Marie Claire Netherlands B.V -v- The Controller of Patents & Ors, [2014] IEHC 362 (2014)

Docket Number:2013 582 SP
Party Name:Marie Claire Netherlands B.V, The Controller of Patents & Ors
Judge:Barrett J.
 
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THE HIGH COURT [2013 No. 582 SP]

IN THE MATTER OF AN APPEAL FROM A DECISION OF THE CONTROLLER OF PATENTS AND DESIGNS AND TRADE MARKS UNDER SECTION 79 OF THE TRADE MARKS ACT, 1996 AND ORDER 94 OF THE RULES OF THE SUPERIOR COURTS

BETWEEN

MARIE CLAIRE NETHERLANDS B.V. PLAINTIFFAND

THE CONTROLLER OF PATENTS, DESIGNS AND TRADE MARKS, MARIE CLAIRE S.A. AND BRANDWELL (IRL) LIMITEDDEFENDANTS

JUDGMENT of Mr Justice Barrett delivered on the 21

st

day of July, 2014.

Background to application

  1. In the present application Marie Claire Netherlands B.V. is seeking leave to appeal the decision of this Court in Marie Claire Netherlands B.V. v. The Controller of Patents, Designs and Trade Marks and Others (2014). Consistent with Article 34.4.3˚ of the Constitution, s. 79(3) of the Trade Marks Act, 1996, regulates the constitutional right of appeal in cases such as this, providing that:

    “By leave of the [High] Court, an appeal from a decision of the Court under this section shall lie to the Supreme Court on a specified point of law.”

  2. It is clear that appeal from the decision in issue is restricted to appeal on a point of law and of course the point of law must arise in or from the judgment in respect of which leave to appeal is sought. It appears that s.79(3) of the Act of 1996 makes the court the arbiter as to whether or not a point of law can be said to arise from the decision in issue, in this case the judgment referred to above.

    Alleged points of law

  3. The court identifies below various purported points of law upon which an appeal is sought to be made and indicates the court’s view as to whether the point raised is one in respect of which leave to appeal ought to be granted.

  4. [Point 1.] In the context of opposition to registration of a mark pursuant to s. 10(4) of the Trade Marks Act 1996 and if there has already been use by the applicant of the mark on the goods applied for, whether the date of commencement of the said use is the correct date for determining whether use of the mark on the said goods constitutes an actionable misrepresentation in passing off for the purposes of s. 10(4). In truth this alleged point of law seems to be a collateral attack on the findings of fact made by the Court in relation to the issue of use in its principal judgment in these proceedings. Be that as it may, the particular issue raised does not in any event appear to the court to arise in the context of s.10(4)(a) of the Trade Marks Act 1996 which is the basis upon which the principal decision in these proceedings was grounded.

  5. [Point 2.]Whether, in the context of opposition to registration of a mark in respect of clothing pursuant to s. 10(4) of the Trade Marks Act, 1996, the date of commencement of use of the mark to offer clothing for sale in the State comprises commencement of the use complained of for the purposes of...

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