The Gazette 1979

JANUARY/FEBRUARY 1979

GAZETTE

is registered in Part A or Part B. A person entitled to a trade mark registered in Part A has the exclusive right to the use of the mark in relation to those goods for which it is registered. 35 A person entitled to a mark registered in Part B is also entitled to exclusive user. 36 The degree of protection afforded this right is, however, lower than that given in respect of Part A marks. If another manufacturer or trader uses a similar or even identical mark, the person entitled to a Part B mark will fail in an infringement action if the defendant proves two points: first, that the use complained of is not likely to deceive or cause confusion; and, secondly, that the use complained of is not likely to be taken as indicating a connection in the course of trade between the goods and the person entitled to the registered trade mark. DEALINGS ON THE REGISTER Trade marks may be assigned, transmitted or licensed. The register, moreover, may be rectified in certain instances. Assignment and Transmission 37 Registered trade marks are, subject to certain conditions, assignable and transmissable, either in connection with the goodwill of the business or not. 38 An assignment may be in respect of all or only some of the goods in respect of which a trade mark is registered. Unregistered trade marks are assignable and trans- missable under the Act, but only in conjunction with registered trade marks. Assignment of a trade mark without the goodwill of a business has no effect unless and until, upon application by the assignee, notice of the assignment is published by the Controller in the Official Journal of Industrial and Commercial Property. 39 Associated trade marks are assignable and trans- missible as a whole, and not separately. 40 A registered user has no assignable or transmissible right in the mark. 41 Licences: Registered Users The Act contains a number of closely circumscribed provisions for the licensing of trade marks. 42 The prospective licensee of a mark must, together with the proprietor of the mark, apply in writing to the Controller for registration of the user required. The Controller has a discretion in deciding whether or not to grant the licence; he is obliged, in particular, to have regard to the public interest. Rectification The register may be rectified either by the Conroller or by the court at the request of the proprietor of a trade mark, or on the application of a "person agrieved". 43 The possible grounds for rectification are numerous. For example, a registration obtained by fraud, or an entry made in the register without sufficient cause, may be rectified. In Re Carl Zeiss Stiftuna, 44 a German company applied for the removal of the trade mark "Punktal" from the register. The mark had previously been registered by an Irish company in respect of "lenses of all kinds". The application for rectification was granted, on the ground (among others) that the Irish company had not been the proprietor of the trade mark at the time of its registration. 7

refuse an application if, for example, he considers that the mark is immoral, illegal, improper, scandalous or misleading. An appeal lies to the court against any objection raised by the Controller in respect of a registration. 27 One instructive case concerned an appeal against an appeal against a refusal by the Controller to register the mark "Durex" in respect of surgical gloves. Hamilton J. upheld the appeal. He found that the word "Durex", although associated in public mind with a particular brand of contraceptives, was not associated with contraceptive generally to such an extent as to be synonymous therewith, or to such an extent as to be likely to deceive or cause confusion if registered in respect of surgical gloves. 28 Opposition An application for registration, after it has been accepted, is advertised by the Controller. Any person may, within one month from the date of the advertisement of an application, give notice to the Controller of opposition to the registration. 29 Opposition may be based on any ground that would preclude or invalidate registration — the most common ground of opposition is that the mark concerned is too similar to an existing mark. An appeal lies to the court from the decision of the Controller as to whether an opposed mark should be registered. When an application for registration has been accepted and the time for opposition has expired, or where the application has been opposed but not successfully, the trade mark is registered as of the date of application. 30 Certificate , Duration and Renewal A certificate is issued under the Controller's seal on the registration of a trade mark. 31 The duration of the initial registration is seven years. Registration may be renewed indefinitely thereafter for fourteen-year periods. 32 Disclaimer If a trade mark contains any part not separately registered by the proprietor as a trade mark, or matter common to the trade or otherwise of a non-distinctive character, the Controller or the court, in deciding whether the trade mark should be entered or remain on the register, may require a disclaimer by thq proprietor. As a condition to the trade mark being on the register, the proprietor may be required, for example, to disclaim any right to the exclusive use of any part of the trade mark. 33 The recent case of Western Brands Inc. v. The Controller provides an illustration. 34 It concerned an application for Part B registration of the name "Silva- Thins", in respect of cigarettes. On appeal from the Controller's refusal to register the name, it was held that "Silva-Thins", with a hyphen between the two words, was capable of distinguishing within the meaning of section 18. The presiding judge set out however, as a pre- condition to registration, that the applicant disclaim any right to the exclusive use of either the word "Silva" or the word "Thins". It is clear that a disclaimer under the Act does not affect any rights which the proprietor may have in respect of the mark at common law. EFFECT ON REGISTRATION The effect of registration depends on whether the mark