The Gazette 1981

GAZETTE

DECEMBE

1981

TRADE MARKS

It does not follow that because a

feature of the trade mark is of a non-

descriptive

character

that

disclaimer under section 22 of the

Trade Mark Act 1963 should be

required as a matter of course.

The

Plaintiffs (Phillip

Morris

Incorporated) applied to register a

mark containing the words "Virginia

Slims" in January 1975. The

Controller of Patents, Designs and

Trade Marks said that he would only

proceed with the application if the

Plaintiffs agreed to disclaim the

exclusive use of the words "Virginia

Slims". The Plaintiffs while prepared

to disclaim the two words separately,

were not prepared to accept the

disclaimer of the combination of the

two words and the Controller refused

their application. The Controller

fixed a hearing. No statutory

declaration was filed but submissions

were made by the Plaintiffs' agent.

The

Controller

refused

the

application but before he gave his

written decision the Plaintiffs filed a

declaration. The Plaintiffs appealed

to the High Court against the refusal

and sought to introduce the statutory

declaration as evidence.

Held

(per Costello J):

(1) that, under section 25(7) of the

1963 Act the Court has no

jurisdiction to allow any further

materials to be introduced by the

applicant after the Controller has

stated his decision.

(2) that if the Court or the Controller

concludes that a feature of the mark

is not "adapted to distinguish" or

"capable of distinguishing" the

applicants' goods within the meaning

of sections 17 and 18 then a

jurisdiction to order a disclaimer

arises under section 22.

(3) that it does not follow as a matter

of course that because a feature of

the mark is of non-distinctive

character a disclaimer under the

section should be required. In

exercising its discretion the Court or

the Controller should consider

inter

alia:

(a) the object for which a disclaimer

should be required.

(b) the disadvantage which the

applicant will suffer if the

disclaimer is required.

(c) the danger that the absence of a

disclaimer could give rise to

unjustifiable

claims

monopoly in a non-distinctive

feature of the mark.

(d) That the words "Virginia Slims"

constitute matter of a non-distinctive

character within the meaning of

section 22 and that this is a case in

which it was proper to have required

the Plaintiffs to agree to disclaim the

exclusive use of the words "Virginia

Slims" since these words are by far

the most prominent and striking

feature in the mark and if no

disclaimer was required a registered

proprietor of the mark might claim

statutory monopoly rights in these

words even though they could not

have been independently registered.

(e) That, in summary, the Controller

was right in requesting the plaintiffs

to agree to the disclaimer he sought

and in refusing the application when

the Plaintiffs did not do so. Appeal of

the Plaintiffs dismissed.

Note:

At the end of his judgment

Costello J., said:

"The appeal to the Court from a

discretionary order made by the

Controller is, it is clear, by way of

a re-hearing, and the Court

therefore is not limited to

considering whether the Controller

had misdirected himself in some

way or proceeded on wrong

principles . . . the Court is

perfectly free to exercise its own

discretion in the light of the

evidence before it."

In the matter of the Trade Mark Act

1963. PhDUp Morris Incorporated v.

The Controller of Patents, Designs

and Trade Marks

— High Court (per

Costello J.) — 7 October 1980 —

Unreported.

PROCEDURE

Lis Pendens — jurisdiction of the

Court to vacate in the absence of

consent — applicability of Lis

Pendens Act 1867 to this jurisdiction

confirmed.

The Plaintiff commenced proceed-

ings for specific performance of a

contract for the sale of supermarket

premises in Mullingar by Plenary

Summons issued on 22 September

1978 and on the same date regis-

tered the proceedings as a lis pendens

against the Defendants' interests in

the premises. The statement of claim

was served on 15 October 1979. By

notice of motion served for 5

November 1979 the Defendants

applied to the High Court for an

order vacating the lis pendens and

dismissing or staying the pro-

ceedings. The grounding affidavit of

the Defendants deposed to the res-

cission of the contract by agreement

between the parties prior to the

action. The Plaintiff's legal advisers

did not file a replying affidavit be-

cause they believed that the High

Court had no jurisdiction to vacate

the lis pendens without the consent of

the registering party i.e. the Plaintiff.

The Defendants relied on Section

2 of the Lis Pendens Act 1867 which

(inter alia) authorised the Court

before whom the property sought

was in litigation upon the determin-

ation of the litigation or during the

pendency thereof, where the Court

was satisfied that the litigation was

not prosecuted bona fide, to make an

order, if it sees fit, for the vacating of

the lis pendens without the consent of

the party who registered it.

Giles

Brady

[1974] IR 462,

Kenny J. held in the High Court that

the Lis Pendens Act 1867 did not

apply to Ireland, the Court being in-

fluenced by the fact that Section 1

(since repealed) referred to a section

of the Companies Act 1862, which

Act of 1862 did not apply to Ireland

by the reference in Section 2 to "the

Senior Master of the Common Pleas"

an office which did not exist in

Ireland.

Culhane

Hewson

(High

Court - 20 October 1978 - un-

reported) McWilliam J. did not follow

the Giles decision relying instead on

Glencourt Investments Ltd., and

Companies Act

(Supreme Court — 28

July 1975 — unreported) and also

relying on the fact that in the Official

Index to the Statutes for 1867 the Lis

Pendens Act appeared with the letters

"G.B. and I." opposite to it and held

that the Act of 1867 did apply to this

jurisdiction. In

Dunville Investments

Ltd., v. Kelly

(High Court - 17 April

1979 - unreported) Costello J.

followed the view of McWilliam J.

This was an Appeal to the

Supreme Court from a decision of the

High Court (also per McWilliam J.)

which had concluded that in view of

the fact that the affidavits filed by the

Defendants had not been con-

troverted by the Plaintiff that the

proceedings were not being bona fide

prosecuted because prior to auction

bought the Plaintiff had agreed to a

rescission of the contract and the

High Court had made an order

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