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Bank of Ireland v. Controller of Patents Designs and Trade Marks [1987] IEHC 6 (31 March 1987)\
THE HIGH COURT
Between
The Governor and Company of the Bank of Ireland
Plaintiffs
and
The Controller of Patents Designs and Trade Marks
Defendants
Between
Eurocard International S.A.
Plaintiffs
and
The Controller of Patents Designs and Trade Marks
Defendants
Judgment of Mr. Justice Costello delivered the 31st day of March 1987.
The first of these appeals relates to the registration of the word "PASS" in Class 16 of Part A of the register, the second to an application to register the word "EUROCARD" in the same Class and in the same Part. The applicants are different parties and they propose to use the mark on different types of goods. But I have heard the two appeals together because they both involve the meaning of the word "trade mark" in section 2 of the Trade Mark Act, 1963. In both cases the Controller took the view that the propounded marks were not "trade marks" as statutorily defined, and the appeals in both involved the same submissions on the English case-law on the subject and the effect of a Supreme Court decision (given on the 12th July 1984) in ITT World Directories Inc. -v- The Controller. In the "EUROCARD" case if the applicant; surmount the section 2 hurdle, it will then be necessary for me to consider whether, the mark complies with the conditions for registration in Part A contained in section 17 (the Controller found that it did not), or alternatively can be registered in Part B.
Part I
Application of the Bank of Ireland - "PASS"
On the 4th May 1982 an application was filed in the Patents Office on behalf of the Bank of Ireland for registration of the word "PASS" in Class 16 for the following goods: "Printed cards related to a banking and to credit services; printed matter and publications related to banking and credit services". The "printed cards" referred to were banker's cards which are used by customers of the applicant bank to enable them to avail of a self-service bank facility which is called "PASS" (an acronym of the words "Personal Automatic Self Service"). The "printed matter" comprised information relating to the service made available by the use of the banker's card, and can properly be regarded as matter advertising or connected with the service. No sale of either the banker's card or the printed matter takes place; the banker's cards remain the property of the Bank and are given free of charge to the Bank's customers; the printed material is available free of charge to interested persons.
After some correspondence relating to some formal amendments to the specifications it was indicated that the Controller was not satisfied that the mark was "proposed to be used as a trade mark" in the manner prescribed by section 2. Notwithstanding submission made at an oral hearing and later in writing this view was maintained and the application was refused. Detailed reasons for the refusal were given in writing on the 12th May 1986 and this appeal has been taken against it.
The Trade Mark Act, 1963, section 2
It will help to elucidate the meaning of section 2 of the 1963 Act (and to understand the significance of the English authorities to which I will refer) if I quote the definition of a "trade mark" contained in section 3 of the Industrial and Commercial Property Act, 1927 which was repealed and considerably altered by the 1963 Act. Section 3 provided:
"the expression "trade mark" means a mark used or proposed to be used upon or in connection with goods for the purpose of indicating that they are the goods of the proprietor of such mark by virtue of manufacture, selection, certification, dealing with, or offering for sale".
So before a "mark" could be regarded as a registrable "trade mark" it had to be established that it was to be used for the purpose stated in the section, that is for the purpose of indicating that goods in connection with which the mark was to be used were the goods of the proprietor of the mark by virtue of the specified activities (i.e. "manufacture", "selection" etc). The new definition in the 1963 Act reads as follows: " "Trade mark" means, except in relation to a certification trade mark, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user, to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trade mark, a mark registered or deemed to have been registered under section 45 of this Act" (section 2).
As the number of concepts contained in this definition are numerous, and as its syntax is somewhat complex, I should draw attention to those aspects of it which are of particular relevance to this appeal:
(a) The propounded "mark" must be a "mark" as defined elsewhere in section 2. It is agreed that "PASS" is a "mark" as so defined.
(b) The mark must be used or proposed to be used in relation to "goods". It is agreed that "printed cards" and "printed matter" are "goods" so that so far the applicants mark complies with the statutory definition;
(c) It must be shown that the mark will be used for the purpose specified in the statutory definition, that is "for the purpose of indicating a connection in the course of trade" between the goods in relation to which the mark is to be used and the user of the trade mark. It is on the construction of these words that this appeal hinges. It will be noted that a change in the purpose for which the mark is to be used which had been contained in the definition section of the 1927 Act has been effected by the 1963 Act.
In the earlier section an applicant had to show that the purpose of the use of the mark was to indicate that the goods on which it was used were the goods of the owner of the trade mark by virtue of the enumerated activities; in the later section the purpose of the use of the mark is to indicate "a connection in the course of trade" between the person using the mark and the goods in relation to which the mark is used, quite obviously a wider and less specific requirement than that contained in the earlier Act.
The statutory definition contained in the 1927 Act is the same as that contained in section 3 of the English Trade Mark Act,1905, and the statutory definition contained in the 1963 Act is the same as that contained in section 68(1) of the English Trade Mark Act 1938. That means that the views expressed in the English Courts on the meaning of a registrable "trade mark" are very helpful when the construction of the Irish sections falls for consideration.
Section 3 of the 1905 Act and Section 68(1) of the 1938 Act have been considered in the English Courts on a number of times over the years, and most authoritively by the House of Lords in Aristoc Ltd -v- Rysta Ltd ((1945) R.P.C. 65). The applicants accept that the locus classicus of the law on this subject in England is to be found in the judgments in that case, but submit that I should not follow them because the law in this country is not the same following the decision of the Supreme Court in the ITT World Directories case. This argument requires me to examine in some detail the judgments in the Aristoc case firstly to see how they construed the corresponding English sections, and secondly to see what, if any, was the effect on them of the Supreme Court judgment in the later case. Aristoc Ltd -v- Rysta Ltd
The applicants in that case carried on a business very different to that of the present applicants - they repaired, by a secret process, ladies' stockings. In general they did not deal directly with the public, but obtained stockings for repair from retail stores and laundries. When returning the repaired stockings they placed on them the mark whose registration was sought. It will be seen, therefore, that the applicants were carrying on a repairing service and that their mark was used to indicate that the stockings had been repaired by them.
All five judgments delivered in the House of Lords concluded that the mark was not registrable because it was not a "trade mark" within the statutory definition. This was because it was not a mark which was to be used "for the purpose of indicating a connection in the course of trade" between the goods in relation to which it was used and the owners of the mark. The reasons for this conclusion are highly relevant for this case.
Viscount Maugham began his judgment on this on this part by stating that it was beyond doubt that prior to the enactment of the 1938 Act a registered trade mark had been understood as being used in relation to goods for the purpose of indicating the origin of the goods, in other words, for the purpose of indicating either manufacture or some other dealing with the goods in the process of manufacture or in the course of business before they are offered for sale to the public (P 74). He supported this opinion by reference to the ample case-law on the subject, quoting the well known remarks of Bowen. L. J. in In Re Powell's Trade Mark (1893) 2 Ch 388 at 403-4 when he said:
"The function of a trade mark is to give an indication to the purchaser or possible purchaser as to manufacture or quality of the goods - to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market".
He then referred to the statutory definition given in the 1905 Act and stated that no radical change in the law was thereby effected referring to Lord MacMillan's judgment in Bass Radcliff and Gretton Ltd -v Nicholson and Sons which stated that a trade mark "must have been used for the purpose of indicating the origin of the goods in connection with which it is used", and to Lord Tomlin to the same effect in Irving's Yeast Vite -v- Horsenail (51 R.P.C. 110 at p. III). He concluded that the amendment effected in the definition section by the 1938 Act had not altered the essential nature of a trade mark "as being generally limited to an indication of origin" (p. 74), quoting with approval the judgments of the Clauson L.J. in Bismag -v- Anblinz (1940) Ch 667 and the Master of the Rolls in Saville Perfumery Ltd -v- June Perfect Ltd (58 R.P.C. 147) to the same effect- As a result he decided that a mark for stockings which was intended merely to indicate that they had been repaired by the person claiming to register the mark could not be accepted for registration (p. 77).
Lord MacMillan's judgment was to the same effect. He said (at p. 79) that if there is one thing that may be described as fundamental in this branch of the law it is that the function of a trade mark is to indicate the origin of the goods to which it is applied, and he observed that this had not been altered by the 1938 Act. He went on:
"A trade mark must still be registered in respect of goods, it must be used in relation to goods, it must indicate a connection in the course of trade between the goods and the user of the trade mark. A trade mark must thus be used in trade. "Trade" is no doubt a wide word but its meaning must vary with and be controlled by its context. A connection with goods in the course of trade in my opinion means in the definition section an association with the goods in the course of their production and preparation for the market. After goods have reached the consumer they are no longer in the course of trade. The trading in them has reached its objective and its conclusion in their acquisition by the consumer.
The Respondents in .carrying on the business of repairing stockings do not in my opinion trade in stockings. They do not trade in any goods" (p. 80).
The reasons for Lord Wright's conclusions were similar. He observed (p. 82) that the limitation in the definition section (to the effect that the indication given by the mark must be an indication of a connection "in the course of trade") preserved the essential and characteristic function of a trade mark.
"The proprietor is required to be a trader who places the goods before the public as being his goods. That is the vital connection, not some later partial and ephemeral attribution to someone else. "Trade" is a very wide term; it is one of the oldest and commonest words in the English language…… But it must always be read in context. That gives it the special connotation appropriate to the particular case. In the Act of 1938 the context shows that "trade" refers to selling or otherwise trading in the goods to which the mark is applied. Thus in section 26(2)(6) we find the words "goods to be sold or otherwise traded in"; the same collocation of words is found in section 31; and again section 68 in the definition of limitations. These instances show that "trade" is here used in the particular sense of merchanting, selling or the like, which would nowadays include the more modern practises of hire-purchase, leasing (for example, of valuable machines), letting out for public use, exporting etc. But equally it is clear that repairing or processing or the like is not included because it is not trade in the particular sense intended" (p. 83).
Lord Simonds views were to the same effect. As to the meaning of the phrase "connection in the course of trade" in the definition section he too pointed out that the word "trade" must be read in context and added (p. 85)
"It might be true to say that the Respondents carry on a trade which is connected with stockings just as a cleaner carries on a trade which is connected with the goods he cleans or a piano tuner a trade with the piano he tunes. But it does not follow, and in my opinion it is not the fact, that there is in any such case such a connection in the course of trade between the goods and the person rendering that service or performing that operation as to satisfy the definition in section 68. It is unnecessary and it would be dangerous to attempt to give a positive and exhaustive meaning of the word "trade" in the definition. It is sufficient to say that it can bear no wider meaning than if the words "in the goods" were added after it. The test then is whether the applicant for the mark can be said to trade in the goods, and this test is clearly not satisfied by one who merely renders some service in respect of them after they have reached the public". (p. 85)
And Lord Tankerton's short judgment (pages 77 to 78) consisted in a brief quotation of the relevant words of the definition section and the comment:
"In my opinion the "connection in the course of trade" refers to trade in such goods, and repairers of goods which have already reached the hands of the public cannot be said to be trading in such goods".
The importance of the construction of the section contained in these judgments is obvious. The actual decision was to the effect that a mark used in the course of a business consisting of repairing stockings and which merely indicated that the goods were repaired by the trade mark owner was not registrable. But the implications of the judgments are much wider. Whilst they differed in some minor ways I think they established (or perhaps, confirmed) the following general principles. To fulfil the purpose required by the section (that is, to indicate the "connection" between the goods and the owner of the mark mentioned in it) it must be shown that the trade mark user was "trading in" the goods in relation to which the mark is to be used. The concept of "trading in goods" is to be given a wide meaning. But its use in the section means that an applicant for registration must show that he proposes to use it for the purpose of indicating that there is a connection between him and goods in relation to which the mark is to be used which arises form the fact that he has been associated with the goods in the course of their production or preparation for the market, or otherwise has been dealing with the goods for the purpose of putting them on the market.
The result of this construction is that a mark used in the course of a business which is that of rendering a service to the public (such as a banking service) and which is used merely for the purpose of indicating a connection between the user of the mark and the business is not registrable as a "trade mark". Amending legislation was considered necessary in England to allow such marks to be registered as what were termed "service marks". A "service mark" was defined in section I of the Trade Mark Act, 1984 (as amended by the Trade Mark Act, 1986) as a
"mark.... used or proposed to be used in relation to services for the purpose of indicating or so as to indicate that a particular person is connected in the course of business with the provision of those services "
and reference to "use" of a "service mark" is to be construed as a reference to the use of the mark, inter alia, as part of a statement about the availability of the services. If, in construing section 2 of the 1963 Act, the construction put on the corresponding section of the 1938 Act by the judgments in the Aristoc case is to be adopted then the claim to register the word "PASS" must fail. The argument advanced on the applicants was this; although the business that they carry on is that of the provision of a banking service it is proper to regard them as carrying on "a trade" within the meaning of the Act; that in the course of that "trade" they use their "PASS" mark on "goods" (i.e. on credit cards and printed matter); and that they satisfy the statutory definition because they are using the propounded mark in the course of trade for the purposes indicated in the section. But the judgments in the Aristoc case have made clear that this is not the correct approach to the section. The mark cannot be a "trade mark" unless it can be shown that the user of the mark is or proposes "trading in" the goods in relation to which the mark is to be used. The Bank cannot be said to be "trading in" bankers cards or printed material no matter how wide a definition of the term is given and have not shown that the purpose for which the mark is to be used is that required by the section. I find the judgments in the Aristoc case to be persuasive and would follow them unless required to do otherwise by the Supreme Court decision in the ITT World Directory case, to which I will now refer.
The ITT World Directories case
This case concerned an application to register in Part A a mark consisting (a) of a device of an open book coloured yellow above which was in silhouette the hand piece of a telephone and (b) the words "Golden Pages" under the device, and a second application to register the device alone without the words "Golden Pages". Both applications were refused by the Controller, but were allowed on appeal by the High Court. A further appeal by the Controller to the Supreme Court failed.
The applications were brought by an American company and its Irish subsidiary. The Irish company compiled and published a telephone directory containing entries of business subscribers listed according to the trade and profession. It compiled the directory at its own expense but was allowed by its contractual arrangement with the Minister for Posts and Telegraphs to obtain advertisements for insertion in the directory. It paid the Minister an agreed sum of money for the concession it obtained. The Minister distributed the directory to many thousands of people. He had the right to arrange for the sale of copies if he so wished but the applicants were not entitled to any revenue from such sales - their profit arose from the advertising revenue they received for the advertisements in the directory.
In dismissing the appeal, Mr. Justice Walsh, (with whose judgment the other four members of the Court agreed) having firstly pointed out that the directories which were compiled, produced and published by the applicants were "goods" within the meaning of the Act, went on to consider whether the goods were being dealt with in the course of trade "in the sense that there exists a connection in the course of trade between the goods in question and the second-named Plaintiffs". He pointed out that the production of the "goods" was a commercial undertaking with a view to profit, and that the applicants "put their goods on the market", even though this was done with the assistance of the Minister for Posts and Telegraphs. He held that "until they" (that is, the goods) "reach the subscriber they are in the course of trade", and the fact the subscriber gets them free of charge does not affect the matter. He declined to accept the view expressed by Kenny J. in the Bank of America National Trust and Savings Association Trade Mark (1977 F.S.R. 7) where he stated "that the goods which are to bear the proposed trade mark must be sold in the course of trade", pointing out the definition of "trade mark" in the 1963 Act did not require that the connection in the course of trade between the goods and the person using the trade mark should depend upon a "sale" effected or intended by the trade mark user. He concluded that the business carried on by the Plaintiffs was a "trade" but in addition and, most importantly for the purposes of this appeal, that the Irish company was in fact trading in their directories. The importance of this decision lies in the fact that in applying the concept of "trading" in the definition section it was made clear (contrary to some of the observations in the Aristoc case and Mr. Justice Kenny's decision in the Bank of America National Trust case) that it is not necessary to show that the goods in relation to which the mark is to be used are actually sold in the market place. But otherwise it in no way conflicts with what was said in the House of Lords - indeed it proceeds on the basis that the statutory definition requires an applicant for registration to show that he is "trading in" (as broadly defined) the goods in relation to which the mark is to be registered. The Irish company in the ITT World Directory case was, it was held, "trading in" telephone directories by reason of the fact that they compiled and published them for circulation on the market (even though the actual circulation was made by another person). But the Bank of Ireland in this case are not putting banker's cards or printed material on the market and are not indicating in any by the use of their mark that they are dealing in these goods. I do not think that the Supreme Court decision on which the applicants here rely assists their case or conflicts with the general principles which can be derived from the Aristoc case.
Accordingly, I will dismiss this appeal on the ground that the Controller was correct in the view he took that the mark was not a "trade mark" within the meaning of section 2 of the Act.
Part II
The Application of Eurocard International S.A. The applicants in this case are a Societe Anonyme organised under the laws of Belgium. Their application is to register in Part A of the register for a specification of goods which reads "Printed matter, periodicals and publication" a mark which comprises the letter E in large type over the word "Eurocard". The applicants agreed to a disclaimer in respect of the letter "E" but notwithstanding this the Controller decided to refuse registration on the ground (a) that the mark was not a "trade mark" and (b) on the grounds that the mark did not comply with the requirements of section 17. The applicants had alternatively agreed to have their application treated as one for registration in Part B. The Controller did not specifically deal with this in his decision but impliedly rejected it.
Is the mark a "trade mark"?
The applicants are a banking institution. As part of their business in this country they arranged that holders of certain credit cards issued by other banking institutions will be able to make payment for goods and services in a great number of hotels, restaurants, shops, airlines, service stations, car rental firms etc., around the world by production of the credit card with the name "Eurocard" on it. They themselves issue a credit card with this word on it but registration is not being sought in respect of registration for use in relation to such cards. The use proposed (and it is a user which has taken place in this country since 1966) is in relation to directories which the applicants have compiled and published. These directories are substantial volumes containing a large list of hotels, restaurants, airlines, car rental firms etc., all over the world who will accept payment by credit cards with the Eurocard mark on them. The directories are not sold, but are issued in this country free of charge to members of the public who have credit cards associated with the Eurocard organisation to enable them to avail of the services which the applicants offer.
The Controller stated that he could not regard "printed matter, periodicals and publications" as "vendible goods" (echoing the phrase used by Lord Wright in Aristoc -v- Rysta) and expressed the view that there was no trade in these items and that they merely served to advertise the applicant's services, and held that the facts of the case were different to those in the ITT World Directories case and that the decision in it did not require to him to hold in the applicants favour.
In reaching this conclusion the Controller may partly have been misled by the decision of Kenny J. in the Bank of America National Trust and Savings Association -v- Controller (High Court, 5th February, 1974) who had held (wrongly, as the Supreme Court had pointed out in the ITT World Directories case) that in order to establish a connection in the' course of trade between the goods, and the person using the trade mark it was necessary to show that a sale of the goods was effected or intended. I think he may also have been unduly influenced by the views of Parke, J. in Western States Bank Card Association -v- The Controller (The High Court, 1st March 1978) who held that a mark was proposed to be used on credit cards and advertising matter, was not registrable as it was not to be used in relation to goods in the course of trade but rather for the sole purpose of identifying the applicant's credit cards. With respect, that decision seems to have been correct, but it seems to me that the Controller has not in this case given proper consideration to the difference between the purpose of the user of the mark here and the purpose of the user in the case with which Mr. Justice Parke was concerned. There is, I think, a difference between on the one hand an advertising sheet or leaflet and on the other a detailed directory. In the former case it may be very difficult to show that there is any "trading in" the advertising sheet and that the advertising sheet or leaflet is being put on the market and accordingly it will not be difficult to conclude that the purpose of the use of the mark is merely to advertise the business of the trade mark user and that it is therefore unregistrable. But the case of the compilation and publication of a directory may well be different. It is true that the directories in this case give information about the business which the applicants are carrying on and the
Controller may well be correct in describing them as advertising the applicant's business. But the key issue in the case is not what information is conveyed by the material in the directories but what information is conveyed by the use of the trade mark and the purpose for which that information is conveyed. It seems to me that the purpose of the use of the mark is to show a connection between the directories and the applicants which arises from the fact that they are associated with the directories in the course of their production for the market. And I think that it can properly be said that the applicants are "trading in"
these directories even though they are not being offered for sale by them. The fact that the business of the applicants is the provision of a service does not mean that they can never have a trade mark registered in their name. They may well be able to show (and they have done so in this case) that they are trading in certain goods and that they are using a mark on them for the purpose stated in the section and not just for advertising the service they are providing.
In my judgment the propounded mark is a "trade mark" within the meaning of section 2. What remains then for consideration is whether it is registrable in Part A or, if not, whether it can be registered in Part B.
Registration in Part A or Part B.
I can deal with this aspect of the case briefly. I find myself in agreement with the Controller's conclusion. It seems I to me that the mark is not an invented word and that it lacks the distinctiveness necessary for registration in Part A of the register. It is a borderline case and I think that it has sufficient capacity to distinguish the applicant's goods to justify registration in Part B. As Gavan Duffy, J. pointed out in British Colloids Ltd -v- The Controller (1943) I.R. 56,57:
"The tests of capacity to distinguish defy any rule of thumb, but they should not be difficult tests for a mark to pass, unless the mark belongs to a type that obviously cannot be recognised, as involving an invasion of common right or similar impropriety; it is not much to exact of a mark that it shall be usable in actual business to assure a purchaser that the article he buys comes from the particular trader he knows".
The word "Eurocard" is not of a type which cannot be registered and no impropriety would be involved in doing so. It is, I think, capable of distinguishing the applicant's goods. So I will allow this appeal and direct that the mark proceed to registration in Part B.