Seven-Up Company v Bubble Up Company Inc.

• Jurisdiction: Ireland
• Judge: Mr. Justice Murphy
• Judgment Date: 01 January 1990
• Neutral Citation: 1989 WJSC-HC 2361
• Docket Number: No.564 Sp Court 6/1988
• Court: High Court
• Date: 01 January 1990

1989 WJSC-HC 2361

THE HIGH COURT

No.564 Sp Court 6/1988

SEVEN-UP CO v. BUBBLE UP CO

IN THE MATTER OF THE TRADE MARKS ACT 1963

BETWEEN

THE SEVEN-UP COMPANY

PLAINTIFF

AND

BUBBLE UP COMPANY INC AND THE CONTROLLER OF PATENTS, DESIGNS AND TRADE MARKS

DEFENDANTS

1 Judgment of Mr. Justice Murphy delivered the 12th day of April 1989

2 The principal issue in this case is whether a mark consisting of the words "Bubble Up" in a special type within a device is capable of distinguishing for the purposes of Section 18 of the Trade Marks Act 1963the goods of Bubble Up Company Inc in the course of trade from the goods of other traders having no connection with that mark. The issue does not involve any novel point of law and its resolution turns upon the application to the particular facts of the present case of legal principles which are now authoritatively decided.

3 On the 3rd of September 1974 the above-named Defendant Company Bubble Up Company Inc (hereinafter referred to as "the Applicants") applied to register the words and device already described as a trade mark in part A of the Register in Class 32 in respect of a specification of goods which, as later amended, reads:-

"Carbonated non alcholic beverages and concentrates thereof"

4 The application was accepted for Part B of the Register and was advertised on the 8th of October 1980. Notice of opposition pursuant to Section 26 of the Trade Marks Act 1963was filed on the 8th of May 1981 by the above-named Plaintiffs, the Seven-Up Company, (hereinafter referred to "as the Opponents"). When the appropriate pleadings had been filed the opposition became the subject matter of a hearing before an officer acting on behalf of the Controller of Patents Designs and Trade Marks (hereinafter referred to as "the Controller") on the 2nd of October 1985. The parties were notified on the 4th of November 1985 that the hearing officer had decided to dismiss the opposition and allow the application to proceed. Due no doubt to the pressure of business the grounds for the decision were not available until the 29th of January 1988. The present proceedings come before this Court by way of an appeal from that decision.

5 The present dispute between the Applicants and the Opponents is substantially the renewal of a contest which had arisen as a result of an earlier application by Bubble Up International Limited (the Applicants" predecessors in title to the device) which was apparently made in 1967 and, like the present application, opposed by the Opponents. On that occasion the opposition prevailed and the application for registration in Part B was refused. The grounds for refusal are set out in the decision of the hearing officer which was reported in the Official Journal on the 20th of October 1971. It is of some significance to note that the mark in respect of which registration was sought in 1967 was somewhat different from the subject matter of the present application. It appears from the documentation exhibited in affidavits before the Court that the original mark comprised the same words "Bubble Up" but were then enclosed in a device which consisted of a number of interlocking or overlapping bubbles rather than the single oval shaped device which now encloses the same words. However, far more important was the fact that the Applicants did not produce any evidence of use of the mark or any other circumstances which might tend to show that the mark was in fact capable of distinguishing the goods of the proprietor of that mark from the goods of any person having no connection therewith. In other words the original application depended solely on the Applicants discharging the onus of proving that the mark was capable of distinguishing having regard to the extent to which the trade mark possessed an inherent capacity to distinguish. The Applicants have sought to support the present application by adducing evidence by way of statutory declaration as to the use of the trade mark in the Republic of Ireland prior to the relevant date, that is to say, the 3rd September 1974.

6 The evidence on which the Applicants rely is set out primarily in two declarations made by Mr. Roy Gurvey declared on the 28th of February 1983 and 26th of March 1984 respectively and a declaration made by Mr. Richard Ryan on the 30th of March 1978 and introduced in evidence as an exhibit in a declaration made by Mr. Martin Tierney on the 10th of March 1983.

7 In his first declaration Mr. Gurvey sets out some of the history of the litigation between the Applicants and the Opponents in different parts of the world and indicates the success which the Applicants have had in securing the registration of the Bubble Up mark in different countries. Whilst I would attach little importance to registration or non-registration in different jurisdictions where the law or the facts (or indeed the arguments) may have been different to those presented to this Court it is significant to note the positive averment made by Mr. Gurvey as to the effect of the two marks in the United States. He sets out the position in paragraph 8. of his declaration in the following terms:-

8 "That the trade marks "Bubble Up" and "Bubble Up" and device and the trade marks "7-Up" and "seven-up" of the opposer, the seven-up company, have, for more than forty years, been used side by side by the respective proprietors in the United States of America without confusion arising".

9 It does not appear from the declarations made on behalf of the Opponents that that proposition is disputed.

10 With regard to user what Mr. Gurvey says (at paragraphs 15 and 16) is as follows:-

"That prior to the previous decision of the 23rd April 1981 (clearly this is a clerical error and should read 1971) Applicant has, through its licensees been continuously using the trade mark "Bubble Up" and device in Ireland so that the mark has become well known to the public in Ireland".

11 The Applicants then go on (in paragraph 16) to identify as their licensees and registered users five distributors or outlets none of whom appears to have a place of business in Dublin. In his first declaration Mr. Guvery does not quantify in any way the extent or value of the sales of his company's products but merely concedes that they would not be as great as those of the Opponents.

12 In his declaration Mr. Ryan too refers to the five distributors or bottlers appointed by the Applicants and then deals with the output of the Applicants" products from three only of those sources, namely,

13 (a) William J. Dwan and Sons Limited have sold the product in the period from 1967 to 1974 to the value of approximately £203,280.

14 (b) J. Donohoe Limited have sold approximately 46,000 dozen bottles bearing the trade mark;

15 (c) Deasy and Co., sell annually approximately 12,200 dozen six and a half ounce size and 1,300 dozen one quarter litre size bottles of the product.

16 The only additional information provided by Mr. Ryan is partly of a negative character and partly positive. What he says at paragraph 5. is as follows:-

"I am advised that there has been no press or television advertising of the product as such but there is advertising at the point of sale by means of stickers, drip mats, bottle displays, beach-balls and the like".

17 In his supplemental declaration Mr. Gurvey adds the following: -

"That notwithstanding the statutory declaration of Michael Parle the sale of Bubble Up Brand soft drinks has increased in the Republic of Ireland and continues to increase. This is evidenced by the fact that Bubble Up brand soft drink is now being sold in Dublin by the licensee, William Dwan and Sons Limited of Tipperary. Also sales have increased in the Republic of Ireland to 200,000 cases per year. Further, a new one and a half litre bottle has been introduced ...".

18 The manner in which the evidence of user of the Applicants" product was adduced was criticised by Counsel on behalf of the Opponents. Even more important was the failure of the Applicants to relate such sales as have been achieved to the mark and its claimed capacity to distinguish. It was pointed out that the bottlers appointed by the Applicants carried on business outside Dublin. That the sales affected by three only of the five bottlers were dealt with. That the figures in respect of Messrs Dwan were given by reference to the value of the product and then as a total for the seven year period from 1967 to 1974. In the case of Messrs Donohoe the sales are given by quantity rather than value and the period over which the sales were affected is not specified. In relation to Deasy and Co., such sales as have been achieved are given as an annual figure by reference to quantity and not value. It is in his second declaration that Mr. Gurvey explains that by...