Brokers association fails to prevent registration of THE BROKER
In Holyrood Publications Limited v Professional Insurance Brokers Association (February 20 2015), the hearing officer, acting for the controller, has dismissed an opposition against the registration of the mark THE BROKER.
On March 1 2012 applicant Holyrood Publications Limited sought to register the mark THE BROKER in Class 16 of the Nice Classification for “insurances and financial services publications”. The applicant already published a magazine called Irish Broker, which it claimed had been in the marketplace since 1984.
The application was opposed by the Professional Insurance Brokers Association on July 18 2012 on the grounds that the application was filed in bad faith and that use of the trademark on the applicant’s magazine would be liable to be prevented by the law of passing off.
The opponent claimed that the applicant’s objective was to stymie its use of the term 'the Broker', which it had recently begun using at the time of the application. The opponent was the publisher of a long-running trade magazine called The Professional Insurance Broker which had reached its 37th edition before being re-branded The Broker in 2011. Three editions of the opponent’s newly re-branded The Broker had been published at the time of opposition.
The applicant claimed that the titles The Broker and Broker were synonymous with its publication Irish Broker and that its publication was commonly referred to as 'the Broker' in the industry.
Matters were further complicated by the fact that, at the time the opponent had decided to rebrand its magazine from The Professional Insurance Broker to The Broker, negotiations relating to a potential merger between the two parties had broken down and relations were very poor between the parties.
In dismissing the opposition, the hearing officer acknowledged that there is:
“no legal definition of 'bad faith' but it is accepted that it constitutes dishonesty, including dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined”.
He was of the view that there was “no question” that the applicant was attempting to ensure that the opponent did not use the mark THE BROKER. However, he stated that so long as blocking another’s use of the mark is not the sole motive for the making of the application, there was nothing wrong with this. He stated that “trademark registration grants exclusivity to the proprietor of the mark in question, a consequence of which is the blocking of all others from using the mark.”
He also stated that he could not ignore what he knew to be the case, which was that “everyone shortens the titles of publications”. In his opinion, “it would be inconceivable and illogical to find that there is not, and never was, use of the terms 'Broker' or 'the Broker' in respect of the long-standing publication titled Irish Broker".
Therefore, the hearing officer concluded that the applicant had not applied to register THE BROKER for the sole purpose of blocking use of that term by the opponent, nor had the applicant applied for the registration of a trademark which it had no intention of using. As the hearing officer said in his opinion, the Irish Broker had been referred to as 'the Broker' in the trade for some time. The opposition on the ground of bad faith was therefore dismissed.
In relation to the opposition on the ground of passing off, the hearing officer was of the view that the opponent “had failed to pass any of the three tests required in order for him to determine the charge of passing off in its favour”. It had not built up any discernible goodwill in the name 'the Broker' since it had only published three magazines under that title. Secondly, in his opinion, “if any misrepresentation was liable to occur at the relevant date, it would most likely be in the opposite direction to that claimed by the opponent”. Lastly, he was of the view that if, at the relevant date, both magazines were published under the name 'the Broker', he had “no doubt damage would be done, but not to the opponent”.
He therefore also dismissed the opposition on this ground.
Ciaran O’Neill, DFMG Solicitors, Dublin
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