Zockoll Group Ltd v Controller of Patents Designs & Trade Marks

• Jurisdiction: Ireland
• Judge: O'Sullivan J.
• Judgment Date: 17 October 2006
• Neutral Citation: [2006] IEHC 300
• Court: High Court
• Docket Number: [2006 No. 137 SP]
• Date: 17 October 2006

[2006] IEHC 300

The high court

[No. 137 S.P./2006]

ZOCKOLL GROUP LTD (FORMERLY PHONENAMES LTD) v CONTROLLER OF PATENTS DESIGNS & TRADEMARKS & 1-800-FLOWERS.COM INC

in the matter of the Trade Marks act, 1963 and

in the matter of the trade mark act, 1996 and

in the matter of trade mark applications no. 176475 and 176476 dated 8th

November 1995 PURSUANT to the Trade Marks act, 1963 by the zockoll

group limited (formerly phonenames limited) for registration of 800 flowers

and 800 florists as Trade Marks in class 31 of the register of Trade Marks

between

the Zockoll Group Limited (FORMERLY Phonenames Limited)

Plaintiff

and

the Controller of Patents, Designs and Trade Marks and 1-800—Flowers.Com, Incorporated

Defendants

MONTEX HOLDINGS LTD v CONTROLLER OF PATENTS DESIGNS & TRADEMARKS & DIESEL SPA 2001 3 IR 85 2002 1 ILRM 208

HARRISON'S TRADE MARK APPLICATION 2005 FSR 10

ZOCKOLL GROUP LTD & ORS v TELECOM EIREANN 1998 3 IR 287

C & A MODES v C & A (WATERFORD) LTD 1976 IR 198

BALI TRADE MARK 1969 RPC 472

SMITH HAYDEN & CO LTD, IN RE 1945 63 RPC 97

TRADE MARKS ACT 1963 S19

TRADE MARKS ACT 1963 S2

TRADE MARKS ACT 1938 (UK)

RJ REUTER CO LTD v MULHENS 1953 2 AER 1160

SCANDECOR DEVELOPMENTS AB v SCANDECOR MARKETING AB 2002 FSR 7

BOSTITCH TRADE MARK 1963 RPC 183

GE TRADE MARK 1970 RPC 339

PIONEER ELECTRONIC CORPORATION v REGISTER OF TRADE MARKS 1978 RPC 716

BANK OF IRELAND v CONTROLLER OF PATENTS DESIGNS & TRADEMARKS UNREP COSTELLO 31.3.1987 1987/5/1247

SHORTER OXFORD ENGLISH DICTIONARY "MERCHANT"

INTELLECTUAL PROPERTY

Trade marks

Registration - Refusal to register - Appeal - Likelihood of confusion - Connection in course of trade - Present and definite intention - Inaccurate description of applicant- Test for connection in course of trade between applicant and goods to be covered -Whether retention of quality control sufficient connection in course of trade - Whether use of alpha numeric telephone number corresponding to mark to order goods sufficient connection in course of trade - Berlei (UK) Ltd v Bali Bra Inc [1969] 1 WLR 1306; Smith Hayden & Co Ltd's Application (1946) 63 RPC 97; Bank of Ireland v Controller of Patents (Unrep, Costello J,31/3/1987); G E Trade Mark [1970] RPC 339; Radiation Trade Mark (1930) 47 RPC 37; Aristoc Ltd v Rysta Ltd [1945] AC 68 ; Pioneer Electronic Corporation v Registrar of Trade Marks [1978] RPC 716 and C & A Modes v C & A (Waterford) Ltd [1976] IR 198 considered - Trade Marks Act 1963 (No9), s 2 - Appeal allowed and registration ordered (2006/137SP - O'Sullivan J -17/10/06) [2006] IEHC 300

Zockoll Group Ltd v Controller of Patents

: The plaintiff sought to appeal the decision of the first named defendant to refuse to register its mark "800 Flowers" and "800 Florists" as trade marks in part A of the register. The application was opposed by the second named defendant, who contended that the registration would cause confusion, that there was no connection between the trade and the goods, that the marks were not intended to be used by the plaintiff, that the plaintiff had falsely described itself and that the registration was a tactic in a dispute with a third party.

Held by O' Sullivan J., the proposed mark was a trade mark and that the second named defendant did not have the relevant interest in the mark that would cause a substantial number of people in the market to become confused if the plaintiff succeeded. The evidence established an intention on the part of the plaintiff to use the trade mark in connection with the product in the course of trade. There was no evidence of a potential for confusion if the plaintiff were to use the marks sought to be registered.

Reporter: E.F.

1 Judgment of O'Sullivan J. delivered on the 17th October, 2006 .

Introduction

2 The plaintiff appeals the first defendant's decision dated 7th February, 2006 refusing its application (under its former name Phonenames Limited) to register the terms "800 FLOWERS" and "800 FLORISTS" as trade marks in part A of the register in class 31, in respect of the goods natural flowers, dried flowers, wreaths of natural flowers, flower bulbs; plants.

3 The application for registration was opposed by the second defendant on a number of grounds at a hearing before the first defendant which can for now be shortly described as follows:

4 1. Registration of the Mark would cause confusion between the intended goods and those of the second defendant in respect of which a reputation in this country is claimed;

5 2. There is no connection in the course of trade between the plaintiff and the intended goods and accordingly the Marks were not "trade marks" as defined;

6 3. The Marks were not intended to be used by the plaintiff: alternatively any intention of the plaintiff to use the Marks was conditional on the availability to it of the corresponding freephone telephone number: accordingly the applicant did not have the requisite "present and definite" intention to use the Mark;

7 4. As a matter of discretion registration should be refused because the plaintiff was falsely described as a "Manufacturer and Merchant";

8 5. As a matter of discretion the registration should be refused because registration was merely a tactic in the plaintiffs" dispute with Telecom Eireann; and

9 6. As a matter of discretion registration should be refused because the plaintiff's intention was to frustrate the second defendant's legitimate desire to enter the market in this country.

10 The first defendant ruled that there was not a connection in trade between the plaintiff and the intended Mark and also ruled as a matter of discretion that the registration would frustrate the legitimate expansion by the opponent of its business in an unjustifiable manner, but rejected the other grounds of opposition.

11 The plaintiff appeals the first two rulings and the defendant "cross appeals" the rejected grounds of opposition. Both parties agree that I should deal with the three non discretionary issues. In relation to the discretionary issues Mr. Collins S.C. for the plaintiff contends that because they were not formally included in the grounds of opposition they should not have been heard by the first defendant and that I should not consider them. Moreover because they are expressed on the basis that the plaintiff was guilty of mala fides which is an allegation which should be formally charged and with particulars it is not sufficient that the plaintiff was given no prior notice of these allegations nor an advance opportunity to deal with them although it did in fact deal with them before the first defendant.

12 Mr. O'Moore S.C. submits that the plaintiff was on notice of these allegations and did deal with them and made findings in relation to them which have been appealed and they should now be dealt with by me.

13 In Montex Holdings Limited v. The Controller of Patents, Designs and Trade Marks and Anor., [2001] 3.I.R. 85 the Supreme Court held that discretionary grounds of opposition should only be dealt with if non discretionary grounds of opposition have not succeeded and because in that case the non discretionary grounds of opposition were successful they declined to consider the discretionary grounds.

14 I am, clearly, bound by this decision and I will therefore proceed to consider the non discretionary grounds of opposition first. However I am also aware that the matter may well be appealed and in that context must bear in mind the often repeated insistence by the Supreme Court that save in the most exceptional circumstances it will deal only with matters which have been determined in the High Court. In deference to this practice and bearing in mind that I am not infallible I consider that, subject to one qualification. I should deal with all issues.

15 The qualification relates to Mr. Collins" point relating to the allegation of mala fides. Any allegation couched in terms of mala fides or want of good faith or whatever, is a serious matter and indeed has been treated seriously in Trademark jurisprudence (see Harrison's Trade Mark Application [2005] F.S.R. 10 at p. 177), where a carefully modulated standard of proof is elaborated. It is not sufficient or fair to an applicant, to characterise its behaviour as bad faith in the course of submissions before the Controller without giving formal, advance notice and particulars in good time to enable the charge to be defended.

16 In my opinion Mr. Collins" point is well made: an allegation suggesting fraud or bad faith is one which should only be dealt with if fully and formally pleaded and particularised and notified to the applicant in advance. If I were the court of final appeal I would accede at this point and simply decline to deal with the discretionary points each of which was made on foot of an allegation of bad faith. However once again I am not infallible and my view on this point might be held incorrect and in those circumstances I feel notwithstanding my view that I should proceed to deal also with the discretionary issues.

The Plaintiff's Business

17 The plaintiff promotes and markets what is known as the alpha-numeric concept. This is the by now familiar concept that one can contact a plumber by phoning on a freephone line using the freephone prefix followed by the buttons on the key pad corresponding to the letters in the word "plumber". This concept originated, apparently, at least as far as the plaintiff's associate companies are concerned, with the "Dyno-Rod" service for emergency drain clearance. The founder of the group of companies to which the plaintiff belonged is James Francis Zockoll with an address in Surrey and he commenced the "Dyno-Rod" service in the mid sixties and has been operating a drain cleaning franchise business in this country for some thirty five years now....