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

• Jurisdiction: Ireland
• Judge: Mr. Justice Costello,Justice Costello
• Judgment Date: 01 January 1989
• Neutral Citation: 1988 WJSC-HC 1546
• Docket Number: 363Sp/1987,[1987 No. 644 Sp.],363 Sp cts/1987
• Court: High Court
• Date: 01 January 1989

1988 WJSC-HC 1546

THE HIGH COURT

363Sp/1987

MILLER BREWING CO v. CONTROLLER OF PATENTS & TRADE MARKS

BETWEEN

MILLER BREWING COMPANY

APPELLANTS

AND

THE CONTROLLER OF PATENTS DESIGNS AND TRADE MARKS

RESPONDENT

Citations:

FABERGE INC V THE CONTROLLER 1978 FSR 239

TRADE MARKS ACT 1973 S17(1)(d)

TRADE MARKS ACT 1973 S25

TRADE MARKS ACT 1973 PART A

Synopsis:

TRADE MARKS

Registration

"Miller ... Meister Brau" - Surname - Foreign words - Meaning - Significance of proposed mark in its entirety - Disclaimers - Registration sought in relation to applicant's beer - The applicants applied to the Controller for the registration of a proposed mark in relation to their beer - The mark consisted of a quadrangle with a double-lined border having within it (a) the word "Miller" in the form of a signature, (b) the German words "Meister Brau" in block type and (c) a small and insignificant bird-like figure which appeared above the words "Meister Brau" - The applicants sought, under s. 17 of the Act of 1963, registration of the mark in Part A of the register in relation to their beer on the ground that the proposed mark was adapted to distinguish the applicants" beer within the meaning of sub-s. 2 of that section - In the alternative the applicants sought registration of the proposed mark in Part B of the register, pursuant to s. 18 of the Act on the ground that the proposed mark was capable of distinguishing the applicants" beer from other beers - The applicants disclaimed (a) exclusive use of the word "Miller" and (b) the use of the words "Meister Brau" - The Controller refused to register the mark in either part of the register and the applicants appealed to the High Court pursuant to s. 57 of the Act - At the hearing of the appeal, the applicants accepted (a) that the two principal features of the mark were the word "Miller" and the words "Meister Brau", (b) that the word "Miller" was used as a surname in the mark, (c) that "Miller" is a common surname in Ireland and (d) that that part of the mark was not distinctive - The main submissions centred on the significance of the words "Meister Brau" - Held that, in relation to the foreign words in the proposed mark, the issue was the meaning which those words would convey, as foreign words, to the members of the public in Ireland who would be likely to buy the applicants" beer, as distinct from the meaning that the English translation of the foreign words would convey to such buyers: ~Faberge Incorporated v. The Controller~ [1978] F.S.R. 239 considered - Held that, owing to the phonetic and visual similarity of the words in the two languages, it was likely that the ordinary buyer of beers in Ireland would appreciate that "Meister Brau" meant "Master Brew" and that he would treat the words in the mark as referring to "Miller's master brew" - Held that the words in the proposed mark were not adapted to distinguish or capable of distinguishing the applicants" goods within the meanings of ss. 17 and 18 of the Act of 1963 - Held, nevertheless, that the proposed mark in its entirety was capable of distinguishing the applicants" goods within the meaning of s. 18 of the Act of 1963 and that the mark should be registered in Part B of the register subject to a disclaimer of the exclusive use of the word "Miller" and of the use of the words "Meister Brau" - Trade Marks Act, 1963, ss. 17, 18, 25, 57 - (1987/363 Sp - Costello J. - 3/3/88)[1989] IR 614

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

WORDS AND PHRASES

"Capable of distinguishing"

Trade mark - Surname - Foreign words - Significance - Meaning conveyed to members of public likely to buy goods - Significance of mark in its entirety - ~See~ Trade Mark, registration - (1987/363 Sp - Costello J. - 3/3/88)[1989] IR 614

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

Trade mark - Appeal from controller - Application to register a device mark for beers whose main features were the surname "Miller" and the German words "Meister Brau" - Principles applicable for registration of a mark comprising words in foreign language - Registration in part B allowed with disclaimer of "Miller" and "Meister Brau" (1987/363 Sp - Costello J. - 3/3/88)[1989] IR 614

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

1 Judgment of Mr. Justice Costello delivered on the 3rd day of March 1988.

2 Trade Mark, Appeal from Controller. Application to register a device mark for beers whose main features were the surname "Miller" and the German words "Meister Brau". Principles applicable for registration of a mark comprising words in foreign language. Registration in Part B allowed with disclaimer of "Miller" and "Meister Brau"

3 The appellants herein had sought registration for a mark in relation to beer which combines the following elements; (a) the word "Miller" in the form of a signature, (b) the German words "Meister Brau" in block type which were placed, (c), within a quadrangular-shaped double border, and (d), a small and insignificant bird-like figure, also placed within the border and over the words "Meister Brau". The appeal has been brought against the refusal to register the mark in either Part A or Part B. On this appeal the appellants have accepted (a) that the two principal features of the propounded mark are the word "Miller" and the words "Meister Brau", (b) that the word "Miller" is used as a surname in the mark, (c) that "Miller" is a common surname in this country, and (d) that this part of the mark is non-distinctive. But nonetheless it is claimed that the mark should be registered (with a disclaimer in respect of the use of "Miller"). The arguments in the case have focused on the words "Meister Brau". The appellants have urged (i) that these words have no direct reference to the character or quality of the goods in relation to which the mark is to be registered and so they would qualify for registration under section 17(1)(d) of the 1973 Act, alternatively (ii) that they are capable of distinguishing the appellants' goods and so they would qualify for registration under section 18 of the Act and (iii) that a mark whose principal features are a combination of "Miller" and the distinctive words "Meister Brau" is registrable on one or other of the Parts of the Register.

4 This appeal raises the question of how words in a foreign language should be regarded on applications to have them registered either alone or as part of a composite mark, a question considered by the Supreme Court in Faberge Inc. v. The Controller (judgments delivered 2 December. 1977 and reported in 1978 F.S.R. 239). There the applicants sought to register the word "Kiku" for perfumes, cosmetic preparations, soaps, etc., a word which in the Japanese language means "chrysanthemum". Kenny, J. allowed its registration in Part A (the Controller having refused registration), a decision affirmed on appeal. The applicants had argued that the word "Kiku" was a word which had no direct reference to the character and quality of the goods in relation to...