Miller Brewing Company v The Controller of Patents, Designs and Trade Marks

• Jurisdiction: Ireland
• Judge: FINLAY C.J.
• Judgment Date: 01 January 1988
• Neutral Citation: 1987 WJSC-SC 2003
• Court: Supreme Court
• Docket Number: [1982 No. 824 Sp]
• Date: 01 January 1988

1987 WJSC-SC 2003

THE SUPREME COURT

Finlay C.J.

Henchy J.

McCarthy J.

122/84

MILLER BREWING CO v. CONTROLLER OF PATENTS

IN THE MATTER OF THE TRADE MARKS ACT, 1963AND IN THE MATTER OF APPLICATION NO. 1212/77

BETWEEN

MILLER BREWING COMPANY

Plaintiff/Respondent

and

THE CONTROLLER OF PATENTS, DESIGNS AND TRADEMARKS

Defendant/Appellant

Citations:

TRADE MARKS ACT 1963 S18

TRADE MARKS ACT 1963 S17(1)(d)

TRADE MARKS ACT 1963 S17

MOTHERCARE, APPLICATION OF 1968 IR 363

Synopsis:

TRADE MARK

Registration

"High Life" - Beer - Quality of goods - Direct reference - The Controller refused the plaintiffs" application for registration of the mark in either Part A or Part B of the register - On appeal to the High Court the judge held, in an extempore judgment, that the words did not refer directly to the character or quality of the plaintiffs" goods, although the words had a laudatory overtone; but he held that the words were not distinctive within the meaning of s.17 of the Act of 1963 - He held that they were "capable of distinguishing" within the meaning of s.18, and the Controller appealed to the Supreme Court on that issue - Held, in dismissing the appeal, that the words were capable of distinguishing within the meaning of s.18, and registerable in Part B, although the words had a connotation of sophistication and luxury: ~Application of Mothercare Ltd.~ [1968] IR 359 considered - Trade Marks Act, 1963, ss.17, 18 - (122/84 - Supreme Court - 30/7/87) [1988] ILRM 259 [1987] IR 434

|Miller Brewing Co. v. Controller of Trade Marks|

WORDS AND PHRASES

"Direct reference"

Trade mark - Words - "High Life" - Quality of goods - Registration in Part B of the register - Held that, although the mark had a connotation of sophistication and luxury, it was capable of distinguishing the plaintiffs" goods and was registrable in Part B of the register as it did not refer directly to the character or quality of the plaintiffs" goods - ~See~ Trade Mark, registration - (122/84 - Supreme Court - 30/7/87) [1988] ILRM 259 [1987] IR 434

|Miller Brewing Co. v. Controller of Trade Marks|

1 JUDGMENT delivered on the 30th day of July 1987by FINLAY C.J.[NEM DISS]

2 This is an appeal by the Controller of Patents, Designs and Trade Marks, brought pursuant to leave of the High Court against the Order dated the 3rd day of February 1984 made by Costello J. whereby on appeal from the decision of the Controller he remitted to the Controller the application herein for registration of the words "High Life" as a trade mark in Part B of the Register.

3 The question of law which the Defendant was given liberty to appeal to the Supreme Court were as follows.

4 a "(a) Whether the said mark is capable under Section 18 of the Act of distinguishing the Plaintiff's goods.

5 (b) Whether the discretion of the Court was properly exercised in favour of the Plaintiff in all the circumstances of thecase."

6 Though in fact two questions of law were certified and submitted by way of appeal Counsel on the hearing of the appeal before this Court agreed that the case fell to be determined under Question (a), namely, the question as to whether the learned High Court Judge was correct in concluding that the said mark was capable under Section 18 of the Act of distinguishing the Plaintiff's goods.

7 The decision of the Controller had been that having considered the meaning separately and together of the words "High Life" he stated as follows:

"As such the combination of the two words is felt to have a very laudatory signification in regard to the goods in respect of which the registration is sought, viz. beer, andaccordingly to have a direct reference to the character or quality of these goods. Apart from the laudatory connotation. "high" has a well-known connotation of "intoxicated" and while...