Waterford Glass Ltd v Controller of Patents, Designs and Trade Marks

• Jurisdiction: Ireland
• Judge: O'HIGGINS C.J.,Henchy J.
• Judgment Date: 02 March 1984
• Neutral Citation: 1984 WJSC-SC 986
• Court: Supreme Court
• Date: 02 March 1984

1984 WJSC-SC 986

THE SUPREME COURT

O'Higgins C.J.

Henchy J.

McCarthy J.

166-1982

WATERFORD GLASS v CONTROLLER OF PATENTS

WATERFORD GLASS LIMITED

Respondents

and

THE CONTROLLER OF PATENTS, DESIGNS AND TRADEMARKS

Appellants

Subject Headings:

TRADE MARK: registration

1 JUDGMENT delivered on the 2nd day of March 1984by O'HIGGINS C.J. [McCARTHY CONCURRING]

2 This appeal comes before the Court pursuant to leave granted in the High Court by Mr. Justice Hamilton under the provisions of section 58(3) of the Trade Marks Act 1963. It is concerned with the meaning and effect of the words "is in fact capable of distinguishing" contained in section 18 (2) (b) of the Act which deals with registration under Part B of the Register. Before expressing my opinion, I think it may be useful to look at the manner in which Part B of the Register was introduced into trade marklaw.

3 This introduction was effected by the Trade Marks Act 1919. Prior to that Act eligibility for registrationof trade marks was provided for, exclusively, in section 9 of the Trade Marks Act 1905. The main features of this section have been repeated in later legislation and are to be found to-day in section 17 of the Trade Marks Act 1963in relation to eligibility for registration in Part A of the Register. Paragraph 5 of section 9 of the 1905 Act had extended the statutory provision for registration of words to admit a word, notwithstanding that it was not an invented word and was a word having a direct reference to the character or quality of the goods, or was a geographical name, provided only that it was distinctive. For registration of such a word an order of the Board of Trade or the Court was required. The section had also provided that "distinctive" should mean adapted to distinguish, but that regard could be had in the case of actual use to the extent to which such user had rendered the mark in fact distinctive. Kerly on TradeMarks, 7th edition, at page 146, contains the following passage as to the policy and effect of the 1905 Act:

"Before the decision in the Perfection Case(Crosfield and Sons Ltd.'s application, 1910 I Ch. 118).......it was thought that it was the policy of the 1905 Act to admit to registration all marks which had by use become in fact trade marks, that is to say, distinguished the goods of the proprietor of the mark from those of other traders, even although in the case of a word mark that result was only due to the word having acquired a secondary meaning, different from or additional to its ordinary or primary meaning. Before the decision referred to, a very considerable number of orders had been made, in most instances by the Board of Trade, for the registration of words under paragraph 5 of the 1905 Act which bore such a secondary meaning. After that decision, however, it became much more difficult to obtain registration of a word as a distinctive word, especially in cases in which a secondary meaning was sought to beestablished."

4 Descriptive and geographical words, in order to become distinctive when applied to particular goods, necessarily had to acquire a secondary meaning or at least an additional meaning. Following the decision in Crosfield and Sons' Application, 1910 I Ch. 118 (the PerfectionCase) and other similar decisions, it became increasingly difficult to operate paragraph 5 of section 9 of the 1905 Act in relation to such words. It was in thesecircumstances that the Trade Marks Act 1919 was passed providing for the division of the Register into two parts, Part A and Part B - Part A comprising existing marks and those which would be found eligible for registration in the future under section 9 of the 1905 Act. Part B was to comprise marks which would qualify for registration under section 2 of the Act and which would, on registration, enjoy a less secure protection than those registered in Part A. Section 2 provided for the application for registration in Part B of any mark which had for not less than two years been bona fide used in the United Kingdom upon or in connection with any goods (whether for sale in the United Kingdom or exportation abroad) for the purpose of indicating that they are the goods of the proprietor of the mark......." If such mark was not otherwise prohibited (being deceptive, scandalous, immoral or identical with another registered mark) and was capable of distinguishing the goods of the applicant, the Register was bound to accept the application. Once capacity to distinguish was established, nodiscretionexisted. In Ireland the 1919 Act and the earlier Act of 1905, to which it was an amendment, were replaced in 1927 by the Industrial and Commercial Property (Protection) Act of that year. Section 82 of this Act re-enacted in almost identical terms the provisions of section 9 of the 1905 Act (as amended by the 1919 Act) in relation to applications for registration in Part A of the Register. Section 86 substantially re-enacted section 2 of the 1919 Act in relation to applications for registration in Part B. Under this section once two years" use of the mark was established and its registration was not otherwise prohibited by the Act, proof of a capacity to distinguish gave a right to registration. This section continued to rule applications for Part B registration until the repeal of the 1927 Act and its replacement by the Trade Marks Act 1963. Section 17 of this Act provides for registration in Part A. Its terms differ somewhat from those of section 82 of the 1927 Act. However, as this case is concerned not with Part A registration but with registration in Part B, it is unnecessary to considerthis section further.

5 Registration in Part B is provided for in section 18 of the Act in the following terms:

6 2 "18(1) In order for a trade mark to be registrable in Part B of the register it must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.

7 (2) In determining whether a trade mark is capable of distinguishing as aforesaid the Court or the Controller (as the case may be) may have regard to the extent to which -

8 (a) the trade mark is inherently capable of distinguishing as aforesaid; and

9 (b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguishing asaforesaid.

10 (3) A trade mark may be registered in Part B notwithstanding any registration in Part A in the name of the same proprietor of the same trade mark or any part or parts thereof."

11 Unlike the previous statutory provisions which applied to Part B registration, this section does not provide, as a pre-condition of registrability, that the mark shall have been in use for a specified or any time. The absence of such a requirement cannot be without significance. It certainly indicates that the section can be operated in relation both to a mark which has never been in use and to one which has been in use. What has to be established is a capacity in the mark to distinguish the proprietor's goods from all others. Obviously where the mark has never been in use the applicant must rely on the mark itself to establish its capacity to distinguish. It seems to me that it is in such a situation that subsection (2) (a) is intended to operate. Faced with the fact that the intended mark has never been used and being required to determine its capacity to distinguish, the Court or the Controller has regard to the extent to which

"(a) the trade mark is inherently capable of distinguishing asaforesaid."

12 It will be in the light of this examination that the decision to register or not will be reached. Obviously,in the case of many words, descriptive, laudatory or geographical, an inherent capacity to distinguish may be difficult, if not impossible to establish. Where, however, the mark has actually been in use, and, for a sufficient period to establish a reputation, the applicant may often be in a stronger position. He can...