The Gazette 1979

V

GAZETTE

JANUARY/FEBRUARY 1979

effect of such registration would be to preclude the use of the trade mark in connection with the first-mentioned goods. 19 Defensive registration may be obtained only in respect of trade marks consisting of an invented word or invented words. Certification Trade Marks Certification trade marks are used to certify goods in respect of origin, material, mode or manufacture, quality, accuracy or other characteristics. 20 Thus, a certification trade mark differs from an ordinary trade mark, a primary function of which is to indicate a trade connection between its owner and the goods in respect of which it is used. Certification trade marks may be registered, riot by a trader in the goods concerned, but only by an individual or association whose business includes the certification of goods in respect of origin or standards. Moreover, before registration of a certfication trade mark, regulations governing the use of the trade mark must be deposited at the Controller's office; these regulations mlist have the prior approval of the Minister for Industry, Commerce and Energy. Certification trade marks are registered only in Part A of the register. Associated Trade Marks The owner of a trade mark in respect of a class of goods, who wishes to register an identical or similar trade mark in respect of the same class of goods, may obtain their registration as associated marks. 21 An owner can moreover split a mark by registering a part of parts of it as separate marks, and he may also register a number of similar marks as a series. 22 Prohibited Marks A trade mark the use of which would, by reason of its being likely to deceive or cause confusion, be disentitled to protection in a court of law, is not registrable. It is also unlawful to register a scandalous design, or a trade mark the use of which would be contrary to law or morality. 23 In addition, a trade mark will not be registrable in respect of goods if there is an identical trade mark already on the register in respect of the same goods. Finally, a trade mark cannot be registered in respect of goods if it is so nearly resembles an already registered trade mark in respect of the same goods as to be likely to deceive or cause confusion. 24 An illustrative case is Re Mediline Aktiengesellschaft. 2S The applicants here appealed against the Controller's decision to register the word "Bidex". The refusal to register was on the basis that the trade mark would be likely to deceive or cause confusion with the previously registered trade mark, "Barbidex". It was held by the High Court that the two words did not so nearly resemble each other as to be likely to deceive or cause confusion, and that, therefore, "Bidex" was registrable as a trade mark. REGISTRATION Application Any person caliming to be the proprietor of a trade mark may apply in writing to the controller for its registration. 26 The Controller may refuse application on the ground that the mark concerned is not distinctive, on the ground that the specification of goods sought to be covered by the registration is too wide. He may also

be distinctive, since any trader in the goods concerned may be expected to refer to his own particular goods in terms of their character or quality. 11 Trade marks incorporating geographical names or surnames are, similarly, vulnerable on the basis of non-distinctiveness. This is particularly true in the case of marks incorporating the names of countries or substantial towns, and of marks incorporating common surnames. The category of trade marks registrable under (e) above is a residual one; the overriding consideration is that the mark be distinctive. 12 Part B Marks Trade marks registered in Part B, because they carry less protection than is afforded to part A marks, are sometimes referred to as second class marks. In order that a trade mark be registrable in Part B, it must be capable "[In] relation to the goods in respect of which it is registered, proposed to be registered, of distinguishing goods with which the proprietor of the trade mark is, or may be, connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered, or proposed to be registered, subject to limitations, in relation to use within the extent of the registration." 13 This, in effect, means that the standard of distinctiveness required of Part B marks is lower than that required of Part A marks. 14 Thus, for example, a Part B mark need not be distinctive when registered, so long as it is capable of becoming distinctive in use. It was held in a recent case that the potential distinctiveness of a mark for purposes of registration in Part B could be shown by "[Proof! of the development of a secondary meaning which outweighs the apparently non-distinctive character of the mark when viewed in isolation . .. (or by showing that) in spite of the absence of a sufficient distinguishing characteristic in the mark itself, distinctiveness can be acquired by appropriate user, thereby overcoming a negative quality in the mark." 13 Two illustrations may clarify these criteria. It has been held, for example, that the word "Aphrodisia" is capable of acquiring by user a distinctive character in connection with soaps and perfumes, but not in connection with drugs and medicines. 16 It has also been held that the word "Kreuzer", a surname, is so unusual in Ireland as to be capable of distinguishing a manufacturer's goods. 17 Defensive Trade Marks The trade mark classification is divided into thirty-four classes. These classes include such product groupings as machines and machine tools; vehicles; wines, spirits and liqueurs; and agricultural products, etc. A trade mark can be registered in respect of one or more classes of goods, depending on the product scope desired for the mark by the owner. 18 There is no general prohibition on the use of similar trade marks by firms in different trades. Thus, for example, there would normally be no infringement of trade mark if one concern marketed oranges under a trade registered by another concern in Part B in respect only of cosmetic products. If a trade mark is so well known, however, that its use in connection with goods in respect of which it is not registered would be likely to indicate a connection in the course of trade with the owner of the goods in respect of which it is registered, then the latter may be entitled to obtain a defensive registration of the trade mark; the

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