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URL: http://www.bailii.org/ie/cases/IESC/2001/36.html
Cite as: [2001] 3 IR 85, [2002] 1 ILRM 208, [2002] ETMR 24, [2001] IESC 36

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Montex Holdings Ltd. v. Controller of Patents, Designs and Trademarks [2001] IESC 36; [2002] 1 ILRM 208 (5th April, 2001)

Keane C.J.

Murphy J.

Murray J.

McGuinness J.

Geoghegan J.

Record No. 90/00

THE SUPREME COURT

IN THE MATTER OF THE TRADE MARKS ACT, 1963

AND IN THE MATTER OF THE TRADE MARKS ACT, 1996

AND IN THE MATTER OF AN APPLICATION PURSUANT

TO THE TRADE MARKS ACT, 1963 BY MONTEX HOLDINGS

LIMITED DATED 18TH OF SEPTEMBER, 1992 FOR

REGISTRATION OF DIESEL AS A TRADE MARK IN CLASS

25 OF THE REGISTER OF TRADE MARKS

BETWEEN/

MONTEX HOLDINGS LIMITED

Plaintiff

and

THE CONTROLLER OF PATENTS, DESIGNS AND TRADE

MARKS AND DIESEL S.p.A.

Defendants

Judgment of Mr. Justice Geoghegan delivered the 5th day of April 2001 [nem diss.]

1. This is an appeal from a decision of the High Court (O’Sullivan J.) affirming a decision of the first-named defendant refusing registration of the trade mark “ DIESEL”, it being a name used by the plaintiff on clothing manufactured and sold by it. The decision by the Controller was, in effect, made on his behalf by Mr. Peter Skinner, a hearing officer in the Office of the Controller of Patents, Designs and Trade Marks and took the form of a written decision, dated the 1st of July, 1998, made following upon an oral hearing. The application had been opposed by the second-named defendant which is an Italian company and which claimed that it manufactured and sold clothes internationally under the name “ DIESEL” and that these included casual wear, jeans and jackets manufactured by it and under the trade mark “ DIESEL” since at least 1982. Essentially, the opposition was based on the suggestion that the name was likely to lead to confusion with the products of the Italian company and that as a matter of probability the plaintiff company or perhaps more accurately its predecessor in title, a point which I will be explaining, effectively poached the Italian company’s trade mark and that it could not have been coincidence that the plaintiff and its predecessor adopted that mark. There were other issues before the hearing officer which were decided in favour of the plaintiff and to which it is not necessary now to refer.

S. 19 of the Trade Marks Act, 1963 reads as follows:

“It shall not be lawful to register as a trade mark or as part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of law, or would be contrary to law or morality, or any scandalous design.”

S. 25(2) of the same Act of 1963 provides as follows:-

“Subject to this Act, the Controller may refuse the application, or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think right.”

2. If the trade mark sought to be registered falls within the category of trade marks referred to in s. 19 above the Controller is obliged to refuse application for registration. But even if registration of the trade mark is not prohibited by s. 19 or by any of the other sections in the Act of a prohibitory nature, the Controller, under s. 25(2) cited above, has a discretion to refuse the application. That discretion must be exercised properly and the reasons for it must be clear.

3. In this case Mr. Skinner, in his written decision and for the reasons which he gives in that decision, decided that because of the rival use between the two companies the trade mark sought to be registered was of the category referred to in s. 19 and that therefore, registration was prohibited.

4. In the final sentence of his decision, however, the hearing officer states also that the application is refused in exercise of the discretion conferred on the Controller by the Act. It is suggested that this was an alternative ground of refusal but that is not entirely clear as the hearing officer does not go on to give any express reasons for the exercise of the discretion. In the event nothing turns on this point as there was an appeal to the High Court which is an appeal by way of rehearing.

5. On the appeal to the High Court, the learned High Court judge held that there was a lack of bona fides in the plaintiff’s proposed user of the mark and that on this ground he would refuse registration. Effectively, this was a purported exercise of his discretion under s. 25(2) of the 1963 Act cited above. O’Sullivan J. then went on to observe that that was sufficient to determine the appeal but that in deference to the comprehensive submissions which had been made on the point by counsel for all three parties, he was prepared to indicate his views on what was the correct test under s. 19 of the 1963 Act also cited above. He then went on to find that the proposed mark offended s. 19. With respect to the learned High Court judge, he appears to have dealt with the matter in the wrong order. In paragraph 4 - 09 of Kerly’s Law of Trade Marks and Trade Names 12th edition the following is stated:

“The discretion of the registrar only arises if he decides preliminary questions of fact in favour of an applicant. There is no room for the exercise of the registrar’s discretion where the opponent succeeds in opposition under sections 11 or 12(1).”

6. Three different cases are cited in support of that proposition. The

“section 11” referred to is section 11 of the English Trade Marks Act, 1938 and is in the same terms as section 19 of the Irish 1963 Act. If the principle therein stated is correct in relation to the registrar (in Ireland, the Controller) it must equally apply to the judge on appeal, who is engaged in a rehearing. The principle thus stated in Kerly would seem to be clearly correct because it must surely be important that the Controller or the judge on appeal should first address the question as to whether it is mandatory on him to refuse registration before he addresses the question as to whether as a matter of discretion he should do so.

7. I therefore propose now to consider the section 19 issues. For reasons which I will be elaborating on in some detail, I take the view that the learned High Court judge was correct in his decision on section 19 and in those circumstances I think it inappropriate to give any consideration to the discretionary issue.

8. For the purposes of considering the section 19 issues it is essential to summarise the evidence and material which were before the hearing officer and the court and relevant decisions of the courts of England and Australia, which were cited in argument and which threw up conflicting views as to the interpretation of s. 19 or its equivalent in those other jurisdictions by judges of high distinction even within the same jurisdiction.

THE EVIDENCE AND MATERIALS

9. On behalf of the plaintiff it was stated and not disputed that the plaintiff company was incorporated in the State and had its registered office at Mall Road, Co. Monaghan. The evidence on behalf of the plaintiff established that the DIESEL trade mark was first owned by a company called Monaghan Textiles Limited and an associated company called Banner of Ireland Limited. Monaghan Textiles Limited went into receivership on the 10th of February, 1988 and the receiver and manager sold the trade mark and attached goodwill to the plaintiff. In the application before the Controller several statutory declarations by employees of the plaintiff company who had also been employed by the predecessor company were produced, declaring that these companies had been selling jeans under the brand name DIESEL to the general public since 1979. There was also a statutory declaration by a Mr. Gerry McGirr, a clothing retailer and wholesaler, who said that he had been buying on a continuous basis jeans under the brand name DIESEL from the plaintiff company and the predecessor company since 1980 and that they had been sold by him on the Irish market since 1981. He exhibited some sales invoices. A similar type declaration was made by another clothing retailer in Dublin, a Mr. Martin McCormack. The managing director of the plaintiff company, Mr. Michael Heery, made a statutory declaration, in which he stated that the DIESEL trade mark had been used by the applicant or its predecessor in title in respect of the goods for which the application was sought and in particular on jeans since 1979. He exhibited a list of retailers throughout the State who sold the DIESEL jeans of the applicant. This was quite an extensive list covering all four provinces. He said that the use of the DIESEL trade mark had been “ continuous and substantial” since its first use in 1979 and he then went on to give the annual turnover figures. Mr. Heery commented on the opponent’s evidence that it claimed the 10th of May, 1982 as its date of first use of the DIESEL trade mark in Ireland and that this was considerably later than the first user by the applicant or its predecessor.

10. The principal evidence, on behalf of the first-named defendant came from statutory declarations by Mr. Renzo Rosso, sole manager of that company, and Mr. Richard Farrell, manager of FX Kelly Limited of 48 Grafton Street, Dublin, the well known men’s clothes retailers. Mr. Rosso declared that his company was incorporated in 1978 under the title Diesel S.p.A. and that it had been engaged, for many years, in the manufacture of a wide range of goods including inter alia casual clothing, jeans and jackets. He said that the company first used the trade mark DIESEL in 1978 and that it had been continuously used by the company since that date. Samples of labels and promotional material were exhibited. Mr. Rosso said that the trade marks DIESEL and DIESEL logo had been registered by his company in many countries throughout the world and that casual wear, jeans and jackets under the name of DIESEL had been sold in Ireland since at least the year 1982. He said that during the period 1984 to 1988 his company’s goods bearing that trade mark were sold into Ireland through his company’s former U.K. distributors but that since 1988 his company’s goods had been sold into Ireland principally by his company’s current distributors in the U.K. James Wood Associates Limited, but not exclusively, in that his company had also sold goods bearing the DIESEL name directly into Ireland and he exhibited some invoices in support of that. He claimed that the trade mark was well known throughout the world. Having regard to the alleged user by the second-named defendant of the mark over a period in excess of twelve years and having regard to alleged spill over advertising from the U.K. and elsewhere Mr. Rosso claimed that the trademark would be well known in Ireland, and that therefore, any registration of the trade mark at the suit of the plaintiff would be likely to lead to confusion amongst the trade and public and would, therefore, infringe section 19. He also attacked the bona fides of the alleged proprietorship of the plaintiff of the trade mark DIESEL in Ireland. He expressed the view that he considered it unlikely that the applicants chose the word DIESEL independently and without being aware of the existence of his company and the reputation of the trade mark DIESEL.

11. In support of the second-named defendant’s opposition a statutory declaration was made by the manager of FX Kelly Limited, as already mentioned. In it he said that he knew the trade mark DIESEL and that he associated it exclusively with the Italian company. He said that FX Kelly had, since approximately the year 1987, been selling casual clothing, jeans and jackets of the Italian company bearing the trade mark DIESEL and he produced invoices for 1989 and 1995 to corroborate this.

12. The hearing officer’s decision on the confusion issue is contained in paragraph 17 of his decision and although it is a lengthy paragraph I think it useful to set it out in full. It reads as follows.

“17. Turning lastly to the opposition under section 19.

To determine the objection under section 19, the standard test for such an objection is that set down in Smith Hayden and Co. Limited’s Application (1946) 63 R.P.C. 101 as adapted by Lord Upjohn in the Bali case [1964] R.P.C. 496. In the present case this would be applied as follows:-

‘Having regard to the reputation acquired by the opponent’s name (DIESEL) is the hearing officer satisfied that the mark (DIESEL) applied for, if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not (be) reasonably likely to cause deception and confusion amongst a substantial number of persons.’

Now it would appear as far as the likelihood of deception and confusion is concerned there is no doubt that it would exist amongst a substantial number of persons as there is an identical mark being used for essentially the same goods in the same class. So the only question to be asked is has the opponent shown a reputation acquired by the name (DIESEL) in the State before the 18th of September, 1992, the date of application by the applicants to have the word DIESEL registered.

As regards evidence of sales by the opponents prior to September 1992, Mr. Rosso, under Rule 37, produced three invoices relating to DIESEL goods sold into Ireland prior to September 1992. Mr. Farrell, also under Rule 37, stated that his company had since approximately the year 1987, been selling jeans of DIESEL S.p.A. bearing the trade mark DIESEL in Ireland, he produced three invoices dated prior to September 1992. Mr. Schofield Lawley, under Rule 39, stated that DIESEL branded clothing was sold to FX Kelly and Co. of Grafton Street, Dublin 2 during the period 1988 to 1995. He also stated that during the same period quantities of DIESEL branded goods were sold to other well known retailers in the Republic of Ireland, and Mr. Forte, also under Rule 39, stated that he believed that clothing bearing the trade mark DIESEL had been sold regularly on the Irish market since at least the early 1980s, he also stated that during the period 1983 to 1985 he could confirm that the GAP Limited purchased several consignments of clothing articles bearing the mark DIESEL from the authorised distributor of DIESEL S.p.A., and these consignments of stock bearing the DIESEL mark were sold during this period through the GAP chain of shops in Cork, Limerick and Dublin.

As regards spill over advertising it was claimed that the opponents’ goods were advertised in magazines such as the Face, Arena, ID, For Him and the Sky TV magazine as well as on MTV a satellite television channel.

Now the assertion that the opponents had a reputation for the name (DIESEL) in the State prior to September 1992 cannot be conclusively determined from the evidence I believe, but the probability is that goods manufactured by DIESEL S.p.A. were sold into Ireland prior to September 1992, and the probability is that the opponents’ goods were sold in Ireland prior to September 1992, under the name (DIESEL) and that these sales were of sufficient quantity to acquire a reputation.

The possible effect of spill over advertising has been ignored in reaching this decision. For the above reasons the opposition under section 19 is upheld.”

13. In his affidavit sworn in the High Court proceedings on appeal the hearing officer, Mr. Skinner, referred to his findings in paragraph 17 of the decision and reiterated that he applied the test laid down in the Smith Hayden case, and that he asked himself the question:

“ Having regard to the reputation acquired by the opponents’ name (Diesel) was I satisfied that the mark applied for (Diesel), if used in a normal and fair manner in connection with any goods covered by the registration proposed, will not be reasonably likely to cause deception and confusion amongst a substantial number of persons.”

14. Although the learned High Court judge went into the relevant law in much more detail, he arrived at the same view as the hearing officer and applied the same legal principles. It is now necessary to consider whether those legal principles applied were correct.

THE LAW

15. There is really only one legal issue in this case. Does the inclusion of the words “ be disentitled to protection in a court of law” in section 19 of the 1963 Act have the effect that likelihood of deception or causing confusion on its own is not sufficient to prevent registration, but that there must also be some element of “ blameworthiness” on the part of the applicant. This problem, in the main, arises from the speech of Lord Diplock in GEC v. The GE Company Limited [1972] 2 All E.R. 507. I will be returning to that case and its context later, but it is first necessary to consider the history of section 19 and its antecedents.

16. The exact equivalent section in England namely, section 11 of the English Trade Marks Act, 1938 came to be considered by the House of Lords in Berlei (U.K.) Limited v. Bali Brassiere Co. Inc. [1969] 2 All E.R. 812. Lord Upjohn in his speech considered the history of the section. He pointed out that the first statute dealing with trade marks was the Trade Marks Registration Act, 1875 and section 6 of that Act was, in effect, a predecessor of section 11 of the 1938 Act. The wording of section 6 was slightly but insignificantly different. It read as follows:-

“It shall not be lawful to register as part of or in combination with a trade mark any words the exclusive use of which would not, by reason of their being calculated to deceive or otherwise, be deemed entitled to protection in a court of equity....”

17. He then went on to observe that verbal alterations were made to the section in the Patents Design and Trade Marks Act, 1883, when in section 73 which replaced section 6, the concluding words were altered to “ be deemed disentitled to protection” . It might be noted, in passing, that that Act would, of course, have been enacted after the passing of the Supreme Court of Judicature Act, which abolished any separate court of equity. His Lordship then referred to section 15 of the Patents, Designs and Trade Marks Act, 1888, which re-enacted the same section apart from abolishing the word “ exclusive”. Lord Upjohn did not consider that this had any significance. He then referred to the Trade Marks Act, 1905 which consolidated the earlier acts. Finally, he referred to section 6 of the Trade Marks (Amendment) Act, 1937, an English Act in which “ likely” was substituted for “ calculated” and the words “or cause confusion” were added. He considered that these amendments were as a consequence of judicial interpretations and did not consider there was any significance in them. Immediately following the historical summary of the legislation the following passage appears in Lord Upjohn’s speech.

“It was argued before your Lordships that to establish that the word ‘Bali’ would offend section 11 the words in the section ‘disentitled to protection in a court of justice’ required the court to do more than to be satisfied of the likelihood of deception or confusion but it must be satisfied of something further, something, it was argued, akin to passing off of the objectors’ mark.”

18. Essentially, that is precisely the argument being made in this case. Lord Upjohn goes on to observe that the words in section 11 “ must take some colour from the original Act of 1875” and that for that reason it seemed relevant to him to consider the common law relating to trade marks before 1875. In this connection Lord Upjohn referred to a passage in the judgment of Sir John Romilly, M.R. in Hall v. Barrows (1863) 32 L.J. Ch. 548 at p. 551:-

“If the brand or mark be an old one, formerly used but since discontinued, the former proprietor of the mark undoubtedly cannot retain such a property in it, or prevent others from using it; but, provided it has been originally adopted by a manufacturer, and continuously, and still used by him to denote his goods when brought into the market and offered for sale, then I apprehend, although the mark may not have been adopted a week, and may not have acquired any reputation in the market, his neighbours cannot use that mark. Were it otherwise, and were the question to depend entirely on the time the mark had been used, or the reputation of it had been acquired, a very difficult, if not an insoluble inquiry, would have to be opened in every case, namely, whether the mark had acquired in the market a distinctive character denoting the goods of the person who first used it.”

19. Lord Upjohn commented that possibly Sir John Romilly M.R. had gone too far in saying that user for a week would be sufficient, but he accepted the general principle. His Lordship approved of dicta of Morton J. in Re Hack’s Application (1940) 58 R.P.C. 91 at p. 103:-

“The question whether a particular mark is calculated to deceive or cause confusion is not the same as the question whether the use of the mark will lead to passing off.”

20. Lord Upjohn then expressed the view that section 11 and its forebearers were designed for the protection of the public rather than so much for the protection of other traders in the use of their marks or their reputation. He expressly disapproved of apparent contrary views expressed by Buckley J. in Transfermatic Trade Mark [1966] R.P.C. 568. At p. 827 of the report the following important passage appears in the same speech.

“My Lords, I think the presence of these words ‘disentitled to protection in a court of justice’ whether in their original form or in their phraseology of today are explained by the fact that in order to prevent the registration of a mark or to secure its removal it must be established (here, of course, I am dealing with questions of onus) not merely that there is likelihood of deception or confusion between two marks judged on the well known test laid down in Pianotist Co’s Application and Aristoc Limited v. Rysta Limited but something more that is, user at the relevant time by the owner of the existing mark which under the old common law the court, as Sir John Romilly M.R., said would protect. The whole emphasis is on the question whether the owner of the mark in suit, assuming him to bring some action against another trader, would be disentitled from succeeding for any of the reasons set out in section 11; not whether anyone would succeed against him.”

If the Berlei case stood alone it would be clear that the view of the English courts would be that on an application for original registration no additional element of “ blameworthiness” such as an element of passing off would have to be proved to defeat the application. It seems clear that Lord Upjohn and the other Law Lords in that case were not suggesting that the words “ by reason of its being likely to deceive or cause confusion” were to be read entirely disjunctively from the words “ disentitle to protection in a court of justice”. Before 1875 not every proprietor of a trade mark which was likely to cause confusion was necessarily disentitled to protection in a court of equity. The concept of honest concurrent user existed then, as it exists now. The Controller would not be bound to refuse registration where he found on the one hand that there was a likelihood of confusion but on the other hand honest concurrent user. I would interpret section 19 as meaning that the registrar is bound to refuse registration if the mark is likely to deceive or cause confusion and would, prior to 1875 on that account, have been disentitled to protection in a court of equity, and likewise if, for any other reason, such mark would have been disentitled to such protection before 1875. This second aspect of refusal arises out of the words “ or otherwise” . But there would appear to be no justification for introducing an element of blameworthy conduct such as passing off. It is argued on behalf of the plaintiff that in General Electric Co. v. The General Electric Company Limited cited above and to which I am about to refer, the House of Lords through the majority opinion of Lord Diplock has held otherwise

21. The most important point to note about that case and the point to which the learned High Court judge, rightly in my view, attached very considerable importance is that it was an application for expungement of the trade mark from the register and not an application for registration. Under the provisions of section 40 of the Trade Marks Act, 1963 “any person aggrieved by the non-insertion in or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Court or at the option of the applicant and subject to section 59 of the Act, to the Controller and the Court or the Controller (as the case may be) may make such order for making, expunging or varying the entry as the Court or the Controller (as the case may be) may think fit. There was an equivalent section in the English Trade Marks Act of 1938 and it was an application for expungement under that equivalent section which was considered in the G.E.C. case. Section 21 of the 1963 Act provides that registration in Part A of the register of a trade mark is to be conclusive as to validity after seven years subject to two exceptions, namely:

“(a) That registration was obtained by fraud, or

(b) the trade mark offends against section 19 of this Act.”

22. Lord Diplock had to consider exactly equivalent provisions in the English legislation. The problem which immediately arises out of section 21 is whether a person, whose trade mark has been registered for more than seven years, can lose the protection which he otherwise would have because of some likelihood to confuse which has first arisen since registration and for which no fault can be attached to him. While there are obiter dicta in Lord Diplock’s speech, which may leave doubts as to the position on an application for registration there is no doubt that he came to the conclusion that on an application for expungement based on a trade mark offending section 19 of the English Act, the application could only succeed if there was some blameworthy conduct since registration on the part of the registered owner which was now leading to confusion. In this respect he was giving a purposive interpretation to the Act as a whole and he was balancing the rights which the owner of a trade mark acquires upon registration against the abuse of those rights by self-created confusion after first registration. At p. 526 of the report he summarised the then law, as he understood it as follows.

“As respects the main ground of appeal, the legal status under the Act of 1938 of a registered trade mark the use of which is likely to cause confusion can be summarised as follows:

(1) The fact that the mark is entered on the register is prima facie evidence of the validity of the original registration and of the right of the registered proprietor to the exclusive use of the mark, subject however to the rights of concurrent user by any registered proprietor of an identical mark or one merely resembling it.

(2) If the mark was likely to cause confusion at the time when it was first registered it may be expunged from the register as an ‘entry made in the register without sufficient cause’ unless the proprietor of the mark at that time would have been entitled to have it entered on the register by reason of his honest concurrent use of the mark as a trade mark before the original registration of the mark.

(3) If the likelihood of causing confusion did not exist at the time when the mark was first registered, but was the result of events occurring between that date and the date of application to expunge it, the mark may not be expunged from the register as an entry wrongly remaining on the register, unless the likelihood of causing deception resulted from some blameworthy act of the registered proprietor of the mark or of a predecessor in title of his as registered proprietor.

(4) Where a mark is liable to be expunged under (2) or (3) the court has a discretion whether or not to expunge it and as to any conditions or limitations to be imposed in the event of its being permitted to remain on the register.”

23. This would seem to be a reasonable and sensible approach under the Act to applications for expungement. If the conclusive validity of the trade mark. after seven years, is to have any meaning, the reference in section 21(1)(b) to the trade mark offending against section 19 must be a reference to post-registration confusion for which the registered owner is himself responsible. For the purposes of this case however, it is not necessary for this court to make any definitive decision on the requirements for expungement.

24. The particular passage from Lord Diplock’s speech just cited does not on its face seem to be relevant to an application for first registration. There are other passages which might give rise to some ambiguity on this question and it seems to have troubled the Australian judges in cases to which I will be briefly referring. But like the learned High Court judge I have no difficulty in differentiating between applications for first registration and applications for expungement. As far as an application for first registration is concerned there would not appear to be anything in section 19 which justifies the importation of some element of blameworthy conduct in addition to the element of deception or confusion. I cannot accept the argument of Mr. Gallagher, counsel for the appellant, that because there are some categories of confusing registrations which are permissible such as where there is honest concurrent user, section 19 must be interpreted as imposing a prohibition only in cases where there is blameworthy conduct.

25. As I have indicated earlier in this judgment the confusion which leads to mandatory refusal to register under section 19, is confusion of the kind which prior to 1875 would have led to refusal of injunctive relief sought in a court of equity by the owner of a mark seeking protection against a third party. If the alleged confusion arose only out of honest concurrent user by somebody else, that would not have prevented injunctive relief against a third party. It follows, therefore, that section 19 is not relevant to honest concurrent user.

26. Nor am I able to accept Mr. Gallagher’s further argument that section 15 of the 1963 Act supports his interpretation of section 19 and that the hearing officer and the learned High Court judge were wrong in allegedly paying no attention to section 15. Section 15 reads as follows:

“Nothing in this Act shall entitle the proprietor or a registered user of a trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date anterior -

(a) to the use of the first mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or

(b) to the registration of the first mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his;

whichever is the earlier, or to object (on such use being proved) to that person being put on the register for that identical or nearly resembling trade mark in respect of those goods under subsection 2 of section 20 of this Act”.

27. The section achieves two objects:

1. It affords a defence to an action against an anterior user at the suit of a proprietor or registered user of a registered trade mark .

2. It prevents such proprietor or registered user from objecting to the anterior user himself obtaining registration under section 20(2) i.e., the provision permitting registration “ in case of honest concurrent use, or of other special circumstances”. I do not think that this section has any relevance to an application for first registration and in particular to the question of disentitlement under section 19. I have already expressed the view that section 19 has no relevance to what I might describe as permitted confusion. But confusion other than the special instances of permitted confusion under the Act prevents registration irrespective of whether there is blameworthy conduct such as passing off or not.

28. The court was referred to a number of Australian cases, in which in some instances doubt was thrown on whether the blameworthiness element referred to by Lord Diplock would have been intended by him to cover original applications for registration as well as applications for expungement. I have come to the conclusion that the Australian case law is of no assistance, partly because of the extensive disagreement among the judges especially within the leading case of New South Wales Dairy Corp. v. Murray Goulburn Co-Op Co. Limited [1990] 171 CLR 363 (those differences being neatly summarised in Nettlefold Advertising v. Nettlefold Signs [1997] 38 IPR 495) and partly because the equivalent section in Australia to section 19 of the 1963 Act and section 11 of the English 1938 Act is differently structured in that the different elements in the section are placed in different paragraphs and obvious questions arise as to whether the requirement of disentitlement to protection by a court of justice is to be read conjunctively or disjunctively with the other requirements. Some of the judges in Australia have attached significance to the difference between their section and the English section. There is, however, a passage in the New South Wales Dairy case in the judgment of Brennan J. (as he then was) starting on the last line of p. 389 of the report which reads as follows.

“In an application for original registration, there is only one object to which effect must be given but in an application after registration effect must be given to both objects. The operation of s. 28(a) therefore depends on whether it is applied to an application for original registration or to an application for expunction of an entry which is attacked in s. 22 proceedings as wrongly remaining in the register. If it be right to say that, in s. 22 proceedings, s. 28(a) sometimes does and sometimes does not authorise the removal of a registered trade mark when its use has become likely to deceive or cause confusion, it is necessary to ascertain the condition upon which liability to removal depends. In my opinion, the Act does not contemplate that a registered proprietor should continue to enjoy the rights which s. 58 confers if he has produced the circumstances which make the further use of the mark likely to deceive or cause confusion: s. 58 cannot be understood as conferring rights which might be exercised by the holder to frustrate an object of the act. But, where the registered proprietor has not produced those circumstances and where no provision other than s. 28(a) warrant expunction of the registered trade mark there is no reason apparent on the face of the act why the registered proprietary should not continue to enjoy the rights which registration of the trade mark confers. The act does not make the avoidance of deception or confusion absolute, even in the case of an application for original registration: see e.g. s. 34. It strikes a balance between the public interest in avoiding deception or confusion and the private interest of the person entitled to use the trade mark. The view that a registered proprietor may, by his conduct, become disentitled to claim the benefit of the rights conferred by s. 58 arises simply from the need to give to s. 28(a), when it is invoked in proceedings under s. 22 to expunge a registered trade mark on the ground that it is ‘wrongly ... remaining in the register’, an operation which will give effect to the

provisions of s. 58 except to the extent necessary to deny to the registered proprietor the capacity to frustrate with impunity the statutory object of protecting the public against deception and confusion”.

29. Brennan J. then goes on to refer to the General Electric Company case in England and appears to approve of Lord Diplock’s references to “ blameworthy” conduct. It would seem therefore that Brennan J. was drawing a clear distinction between an original application for registration and an application for expungement and was of the view that the element of blameworthiness only arose in the latter. I also agree that if the element of blameworthiness is to arise at all, it can only be in relation to an application for expungement.

The New South Wales Dairy Corp was itself a case of expungement and not an original application, but it came to be considered in the context of an original application in a case referred to by the appellant in its written submissions but for understandable reasons not relied on by Mr. Gallagher in the oral submissions, namely, Canon Kabushiki Kisha v. Brook 36 I.P.R. 88. This was a judgment of Tamberlin J. sitting as a single judge in the Federal Court of Australia. That case related to an original application for registration of the trade mark “Cannon” and one of the issues which the judge had to consider was whether an applicant in opposition proceedings to first registration had to show blameworthy conduct in addition to likelihood of deception or confusion. It was argued that the requirement of the blameworthy conduct was the result of the decision of the High Court of Australia in the New South Wales Dairy Corp case cited above. In particular, reliance was place on the statement of Mason C.J. at pp 383 and 384 of the report, where after referring to the speech of Lord Diplock in the General Electric Co case he said:

“As I have already noted, in re G.E. Trade Mark [1972 1 WLR 729] Lord Diplock (with the concurrence of Lord Simon ... and Lord Kilbrandon) concluded that a lawfully registered trade mark is only liable to be expunged under s. 11 of the Trade Marks Act, 1938 by reason of supervening likelihood of deception or confusion if that likelihood is the result of some blameworthy conduct on the part of the registered proprietor. In reaching that conclusion his Lordship regarded the counterpart of s. 28(a) as being governed by the equivalent of our s. 28(d). So that an applicant seeking removal of a mark on the ground that it infringed s. 28(a) would be required to show not only likelihood of deception or confusion but also that the mark was disentitled to protection in a court of justice. That interpretation of s. 11 depended very largely on the legislative history of the statutory provisions.... which has its counterpart in Australia. But the interpretation also depended on the presence of the provisions permitting identical or similar marks to remain in the register. The presence of those provisions is inconsistent with the existence of a statutory intention that likelihood of deception or confusion ipso facto leads to disentitlement to protection in a court of justice or to liability to expungement. To my mind, those provisions, particularly ss 34 and 58(3), justify an implication that s. 28(a) looks to supervening likelihood of deception or confusion only if that likelihood is the result of blameworthy conduct on the part of the proprietor.”

30. Tamberlin J. then sets out the views of each of the other judges and he then expressed his own view as follows:

“In my opinion, an interpretation of s. 28 which holds that a mark does not offend its provisions even though the use of the mark is ‘likely to deceive or cause confusion’ ignores the wording and structure of s. 28.

In my view, the factual position in the New South Wales Dairy Corp case is distinguishable and not controlling in the present matter which relates to opposition proceedings. That case was concerned with expungement of a registered mark. There is an important and relevant distinction between applications for registration of a mark and expungement of a mark already on the register as indicated in the reasoning of the majority in that case. In my view, the reasons for judgment delivered by members of the High Court leave the matter open as to whether there is a need to find blameworthy conduct in opposition proceedings based on s. 28(a) as opposed to expungement proceedings.”

31. However, in the event the learned judge considered that under well established Australian principles on uniformity he was bound to follow the view of a colleague sitting in the same court who had given a judgment to the opposite effect albeit in an expungement application. But his own well reasoned judgment is further support for the view that on an application for original registration the question of blameworthy conduct does not arise .

32. The Irish case law is not of much assistance but I will briefly refer to it. In Coca-Cola Co. v. F Cade & Sons Limited [1957] I.R. 196 it appears to have been accepted by all sides in the Supreme Court and by the court itself that the applicant for registration had to prove that the mark was not calculated to deceive or cause confusion, but nowhere in the report is there any suggestion that an opponent could not succeed notwithstanding a finding of such confusion without establishing blameworthy conduct. Again, in the High Court judgment of Murphy J. in Seven-Up v. Bubble Up [1990] ILRM 204 there is no indication that the question of blameworthiness was ever considered. The principles enunciated by the Supreme Court in the Coca-Cola case were followed. Although the court has also been referred to the judgment of Kenny J. in the well known case of Stirling-Winthrop Group Limited v. Farbenfabriken Bayer AG [1976] RPC 469 nothing of assistance to this case is to be gathered from it.

33. There was ample evidence before the hearing officer and again before the High Court to justify a finding of likelihood of confusion and, therefore, unless the appellant is correct in the submission that there has to be the element of blameworthiness the appeal must clearly be dismissed. For the reasons which I have indicated, I do not consider that blameworthiness in the sense referred to by Lord Diplock has to be established for it to be mandatory on the Controller or the High Court on appeal to refuse registration under s. 19 where there is proven likelihood of confusion. I would, therefore, dismiss the appeal.