Philadelphia Storage Battery Company v Controller of Industrial and Commercial Property and N. v Philips Gloeilampen-fabrieken

• Jurisdiction: Ireland
• Court: Supreme Court (Irish Free State)
• Judgment Date: 10 May 1935
• Date: 10 May 1935

Philadelphia Storage Battery Co. v. Controller of Industrial and Commercial Property and N. v. Philips' Gloeilampen-fabrieken.

In the matter of an application for registration of the word "Philco" as a Trade Mark, and in the matter of the Industrial and Commercial Property (Protection) Acts, 1927 and 1929; PHILADELPHIA STORAGE BATTERY CO.

Plaintiffs

and

the CONTROLLER OF INDUSTRIAL AND COMMERCIAL PROPERTY, and N. V. PHILIPS GLOEILAMPEN-FABRIEKEN

Defendants.

Supreme Court.

Trade mark - Application for registration - Invented word - Opposition by proprietor of a registered trade mark in respect of similar goods - Whether applicants' trade mark "calculated to deceive" - Position of Controller of Industrial and Commercial Property - Industrial and Commercial Property (Protection) Act, 1927 (No. 16 of 1927), sect. 96.

The applicants, the Philadelphia Storage Battery Company, applied for registration of the trade mark "Philco" (stated to be derived from"Philadelphia" and "Company") in Part A and Class 6 of the Register of Trade Marks established by the Industrial and Commercial Property (Protection) Act, 1927, in respect of "apparatus and appliances for use in connection with telephony, telegraphy and television." The mark was was first used in Saorstát Éireann éireann in 1931. The application was opposed by the opponents, N. V. Philips Gloeilampen-fabrieken, manufacturers of electrical goods (including apparatus and appliances for telephony, telegraphy and television), who alleged that their goods had been sold in association with the name "Philips" in many countries for a number of years and that their organisation and products had been well known for many years in Saorstát Éireann éireann by the name "Philips," "Philips' Company," "Philips' Co." and "Philips Radio." They had manufactured and sold radio apparatus and appliances since 1918 and had sold such goods in Saorstát Éireann éireann since 1925. They were the registered proprietors of a number of trade marks, viz., "Philips," "Phililux," "Philiray," "Philuma,""Phililite" and "Philiflood." They contended that the trade mark of the applicants by reason of its character and resemblance to their registered trade marks was calculated to deceive and lead to confusion when used in connection with the same or similar goods. The applicants, in their counter-statement, stated that the trade mark "Philco" had been registered in many countries since 1919 and had been used and advertised in Saorstát Éireann éireann for some time, and that it possessed a quality and degree of distinctiveness and dissimilarity sufficient, as experience had shown, to avoid all risk of confusion or deception. The Controller of Industrial and Commercial Property having refused to register the applicants' trade mark,

Held by the Supreme Court (Kennedy C.J. and Murnaghan J.; FitzGibbon J. dissenting), affirming Meredith J., that there was no reasonable likelihood of confusion arising from the use of the applicants' trade mark, which should, accordingly, be registered.

Per curiam: The Controller of Industrial and Commercial Property, in performing his duties, is not exercising a judicial discretion, and the Court, on an appeal from him, is entitled to form its own view of the facts untrammelled by his opinion.

Summary Summons.

The special indorsement of claim on the plaintiffs' summary summons was as follows:—

The plaintiffs' claim is by way of appeal from the decision of the Controller of Industrial and Commercial Property made on the 8th day of December, 1932, in this matter, for:—

1. An order that the application of the plaintiffs to be registered in Part A of the Register of Trade Marks as proprietors of the trade mark 'Philco' advertised in the Official Journal of Industrial and Commercial Property of the 26th August, 1931 (No. 121), under the number 18855, be accepted by the Controller and that the said mark be registered accordingly.

2. That the decision of the Controller refusing said application be reversed and discharged in its entirety.

3. That the defendants, N. V. Philips Gloeilampen-fabrieken may be ordered to pay the costs of the opposition to and hearing of the application before the Controller and of these proceedings.

4. These proceedings will be grounded on the materials stated by the Controller to have been used by him in arriving at his decision, the statutory declarations tendered in evidence at the said hearing by the plaintiffs, the nature of the case and the reasons to be offered."

The materials stated by the Controller to have been used by him in arriving at his decision, and the statutory declarations tendered in evidence by the plaintiffs at the said hearing are sufficiently stated for the purpose of this report in the judgment of the Controller.

The judgment of the Controller was as follows:—

In this case Philadelphia Storage Battery Company of Ontario and C. Streets, Philadelphia, Pennsylvania, United States of America, are applying to register a trade mark in Class 6 in respect of apparatus and appliances for use in connection with telephony, telegraphy, and television. The mark consists of the word "Philco" overprinted by what appears to be a representation of a lightning flash. The date of the application for registration is the 18th May, 1931, and in the prescribed form of application as filed, no user of the mark was claimed.

The application is opposed by N. V. Philips' Gloeilampen-fabrieken of Emmasingel 13d, Eindhoven, Holland, upon the grounds, stated shortly: (a), that the Opponents are the registered proprietors of a trade mark consisting of the word"Philips" registered in Class 6 in respect of the same goods and of the same and other trade marks, all containing for their prefix the syllable "Phil," registered in the same and other classes for radio apparatus and appliances and electrical goods generally, and (b), that these marks have been extensively used, and that the mark applied for, by reason of its character and resemblance to the said registered marks, is calculated to deceive and lead to confusion when used in connection with the same or similar goods.

At the hearing Mr. Lavery K.C. and Mr. Troddyn appeared on behalf of the applicants for registration, to whom I shall refer as "the Respondents," and Mr. FitzGibbon K.C. and Mr. Monks appeared for the Opponents, or Petitioners.

Briefly, the facts are that the Petitioners, who were established in Holland in 1891 and are now a world-known firm, manufacturing electrical goods, including radio apparatus, which branch of their business was started in 1918, have, since their inception, used the word "Philips" as one of their trade marks in respect of all their goods. During the course of the firms' development, several other trade marks were adopted, registered and used, amongst them being the word marks "Phillite," "Phililux," "Philiflood," "Philiray,"and "Philuma." These latter marks would appear not to have been used so far on radio apparatus, the material goods in the present case. The evidence shows that the Petitioners have a valuable trade in this country and throughout the world, their sales in the Saorstat of radio apparatus alone during the last three years averaging over £13,500 per annum, while their average annual sales here during the same period of all their products (including radio apparatus) was £18,500 approximately. Large sums have been spent here in advertising and popularising Philips appliances, which have acquired a very wide reputation. Their radio appliances would appear to have been advertised and sold exclusively under the trade mark "Philips," while the other products,i.e., electrical goods generally, have been marketed under"Philips," and, amongst others, the several marks to which I have just referred.

The Respondents, who were incorporated in the United States of America in 1906, and commenced the manufacture of radio apparatus only in 1928, have also a very large trade, and have acquired a considerable reputation, at least in their own country, their gross sales during the last thirteen years amounting to 170 million dollars approximately. No evidence was produced to show how much, if any, of this vast sum was derived from sales in this country of either electrical goods generally (batteries, etc.) or radio appliances in particular, and I am forced to the conclusion that such sales here, if effected at all, were in a very small way. Certainly no evidence of any sales of their batteries was produced, nor do the Respondents rely on such sales in their claim to registration. Indeed, the present claim to registration is based on the right to registration irrespective of any user of the mark. Again, the Respondents' expenditure on advertisements of their products is on a large scale, but I have no evidence as to what proportion was spent in this country. In 1919 the Respondent firm adopted the word"Philco" as its trade mark for its batteries, but I have no evidence that any such goods were sold here, or indeed that the word "Philco" was ever seen or heard of in this country, at any rate before the date of the application for registration. The Respondents are a reputable firm, and it is not suggested, nor is there any question, that the word "Philco" was coined with a view to getting close to "Philips," and I am satisfied that the word was invented and adopted without the slightest thought of the Petitioners or any of their marks. I accept the view that "Philco" is derived from the first syllables of the words "Philadelphia" and "Company,"portions of the Respondents' title, but this unimpeachable derivation does not per se absolve the mark from its liability to comparison with existing marks, or, being conceded in their favour, does not carry the Respondents the whole way necessary for registration.

The evidence in this case was submitted by way of declaration, none of the declarants being examined. I might here mention that a good deal of the...