Montex Holdings Ltd v Controller of Patents, Designs and Trade Marks

• Jurisdiction: Ireland
• Judge: [nemdiss],Mr. Justice Geoghegan
• Judgment Date: 05 April 2001
• Neutral Citation: [2001] IESC 36
• Date: 05 April 2001
• Docket Number: [S.C. No. 90 of 2000]
• Court: Supreme Court

[2001] IESC 36

THE SUPREME COURT

Keane C.J.

Murphy J.

Murray J.

McGuinness J.

Geoghegan J.

Record No. 90/00

MONTEX HOLDINGS LTD v. CONTROLLER OF PATENTS DESIGNS & TRADE MARKS & DIESEL SPA

IN THE MATTER OF THE TRADE MARKS ACT, 1963 AND IN THE MATTER OF THE TRADE MARKS ACT, 1996 AND IN THE MATTER OF AN APPLICATION PURSUANT TO THE TRADE MARKS ACT, 1963 BY MONTEX HOLDINGS LIMITED DATED 18TH OF SEPTEMBER, 1992 FOR REGISTRATION OF DIESEL AS A TRADE MARK IN CLASS 25 OF THE REGISTER OF TRADE MARKS

BETWEEN/

MONTEX HOLDINGS LIMITED

Plaintiff

and

THE CONTROLLER OF PATENTS, DESIGNS AND TRADE MARKS AND DIESEL S.p.A.

Defendants

Citations:

TRADE MARKS ACT 1963 S19

TRADE MARKS ACT 1963 S25(2)

KERLYS LAW OF TRADE MARKS AND TRADE NAMES 12ED PARA 4–09

TRADE MARKS ACT 1938 S11 (UK)

SMITH HAYDEN & CO LTD'S APPLICATION 1946 63 RPC 101

BALI CASE 1964 RPC 496

GENERAL ELECTRIC CO (GEC) V GENERAL ELECTRIC (GE) COMPANY LTD 1972 2 AER 507

BERLEI (UK) V BALI BRASSIER INC 1969 2 AER 812

TRADE MARKS REGISTRATION ACT 1875 S6

TRADE MARKS ACT 1883 S73

SUPREME COURT OF JUDICATURE ACT 1875

TRADE MARKS ACT 1905

TRADE MARKS (AMDT) ACT 1937 S6

HALL V BARROW 1863 32 LJ CH 548

HACKS APPLICATION, RE 1940 58 RPC 91

TRANSFERMATIC TRADE MARKS 1966 RPC 568

PIANOTIST CO'S APPLICATION & ARISTOC LTD V RYSA LTD 23 RPC 774

TRADE MARKS ACT 1963 S40

TRADE MARKS ACT 1963 S59

TRADE MARKS ACT 1963 S21

TRADE MARKS ACT 1963 S21(1)(b)

TRADE MARKS ACT 1963 S15

TRADE MARKS ACT 1963 S20(2)

NEW SOUTH WALES DAIRY CORP V MURRAY GOULBURN CO-OP CO LTD 1990 171 CLR 363

NETTLEFOLD ADVERTISING V NETTLEFOLD SIGNS 1997 38 IPR 495

CANON KABUSHIKI KISHA V BROOK 36 IPR 88

GE TRADE MARKS, RE 1972 1 WLR 729

COCA -COLA CO V F CADE & SONS LTD 1957 IR 196

SEVEN-UP V BUBBLE-UP 1990 ILRM 204

STIRLING-WINTHROP GROUP LTD V FARBENFABRIKEN BAYER 1976 RPC 469

Synopsis:

Intellectual Property

Intellectual property; registration of trademarks; plaintiff had applied to first named defendant to register trademark; first named defendant had refused to register trademark because of rival use of same brand name by second named defendant; High Court had held that there had been a lack of bona fides in plaintiff's proposed user of mark and had refused registration on this ground; whether registration of trademark would be reasonably likely to cause deception and confusion amongst a substantial number of persons; whether there must be some element of blaweworthiness on part of applicant above and beyond likelihood of deception or causing confusion to disentitle him/her from obtaining legal protection of relevant trademark; ss. 19, 25(2), Trade Marks Act, 1963.

Held: Appeal dismissed; blameworthiness does not have to be established for registration to be refused if there is a proven likelihood of confusion.

Montex Holdings v. Controller of Patents - Supreme Court: Keane CJ., Murphy J., Murray J., McGuinness J., Geoghegan J. - 05/04/2001 - [2001] 3 IR 85 - [2002] 1 ILRM 208

The applicant (Montex Holdings) had attempted to register the trademark "Diesel" in respect of items of clothing. The second defendant (Diesel S.P.A.) had objected to the registration. The Controller of Patents had refused the application primarily on the basis that the use of the mark by the applicant would cause deception and confusion amongst a substantial number of persons. The applicant appealed the decision of the Controller to the High Court. O'Sullivan J held that the registration of a trademark would be refused where its registration would be likely to cause confusion or deception. Accordingly the decision of the Controller declining to permit the registration of the trademark in question was upheld and the appeal was dismissed. The applicant appealed. Mr. Justice Geoghegan held that there had been ample evidence before the High Court to justify the conclusions reached. The appeal would be dismissed.

1 Judgment of Mr. Justice Geoghegan delivered the 5th day of April 2001 [nemdiss]

2 This is an appeal from a decision of the High Court (O'Sullivan J.) affirming a decision of the first-named defendant refusing registration of the trade mark "DIESEL", it being a name used by the plaintiff on clothing manufactured and sold by it. The decision by the Controller was, in effect, made on his behalf by Mr. Peter Skinner, a hearing officer in the Office of the Controller of Patents, Designs and Trade Marks and took the form of a written decision, dated the 1st of July, 1998, made following upon an oral hearing. The application had been opposed by the second-named defendant which is an Italian company and which claimed that it manufactured and sold clothes internationally under the name "DIESEL" and that these included casual wear, jeans and jackets manufactured by it and under the trade mark "DIESEL" since at least 1982. Essentially, the opposition was based on the suggestion that the name was likely to lead to confusion with the products of the Italian company and that as a matter of probability the plaintiff company or perhaps more accurately its predecessor in title, a point which I will be explaining, effectively poached the Italian company's trade mark and that it could not have been coincidence that the plaintiff and its predecessor adopted that mark. There were other issues before the hearing officer which were decided in favour of the plaintiff and to which it is not necessary now to refer.

3 S. 19 of the Trade Marks Act, 1963reads as follows:

"It shall not be lawful to register as a trade mark or as part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of law, or would be contrary to law or morality, or any scandalous design."

4 S. 25(2) of the same Act of 1963 provides as follows:-

"Subject to this Act, the Controller may refuse the application, or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think right."

5 If the trade mark sought to be registered falls within the category of trade marks referred to in s. 19 above the Controller is obliged to refuse application for registration. But even if registration of the trade mark is not prohibited by s. 19 or by any of the other sections in the Act of a prohibitory nature, the Controller, under s. 25(2) cited above, has a discretion to refuse the application. That discretion must be exercised properly and the reasons for it must be clear.

6 In this case Mr. Skinner, in his written decision and for the reasons which he gives in that decision, decided that because of the rival use between the two companies the trade mark sought to be registered was of the category referred to in s. 19 and that therefore, registration was prohibited.

7 In the final sentence of his decision, however, the hearing officer states also that the application is refused in exercise of the discretion conferred on the Controller by the Act. It is suggested that this was an alternative ground of refusal but that is not entirely clear as the hearing officer does not go on to give any express reasons for the exercise of the discretion. In the event nothing turns on this point as there was an appeal to the High Court which is an appeal by way of rehearing.

8 On the appeal to the High Court, the learned High Court judge held that there was a lack of bona fides in the plaintiff's proposed user of the mark and that on this ground he would refuse registration. Effectively, this was a purported exercise of his discretion under s. 25(2) of the 1963 Act cited above. O'Sullivan J. then went on to observe that that was sufficient to determine the appeal but that in deference to the comprehensive submissions which had been made on the point by counsel for all three parties, he was prepared to indicate his views on what was the correct test under s. 19 of the 1963 Act also cited above. He then went on to find that the proposed mark offended s. 19. With respect to the learned High Court judge, he appears to have dealt with the matter in the wrong order. In paragraph 4-09 of Kerly's Law of Trade Marks and Trade Names 12 ^th edition the following is stated:

"The discretion of the registrar only arises if he decides preliminary questions of fact in favour of an applicant. There is no room for the exercise of the registrar's discretion where the opponent succeeds in opposition under sections 11 or 12(1)."

9 Three different cases are cited in support of that proposition. The "section 11" referred to is section 11 of the English Trade Marks Act, 1938 and is in the same terms as section 19 of the Irish 1963 Act. If the principle therein stated is correct in relation to the registrar (in Ireland, the Controller) it must equally apply to the judge on appeal, who is engaged in a rehearing. The principle thus stated in Kerly would seem to be clearly correct because it must surely be important that the Controller or the judge on appeal should first address the question as to whether it is mandatory on him to refuse registration before he addresses the question as to whether as a matter of discretion he should do so.

10 I therefore propose now to consider the section 19 issues. For reasons which I will be elaborating on in some detail, I take the view that the learned High Court judge was correct in his decision on section 19 and in those circumstances I think it inappropriate to give any consideration to the discretionary issue.

11 For the purposes of considering the section 19 issues it is essential to summarise the evidence and material which were before the hearing officer and the court and relevant decisions of the courts of England and Australia, which were cited in argument and which threw up conflicting views as to the interpretation of s. 19 or its equivalent in those other jurisdictions...