The Gazette 1979

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.

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.

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".

Marks used in relation to service industries are not trade

marks within the meaning of the Act.

A trade mark

cannot, therefore, be registered in respect of, for example,

a travel service, a repairing process or credit card

facilities.

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.

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.

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:

(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;

(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;

(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

words make highly distinctive trade marks, and are,

moreover, highly flexible marketing instruments. The

word "Aspro" is a typical example of such a mark.

Hamilton Cosco Incorporated

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