The Gazette 1983

JULY/AUGUST

1

GAZETTE

mark, though little used by them, could never again be used by them in relation to cigarettes or tobacco products. The fact that goodwill in a mark has been injured lends considerable support to a claim that there has been a use of the mark "in relation to" the goods for which the mark was registered. That furthermore following the English case of Bismay v. Amblins (Chemists) Limited 57. R.P.C. 209, Section 12 when enacted had extended the law relating to trade marks and that the exclusive statutory right was not confined to use to indicate the origin of the goods. On the Defendants' submission that an infringement contrary to Section 12 only occurs if there is use of the mark by the alleged infringer "in the course of trade" (by reference to the definition of a trade mark contained in Section 2 of the Act), it was held that that would require the court to construe the section by adding words to it which it did not contain. As had been seen in the present case, a non trading unauthorised use of the mark could result in irreparable damage to the mark and there was no reason why the legislature did not intend to grant effective protection against such "non-trading" use. As the mark could not be used further, a sum of £350 would be incurred in regis- tering another mark — which was the sum' awarded to the Plaintiffs by way of damages. As the Plaintiffs were entitled to relief under the first part of their claim it was unnecessary to consider the alternative claim based on the allegation of breach of a common law duty of care. Gallaher (Dublin) Limited, Hergall (1981) Limited, and Gallaher Limited v. The Health Education Bureau — High Court (per Costello J.) — 23 February 1982 — [1982] ILRM 240. Daire Hogan VALUATION Rateablllty of Educational Institu- tion under the Provisions of Section 63 of The Poor Relief (Ireland) Act, 1838. The question at issue in this case was the rateability or otherwise of Wesley College. This question depended on whether or not Wesley College was an Institution altogether of a public nature and used exclusively for public purposes, and therefore, coming within the exemption provided by Section 63 of the Poor Relief (Ireland) Act, 1893. The Constitution of Wesley College requires the Governors "to provide and afford for Methodist and other children and for so many of the children of Ministers in connection with the Methodist Church as may from'time to

time be elected or designated for such purpose by the Conference (of the Methodist Church in Ireland) subject to such charges or scale of charges as may from time to time be determined by the Governors for the time being". Statistics were provided for the Court in respect of the year 1973 which showed that of the 622 boys and girls attending the College 19.3% were Methodist, 59.3% were members of the Church of Ireland and the remaining 12.54% were drawn from other Protestant sects, Roman Catholics, Jews and Muslims. The Court was of the opinion, therefore, that while the College was of unique benefit to the small scattered Methodist Community in Ireland it enured over-whelmingly for the benefit of non-Methodists. The school is essentially a private, fee-paying school with grants and subventions from the Department of Education which are avail- able to recognized Secondary Schools. The Court held that because one of the conditions for the admittance for most of the pupils is the payment of a sizeable fee, it cannot be said that Wesley College is altogether of a Public nature, or altogether used for public purposes. It is a necessary pre-requisite for exemption from rate- ability that the College have an exclusively public nature or purpose. In reaching this conclusion the Court referred to Trustees of Magee College v. Commissioner of Valuation IR 4CL 438 and Guardians of Waterford Union v. Barton, [1896] 21R 538. The Court dis- tinguished the cases of Pembroke UDC v. Commissioner of Valuation [1904] 21R 427 as in that case, Pembroke Technical School was maintained by public money and derived no private profit, was open to all comers. The fee of 2/6d which each student had to pay was disregarded by the Court under the de minimis rule, because it was intended to ensure that only bona fide and serious students would enrol and that the circumstances of Wesley College were radically different. The Court also distinguished the instant case and that of University College Cork v. Commissioner of Valuation, [ 1911 ] 21R 593 in which case the University College was held exempt from rates as in that case the relevant provision of the Irish Universities Act, 1907 and of the Charter of the National University and that of the College itself marked the College as having in terms of its objects, user and financial accountability, characteristics which made it altogether of a public nature and used for public or exclusively charitable purposes. Similar charac- teristics were found wanting in the instant case. At one stage the College argued that in accordance with the opinion of the House of Lords in The Governors of Campbell College Belfast v. Commissioner of Valuation for Northern Ireland[ 1964] 1 WLR 912, that exemption is to be sought in Section 2 of the Valua-

Recent Irish Cases

TRADE MARKS Unauthorised use of registered trade mark. Whether exclusive rights, under Section 12 of Trade Marks Act 1963 in respect of registered trade marks are limited to use of the goods in the course of trade. The Plaintiffs were registered pro- prietors of the mark "Conquest" in Part A of the Register Class 34 in respect of the goods tobacco, whether manufactured or unmanufactured. The Defendants, The Health Educa- tion Bureau, produced an imitation packet of cigarettes, containing pieces of paper folded to look like cigarettes, on which were printed pieces of advice on how to give up smoking. To the casual observer the packet looked like and was intended to look like a packet of cigarettes bearing the brand name "C o n q u e s t ". The Defendants had been unaware that by using the word "Conquest" it was making use of a registered trade mark — it had caused a search to be made in the Register but the searcher had failed to search in Class 34. The Plaintiffs claimed that the exclusive statutory rights given to them by Section 12 of the Trade Marks Act 1963 had been infringed and secondly and alternatively that the Defendant had been in breach of a duty of care which it owed to all persons lawfully engaged in the trade of selling tobacco products not to so conduct its campaign as to damage the legitimate rights of property which such persons are entitled to enjoy. The Defendants denied a breach df the Plaintiffs statutory rights as it had not used the Plaintiffs' mark in relation to cigarettes but in relation to a health educa- tion campaign. The Defendant also argued that the exclusive right given by Section 12 is a right to use the mark in relation to goods in the course of trade, and that even if it had used the mark "in relation to" cigarettes it did not use it in the course of trade. HELD: That by giving the words of Section 12 their ordinary and natural meaning and applying them to the facts, the Defendant had used the mark "in relation to" cigarettes. The Plaintiffs'

xvii