Tommy Hilfiger Europe Inc. and Anothers v McGarry (T/A Lifejacket) and Others

• Jurisdiction: Ireland
• Judge: Mr Justice Finnegan
• Judgment Date: 29 May 2008
• Neutral Citation: [2008] IESC 36
• Court: Supreme Court
• Docket Number: Appeal Nos. 179/2005
• Date: 29 May 2008

[2008] IESC 36

THE SUPREME COURT

Denham J.

Kearns J.

Finnegan J.

Appeal Nos. 179/2005

Appeal Nos. 225/2005

Tommy Hilfiger Europe Inc & Ors v McGarry (T/A Lifejacket) & Ors

BETWEEN

TOMMY HILFIGER EUROPE INC. AND TOMMY HILFIGER EURO BV

PLAINTIFFS/RESPONDENTS

and

DEREK McGARRY TRADING AS "LIFEJACKET", GOODSTOCK LIMITED AND LIFEJACKET LIMITED

DEFENDANTS/APPELLANTS

TRADE MARKS ACT 1996 S20

COURTS ACT 1981 S17

COURTS ACT 1991 S14

COURTS ACT 1981 S17(3)

O'CONNOR v BUS ATHA CLIATH (DUBLIN BUS) 2003 4 IR 459 2003/42/10229

COURTS (SUPPLEMENTAL PROVISIONS) ACT 1961 SCHED 3

COURTS (SUPPLEMENTAL PROVISIONS) ACT 1961 SCHED 4

BLANCHARD v HILL 1742 2 ATK 484 26 ER 692

PASLEY & ANOR v FREEMAN 1789 3 TR 51 100 ER 450

GENERAL ELECTRIC CO (GEC) v GENERAL ELECTRIC (GE) COMPANY LTD 1972 2 AER 507

SINGER MANUFACTURING CO v WILSON 1876 2 CH D 434

MILLINGTON v FOX 1838 3 MY & CR 338 40 ER 956

CHANCERY AMENDMENT ACT (LORD'S CAIRN'S ACT) 1858

JUDICATURE (IRELAND) ACT 1877 S28(11)

MERCHANDISE MARKS ACT 1862

MERCHANDISE MARKS ACT 1887

TRADE MARKS REGISTRATION ACT 1875

TRADE MARKS ACT 1996 S7

TRADE MARKS ACT 1996 S18

COURTS OF JUSTICE ACT 1924

BOW v HART 1905 1 KB 592

PATENTS, DESIGNS & TRADE MARKS ACT 1883

DORMEUIL FRERES v NICOLIAN INTERNATIONAL (TEXTILES) LTD 1988 3 AER 197

DORMEUIL FRERES SA v FERAGLOW LTD 1990 RPC 449

IRVINE & ANOR v TALKSPORT LTD UNREP LADDIE 25.3.2002 2002 EWHC 539

CLARK v ASSOCIATED NEWSPAPERS LTD 1998 RPC 261 1998 1 WLR 1558

MANUS AKT v FULLWOOD & BLAND LTD 1954 71 RPC 243

FALCON TRAVEL LTD v OWNERS ABROAD GROUP PLC 1991 1 IR 175

LEDGER SONS & CO v JAMES MUNRO & SON LTD 1916 33 RPC 53

PC PRODUCTS LTD v DOULTON 1957 RPC 199

UNIK TIME CO & ANOR v UNIK TIME LTD & ORS 1983 FSR 121

GENERAL TIRE & RUBBER CO v FIRESTONE TYRE & RUBBER CO LTD 1975 1 WLR 819

PATENTS ACT 1949 S60

INTELLECTUAL PROPERTY

Trade marks

Jurisdiction - Action founded on passing off and infringement of trade mark- Damages awarded in High Court in sum of €15,000 - Whether proceedings commenced in lowest court having jurisdiction to grant relief sought - Limitation on costs recoverable where action not brought in lowest court having jurisdiction to grant relief - Whether Circuit Court had jurisdiction to grant relief sought - Jurisdiction of Circuit Court - Historical development of protection of trade marks - Whether action for infringement of trade mark tort or action based on interference with proprietary interest - Basis of right of action for infringement - Whether Circuit Court has jurisdiction in any particular case is matter of fact to be established in evidence - Evidence of value of property - Whether scheme of Trade Marks Acts exclude jurisdiction of Circuit Court - O'Connor v Bus Átha Cliath [2003] 4 IR 459, Blanchard v Hill [1742] 2 ATK 484, Pasley v Freeman [1789] 3 TERM Rep. 51, General Electric Co v General Electric Co Ltd [1972] 2 All ER 507, Singer Manufacturing Company v Wilson [1876] 2 Ch D 434 and Millington v Fox [1838] 3 My & Cr 338 considered; Bowe v Harte [1905] 1 KB 592 and Dormeuil Freres v Nicolian International (Textiles) Ltd [1988] 3 All ER 197 approved - Courts Act 1981 (No 11), s 17 - Courts Act 1991 (No 20), s 14 - Courts (Supplemental Provisions) Act 1961 (No 39) - Judicature (Ireland) Act 1877 (40 & 41 Vict, c 57) - Merchandise Marks Act 1887 (50 & 51 Vict, c 28) - Trade Marks Act 1996 (No 6), ss 7 18 and 20 - Courts of Justice Act 1924 (No 10) - Damages - Basis upon which damages should be awarded for infringement of registered trade mark and passing off - Whether any question of permanent and continuing damage to goodwill - No diminution in trade - No evidence that their reputation in terms of their products was affected - No remedial advertising campaign - No affect on price - Compensatory damages - General Tire and Rubber Co v Firestone Tyre and Rubber Co [1975] 1 WLR 819 followed; Unik Time Company v Unik Time Ltd [1983] FSR 121 distinguished; Dormeuil Freres SA v Feraglow Ltd [1990] RPC 449, Irvine v Talksport Ltd [2002] EWHC 539, Alan Clark v Associated Newspapers [1998] RPC 261, Antiebolaget Manus v Fullwood [1954] 71 RPC 243 , Falcon Travel Ltd v Owners Abroad Group [1991] IR 175, Ledger Sons v J Munro [1916] 33 RPC 53 and PC Products Limited v Dalton [1957] RPC 199 considered - Appeal and cross appeal dismissed (179/2005 & 225/2005 - SC - 29/5/2008) [2008] IESC 36

Tommy Hilfiger v McGarry t/a Lifejacket

Facts: The plaintiff won a trademark infringement passing off dispute, where the High Court awarded Eur15,000. An appeal was made to the Supreme Court on the issue of costs and the application of the Courts Act 1981 and the award of damages.

Held by the Supreme Court (per Fennelly J.: Denham, Kearns JJ. concurring), that no mention had been made by the plaintiff of specific damage and they had been unable to demonstrate that their garments had been purchased under misapprehension. The damages awarded were not out of line with previous caselaw. No evidence was given as to damage to reputation. It was difficult to see how the award was inadequate. The appeal and cross appeal would be dismissed. The Courts Act 1981 was inapplicable on the basis of the absence of jurisdiction in the Circuit Court for the claim.

Reporter: E.F

Mr Justice Finnegan

1 "Tommy Hilfiger" is a well-known brand of casual clothing. The first named respondent is the owner of a number of registered Trade Marks in the State in respect of a device or mark associated with the brand being in the form of a flag in the colours red, white and blue and also of the words "Tommy Hilfiger" "Tommy Jeans" and "Tommy Girl". In addition it is the holder of a number of Community Trade Marks.

2 The second named respondent holds the exclusive licence for Europe for the promotion, distribution, sale and supply of garments, clothing and clothing accessories manufactured by or with the licence of the first named respondent and promotes, sells and supplies Tommy Hilfiger products in the Irish market. The first named appellant is involved in the supply by wholesale of clothing and clothing accessories and has been so involved for many years acting either personally or through the vehicle of limited companies: the second and third named appellants are two of such companies. In the early part of 1999 the respondents became aware of the sale in the State by the appellants of garments in circumstances where they believed that their Trade Marks were being infringed and which amounted to passing-off. They issued a plenary summons on the 3^rd March 1999 having on the 1^st March 1999 obtained ex parte an order pursuant to the Trade Marks Act1996 section 20 and certain injunctive reliefs in relation to passing off. On the 25^th March 1999 they obtained interlocutory injunctive relief restraining the first named appellant his servants or agents until the hearing of the action from infringing the respondents' Trade Marks and from selling or supplying garments identified in the second schedule to the order but granting liberty to the first named appellant to sell and supply garments identified in the first schedule to the order on terms that an account be kept of such sale and supply. The garments in Schedule 2 clearly infringed the respondents' Trade Marks. The garments in Schedule 1 less clearly so but bore a label "Tommy Sport" or the word "Tommy". Shortly after the institution of the proceedings the first named appellant applied for the registration of a Trade Mark "Tommy Sport".

3 At the hearing in the High Court which took place over five days the appellants conceded infringement of the respondents' Trade Marks in relation to the goods in schedule 2. In respect of these goods the learned trial judge assessed damages for infringement and for passing off at €5,000. In relation to the goods in schedule 1 the learned trial judge had regard to the pending application for registration of the Trade Mark Tommy Sport. She found that the use of the words "Tommy" and "Tommy Sport" were sufficient to constitute passing off. However as the first named appellant had applied to register the Trade Mark "Tommy Sport" if such registration should be granted the appellants could not be accused of passing off after the date of his application: if on the other hand should the respondents objection to registration be upheld there would then have been passing off. Accordingly the learned trial judge ordered that should the first named appellant not succeed in having the Trade Mark registered the appellants would be liable in damages and she measured damages post 5^th March 1999 at €10,000. On the 13^th March 2006 the Controller of Patents refused the first named appellant's application to register the Trade Mark Tommy Sports. Accordingly the amount of damages awarded to the respondents was €15,000 being €5,000 in respect of infringement and passing off up the 5^th March 1999 and €10,000 in respect of passing off by use of the name Tommy Sport. The learned trial judge granted to the respondents the injunctive relief which they sought and other ancillary reliefs together with the costs of the proceedings to include reserved costs.

4 The appellants appeal so much of the judgment and order of the High Court as awarded the costs of the proceedings and reserved costs to the respondent. The respondents' cross-appeal seeking to set aside the award of damages and the substitution therefor of an award of appropriate damages or in the alternative the taking of an account in respect of the profits earned by the appellants.

5 The Courts Act1981 section 17 as substituted by the Courts Act 1991 section 14 imposed a limitation on the costs recoverable by a plaintiff where the action or application is not brought in the lowest court having jurisdiction to make the order granting...