Marie Claire magazine group may not register "Marie Claire" as a trade mark in Ireland as per the decision of the High Court delivered 1st April 2014
Mr. Justice Barrett of the Commercial Court delivered his judgement in respect of an appeal by the Marie Claire magazine group (Marie Claire Netherlands B.V) against the decision of the Controller of Patents, Designs and Trademarks to refuse registration of the trademark "Marie Claire" in Ireland in respect of clothing and headgear based on the opposition by an Irish company, Brandwell (IRL) Limited and a Spanish company, Marie Claire SA against the registration.
Mr. Justice Barrett decided against the Marie Claire magazine group on the basis of s.10 (4) (a) of the Trade Marks Act, 1996 which provides that;-
"A trademark shall not be registered if, or to the extent that, its use in the State is liable to be prevented -
by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trademark or other sign used in the course of trade..." In finding that the prior use of 'Marie Claire' in Ireland by the opponents to the trade mark registration application was protected by the law of passing off, the Commercial Court referred to the three classic elements that must be established in order to exceed in a claim for passing off namely, goodwill/reputation, misrepresentation and damage. The court dealt with each of these elements as follows:-
In order to succeed in a claim for passing off, a claimant must establish that there is goodwill/ reputation attached to the goods/services the subject matter of the passing off action in the minds of the purchasing public. The court referenced the decision of C&A Modes v C&A (Waterford) Limited  I.R.198 where it was explained with regard to goodwill that:
"What has to be established for the success of a plaintiff's claim in an action such as this is that by his business and activities...he has generated within the State a property right in a goodwill which will be violated by the passing-off."
The court was satisfied that the opponents Marie Claire SA and Brandwell (IRL) Limited had proved that there had been direct sales and promotions of their product that had given rise to significant and valuable goodwill in Ireland. The court stated that not only had there been sales throughout the country but that advertisements had been carried out in a variety of periodicals that were specific to Ireland...