United Biscuits Ltd v Irish Biscuits Ltd

• Jurisdiction: Ireland
• Judgment Date: 09 February 1971
• Date: 09 February 1971
• Docket Number: [1969. No. 1979 P.]
• Court: High Court

[1969. No. 1979 P.]

United Biscuits Ltd. v. Irish Biscuits Ltd.

UNITED BISCUITS LIMITED

Plaintiffs

and

IRISH BISCUITS LIMITED

Defendants.

Trade mark - Infringement - "College Creams" - Biscuits - Defendants selling biscuits described as "Cottage Creams" - Whether conduct of defendants likely to deceive or cause confusion - Passing off - Trade Marks Act, 1963 (No. 9 of 1963), s. 12, sub-s. 1.

Witness Action.

The facts have been summarised in the head-note and appear in the judgment of Kenny J, post.

Section 12 of the Trade Marks Act, 1963, provides as follows:—

"12.—(1) Subject to this section, and to sections 15 and 16 of this Act, the registration (whether before or after the commencement of this Act) of a person in Part A of the register as proprietor of a trade mark (other than a certification trade mark) in respect of any goods shall, if valid, give or be deemed to have given to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either—

• (a) as being use as a trade mark; or

• (b) in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade."

The plaintiffs were the registered proprietors of the trade mark "College Creams" which they used to describe one of the brands of biscuits that they manufactured. The defendants, being aware of the plaintiffs' mark, began to manufacture and sell a type of biscuit which they named "Cottage Creams".The brands of biscuit were similar in appearance but each of them was sold to retailers and to the public in containers and packages which differed in colour and design from those used in the distribution and sale of the other brand. The plaintiffs claimed in the High Court that the defendants had infringed the plaintiffs' trade mark and they also claimed damages from the defendants for passing off their goods as the goods of the plaintiffs.

Held by Kenny J., 1, that there had been no infringement of the plaintiffs' mark since the defendants' mark did not so nearly resemble the plaintiffs' mark as to be likely to deceive or cause confusion in the course of trade within the meaning of s. 12, sub-s. 1, of the Trade Marks Act, 1963.

Aristoc Ltd. v. Rysta Ltd. [1945] A. C. 68 considered.

2. That the plaintiffs' claim that there...