The Gazette 1979

GAZETTE

JANUARY/FEBRUARY 1979

refuse an application if, for example, he considers that the

mark is immoral, illegal, improper, scandalous or

misleading.

An appeal lies to the court against any objection raised

by the Controller in respect of a registration.

One

instructive case concerned an appeal against an appeal

against a refusal by the Controller to register the mark

"Durex" in respect of surgical gloves. Hamilton J. upheld

the appeal. He found that the word "Durex", although

associated in public mind with a particular brand of

contraceptives, was not associated with contraceptive

generally to such an extent as to be synonymous

therewith, or to such an extent as to be likely to deceive or

cause confusion if registered in respect of surgical

gloves.

Opposition

An application for registration, after it has been

accepted, is advertised by the Controller. Any person

may, within one month from the date of the advertisement

of an application, give notice to the Controller of

opposition to the registration.

Opposition may be based on any ground that would

preclude or invalidate registration — the most common

ground of opposition is that the mark concerned is too

similar to an existing mark. An appeal lies to the court

from the decision of the Controller as to whether an

opposed mark should be registered.

When an application for registration has been accepted

and the time for opposition has expired, or where the

application has been opposed but not successfully, the

trade mark is registered as of the date of application.

Certificate , Duration and Renewal

A certificate is issued under the Controller's seal on the

registration of a trade mark.

The duration of the initial

registration is seven years. Registration may be renewed

indefinitely thereafter for fourteen-year periods.

Disclaimer

If a trade mark contains any part not separately

registered by the proprietor as a trade mark, or matter

common to the trade or otherwise of a non-distinctive

character, the Controller or the court, in deciding whether

the trade mark should be entered or remain on the

condition to the trade mark being on the register, the

proprietor may be required, for example, to disclaim any

right to the exclusive use of any part of the trade mark.

The recent case of

Western Brands Inc. v. The

Controller

provides an illustration.

It concerned an

application for Part B registration of the name "Silva-

Thins", in respect of cigarettes. On appeal from the

Controller's refusal to register the name, it was held that

"Silva-Thins", with a hyphen between the two words, was

capable of distinguishing within the meaning of section

18. The presiding judge set out however, as a pre-

condition to registration, that the applicant disclaim any

right to the exclusive use of either the word "Silva" or the

word "Thins".

It is clear that a disclaimer under the Act does not

affect any rights which the proprietor may have in respect

of the mark at common law.

EFFECT ON REGISTRATION

The effect of registration depends on whether the mark

is registered in Part A or Part B. A person entitled to a

trade mark registered in Part A has the exclusive right

to the use of the mark in relation to those goods for which

it is registered.

A person entitled to a mark registered in Part B is also

entitled to exclusive user.

The degree of protection

afforded this right is, however, lower than that given in

respect of Part A marks. If another manufacturer or

trader uses a similar or even identical mark, the person

entitled to a Part B mark will fail in an infringement

action if the defendant proves two points: first, that the use

complained of is not likely to deceive or cause confusion;

and, secondly, that the use complained of is not likely to be

taken as indicating a connection in the course of trade

between the goods and the person entitled to the registered

trade mark.

DEALINGS ON THE REGISTER

Trade marks may be assigned, transmitted or licensed.

The register, moreover, may be rectified in certain

instances.

Assignment and Transmission

Registered trade marks are, subject to certain

conditions, assignable and transmissable, either in

connection with the goodwill of the business or not.

assignment may be in respect of all or only some of the

goods in respect of which a trade mark is registered.

Unregistered trade marks are assignable and trans-

missable under the Act, but only in conjunction with

registered trade marks.

Assignment of a trade mark without the goodwill of a

business has no effect unless and until, upon application

by the assignee, notice of the assignment is published by

the Controller in the Official Journal of Industrial and

Commercial Property.

Associated trade marks are assignable and trans-

missible as a whole, and not separately.

A registered user has no assignable or transmissible

right in the mark.

Licences: Registered Users

The Act contains a number of closely circumscribed

provisions for the licensing of trade marks.

The

prospective licensee of a mark must, together with the

proprietor of the mark, apply in writing to the Controller

for registration of the user required. The Controller has a

discretion in deciding whether or not to grant the licence;

he is obliged, in particular, to have regard to the public

interest.

Rectification

The register may be rectified either by the Conroller or

by the court at the request of the proprietor of a trade

mark, or on the application of a "person agrieved".

The

possible grounds for rectification are numerous. For

example, a registration obtained by fraud, or an entry

made in the register without sufficient cause, may be

rectified. In

Re Carl Zeiss Stiftuna,

a German company

applied for the removal of the trade mark "Punktal" from

the register. The mark had previously been registered by

an Irish company in respect of "lenses of all kinds". The

application for rectification was granted, on the ground

(among others) that the Irish company had not been the

proprietor of the trade mark at the time of its registration.