The Gazette 1979

GAZETTE

JANUARY/FEBRUARY 1979

Rectification may also be made on the breach of a condition attaching to a registration, or by way of correcting any errors in any entry on the register. A registration may, moreover, be altered by way of variation of a trade mark, or by way of amending the classification of goods in respect of which a mark is registered. INFRINGEMENT OF TRADEMARKS The principal form of infringement is where a person, not being the proprietor or the registered user of a mark, uses an identical mark or a mark so nearly resembling it in a manner likely to deceive or to cause confusion in the course of trade. 43 Examples of infringements which have occurred in this way include the use of "Pern books" in the light of the registered mark "Pan books", and of "Watermatic" in the light of the registered mark "Aquamatic". On the other hand, the use of "Gala" has been held not to infringe "Goya", and the use of "Kidax" has been held not to infringe "Daks". The difficulties that arise in border-line cases were well illustrated in United Biscuits Ltd. v. Irish Biscuits Ltd.* 6 The plaintiff in that case was the owner of the mark "College Creams", which was registered in respect of certain biscuit products. The defendant marketed a similar type of biscuit under the name "Cottage Creams". In a subsequent action for infringement, it was held that the defendant's mark did not so resemble that of the plaintiff as to be the likely to deceive or cause confusion in the course of trade. The owner of a trade mark may, by contract in writing with a purchaser or owner of goods, extend in certain ways the rights given him by registration. 47 Thus, for example, he may prohibit the alteration, removal or obliteration, or a trade mark upon the goods, or the addition to the goods of any other written matter that is likely to injure the reputation of the trade mark. The doing of any of these prohibited acts will constitute an infringement. The use of a trade mark by a person other than the one entitled to its use will not, in certain instances, constitute an infringement. Instances include the sale of accessories, spares and components, by reference to the trade marks used on the "principal" goods, provided such use is reasonably necessary to show the adaptable use of the accessories, etc. 48 Thus, the sale of a brand of oil "for use in Ford Motors" would probably not constitute an infringement of the "Ford" trade mark. Furthermore, the use by a trader of his own name will generally not constitute an infringement of trade mark. 49 POWERS AND DUTIES OF THE CONTROLLER The Controller has the general responsibility for administering the Trade Marks Act. 30 Some of his functions have already been noted, e.g., those in connec- tion with applications for registration or rectification, and with the issue of certificates of registration. The Con- troller has the power to award costs in all proceedings before him. He may also initiate criminal proceedings in the event of a false representation that a trade mark is registered. In the event of any doubt or difficulty in relation to his functions, the controller is empowered to seek directions from the Attorney General. One of the Controller's functions relates to the giving of preliminary advice as to distinctiveness; a prospective

applicant for registration of a mark may obtain such advice on application in the manner prescribed. The Controller, in relation to any power exercisable by him, must permit an opportunity to be heard to an applicant for registration or to the registered proprietor of a mark. Evidence received by the Controller must generally be given by affidavit, though he may take oral evidence in lieu thereof, or in addition thereto. An appeal lies to the courts from most decisions of the Controller.

PROTECTION OF MARKS AT COMMON LAW

PASSING OFF Protection of business goodwill generated by adver- tising and other means is not confined to actions for infringement of registered trademarks. The common law action of passing off may also avail a manufacturer or trader in a suitable case. A proprietary right in one's business (including the goodwill) is recognised at common law. The passing off action is based on the principle that this right will be infringed if one concern represents its merchandise in such a manner as to mislead the public into believing that it is the merchandise of another. The varieties of passing off are numerous. They include the application to products of "badges" or signs which are identical or similar to those used by a rival. The use of another's trade mark (whether registered or unregistered) is one example. So is the use of another's business name. Another form of passing off is to "get-up" a product (e.g. in terms of colour scheme, shapes, sizes, designs or packaging) in a way similar to that of a competitor's. A case in point is Polycell Products v O 'Carroll and Others . 3I The plaintiff there had, since 1954, marketed a cellulose adhesive under the (unregistered) mark "Polycell". The defendants, in 1959, introduced to the market a similar product under the name "Clingcell". That product was sold in a "get up" which closely resembled that of the Plaintiffs product — the packaging, colour schemes, slogans, etc., were in each case similar. It was held, on an application for an interlocutory injunction, that the activities of the defendant could amount to a passing off of the palintiffs goods. The passing off action has in many respects a wider application than the action for infringement of registered trade marks; it is not uncommon, moreover, for the two actions to be combined in litigation. The action at common law has, however, two sizeable drawbacks. In the first instance, the plaintiff must prove both that his product has acquired a reputation among customers, and also that the defendant's product presentation will deceive or confuse these customers. Secondly, a successful passing off action against one business rival will not be conlcusive against other business rivals. These shortcomings in the common law approach were, indeed, a motivating influence in the initial provision for registration of trade marks in 1875.

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