The Gazette 1984

GAZETTE

JANUARY/ FEBRUARY 1984

unexpected qualities cannot be relied upon to support a claim of "inadequate remuneration". The application for extension was therefore turned down. In the matter of the Patents Act 1964 and in the matter of Letters Patent No. 30666 dated 19 December. 1966, of Smithkline Beckman Corporationand in the matter of a petition under Section 27 of the Patents Act 1964 for the extension of term of the said Patent - High Court (per Costello J.), 8 March, 1983 - unreported. Emer Crowley TORTS — PASSING OFF— Sports goods — distinctive mark or get up — stripes of identical width and colour — whether Respondents use of three coloured stripes on its goods amounted to passing off. The Appelants ("Adidas") began manufacturing sportswear in Germany about 1948 and now manufacture and sell internationally all kinds of sports equipment. Prior to 1967, it confined its activities to sports footwear which was manufactured and marketed with three diagonal stripes on the instep and outer side of each boot or shoe. That three- stripe design became well known through extensive international advertising and through television coverage of interna- tional sporting events in which the competitors used Adidas footwear. From the late 1960's small quantities of Adidas footwear were imported into Ireland. Since 1967, Adidas has manufactured and sold sportswear generally including shorts, singlets, track suits, anoraks, most of which carried the design of three coloured stripes, straight (not diagonal) down the side of arms and legs of the goods where that was possible, and as in the case of Adidas footwear, the three stripe design became well known. Adidas acquired a world-wide recognition of the exclusiveness and distinctiveness of their design and styling. From 1971 Adidas sportswear was imported into Ireland, in 1975 it registered a trade mark consisting of a trefoil with three horizontal stripes (which mark was in no way associated with stripes on garments) and in 1976 Adidas commenced manufacturing goods in Ireland. The Respondents ("O'Neill"), an Irish company, was formed in 1918 and commenced the manufacture of footballs, football shorts and jersies. In 1965, O'Neill began putting stripes on its textile products, and the number of stripes varied from one to three, depending on the order. In 1967, O'Neill began the manufacture of track suits, initially with a varying number of stripes and by 1976 O'Neill products generally had three stripes down the side of the legs and arms of jerseys shorts and track suits and their products were extensively used by supporters of the three football codes in Ireland. Adidas claimed in the proceedings that

(1) that no power of sale had been shown to subsist because no reason for the dealy of 33 years in the exercise of such power by the personal representative had been given, relying on the decision in In Re Molyneux and White \3 L.R.I. 382 that a lapse of at least 20 years from the date of death creates a presumption that all the Testator's debts have been paid and puts the purchaser on enquiry as to the purpose of the sale; (2) that the delay was such that an assent to the establishment of the Will trust should be inferred. Against this, the Vendor argued that an Executor is always entitled to sell for the purpose of distribution of assets amongst beneficiaries, relying on In Re Norwood and Blake's Contract [1917] 11.R.472. He further submitted that a purchaser would in any event be protected by the provisions of section 51 of the Succession Act, 1965. This section provides that a purchaser from personal representatives of any property, forming part of the estate of a deceased person, shall be entitled to hold that property freed and discharged from any debts and liabilities of the deceased, except such as are charged other than by the Will, and from all claims of persons entitled to any share of the estate. HELD: (1) It was not the executor's duty to sell the property in order to distribute the assets amongst the beneficiaries; rather, his duty was to transfer the assets to the will trustee (albeit himself) and in that capacity to distribute the assets. Accordingly, there was no ground for the exercise of a power of sale by the personal representatives on that basis. (2) There is nothing in section 51 of the Succession Act, 1965, to contradict the usual rule that a purchaser is fixed with constructive notice or suggest that he is never to be put upon enquiry and thus nothing to negative the rule in Molyneux's case. This means that the Vendor, selling as Personal Representative, must satisfy the Purchaser, who is put upon enquiry, that he has the power to sell as such. Having regard both to the delay since the death of the Testatrix and to the resume of facts contained in the letter dated 11 June, 1980, it seems reasonable to infer that an assent was given to the establishment of the Will trust. Moreover, even if this inference is wrong, there is sufficient doubt to make it unreasonable to require the purchaser to accept the title. Finbarr Crowley -v- John Flynn - High Court (per Barron, J.), 13 May, 1983 - unreported. Sarah Cox

PATENTS — Application for extension of Letters Patent, Section 27 Patents Act, 1964. The patent related to two drugs used in veterinary medicine for the treatment of parasitic worm infestations in (i) cattle, . sheep, pigs and (ii) horses. Section 27 of the Patents Act, 1964, provides that the term of a patent may be extended if it can be demonstrated that the patentee had been inadequately remunerated by his patent. The Petitioners, the Patentees, alleged that the lack of remuneration in the case of one drug (Parbendazole), was partly due to the suspicion that the drug was teratogenic and partly due to the failure of the regulatory authorities in the United Kingdom (there being no separate regulatory authority in this country) to approve its use in lactating cattle. In the case of the other drug (Oxibendazole) the Petitioners said that the lack of remuneration was due to the "slow realisation of the full potential of the invention and to attendant delays in getting regulatory approval for it". HELD: The fact that the patentee fails to make a profit from his patent is not itself a reason for extending its life and that Section 27 s.s.5 provides that the Court must have regard to the nature and merits of the inventions in relation to the public, to the profits made by the patentee as such and to all the circum- stances of the case. It is necessary to demonstrate, as grounds for an extension, that the invention is one of more than ordinary utility, that is has not been adequately remunerated, and that the absence of remuneration is not due to any fault on the part of the patentee referring to the English case of Flemings Patent 36 RPc 55,70. The onus of proving same is on the Petitioner. Having looked at the reasons for the disappointing levels of sales in the case of parbendazole, the losses were directly attributable to the Petitioner's own actions and consequently, their inability to sell the drug in Ireland for the treatment of dairy cattle arising from the failure of the Veterinary Products Committee ("the VPC") to licence its use for that purpose. The Petitioners had failed to show that the VPC had acted with excessive caution and therefore unreasonably, in limiting the Petitioners licence in the way it did. Another relevant factor in explaining lack of sales in the last three years of life of the patent was the introduction by the Petitioners to the Irish market of an improved drug which could be administered to dairy cattle. In the case of the other drug, Oxibendazole, on the evidence the major contributing factors in the lack of remuneration was due to the Petitioners' own decisions not to develop it until late in the life of the patent and that it too was superseded by a drug introduced by the Petitioners. The result of tests carried out by a patentee late in the life of a patent which establish

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