett
|21 July 2014
| IEHC 362
|21 July 2014
 IEHC 362
THE HIGH COURT
MARIE CLAIRE NETHERLANDS BV v CONTROLLER OF PATENTS DESIGNS & TRADE MARKS UNREP BARRETT 1.4.2014 (EX TEMPORE)
CONSTITUTION ART 34.4.3
TRADE MARKS ACT 1996 S79(3)
TRADE MARKS ACT 1996 S10(4)
TRADE MARKS ACT 1996 S10(4)(A)
MCCAMBRIDGE LTD v JOSEPH BRENNAN BAKERIES 2012 IESC 46 2012/30/8781
Trade Marks – Right of appeal – Point of law – Plaintiff seeking leave to appeal a decision of the High Court – Whether or not a point of law can be said to have arisen
Facts: The plaintiff, Marie Claire Netherlands BV, applied to the High Court seeking leave to appeal the Court”s decision in Marie Claire Netherlands BV v The Controller of Patents, Designs and Trade Marks and Ors (2014) on various purported points of law: (1) whether the date of commencement of the use by the applicant of the mark on the goods applied for is the correct date for determining whether use of the mark constitutes an actionable misrepresentation in passing off for the purposes of s. 10(4) of the Trade Marks Act 1996; (2) whether the date of commencement of use of the mark to offer clothing for sale in the State comprises commencement of the use complained of for the purposes of assessing whether a passing off action lies in respect of such use, or whether a sale of clothing under the mark is required for this purpose; (3) whether the High Court judge erred in law in deciding that use by the plaintiff of the mark at issue did not constitute first use of the mark in the State on clothing; (4) whether as a matter of law it was open to the High Court to infer a sale of clothing by the Marie Claire group under the mark in the State from evidence of clothing being offered for sale under the mark through a monthly magazine for four years; (5) whether the correct test in passing off encompasses a requirement on the complainant in passing off to show that the mark in question is recognised by the public as distinctive specifically of a trade source that is the complainant; (6) whether in making a determination, for the purposes of determining trade mark opposition proceedings under section 10(4), as to whether use in the State of the mark at issue, by the applicant for registration of the trade mark, was liable to be prevented by virtue of the law of passing off; (7) whether the trial judge erred in law in making a determination on the passing off ground of objection maintained by the defendants under s. 10(4), without directing his mind to the issue raised as to whether the use of the name ‘Marie Claire’ would have been thought by the relevant public to signify a trade source that was the plaintiff, as distinct from a trade source that was the second or third defendants; (8) whether issues raised as to the ownership of goodwill asserted by opponents of registration of a mark as the basis for opposition brought under s.10(4) should be taken into account in determining whether use of the mark applied for by the applicant would have been liable to have been prevented at the relevant date by a passing off action at the suit of the said opponents; (9) whether the High Court judge erred in law in finding the necessary goodwill to ground a passing off action in the defendants at the relevant time against the plaintiff without making a determination as to issues raised by the plaintiff in connection with the ownership of the goodwill relied upon by the defendants for their claim.
Held by Barrett J that, consistent with Article 34.4.3? of the Constitution, s. 79(3) of the 1996 Act regulates the constitutional right of appeal in this case; s. 79(3) makes the court the arbiter as to whether or not a point of law can be said to arise from the decision in issue. Barrett J held that: (1) the particular issue raised did not appear to the court to arise in the context of s.10(4)(a); (2) no question of law in the form posited appeared to arise in or from its judgment; (3) the question suffered from the same deficiency identified in relation to the first point; (4) this was not a point of law; (5) the law in that regard is certain, citing McCambridge Ltd v Joseph Brennan Bakeries  IESC 46; (6) there was no issue of law for the Supreme Court to adjudicate upon; (7) this was merely a complaint that the Court did not interpret the evidence and draw the inferences in the manner contended for by the plaintiff; (8) this was a complaint that certain submissions of the plaintiff concerning goodwill did not find favour with the Court; (9) this was a reworking of point 8.
Barrett J held that, pursuant to s.79(3), the Court declines to grant the plaintiff leave to appeal to the Supreme Court on any of the suggested points of law raised by it in the instant application. Application refused.
1. In the present application Marie Claire Netherlands B.V. is seeking leave to appeal the decision of this Court in Marie Claire Netherlands B. V. v. The Controller of Patents, Designs and Trade Marks and...
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