Unilever Plc v Controller of Patents, Designs and Trade Marks and Sunrider Corporation

• Jurisdiction: Ireland
• Judge: Miss Justice Laffoy
• Judgment Date: 21 November 2005
• Neutral Citation: [2005] IEHC 426
• Court: High Court
• Date: 21 November 2005

[2005] IEHC 426

THE HIGH COURT

No. 35 SP/2005

Unilever PLC v Controller of Patents

IN THE MATTER OF THE TRADE MARKS ACT 1963

AND IN THE MATTER OF TRADE MARK APPLICATION NO. 171850 SUNSMILE

UNDER THE TRADE MARKS ACT 1963

IN THE NAME OF SUNRIDER CORPORATION AND

OPPOSITION THERETO BY UNILVER PLC.

BETWEEN/

UNILEVER PLC

PLAINTIFF

AND

THE CONTROLLER OF PATENTS, DESIGNS AND TRADE MARKS AND SUNRIDER CORPORATION

DEFENDANTS

TRADE MARKS RULES 1963 SI 268/1963

TRADE MARKS ACT 1963 S57

TRADE MARKS ACT 1963 S26(9)

RSC O.94

HUNT WESSON INC'S TRADE MARK APPLICATION 1996 RPC 233

MURPHY v MIN FOR DEFENCE & ORS 1991 2 IR 161 1991/4/981

INTELLECTUAL PROPERTY

Trade marks

Practice and procedure - Appeal - Additional evidence - Registration of trade marks - Application to bring forward further material for consideration of court - Special leave of court - Factors relevant to application seeking leave - Trade Marks Act 1963 (No9), s 26(9) - Rules of the Superior Courts 1986 (SI 15/1986), O 94, r 48 - Leave to adduce new evidence refused (2005/35Sp - Laffoy J - 21/11/2005) - [2006] 2 ILRM 210; [2005] IEHC 426

Unilever plc v Controller of Patents

Facts: The plaintiff appealed against that part of the decision of the first named defendant (the Controller) which dismissed the opposition entered by the plaintiff to the application of the second named defendant for registration of a trademark. Subsequently, the plaintiff applied pursuant to section 26(9) of the Act of 1963 for leave to bring forward further material for the consideration of the court on the appeal.

Held by Laffoy J. in refusing the application: That the plaintiff failed to discharge the onus of establishing that circumstances existed which would justify the court in giving leave to adduce the further material sought, namely affidavits of two named individuals.

Reporter: L.O’S.

1 Judgment of Miss Justice Laffoy delivered on 21st November, 2005.

2 The substantive proceedings in this matter are an appeal by the plaintiff (Unilever) from part of the decision of the first defendant (the Controller) dated 30th November, 2004 whereby he dismissed the opposition entered by Unilever to the application of the second defendant (Sunrider) for registration of trade mark No. 171850 SunSmile and device under certain provisions of the Trade Marks Act1963 (the Act of 1963) in respect of goods in class 3, which includes household cleaning preparations such as dishwasher detergents.

3 The chronology of the proceedings before the Controller was as follows:

4 ••On 6th April, 1995 the application was filed by Sunrider in the Trade Marks Office.

5 ••On 1st April, 1997 Unilever entered a notice of opposition.

6 ••On 15th July, 1997 a counter-statement was filed by Sunrider.

7 ••On 16th January, 1998 Katrina Burchell, Senior Trade Marks Manager of Unilever, made a statutory declaration in support of Unilever's opposition which was left with the Controller in accordance with Trade Mark Rules, 1963 ( S.I. No. 268 of 1963).

8 ••On 1st October, 1998 Oi-lin Chen, the President of Sunrider, made a statutory declaration in support of Sunrider's application, which was left with the Controller.

9 ••On 14th April, 1999 Nicola Hope, Trade Mark Manager of Unilever, made a statutory declaration on behalf of Unilever in reply, which was left with the Controller.

10 ••On 20th May, 2004 a hearing of the opposition took place before the Controller.

11 ••On 17th November, 2004 the parties were notified of the Controller's decision to dismiss Unilever's opposition to the SunSmile application. The reasoned decision of the Controller, which was given by Tim Cleary on behalf of the Controller, was dated 30th November, 2004.

12 The application to the Controller was decided under the provisions of the Act of 1963 and the appeal is also governed by the provisions of the Act of 1963. The appeal is brought under s. 57 of that Act. This application is an application by Unilever to bring forward further material for the consideration of the court on the appeal and is brought under s. 26(9) of the Act of 1963 which provides as follows:

"On the hearing of an appeal under s. 57 of the Act against a decision of the Controller under this section any party may, either in the manner prescribed or by special leave of the court, bring forward further material for consideration of the court."

13 Appeals to this court in relation to, inter alia, trade marks are governed by Order 94 of the Rules of the Superior Courts, 1986. Insofar as it is relevant for present purposes, rule 48 of Order 94 provides as follows:

"Every such appeal to the Court shall be by way of re-hearing; and … every … appeal shall be heard on the same evidence as that used at the hearing before the Controller. No further evidence shall be given nor further material brought forward for the consideration of the Court on the hearing of any appeal without special leave of the Court granted on an application made at or before the hearing …"

14 One of the items which Unilever seeks leave to bring forward for the consideration of the court, in my view, does not present any difficulty. It is the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM) of 13th December, 2004, on an application by Sunrider to register the SunSmile mark as a Community trade mark. The decision at first instance, which was dated 13th February, 2004, was cited as authority before the Controller, but the decision on appeal post-dated the decision of the Controller. Counsel for Sunrider told the court that Sunrider will not object to the citation of the decision of the OHIM Appeal Board on the hearing of this appeal. The position of the Controller, as outlined in an affidavit sworn by Mr. Cleary on 27th September, 2005 in response to this application, was that the OHIM appeal decision is irrelevant to the appeal in this court on a number of grounds. It is open to the Controller to make this point on the hearing of this appeal. Therefore, this item need not be considered further.

15 The other two items which Unilever seeks leave to bring forward on the hearing of the appeal are affidavits to be sworn by Paul O'Sullivan and Maedhbh Quinn, drafts of which have been put before the court.

16 Mr. O'Sullivan is Faculty Director at the Business School of Dublin Institute of Technology. He has over twenty years” experience in lecturing and researching in the area of marketing communications and advertising. The draft of his proposed affidavit indicates that Mr. O'Sullivan would propose to aver that he has reviewed the evidence filed before the...