Re Mothercare Ltd

• Jurisdiction: Ireland
• Judgment Date: 22 April 1968
• Date: 22 April 1968
• Docket Number: [1967. Nos. 103, 104 ]
• Court: High Court

[1967. Nos. 103, 104 Sp.]

Application of Mothercare Ltd.

In the Matter of the Trade Marks Act, 1963: MOTHERCARE LIMITED

Applicant.

Trade mark - Registration - "Mothercare" - Whether proposed mark adapted to distinguish - Whether mark capable of distinguishing - Trade Marks Act, 1963 (No. 9 of 1963), ss. 17, 18.

Special Summons.

The applicant appealed to the High Court pursuant to s. 57 of the Trade Marks Act, 1963, from refusals by the Controller of Industrial and Commercial Property of applications for registration of "Mothercare" as a trade mark in Part A of the register for "articles of clothing, all for women, children and babies"—Class 25, and for "toilet preparations and hair lotions none being medicated, soaps; perfumes; dentifrices"—Class 3. The applicant also appealed from refusals by the Controller of alternative applications for registration of "Mothercare" in Part B of the register. The applicant did not adduce any evidence of user.

The applicant sought registrations in Part A of the register of trade marks as proprietor of the mark "Mothercare" for articles of women's and children's clothing and as proprietor of the same mark for toilet preparations and hair lotions; alternatively the applicant sought registrations in Part B of the register as proprietor of that mark for the same classes of goods. The applicant did not furnish any evidence of user of the mark in relation to such goods. The Controller of Industrial and Commercial Property refused the applications for registration in Part A and the applications for registration in Part B of the register. The applicant appealed to the High Court.

Held by Kenny J., 1, that the word "Mothercare," although it contained an clement of description, had no direct reference to the character or quality of the relevant goods and would have been registrable in Part A of the register if the word satisfied the further requirement of being adapted to distinguish the applicant's goods from the goods of others.

In re Joseph Crosfield & Sons Ltd. [1910] 1 Ch. 130.

In re Compagnie Industrielle des Pétroles' Application [1907] 2 Ch. 435 and

In re Minnesota Mining and Manufacturing Co. 65 R.P.C. 229 considered.

2. That the word was not adapted to distinguish the applicant's goods from the goods of others.

In re Leopold Cassella & Co. [1910] 2 Ch. 240 considered.

3. That the word was capable of distinguishing the applicant's goods from the goods of others, that the appeals should be allowed, and that the applications should be remitted to the Controller to enable him to proceed with the applications for registration in Part B of the register.

Richardson v. Weiner [1936] I.R. 32 and

British Colloids Ltd. v. Controller of Industrial Property [1943] I.R. 56considered.

Cur. adv. vult.

Kenny J. :—

On the 26th May, 1965, the applicants (a company incorporated in England) applied for registration of a trade mark consisting of the word "Mothercare" (written with a capital "M" and with two dots inside the right-hand space of the letter "M") in Part A of the register in Class 25 for "articles of clothing, all for women, children and babies."On the 3rd August, 1965, they applied for registration in Part A in Class 3 of the same trade mark for "toilet preparations and hair lotions none being medicated, soaps; perfumes; dentifrices." The Controller declined to register the trade mark for either of these classes of goods and then heard the agent for the applicants. The applications were refused and on the 8th May, 1967, the Controller stated his reasons for doing this. These were that the word was not invented, that it had direct reference to the character or quality of the goods and that it was not inherently distinctive. He also refused applications for registration in Part B because the word was not capable of distinguishing the applicants' goods and because it had a direct reference to their character or quality "in a laudatory sense." The applicants did not give any evidence of the user of the trade mark in this State in connection with either of the classes of goods for which they sought registration. The applicants have now appealed to this Court against both decisions.

On the 31st May, 1965, the Controller had registered the applicants as proprietors of a trade mark consisting of the word "Mothercare" in Part B of the register for perambulators and push chairs, and parts and fittings therefor, included in Class 12 (No. 68,832—Part B); and on the 26th May, 1965, he had registered the applicants in Class 20 as proprietors of a trade mark, consisting of the same word, for bedding (other than bed clothing) and furniture (No. 70,302—Part B) and he had directed that this registration was to be associated with registration No. 68,832. I have not been informed whether evidence of user of this word as a trade mark had been given to the Controller on the applications for these registrations, but they seem to me to

be wholly inconsistent with the view that the word is incapable of distinguishing the applicants' goods.

The relevant sections of our Trade Marks Act, 1963, are exact copies of the corresponding sections in the English Act of 1938 which applies to Northern Ireland, and it is material that the applicants were, on the 13th February, 1964, registered in Part B of the English register as proprietors of a trade mark consisting of the same word for all goods included in Class 3 (Schedule 4), the heading of which is:—"Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices." On the same day they were registered as proprietors of the same trade mark in Part B in respect of "articles of clothing, all for women, children and babies." On the 8th April, 1965, they were registered as owners of a trade mark consisting of the letter "M"printed in white on a black background with the word"Mothercare" on its right printed in black on a white background for "articles of clothing for babies, children and women" with a disclaimer of any right to the exclusive use of the letter "M."

Sect. 17 of the Trade Marks Act, 1963, enacts inter alia as follows:—

"17.—(1) In order for a trade mark . . . to be...