Where two is no worse than one: Irish allow joint trade mark oppositions by unrelated parties

Still playing catch-up ... Marie Claire Netherlands B.V. v Marie Claire S.A. & Brandwell (IRL) Ltd, a 10 July decision of Dermot Doyle, acting for the Controller of the Irish Patents Office, caught this Kat's eye when it was first published online some weeks ago on that office's official website but, in the excitement of the past few weeks, his in-tray became somewhat overwhelmed by subsequent news and correspondence. Anyway, this is what the case is all about.

Apparently unrelated, but
fit for joint oppositions

Marie Claire Netherlands BV ('MCN') was the assignee of an application to register the word mark MARIE CLAIRE for clothing and headgear in Class 32. The application, which had been authorised by MCA (the publishers and trade mark proprietors of fashion magazine Marie Claire), was jointly opposed in relation to all the goods covered by the mark by Marie Claire SA ('MCSA'), who asserted that it owned an identical unregistered trade mark MARIE CLAIRE, and by Brandwell, a company that distributed identical or similar goods (hosiery, lingerie and swimwear products) manufactured by MCSA under that mark. Both sides claimed ownership of the trade mark in respect of clothing and headgear in Ireland.  The mark was opposed on the grounds that use of the contested mark by MCN could be prevented by virtue of the law of passing off (s. 10(4)(a), Trade Marks Act 1996), that the application was made in bad faith (s. 8(4)(b)) and that there was no bona fide intention for the mark to be used (s. 37(2)). Said the opponents, their earlier mark had been used in Ireland for over five years by the filing date of MCNs application. They added that it had acquired a significant reputation and that the purpose of the opposed application was solely to prevent registration of the earlier mark.

MCN denied any any knowledge of the use and reputation of the earlier mark and insisted that it had a bona fide intention to use its mark. What's more, said MCN, the opposition was inadmissible on the basis that neither the Act nor the Trade Mark Rules 1996 provided for the filing of a single Notice of Opposition by joint opponents who are not related entities or in a licensor-licensee relationship that controlled the use of the earlier trade mark.

Dermot Doyle upheld the opposition and refused MCN's application. Why was this?

First, on the admissibility of an opposition filed by joint opponents, there was no specific reason to disallow a joint opposition where unrelated opponents come together to oppose registration of a trade mark for which they claim to share a common interest. There mere fact that the 1996 Act made no specific provision for joint oppositions didn't mean that they were precluded, particularly in light of section 18 of the Interpretation Act 2005 which provides that the singular imports the plural. Further, where circumstances permit, joint oppositions are desirable in order to save time and costs and avoid unnecessary repetition.

Turning next to the issue of ownership, Dermot Doyle observed that trade marks are goods-and-services specific and that any licensing agreement or authorisation to apply for registration can only have standing if it is in respect of the identical or similar goods or services for which the mark is owned. Consumers do not establish links between publishers who cover particular items in their publications and traders who actually trade in those items. In this instance, MCN could not claim ownership of the applied-for trade mark on the basis of a nexus between the goods applied for and those covered by the trade mark owned by MCA. That MCA used its MARIE CLAIRE trade mark in respect of dissimilar goods and earned revenue from licensing agreements for the use of that mark in respect of clothing in other jurisdictions was irrelevant. Nor was any evidence adduced to lead to the conclusion that, at the time of filing, either MCN or MCA owned the MARIE CLAIRE trade mark for clothing and headgear in Ireland.

Intention to use and bad faith were then taken together. Dermot Doyle explained that the requirement of intention to use in Ireland requires an applicant to include a statement in the application that the trade mark is being used, or that there is a bona fide intention to use it, in relation to the goods or services applied for. Here MCN clearly had every intention to use the mark, which was already in use for clothing in other jurisdictions. Bad faith, in contrast, constitutes dishonesty, including dealings which fall short of the standards of acceptable commercial behaviour observed by those who are reasonable and experienced in the particular commercial area being examined. It was therefore necessary to give consideration to the intention and conduct of the entity that applied for registration, at the date of application. Failure to refute a charge of lack of bona fide intention to use may be taken into account in this context and bad faith is proven where sufficient evidence is adduced to show misconduct or where it is an inescapable inference drawn from the circumstances of the application. An accusation of bad faith is not countered by arguing that an opponent has failed to protect its trade mark by failing to register it.

Here MCN had acted in bad faith and the application would be refused.  While little evidence as to bad faith was submitted due to the assignment, Statutory Declarations of the original applicant which pre-dated the filing of the contested application were sufficient to show that the applicant knew of the opponents' substantial use of the mark in relation to hosiery, lingerie and swimwear. Nor could MCN claim that the application was a normal and legitimate act of commercial competition: there was no such activity in relations to the goods covered by the application, nor was the application based on any reputation in those goods at the relevant date.

In case all of the foregoing was an insufficient basis on which to destroy the application, the claim that MCN's mark, if used, could be prevented by an action for passing off was considered. Here the function of the Controller differs from that of the court: while the latter must determine whether use of a mark could actually be prevented under the law of passing off, the Controller must determine whether the fundamental ingredients of the action would be present if the mark applied for were used. Since the opponents had used the MARIE CLAIRE mark for use on clothing in Ireland extensively and sufficiently to justify a vested right, they were entitled to protect it under the law of passing off. There was reputation in the mark by virtue of significant turnover, expenditure on promotion and wide geographical distribution of goods. Use of the identical mark for identical goods by MCN would create a misrepresentation of origin in the minds of existing or potential customers and such use would result in damage to the opponents' businesses.

"Not too many shocks to the system", notes the IPKat.

Merpel, though not shocked, is a little disappointed. She had always believed that s.18 of the Interpretation Act 2005 contained the phrase "For the purposes of this Act, 'man' embraces 'woman'", instead of the boring but undoubtedly more politically acceptable " A word importing the masculine gender shall be read as also importing the feminine gender; ..."

Two heads are better than one here