DRI-LI application rejected on the grounds of bad faith


A hearing officer at the Irish Patents Office has upheld an opposition against registration of a DRI-LI device mark on the grounds that the application was filed in bad faith.

Shamrock Sea - Cal Limited's application to register the trademark was opposed by Marigot Limited (trading as Celtic Sea Minerals) (Marigot). Marigot's case was to the effect that it is the proprietor of the unregistered trademark DRI-LI and that the application for registration was made in bad faith by Shamrock and should be refused under Section 8(4)(b) of the Trademarks Act 1996 and/or that the use of the mark by Shamrock was liable to be prevented by virtue of any rule of law protecting an unregistered trademark or other sign in the course of trade so the application should be refused under Section 10(4)(a) of the act.

Marigot submitted evidence to the effect that in February 1996 Marigot began selling a product bearing the mark DRI-LI to Shamrock for distribution in Ireland. Shamrock claimed it invented the name DRI-LI for a new product which was developed at its request by a third party. The hearing officer decided that the evidence filed by Marigot clearly supported its claim to proprietorship of the trademark and he found Shamrock's evidence on this aspect of the matter wholly unconvincing. There was no evidence that Shamrock had ever sold any product under the name DRI-LI other than the product bearing that name which it received from Marigot. The evidence did not support any claim on the part of Shamrock to proprietorship of the mark DRI-LI per se. It reflected, rather, a scenario in which Shamrock was in an analogous position to that of a distributor of Marigot's goods. Accordingly, it was held that Marigot and not Shamrock had invented the trademark DRI-LI and the goods identified by that trademark were, and always have been, of Marigot's manufacture.

The hearing officer also went on to discuss bad faith and held that the circumstances in which an application for registration may be regarded as having been made in bad faith must include an application that gives expression to a deliberately dishonest intention on the part of Shamrock. He was of the view that the present application was founded on such a dishonest intention. By it, Shamrock had sought to acquire for itself a statutory monopoly in DRI-LI as used in relation to a seaweed-based animal bedding material in full knowledge that the name in question was Marigot's trademark and was used by the latter in relation to that specific product. The fundamental dishonesty of the application was not diminished to any significant extent by, and may not be excused because of, Marigot's apparent acquiescence in the use of the mark in such a way as to suggest a connection between the relevant goods and Shamrock as something more than a mere distributor. Accordingly, the application for registration was made in bad faith and refused.

As regards Section 10(4)(a), Marigot had suggested that the use of the mark propounded for registration could be liable to be prevented by virtue of a rule of law other than the law of passing off. Marigot had not specified what rule of law. The DIESEL Case (2000) 1 IR 577 was cited, but the hearing officer, in commenting on the judgment, held that the reference to the state of the law in England prior to the enactment of the Trademark Registration Act of 1875 did not amount to a statement by the High Court in Ireland that there was in effect in Ireland a rule of law equivalent to that under which an owner of a trademark could, prior to 1875, secure an injunction in a court of equity restraining its use by any other trader, regardless of the length or extent of its use of the trademark. Accordingly, the hearing officer decided that he need only consider the objection under this section of the act in relation to the question of passing off. He indicated that it was not the function of the trademark controller to say whether passing off has actually occurred as that is a matter within the jurisdiction of the court alone. However, on the facts, Marigot's use of the trademark commenced just four months before Shamrock's use and the only use made of the mark by Marigot in the intervening period was in relation to sales of goods to a company in Northern Ireland (ie, outside Ireland). He therefore did not accept that the evidence filed by Marigot established any such reputation and therefore dismissed the opposition under this ground.

Patricia McGovern, DFMG Solicitors, Dublin

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