O'Neills Irish International Sports Company Ltd v O'Neills Footwear Dryer Company Ltd

• Jurisdiction: Ireland
• Judge: Barron J.
• Judgment Date: 30 April 1997
• Neutral Citation: [1997] IEHC 75
• Court: High Court
• Date: 30 April 1997

[1997] IEHC 75

THE HIGH COURT

9692P/1995

O'NEILLS IRISH INTERNATIONAL SPORTS COMPANY LTD v. O'NEILLS FOOTWEAR DRYER COMPANY LTD

O'NEILLS IRISH INTERNATIONAL SPORTS AND CHARLES O'NEILLSCOMPANY LIMITED

PLAINTIFFS

AND

O'NEILLS FOOTWEAR DRYER COMPANY LIMITED

DEFENDANT

Citations:

KERLY LAW OF TRADE MARKS 12ED CH 16-02

C & A MODES V C & A (WATERFORD) LTD 1976 IR 198

FALCON TRAVEL LTD V OWNERS ABROAD GROUP PLC 1991 1 IR 175

B & S LTD V IRISH AUTO TRADER LTD 1995 2 IR 142 1995 2 ILRM 152

SPALDING V GAMAGE 32 RPC 273

Synopsis:

Intellectual Property

Passing Off; defendants marketing product with name of "O'Neills"; whether use of name calculated to lead others to believe goods are those of another; characteristics identifying passing-off; whether damage caused Held: Damage is violation of property right in its reputation or goodwill; plaintiffs entitled to injunction (High Court: Barron J. 30/04/1997)

O'Neills Irish International Sports Co. Ltd. and anon v. O'Neills Footwear Dryer Co. Ltd.

1 Judgment of Barron J.delivered on the 30th day of April, 1997.

2 The Plaintiffs manufacture and sell sports goods under the name O'Neills. They have a large annual advertising budget and trade successfully in competition with three multi-national companies operating in the same field.

3 The Defendant company was formed on 4th March, 1995 by John O'Neill. He qualified as a motor mechanic but now specialises in automobile electrics. In 1994, he obtained a patent for an electrically operated shoe dryer. He sought to interest sports manufacturers including the Plaintiffs in his invention but without any success. One manufacturer suggested that it might be interested if he could establish sales in the product. Not being able financially to manufacture the product for commercial purposes, he imported from the Far East a similar product for this sole purpose of establishing sales figures.

4 The product, as imported, is packaged in a box approximately the same size and shape as a normal shoe box. The sides of this box show pictures of different types of shoes and of the dryer and generally indicate the nature of the product. Before putting the product on sale the Defendant Company had labels printed which were placed over the two main sides of the box. These labels show that the product is "O'Neill's Footwear Dryer", and refer to Cellbridge, Co. Kildare, Ireland. Elsewhere on the box are the words "made in China". There is no other indication as to the person putting the product on the market.

5 The product as so labelled has been on sale in various department stores and other stores around the country. In the main the product has been sold through sports outlets. In addition to the packaging, the product is also sold by means of a large advertising panel headed "O'Neills Footwear Drayer", which is generally similar to the overprinted labels on the box. Whereas O'Neills in the name of the Defendant company is spelt with one apostrophe between the second Land the final S. The panel used to promote the product in the sports departments and other places where it is on sale has only the one apostrophe between O and N. Probably nothing turns on this difference but in any event I attach no importance to it.

6 The Plaintiffs became aware that the Defendant was putting O'Neills footwear dryer on sale in Ireland sometime in the month of July 1995. Proceedings were commenced by plenary summons dated 8th December, 1995. Although the Plaintiffs own a number of trademarks involving the name O'Neills which it alleged in its pleadings had been infringed, at the hearing the Plaintiffs sought to obtain relief solely upon the basis of the tort of passing-off, and then limited only to an injunction.

7 In the present case the Plaintiffs maintain that they have acquired a reputation in the name O'Neills and that the Defendant is deliberately trading on their reputation in that name. From the evidenced which I heard I am satisfied that the word O'Neills is associated with the Plaintiffs in relation to sports goods and that they have built up a considerable reputation in the name. I am equally satisfied that the manner in which the Defendant's product is being marketed is calculated to lead persons seeing that product and its advertising panel to believe that the product is the product of the Plaintiffs.

8 The attitude of John O'Neill, the Defendant's Managing Director and the patentee of the other shoe dryer was that the action was uncalled for and that in any event there was no advantage to have the word O'Neills on the product. I regret that I cannot accept his view on either matter. The action is clearly one which is called for now do I accept that there is no advantage in having the name O'Neills on the packaging and advertising for the product. Time is important to the Defendant. Clearly, the faster that it can establish a market for this type of product the sooner it will be able to interest successfully a manufacturer to manufacture the product. In my view, it is no accident that the Defendant is marketing the product in the way in which it does so. It was clearly expected that more sales would be obtained by using the word O'Neills and by so doing is deliberately trading upon the reputation of the Plaintiffs. The Defendant did not contest the reputation of the Plaintiffs. Its main submission was that what was being done was permissible because the Plaintiffs did not sell footwear nor footwear dryers.

9 No doubt John O'Neill believed that since his name was O'Neill he could form a company with O'Neill in its name and market his product under that...