GAZETTE
JANUARY/FEBRUARY 1979
TRADE MARKS AND
PASSING OFF. THE IRISH
- E.E.C. REGIME
By DENIS LINEH AN, LL.M., Lecturer in Law at University College, Cork and JERRY G. HEALY, B.A., B.C.L.
INTRODUCTION
Trade marks constitute an important species of
industrial property. Manufacturers and distributors
regard them as a vital aspect of their marketing strategy,
since the interest and good will generated for a product
can be embodied in the mark under which it is sold. Trade
marks also serve the consumer, who will use them to
differentiate between competing products.
A sharp rise in the level of the activity relating to trade
marks has occurred in recent years.
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This development
can be ascribed in part to a growing awareness of the
necessity to protect one's commercial insignia.
Instrumental also, no doubt, has been the overall
quickening in Irish commerical life, owing to such factors
as E.E.C. membership and the success of national invest-
ment programmes in attracting industries from overseas.
Specialist agents have traditionally been dominant in
the service of trade marks.
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Lawyers who are not
registered trade mark agents have, however, increasingly
become involved in the field — in an advisory capacity to
their business clients, and also in connection with
litigation.
This article seeks to outline our legal code on trade
marks. It refers, first, to the Trade Marks Act, 1963, and
to the related case-law. It then treats the protection
afforded unregistered marks by the common law action of
passing off. Finally, it focuses on the regulation of trade
marks under the Treaty of Rome, and on proposals of the
E.E.C. Commission for a community — wide system of
protection.
TRADE MARKS ACT, 1963
REGISTRABLE TRADE MARKS
General
A trade mark means "[except] in relation to a
certification trade mark, a mark used or proposed to be
used in relation to goods for the purpose on indicating, or
as to indicate, a connection in the course of trade between
the goods and some person having the right either as
proprietor or as registered user to use the mark, whether
with or without and indication of the identity of that
person, and means, in relation to a certification trade
mark, a mark registered or deemed to have been
registered under S.45".
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Marks used in relation to service industries are not trade
marks within the meaning of the Act.
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A trade mark
cannot, therefore, be registered in respect of, for example,
a travel service, a repairing process or credit card
facilities.
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Such marks may, however, be protected in a
passing off action and possibly even in an action for
infringement of copyright.
A "mark" includes a device, brand, heading, label,
ticket, name, signature, word, letter, numeral, or any
combination thereof. The Act does not preclude other
possible marks.
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A register of trade marks is kept at the Industrial and
Commercial Property Registration Office; it is divided
into two parts, Part A and Part B.
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Registration in Part A,
as will later be seen, affords greater protection than
registration in Part B.
Part A Marks
Registration in Part A protects the owner of a trade
mark against the use in the course of trade of an identical
or a mark so resembling it as to be likely to deceive or
cause confusion.
A trade mark, in order to be registrable in Part A, must
contain or consist of at least one of the following essential
particulars:
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(a) The name of a company, individual or firm,
represented in a special or particular manner;
(b) the signature of the applicant for registration or
some predecessor in his business;
(c) an invented word or words;
(d) a word or words having no direct reference to the
character or quality of the goods, and not being according
to its ordinary signification of a geographical name or
surname;
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(e) any other distinctive mark, but a name, signature,
or word or words, other than such as fall within the
descriptions in paragraphs a, b, c, and d, is not registrable
except upon evidence of its distinctiveness.
The particulars referred to in (a) and (b) above are self-
explanatory. It is arguable that trade marks consisting of
an invented word or words, i.e. marks which comply with
(c) above, constitute the best type of trade mark. Invented
words make highly distinctive trade marks, and are,
moreover, highly flexible marketing instruments. The
word "Aspro" is a typical example of such a mark.
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Re
Hamilton Cosco Incorporated
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concerning an appeal
from a refusal by the Controller of Industrial and
Commercial property to register the word "Cosco" as a
trademark. The applicant company had sought its
registration as an invented word. The Controller refused
registration because the word appeared twice in the New
York Telephone Directory — once as a surname and once
as part of the name of a company. The evidence before
the court showed that "Cosco" was not a word which
was, or ever had been, in use in this country as an
ordinary English word. It was held, therefore, that, in all
the circumstances of the case, the word "Cosco" was
registrable as an invented word.
The particulars mentioned in (d) above will be under-
stood if it is remembered that the primary function of a
trade mark is to distinguish between the goods of
competitors. A mark containing a "[Direct] reference to
the character or quality of the goods" will obviously not
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