The Gazette 1981

DECEMBE R

1981

GAZETTE

monopoly in a non-distinctive feature of the mark. (d) That the words "Virginia Slims" constitute matter of a non-distinctive character within the meaning of section 22 and that this is a case in which it was proper to have required the Plaintiffs to agree to disclaim the exclusive use of the words "Virginia Slims" since these words are by far the most prominent and striking feature in the mark and if no disclaimer was required a registered proprietor of the mark might claim statutory monopoly rights in these words even though they could not have been independently registered. (e) That, in summary, the Controller was right in requesting the plaintiffs to agree to the disclaimer he sought and in refusing the application when the Plaintiffs did not do so. Appeal of the Plaintiffs dismissed. Note: At the end of his judgment Costello J., said: "The appeal to the Court from a discretionary order made by the Controller is, it is clear, by way of a re-hearing, and the Court therefore is not limited to considering whether the Controller had misdirected himself in some way or proceeded on wrong principles . . . the Court is perfectly free to exercise its own discretion in the light of the evidence before it." In the matter of the Trade Mark Act 1963. PhDUp Morris Incorporated v. The Controller of Patents, Designs and Trade Marks — High Court (per Costello J.) — 7 October 1980 — Unreported. PROCEDURE Lis Pendens — jurisdiction of the Court to vacate in the absence of consent — applicability of Lis Pendens Act 1867 to this jurisdiction confirmed. The Plaintiff commenced proceed- ings for specific performance of a contract for the sale of supermarket premises in Mullingar by Plenary Summons issued on 22 September 1978 and on the same date regis- tered the proceedings as a lis pendens against the Defendants' interests in the premises. The statement of claim was served on 15 October 1979. By notice of motion served for 5 November 1979 the Defendants

TRADE MARKS It does not follow that because a feature of the trade mark is of a non- descriptive character that a disclaimer under section 22 of the Trade Mark Act 1963 should be required as a matter of course. The Plaintiffs (Phillip Morris Incorporated) applied to register a mark containing the words "Virginia Slims" in January 1975. The Controller of Patents, Designs and Trade Marks said that he would only proceed with the application if the Plaintiffs agreed to disclaim the exclusive use of the words "Virginia Slims". The Plaintiffs while prepared to disclaim the two words separately, were not prepared to accept the disclaimer of the combination of the two words and the Controller refused their application. The Controller fixed a hearing. No statutory declaration was filed but submissions were made by the Plaintiffs' agent. The Controller refused the application but before he gave his written decision the Plaintiffs filed a declaration. The Plaintiffs appealed to the High Court against the refusal and sought to introduce the statutory declaration as evidence. Held (per Costello J): (1) that, under section 25(7) of the 1963 Act the Court has no jurisdiction to allow any further materials to be introduced by the applicant after the Controller has stated his decision. (2) that if the Court or the Controller concludes that a feature of the mark is not "adapted to distinguish" or "capable of distinguishing" the applicants' goods within the meaning of sections 17 and 18 then a jurisdiction to order a disclaimer arises under section 22. (3) that it does not follow as a matter of course that because a feature of the mark is of non-distinctive character a disclaimer under the section should be required. In exercising its discretion the Court or the Controller should consider inter alia: (a) the object for which a disclaimer should be required. (b) the disadvantage which the applicant will suffer if the disclaimer is required. (c) the danger that the absence of a disclaimer could give rise to unjustifiable claims to a

applied to the High Court for an order vacating the lis pendens and dismissing or staying the pro- ceedings. The grounding affidavit of the Defendants deposed to the res- cission of the contract by agreement between the parties prior to the action. The Plaintiff's legal advisers did not file a replying affidavit be- cause they believed that the High Court had no jurisdiction to vacate the lis pendens without the consent of the registering party i.e. the Plaintiff. The Defendants relied on Section 2 of the Lis Pendens Act 1867 which (inter alia) authorised the Court before whom the property sought was in litigation upon the determin- ation of the litigation or during the pendency thereof, where the Court was satisfied that the litigation was not prosecuted bona fide, to make an order, if it sees fit, for the vacating of the lis pendens without the consent of the party who registered it. In Giles v. Brady [1974] IR 462, Kenny J. held in the High Court that the Lis Pendens Act 1867 did not apply to Ireland, the Court being in- fluenced by the fact that Section 1 (since repealed) referred to a section of the Companies Act 1862, which Act of 1862 did not apply to Ireland by the reference in Section 2 to "the Senior Master of the Common Pleas" an office which did not exist in Ireland. In Culhane <4 Hewson (High Court - 20 October 1978 - un- reported) McWilliam J. did not follow the Giles decision relying instead on Glencourt Investments Ltd., and Companies Act (Supreme Court — 28 July 1975 — unreported) and also relying on the fact that in the Official Index to the Statutes for 1867 the Lis Pendens Act appeared with the letters "G.B. and I." opposite to it and held that the Act of 1867 did apply to this jurisdiction. In Dunville Investments Ltd., v. Kelly (High Court - 17 April 1979 - unreported) Costello J. followed the view of McWilliam J. This was an Appeal to the Supreme Court from a decision of the High Court (also per McWilliam J.) which had concluded that in view of the fact that the affidavits filed by the Defendants had not been con- troverted by the Plaintiff that the proceedings were not being bona fide prosecuted because prior to auction bought the Plaintiff had agreed to a rescission of the contract and the High Court had made an order

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