Bad faith sinks THE MOUNT JULIET WEIR application


A hearing officer at the Irish Patents Office has allowed an opposition to the registration of the mark THE MOUNT JULIET WEIR.

Michael Conway, the applicant, applied to register the mark for various food products in Class 29 of the Nice Classification. The mark was opposed by Mount Juliet Estates (MJE), the owner of the Mount Juliet hotel and related trademarks, on a number of grounds. Conway responded to the Notice of Opposition arguing that his application did not cover any of the classes in which MJE's marks are registered. After MJE submitted evidence of its activities, Conway filed responding evidence but not by way of Statutory Declaration (as required by the relevant statutory provisions). MJE's objection to this evidence was upheld by the hearing officer and accordingly the opposition was determined on the basis of the Notice of Opposition, Conway's response, and the evidence filed by MJE.

During the hearing, Conway indicated that he had adopted the mark because the greater part of the weir in question was on his property. However, the hearing officer held that this was a case in which there was a sufficient appearance of bad faith in the making of the application for registration such that, the charge of bad faith having been raised, the onus fell on Conway to disprove it. The hearing officer held further that the name Mount Juliet has no meaning in Ireland other than as the name of the property of MJE. In the absence of evidence of a legitimate reason for the use by Conway as part of the trademark, the application must have been motivated by dishonest intention and the application should be refused as having been made in bad faith. The evidence given by Conway during the hearing as to his reason was disregarded.

The hearing officer went on to hold that even if that evidence had been taken into account, it did not make the adoption of the trademark THE MOUNT JULIET WEIR any less objectionable. The fact that the weir allegedly spanned both Conway's property and that of MJE did not give Conway any licence to MJE's name for use in a trademark for his goods.

The hearing officer also held that Conway's trademark was similar to MJE's earlier trademarks, and the respective goods and services were also similar. The average consumer would believe that the goods and services provided by the parties under their marks emanated from the same source. Thus, confusion on the part of the public was inevitable. Despite accepting the opposition on those grounds, the hearing officer held that the evidence produced by MJE was not sufficient to prove that the registered trademark MOUNT JULIET (device) enjoyed the kind of established reputation that is required to ground an objection to registration under Section 10(3) of the Trademarks Act 1996 (protecting earlier marks with "reputation") and accordingly dismissed the opposition under that particular ground. He also held that MJE's objection based on its claimed entitlement to prevent use of Conway's mark by means of an action for passing off had been founded on the wrong section of the legislation and accordingly he also dismissed the opposition under that ground.

This case is interesting as it is one of the few cases where the hearing officer was prepared to hold that there was sufficient evidence of bad faith, the charge having been raised, the onus fell on Conway to disprove it and the hearing officer considered that he had failed in this task.

Patricia McGovern, P McGovern & Co Solicitors, Dublin

Unlock unlimited access to all WTR content