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GAZETTE
JANUARY/FEBRUARY 1979
Rectification may also be made on the breach of a
condition attaching to a registration, or by way of
correcting any errors in any entry on the register. A
registration may, moreover, be altered by way of
variation of a trade mark, or by way of amending the
classification of goods in respect of which a mark is
registered.
INFRINGEMENT OF TRADEMARKS
The principal form of infringement is where a person,
not being the proprietor or the registered user of a mark,
uses an identical mark or a mark so nearly resembling it
in a manner likely to deceive or to cause confusion in the
course of trade.
43
Examples of infringements which have
occurred in this way include the use of "Pern books" in
the light of the registered mark "Pan books", and of
"Watermatic" in the light of the registered mark
"Aquamatic". On the other hand, the use of "Gala" has
been held not to infringe "Goya", and the use of "Kidax"
has been held not to infringe "Daks". The difficulties that
arise in border-line cases were well illustrated in
United
Biscuits Ltd.
v.
Irish Biscuits Ltd.*
6
The plaintiff in that
case was the owner of the mark "College Creams", which
was registered in respect of certain biscuit products. The
defendant marketed a similar type of biscuit under the
name "Cottage Creams". In a subsequent action for
infringement, it was held that the defendant's mark did not
so resemble that of the plaintiff as to be the likely to deceive
or cause confusion in the course of trade.
The owner of a trade mark may, by contract in writing
with a purchaser or owner of goods, extend in certain
ways the rights given him by registration.
47
Thus, for
example, he may prohibit the alteration, removal or
obliteration, or a trade mark upon the goods, or the
addition to the goods of any other written matter that is
likely to injure the reputation of the trade mark. The
doing of any of these prohibited acts will constitute an
infringement.
The use of a trade mark by a person other than the one
entitled to its use will not, in certain instances, constitute
an infringement. Instances include the sale of accessories,
spares and components, by reference to the trade marks
used on the "principal" goods, provided such use is
reasonably necessary to show the adaptable use of the
accessories, etc.
48
Thus, the sale of a brand of oil "for use
in Ford Motors" would probably not constitute an
infringement of the "Ford" trade mark. Furthermore, the
use by a trader of his own name will generally not
constitute an infringement of trade mark.
49
POWERS AND DUTIES OF THE CONTROLLER
The Controller has the general responsibility for
administering the Trade Marks Act.
30
Some of his
functions have already been noted, e.g., those in connec-
tion with applications for registration or rectification, and
with the issue of certificates of registration. The Con-
troller has the power to award costs in all proceedings
before him. He may also initiate criminal proceedings in
the event of a false representation that a trade mark is
registered. In the event of any doubt or difficulty in
relation to his functions, the controller is empowered to
seek directions from the Attorney General.
One of the Controller's functions relates to the giving
of preliminary advice as to distinctiveness; a prospective
applicant for registration of a mark may obtain such
advice on application in the manner prescribed.
The Controller, in relation to any power exercisable by
him, must permit an opportunity to be heard to an
applicant for registration or to the registered proprietor of
a mark.
Evidence received by the Controller must generally be
given by affidavit, though he may take oral evidence in
lieu thereof, or in addition thereto.
An appeal lies to the courts from most decisions of the
Controller.
PROTECTION OF MARKS AT
COMMON LAW
PASSING OFF
Protection of business goodwill generated by adver-
tising and other means is not confined to actions for
infringement of
registered
trademarks. The common law
action of passing off may also avail a manufacturer or
trader in a suitable case.
A proprietary right in one's business (including the
goodwill) is recognised at common law. The passing off
action is based on the principle that this right will be
infringed if one concern represents its merchandise in
such a manner as to mislead the public into believing that
it is the merchandise of another.
The varieties of passing off are numerous. They include
the application to products of "badges" or signs which
are identical or similar to those used by a rival. The use of
another's trade mark (whether registered or unregistered)
is one example. So is the use of another's business name.
Another form of passing off is to "get-up" a product (e.g.
in terms of colour scheme, shapes, sizes, designs or
packaging) in a way similar to that of a competitor's. A
case in point is
Polycell Products
v
O 'Carroll and
Others
.
3I
The plaintiff there had, since 1954, marketed a
cellulose adhesive under the (unregistered) mark
"Polycell". The defendants, in 1959, introduced to the
market a similar product under the name "Clingcell".
That product was sold in a "get up" which closely
resembled that of the Plaintiffs product — the packaging,
colour schemes, slogans, etc., were in each case similar. It
was held, on an application for an interlocutory
injunction, that the activities of the defendant could
amount to a passing off of the palintiffs goods.
The passing off action has in many respects a wider
application than the action for infringement of registered
trade marks; it is not uncommon, moreover, for the two
actions to be combined in litigation. The action at
common law has, however, two sizeable drawbacks. In
the first instance, the plaintiff must prove both that his
product has acquired a reputation among customers, and
also that the defendant's product presentation will deceive
or confuse these customers. Secondly, a successful
passing off action against one business rival will not be
conlcusive against other business rivals. These
shortcomings in the common law approach were, indeed,
a motivating influence in the initial provision for
registration of trade marks in 1875.
8