The Gazette 1979

JANUARY/FEBRUARY 1979

GAZETTE

TRADE MARKS AND PASSING OFF. THE IRISH - E.E.C. REGIME By DENIS LINEH AN, LL.M., Lecturer in Law at University College, Cork and JERRY G. HEALY, B.A., B.C.L. INTRODUCTION

ticket, name, signature, word, letter, numeral, or any combination thereof. The Act does not preclude other possible marks. 6 A register of trade marks is kept at the Industrial and Commercial Property Registration Office; it is divided into two parts, Part A and Part B. 7 Registration in Part A, as will later be seen, affords greater protection than registration in Part B. Part A Marks Registration in Part A protects the owner of a trade mark against the use in the course of trade of an identical or a mark so resembling it as to be likely to deceive or cause confusion. A trade mark, in order to be registrable in Part A, must contain or consist of at least one of the following essential particulars: 8 (a) The name of a company, individual or firm, represented in a special or particular manner; (b) the signature of the applicant for registration or (d) a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification of a geographical name or surname; % (e) any other distinctive mark, but a name, signature, or word or words, other than such as fall within the descriptions in paragraphs a, b, c, and d, is not registrable except upon evidence of its distinctiveness. The particulars referred to in (a) and (b) above are self- explanatory. It is arguable that trade marks consisting of an invented word or words, i.e. marks which comply with (c) above, constitute the best type of trade mark. Invented words make highly distinctive trade marks, and are, moreover, highly flexible marketing instruments. The word "Aspro" is a typical example of such a mark. 9 Re Hamilton Cosco Incorporated 10 concerning an appeal from a refusal by the Controller of Industrial and Commercial property to register the word "Cosco" as a trademark. The applicant company had sought its registration as an invented word. The Controller refused registration because the word appeared twice in the New York Telephone Directory — once as a surname and once as part of the name of a company. The evidence before the court showed that "Cosco" was not a word which was, or ever had been, in use in this country as an ordinary English word. It was held, therefore, that, in all the circumstances of the case, the word "Cosco" was registrable as an invented word. The particulars mentioned in (d) above will be under- stood if it is remembered that the primary function of a trade mark is to distinguish between the goods of competitors. A mark containing a "[Direct] reference to the character or quality of the goods" will obviously not some predecessor in his business; (c) an invented word or words;

Trade marks constitute an important species of industrial property. Manufacturers and distributors regard them as a vital aspect of their marketing strategy, since the interest and good will generated for a product can be embodied in the mark under which it is sold. Trade marks also serve the consumer, who will use them to differentiate between competing products. A sharp rise in the level of the activity relating to trade marks has occurred in recent years. 1 This development can be ascribed in part to a growing awareness of the necessity to protect one's commercial insignia. Instrumental also, no doubt, has been the overall quickening in Irish commerical life, owing to such factors as E.E.C. membership and the success of national invest- ment programmes in attracting industries from overseas. Specialist agents have traditionally been dominant in the service of trade marks. 2 Lawyers who are not registered trade mark agents have, however, increasingly become involved in the field — in an advisory capacity to their business clients, and also in connection with litigation. This article seeks to outline our legal code on trade marks. It refers, first, to the Trade Marks Act, 1963, and to the related case-law. It then treats the protection afforded unregistered marks by the common law action of passing off. Finally, it focuses on the regulation of trade marks under the Treaty of Rome, and on proposals of the E.E.C. Commission for a community — wide system of protection. TRADE MARKS ACT, 1963 REGISTRABLE TRADE MARKS General A trade mark means "[except] in relation to a certification trade mark, a mark used or proposed to be used in relation to goods for the purpose on indicating, or as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark, whether with or without and indication of the identity of that person, and means, in relation to a certification trade mark, a mark registered or deemed to have been registered under S.45". 3 Marks used in relation to service industries are not trade marks within the meaning of the Act. 4 A trade mark cannot, therefore, be registered in respect of, for example, a travel service, a repairing process or credit card facilities. 5 Such marks may, however, be protected in a passing off action and possibly even in an action for infringement of copyright. A "mark" includes a device, brand, heading, label,

5