Patents Office clarifies honest concurrent use provisions

In Diageo Brands BV v Henry J Archer & Sons Limited, the acting controller has held that where the owner of an earlier trademark raises an objection in opposition proceedings, the controller is obliged to refuse registration of a mark that was initially accepted based on a claim of honest concurrent use with the earlier trademark.

Henry J Archer & Sons Limited applied to register the mark ARCHERS (and design) in relation to cider and flavoured cider in Class 33 of the Nice Classification. The application was accepted and advertised for opposition purposes on the basis of honest concurrent use with an earlier registration for the word mark ARCHERS for wines, spirits and liqueurs in Class 33, which is owned by Guinness United Distillers & Vintners BV (now known as Diageo Brands BV). Diageo opposed the application based on its rights by virtue of use and registration of the earlier mark ARCHERS and marks incorporating the term 'archers'.

The acting controller initially upheld the opposition under the Trademarks Act 1996 based on:

• a finding of a likelihood of confusion with the earlier registered mark in accordance with Section 10(2)(b); and
  
  
• Diageo's unregistered trademark rights at common law (in particular the law of passing off) in accordance with Section 10(4)(a).

However, the acting controller held that refusal of the application was mandatory under Section 12(2) in light of the opposition from Diageo based on its earlier mark ARCHERS. Therefore, the initial findings on the merits of the opposition were deemed redundant and without point.

Section 12 of the act provides as follows:

"12(1) This section applies where, on an application for registration of a trademark, it appears to the controller:

(a) that there is an earlier trademark in relation to which any of the conditions set out in Subsections (1) to (3) of Section 10 obtains, or

(b) that there is an earlier right in relation to which the conditions set out in Section 10(4) is satisfied,

but the applicant shows to the satisfaction of the controller that there has been honest concurrent use of the trademark for which registration is sought.

(2) In a case to which this section applies, the controller shall not refuse the application by reason of the earlier trademark or other earlier right unless objection on that ground is raised in opposition proceedings by the proprietor of that earlier trademark or other earlier right."

In cases where an applicant successfully claims honest concurrent use so as to overcome an official objection based on relative grounds for refusal, the controller is excused from the duty to refuse the application based on the existence of an earlier trademark. However, if objection to that acceptance is raised in opposition proceedings by the proprietor of the earlier trademark, the controller is once more under the duty to refuse the application. The acting controller noted that Section 12(2) equates to and must be interpreted as a requirement that "the controller shall refuse the application… if objection… is raised in opposition proceedings". Refusal of the application was thus mandatory.

Following from this decision, an applicant should be slow to pursue the acceptance of its mark on the basis of honest concurrent use. By allowing the application to proceed on this basis, the applicant is effectively accepting the finding of the Patents Office that the application is open to refusal based on relative grounds; therefore, the applicant cannot subsequently dispute this fact in opposition proceedings. The position of the Patents Office is that it makes no sense to have this question raised and considered afresh in opposition proceedings.

Gavan Ferguson, FR Kelly & Co, Dublin