Re, Hamilton Cosco Inc.

• Jurisdiction: Ireland
• Court: High Court
• Judgment Date: 21 January 1966
• Docket Number: (1965. No. 49 Sp.)
• Date: 21 January 1966

(1965. No. 49 Sp.)

In re Application of Hamilton Cosco Inc.

In the Matter of an Application no. 726/63 for the Registration of the word "Cosco" as a Trade Mark by Hamilton Cosco Inc

In the Matter of the Industrial and Commercial Property (Protection) Act, 1927, and the Trade Marks Act

1963.

On the Application of HAMILTON COSCO INCORPORATED

Applicants.

Trade mark - Registration - Appeal from Controller's decision - "Cosco" - Invented word - Trade Marks Act, 1963 (No. 9 of 1963), ss. 17 and 57.

Special Summons.

Appeal from the decision of the Controller of Industrial and Commercial Property, given on the 14th September, 1964, refusing to register the word "Cosco" as a trade mark in Part A of the register of trade marks.

The facts have been summarised in the head-note and are fully stated in the judgment of Budd J., post.

The applicants were incorporated, and had their place of business, in the State of Indiana, United States of America. The word "Cosco" was derived from the applicants' former name. The Controller of Industrial and Commercial Property refused to register "Cosco" as a trade mark on the ground that it was not an invented word because it had appeared twice in the, New York telephone directory—once as a surname and once as part of the name of a company. The evidence showed that "Cosco" was not a word which was, or ever had been, in use in this country as an ordinary English word.

Held by Budd J. that, on the evidence and in all the circumstances of the case, the word "Cosco" was an invented word and the applicants were entitled to have it registered in Part A of the register of trade marks.

Budd J. :—

This is an appeal from the decision of the Controller of Industrial and Commercial Property refusing to register the word "Cosco" as a trade mark in Part A of the register kept under the Trade Marks Act, 1963. The section which deals with the types of trade marks which may be registered is s. 17 of the Trade Marks Act, 1963. That section provides as follows, in so far as it is relevant to the facts of the present case:—

"17.—(1) In order for a trade mark (other than a certification trade mark) to be registrable in Part A of the register, it must contain or consist of at least one of the following essential particulars:—

(c) an invented word or invented words;

(d) a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname."

In the view which I take of this case the provision I have to deal with is paragraph (c). The question therefore is whether or not this word, "Cosco," is an invented word.

Before I go into the facts of the case and the relevant law, I should refer to the position of this Court in dealing with an appeal from the Controller since I have had certain submissions made to me with regard to the nature of the discretion which the Court has to exercise. In the first place I have been referred to the decision of the Supreme Court in Philadelphia Storage Battery Co. v. Controller of Industrial and Commercial Property and N. V. Philips' Gloeilampenfabrieken(1).That decision was, of course, concerned with the then existing Acts of 1927 and 1929. At page 593 of the report, Chief Justice Kennedy, in dealing with the function of the Court, said:—"In my opinion, therefore, while we read the views of the Controller with respect and in the present case with admiration of the clarity and ability of his statement of them, we are quite free to form our own opinion untrammelled by them."

The views of the Supreme Court in that case do not appear to have been affected by the Legislature in the enactment of the Trade Marks Act, 1963. Sub-sects. 1, 2 and 4 of s. 57 of the Act of 1963 state:—

"(1) An appeal shall lie to the Court from any order or decision of the Controller under any provision of this Act (not being a decision of the Controller under section 11 or subsection (7) of section 69 of this Act) or from a correction of an error in the register by the Controller under subsection (3) of section 42 of this Act, and the Court may make such order confirming, annulling or varying the order or decision or correction of the Controller as it thinks fit.

(2) In any appeal from a decision of the Controller to the Court under this Act, the Court shall have and exercise the same discretionary powers as under this Act are conferred upon the Controller."

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