The Gazette 1979

GAZETTE

JANUARY/FEBRUARY 1979

be distinctive, since any trader in the goods concerned

may be expected to refer to his own particular goods in

terms of their character or quality.

Trade marks

incorporating geographical names or surnames are,

similarly, vulnerable on the basis of non-distinctiveness.

This is particularly true in the case of marks

incorporating the names of countries or substantial

towns, and of marks incorporating common surnames.

The category of trade marks registrable under (e)

above is a residual one; the overriding consideration is

that the mark be distinctive.

Part B Marks

Trade marks registered in Part B, because they carry

less protection than is afforded to part A marks, are

sometimes referred to as second class marks.

In order that a trade mark be registrable in Part B, it

must be capable "[In] relation to the goods in respect of

which it is registered, 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."

This, in effect, means that the standard of

distinctiveness required of Part B marks is lower than that

required of Part A marks.

Thus, for example, a Part B

mark need not be distinctive when registered, so long as it

is capable of becoming distinctive in use.

It was held in a recent case that the

potential

distinctiveness of a mark for purposes of registration in

Part B could be shown by "[Proof! of the development of

a secondary meaning which outweighs the apparently

non-distinctive character of the mark when viewed in

isolation . .. (or by showing that) in spite of the absence of

a sufficient distinguishing characteristic in the mark itself,

distinctiveness can be acquired by appropriate user,

thereby overcoming a negative quality in the mark."

Two illustrations may clarify these criteria. It has been

held, for example, that the word "Aphrodisia" is capable

of acquiring by user a distinctive character in connection

with soaps and perfumes, but not in connection with

drugs and medicines.

It has also been held that the word

"Kreuzer", a surname, is so unusual in Ireland as to be

capable of distinguishing a manufacturer's goods.

Defensive Trade Marks

The trade mark classification is divided into thirty-four

classes. These classes include such product groupings as

machines and machine tools; vehicles; wines, spirits and

liqueurs; and agricultural products, etc. A trade mark can

be registered in respect of one or more classes of goods,

depending on the product scope desired for the mark by

the owner.

There is no general prohibition on the use

of similar trade marks by firms in different trades. Thus,

for example, there would normally be no infringement of

trade mark if one concern marketed oranges under a

trade registered by another concern in Part B in respect

only of cosmetic products.

If a trade mark is so well known, however, that its use

in connection with goods in respect of which it is not

registered would be likely to indicate a connection in the

course of trade with the owner of the goods in respect of

which it is registered, then the latter may be entitled to

obtain a defensive registration of the trade mark; the

effect of such registration would be to preclude the use of

the trade mark in connection with the first-mentioned

goods.

Defensive registration may be obtained only in

respect of trade marks consisting of an invented word or

invented words.

Certification Trade Marks

Certification trade marks are used to certify goods in

respect of origin, material, mode or manufacture, quality,

accuracy or other characteristics.

Thus, a certification

trade mark differs from an ordinary trade mark, a

primary function of which is to indicate a trade

connection between its owner and the goods in respect of

which it is used.

Certification trade marks may be registered, riot by a

trader in the goods concerned, but only by an individual

or association whose business includes the certification of

goods in respect of origin or standards. Moreover, before

registration of a certfication trade mark, regulations

governing the use of the trade mark must be deposited at

the Controller's office; these regulations mlist have the

prior approval of the Minister for Industry, Commerce

and Energy.

Certification trade marks are registered only in Part A

of the register.

Associated Trade Marks

The owner of a trade mark in respect of a class of

goods, who wishes to register an identical or similar trade

mark in respect of the same class of goods, may obtain

their registration as associated marks.

An owner can

moreover split a mark by registering a part of parts of it

as separate marks, and he may also register a number of

similar marks as a series.

Prohibited Marks

A trade mark the use of which would, by reason of its

being likely to deceive or cause confusion, be disentitled

to protection in a court of law, is not registrable. It is also

unlawful to register a scandalous design, or a trade mark

the use of which would be contrary to law or morality.

In addition, a trade mark will not be registrable in

respect of goods if there is an identical trade mark already

on the register in respect of the same goods. Finally, a

trade mark cannot be registered in respect of goods if it is

so nearly resembles an already registered trade mark in

respect of the same goods as to be likely to deceive or

cause confusion.

An illustrative case is

Re Mediline

Aktiengesellschaft.

The applicants here appealed against

the Controller's decision to register the word "Bidex".

The refusal to register was on the basis that the trade

mark would be likely to deceive or cause confusion with

the previously registered trade mark, "Barbidex". It was

held by the High Court that the two words did not so

nearly resemble each other as to be likely to deceive or

cause confusion, and that, therefore, "Bidex" was

registrable as a trade mark.

REGISTRATION

Application

Any person caliming to be the proprietor of a trade

mark may apply in writing to the controller for its

registration.

The Controller may refuse application on

the ground that the mark concerned is not distinctive, on

the ground that the specification of goods sought to be

covered by the registration is too wide. He may also