Fianna didn't Fail

The IPKat has come across a rare example of two major political parties working together with a single aim. The two parties in question are the Irish parties, Fianna Fail and Fine Gael and the aim was to defeat an application by a third party to register their names (and that of Sinn Fein) as UK trade marks.

The third party was a Mr Patrick Melly. He applied to register the three names as trade marks for fresh fruit, vegetables and salad, potatoes, tomatoes, malt, all the produce of Ireland, lemons, bananas in Class 31 and business administration, office functions in Class 35.

He then sent letters to the General Secretaries of Finna Fail and Fine Gael which read:

We are instructed by Fine Gael Limited, a Company registered in England under registration number 05473574. The Company has recently filed an application to register the name “Fine Gael” with the UK Patent Office and the European Trade Mark Office as a Trade Mark.

Our client is now planning to commence trading in Northern Ireland and the Republic in the name of Fine Gael Limited and intends to fully enforce its rights as the proprietor of the trademark. It would appear to our client that your party may inadvertently breach the terms of the trademark and it would not wish to see your client embarrassed by having to make any public retractions or apologies to our client. Our client would also not wish to put the party into a position whereby it is forced to change its name in some material way.

Our client would wish to enter into negotiations with your party for the grant of a license for the use of the trademark “Fine Gael” and would hope that this is of interest to your party.

Melly also appears to have written to the UK Treasury Solicitor indicating that if he did grant licences to the parties, he would place political conditions on them relating to the way in which public appointments were made.

The remarkable (though understandable on the state of the law) thing is that the Hearing Officer held that the parties could not oppose the registration.

Mr Geoffrey Hobbs QC reached the same argument on three of the four arguments put forward by the parties.

The party names could not benefit from Art.6bis protection as famous marks because there was no proof that the party names had been used as (unregistered) trade marks, nor was the evidence submitted sufficient to establish that they were well known in the UK.

The party names were also not protected by passing off as the parties had no goodwill in the UK.

The ban on registering deception marks also couldn’t help the parties. Mr Hobbs QC divided deceptive registration situations into two types: absolute and relative. Absolute covers deception as to what is being made available, relative covers deception as to who is making it available. The ban on registering deceptive marks was said to only be absolute deception. Concerns about who is making it available should be left to the relative grounds for the refusal of registration. The fear was that UK consumers would wrongly believe that the parties were using their name for fundraising purposes, which would be a relative type of deception, and consequently not covered under the absolute grounds.

However, the parties did succeed in showing bad faith. Although there is no ECJ case law on bad faith, the LCAP thought it legitimate to pay attention to the well-established Community law principle that “Community law should be interpreted and applied so as to confer no legitimacy on improper behaviour. Returning to the theme of absolutes and relatives, the LCAP found that the hearing officer was entitled to find that the relative position of the parties was not harmed, in that they would still be able to continue with their previous activities, even if Mr Melly’s application proceeded to registration. However, the hearing officer had paid insufficient attention to the absolute position of Mr Melly, who displayed a lack of integrity in threating to use the registrations in a way which would stop the parties from using their names or, more seriously (because the previous threat could probably be avoided with some good legal advice), by forcing the parties to distance themselves from his use of their names.

The IPKat finds it remarkable that the application for registration almost got away with registering the name of the major political parties in our very near neighbour. The parties didn’t help themselves here by failing to adduce evidence of recognition in the that went beyond mere assertions. Even if they had though, this wouldn’t have helped too much because the problem here was essentially lack of use as a trade mark. This put pay to both Art.6bis and goodwill for the purposes of passing off.