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GAZETTE
JULY/AUGUST
1
Recent
Irish
Cases
TRADE MARKS
Unauthorised use of registered
trade mark. Whether exclusive
rights, under Section 12 of Trade
Marks Act 1963 in respect of
registered trade marks are limited
to use of the goods in the course of
trade.
The Plaintiffs were registered pro-
prietors of the mark "Conquest" in Part A
of the Register Class 34 in respect of the
goods tobacco, whether manufactured or
unmanufactured.
The Defendants, The Health Educa-
tion Bureau, produced an imitation packet
of cigarettes, containing pieces of paper
folded to look like cigarettes, on which
were printed pieces of advice on how
to give up smoking. To the casual observer
the packet looked like and was intended to
look like a packet of cigarettes bearing the
brand name "C o n q u e s t ".
The
Defendants had been unaware that by
using the word "Conquest" it was making
use of a registered trade mark — it had
caused a search to be made in the Register
but the searcher had failed to search in
Class 34.
The Plaintiffs claimed that the
exclusive statutory rights given to them by
Section 12 of the Trade Marks Act 1963
had been infringed and secondly and
alternatively that the Defendant had been
in breach of a duty of care which it owed to
all persons lawfully engaged in the trade of
selling tobacco products not to so conduct
its campaign as to damage the legitimate
rights of property which such persons are
entitled to enjoy.
The Defendants denied a breach df the
Plaintiffs statutory rights as it had not
used the Plaintiffs' mark in relation to
cigarettes but in relation to a health educa-
tion campaign. The Defendant also
argued that the exclusive right given
by Section 12 is a right to use the mark in
relation to goods in the course of trade,
and that even if it had used the mark "in
relation to" cigarettes it did not use it in
the course of trade.
HELD: That by giving the words of
Section 12 their ordinary and natural
meaning and applying them to the facts,
the Defendant had used the mark "in
relation to" cigarettes. The Plaintiffs'
mark, though little used by them, could
never again be used by them in relation to
cigarettes or tobacco products. The fact
that goodwill in a mark has been injured
lends considerable support to a claim that
there has been a use of the mark "in
relation to" the goods for which the mark
was registered.
That furthermore following the English
case of
Bismay v. Amblins (Chemists)
Limited
57. R.P.C. 209, Section 12 when
enacted had extended the law relating to
trade marks and that the exclusive
statutory right was not confined to use to
indicate the origin of the goods.
On the Defendants' submission that an
infringement contrary to Section 12 only
occurs if there is use of the mark by the
alleged infringer "in the course of trade"
(by reference to the definition of a trade
mark contained in Section 2 of the Act), it
was held that that would require the court
to construe the section by adding words to
it which it did not contain. As had been
seen in the present case, a non trading
unauthorised use of the mark could result
in irreparable damage to the mark and
there was no reason why the legislature
did not intend to grant effective protection
against such "non-trading" use.
As the mark could not be used further,
a sum of £350 would be incurred in regis-
tering another mark — which was the sum'
awarded to the Plaintiffs by way of
damages.
As the Plaintiffs were entitled to relief
under the first part of their claim it was
unnecessary to consider the alternative
claim based on the allegation of breach of a
common law duty of care.
Gallaher (Dublin) Limited, Hergall (1981)
Limited, and Gallaher Limited v. The
Health Education Bureau
— High Court
(per Costello J.) — 23 February 1982 —
[1982] ILRM 240.
Daire Hogan
VALUATION
Rateablllty of Educational Institu-
tion under the Provisions of Section
63 of The Poor Relief (Ireland) Act,
1838.
The question at issue in this case was
the rateability or otherwise of Wesley
College. This question depended on
whether or not Wesley College was an
Institution altogether of a public nature
and used exclusively for public purposes,
and therefore, coming within the
exemption provided by Section 63 of the
Poor Relief (Ireland) Act, 1893.
The Constitution of Wesley College
requires the Governors "to provide and
afford for Methodist and other children
and for so many of the children of
Ministers in connection with the
Methodist Church as may from'time to
time be elected or designated for such
purpose by the Conference (of the
Methodist Church in Ireland) subject to
such charges or scale of charges as may
from time to time be determined by the
Governors for the time being".
Statistics were provided for the Court
in respect of the year 1973 which showed
that of the 622 boys and girls attending the
College 19.3% were Methodist, 59.3%
were members of the Church of Ireland
and the remaining 12.54% were drawn
from other Protestant sects, Roman
Catholics, Jews and Muslims. The Court
was of the opinion, therefore, that while
the College was of unique benefit to the
small scattered Methodist Community in
Ireland it enured over-whelmingly for
the benefit of non-Methodists. The school
is essentially a private, fee-paying school
with grants and subventions from the
Department of Education which are avail-
able to recognized Secondary Schools.
The Court held that because one of the
conditions for the admittance for most of
the pupils is the payment of a sizeable fee,
it cannot be said that Wesley College is
altogether of a Public nature, or altogether
used for public purposes. It is a necessary
pre-requisite for exemption from rate-
ability that the College have an exclusively
public nature or purpose.
In reaching this conclusion the Court
referred to
Trustees of Magee College v.
Commissioner of Valuation
IR 4CL 438
and
Guardians of Waterford Union v.
Barton,
[1896] 21R 538. The Court dis-
tinguished the cases of
Pembroke UDC v.
Commissioner of Valuation
[1904] 21R 427
as in that case, Pembroke Technical School
was maintained by public money and
derived no private profit, was open to all
comers. The fee of 2/6d which each
student had to pay was disregarded by the
Court under the
de minimis
rule, because
it was intended to ensure that only bona
fide and serious students would enrol and
that the circumstances of Wesley
College were radically different. The
Court also distinguished the instant case
and that of
University College Cork v.
Commissioner of Valuation,
[ 1911 ] 21R 593
in which case the University College was
held exempt from rates as in that case the
relevant provision of the Irish
Universities Act, 1907 and of the Charter
of the National University and that of the
College itself marked the College as
having in terms of its objects, user and
financial accountability, characteristics
which made it altogether of a public
nature and used for public or exclusively
charitable purposes. Similar charac-
teristics were found wanting in the
instant case. At one stage the College
argued that in accordance with the
opinion of the House of Lords in
The
Governors of Campbell College Belfast v.
Commissioner of Valuation for Northern
Ireland[
1964] 1 WLR 912, that exemption
is to be sought in Section 2 of the Valua-
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