Section 67 of the Trade Marks Act, 1996, as Amended

JurisdictionIreland
CourtHigh Court
JudgeMr. Justice Allen
Judgment Date23 April 2021
Neutral Citation[2021] IEHC 278
Docket Number[2019 No. 202 Sp.]
Date23 April 2021
In the Matter of Section 67 of the Trade Marks Act, 1996, as Amended
And in the Matter of an Application to Rectify the Irish Trade Mark Registration No. 239459 Gaa in the Name of Cumann Lúthchleas Gael
On the Application of Tomás Ó Riain and Seosamh Ó Baoill
Applicants

[2021] IEHC 278

[2019 No. 202 Sp.]

THE HIGH COURT

Cross-examination – Order 38, rule 8 RSC – Trade mark – Notice party seeking an order directing the presence of the second applicant at the trial of the action for cross-examination on his affidavit – Whether the applicants had discharged the onus of proof of showing that cross-examination ought not to be permitted

Facts: The applicants, Mr Ó Riain and Mr Ó Baoill, by special summons issued on 13th May, 2019, applied to the High Court for an order for rectification of the register to record ownership of a trade mark in the name of Mr Ó Baoill. The special indorsement of claim identified the Controller of Patents Designs and Trade Marks as the first notice party and Savanagh Securities Ltd (Savanagh) as the second notice party and the summons was served on them. By notice of motion issued on 12th March, 2020, Savanagh applied for: “(a) An order pursuant to Order 38, rule 8 RSC directing the presence of the second named applicant at the trial of the action for cross-examination on his affidavit of the 10th May, 2019. (b) In the alternative, an Order pursuant to Order 38, rule 3 RSC granting leave to the second named notice party to serve written notice requiring the production of the second named applicant at the trial of the action for cross-examination in relation to his affidavit of 10th May, 2019.” It was said, on the one hand, that what was required of Mr O’ Baoill under the rules of Cumann Lúthchleas Gael (the Association) was not done and that his evidence did not identify what, if any, action he took in relation to his alleged trusteeship of the mark, and on the other, that what the Association required of him as trustee and what he actually did appeared to be at odds. It was said that Mr Ó Baoill’s evidence was not relevant to the issue of the true ownership of the mark; that there was no reliable evidence as to the existence of the trust relied on by the applicants; that there was no evidence of the consent of the trustees to act or the parameters of their role; and that there was no evidence of any connection between Mr O’ Baoill’s role and the registration. The applicants, it was said, had “sought to advance their position in a contrived information vacuum with the barest of averments” and Savanagh asked that liberty to cross-examine should be granted.

Held by Allen J that Savanagh, as a party to proceedings commenced by special summons, was entitled to serve notice to cross-examine. Allen J accepted that a party who serves such a notice does not have an absolute right to cross-examine but, as Murray J put it in Pepper Finance Corporation (Ireland) Ltd v Macken [2021] IECA 15, Savanagh was presumptively entitled to cross-examine the applicants’ deponents and any departure from that position had to be justified by the applicants. Allen J was not satisfied that the applicants had discharged the onus of proof of showing that cross-examination ought not to be permitted.

Allen J held that, subject to hearing counsel, it seemed to him that the appropriate order on the motion was a declaration that the second notice party was entitled to serve notice on the applicants’ solicitors for the production of Mr Ó Baoill for cross-examination on his affidavit filed on 10th May, 2019, and a declaration that the applicants had failed to establish that the circumstances were such that he should not be cross-examined.

Notice party to special summons entitled to cross-examine.

JUDGMENT of Mr. Justice Allen delivered on the 23rd day of April, 2021

Background
1

This is a skirmish in a long running and complicated war about a trade mark. I will try not to get bogged down in the detail but to identify the bare bones of the dispute.

2

The trade mark is a word “ GAA” which was registered in the name “ Cumann Lúthchleas Gael, a sporting association” on 27th November, 2007 in respect of a number of Nice classes, including class 25, clothing; footwear; headgear.

3

Savanagh Securities Limited (“ Savanagh”) is a private company limited by shares. Its registered office is at Pine Lodge, Castlebar, County Mayo, and it carries on business in the name T-Rex Clothing from premises at Breafy Road, Castlebar, County Mayo.

4

On 12th May, 2015 the secretary of Mayo GAA County Board wrote to Savanagh to complain that Savanagh was offering products for sale carrying the official Mayo GAA County crest trademark, which it was not licensed to reproduce, and which, it was said, amounted to an infringement.

5

On 4th June, 2015 F. R. Kelly, European Patent and Trademark Attorneys, wrote to Savanagh on behalf of Cumann Lúthchleas Gael, which they asserted was the owner of the GAA and GAA Logo trademarks. They made the same complaint in relation to the Mayo county jerseys and complained that Savanagh was offering for sale t-shirts for all 32 counties which infringed the GAA and GAA Logo trademarks. They required that Savanagh should immediately cease and desist from doing so and threatened High Court proceedings if it did not. There was an exchange of correspondence in relation to the Mayo county crest and GAA Logo. Savanagh said that it had the permission of the Mayo Ladies LGFA to use the crest but confirmed that it had ceased all advertising and production of all alleged infringing items.

6

By letter dated 8th July, 2015 F. R. Kelly made a new complaint that Savanagh was infringing the word mark “ GAA” which was the subject of Irish Trade Mark Registration No. 239459 and alleged that that constituted an infringement and passing off.

7

On 27th August, 2015 Tierney IP, European Intellectual Property Consultancy, on behalf of Savanagh, wrote to F. R. Kelly. They suggested that the registered owner of the Mayo county crest, Trade Mark No. 233583, was not Cumann Lúthchleas Gael but the officers for the time being of the Mayo County Board of the Gaelic Athletic Association, and that their client had permission from “a part of the GAA” to use that mark.

8

On 19th January, 2016 Tierney IP followed up with a letter protesting that they had not had the courtesy of a reply to their letter of 27th August, 2015 and making a new point, which was that the trade mark registrations showed the owner of others of the marks as Cumann Lúthchleas Gael. Cumann Lúthchleas Gael, it was said, is an unincorporated association which is incapable in law of holding property. That being so, it was said, Cumann Lúthchleas Gael did not have and could never have had locus standi to bring infringement proceedings. The claims of infringement were said therefore to be groundless, and Cumann Lúthchleas Gael was said to be liable to pay damages to Savanagh for loss said to have been sustained by its groundless threat of infringement proceedings.

9

On 6th February, 2016 Savanagh applied to the Controller of Patents Designs and Trade Marks for a declaration of invalidity in respect of Trade Mark No. 239459 “ GAA” on the ground that the registration had contravened s. 8(3)(a) and/or (b) of the Trade Marks Act, 1996.

10

The basis of that application was that the GAA, as an unincorporated association, was incapable of holding property – specifically registered trademarks – and that the registration was contrary to public policy and/or deceptive. A short counterstatement was filed on behalf of Cumann Lúthchleas Gael and in a decision dated 14th March, 2018 the Controller rejected the application but observed that what he characterised as the administrative oversight which had led to the application being lodged in the name GAA rather than the trustees for the time being of the GAA should be rectified by a formal application for registration of the mark in the ownership of the trustees, in accordance with its own rules.

11

By special summons issued on 13th June, 2018 (2018 No. 315 Sp.) Savanagh appealed to the High Court against the decision of the Controller. The summons identified Savanagh as plaintiff and named the Controller, Cumann Lúthchleas Gael (“ the Association”) and Iontaobhas Corporáideach Cumann Lúthchleas Gael Cuideachta Faoi Theorainn Rathaiochta – the GAA's corporate trustee – (“ the Corporate Trustee”) as defendants. According to the Association, the Controller's decision is unimpeachable and Savanagh's appeal is misconceived and procedurally flawed. However, it says, if the register were to be rectified, that would dispose of the appeal.

These proceedings
12

By special summons issued on 13th May, 2019 (which are the proceedings in which the application now before the court has been made) Tomás Ó Riain and Seosamh Ó Baoill, applied for an order for rectification of the register to record ownership of the mark in the name of Mr. Ó Baoill. Mr. Ó Riain is the director general of the Association and Mr. Ó Baoill was one of the trustees of the Association in 2007, when the application for registration was made. The title to the summons identifies Messrs. O'Riain and O'Baoill as applicants but does not identify any respondents. The special indorsement of claim, however, identifies the Controller as “ the first notice party” and Savanagh as “ the second notice party” and the summons was served on them. The special indorsement of claim very clearly sets out the applicants' case and portends that in circumstances in which, it is said, the rectification of the register would dispose of all issues in the appeal without the need for the court to hear the appeal, the applicants will ask that the rectification application and the appeal be listed to be heard consecutively, with the rectification application going first.

13

The principal affidavit grounding the summons in the rectification...

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