A long running dispute in Ireland concerning ownership of the MARIE CLAIRE trade mark in respect of clothing has finally been resolved.

In a judgement delivered on July 21 2014, Mr. Justice Barrett of the Irish Commercial Court refused  an application by Marie Claire Netherlands B.V(MCN)  for leave  to appeal to the Supreme Court his decision to uphold an opposition filed jointly by the Irish company, Brandwell (IRL) Limited (Brandwell) and the Spanish company, Marie Claire SA(MCSA) against  MCN’s application to register the trade mark MARIE CLAIRE in respect of clothing and headgear, thus terminating the opposition proceedings. MCN is part of the group responsible for publishing the MARIE CLAIRE magazine.

Background

This dispute has been ongoing since 1993 when Brandwell filed an application to register the trade mark MARIE CLAIRE in respect of hosiery, stockings, socks, pantihose, tights, underwear, lingerie, sleeping garments and knitted wear. That application was opposed by Marie Claire Album, the proprietor of the MARIE CLAIRE trade mark registered in respect of magazines and by the Portuguese Company, Montegute Commercio E Industria de Texteis, Lda ( Montegute). Both Opponents claimed to enjoy unregistered rights in the MARIE CLAIRE trade mark in Ireland in respect of clothing. In reaching his decision on the merits of the oppositions, the Controller rejected the Opponents’ claims to prior rights but nevertheless upheld both oppositions on the technical ground that the Applicant, Brandwell, was acting merely as a distributor for the Spanish manufacturer of the MARIE CLAIRE goods sold in Ireland and that Brandwell could not therefore claim to be the proprietor of the MARIE CLAIRE trade mark in respect of those goods.

During the course of the Opposition proceedings, Montegute itself filed an application to register the trade mark MARIE CLAIRE in respect of clothing and headgear. Following a number of assignments, that application was transferred to MCN.  The application was published on October 2 2007 and was opposed jointly by Brandwell and MCSA. The opposition was subsequently upheld by the Controller who found that MCSA had acquired a goodwill in the MARIE CLAIRE trade mark as a consequence of its use of that trade mark in Ireland and that use of the opposed trade mark by MCN would be likely to amount to passing off. The Controller also held that the original Applicant, Montegute, acted in bad faith in filing the opposed application.

MCN appealed the Controller’s decision and the case was subsequently transferred to the Commercial Court.

Decision of the Court- Passing Off

The appeal was heard by Mr. Justice Barrett who considered in detail the three elements which must be present to establish passing off.

In order to succeed in a passing off claim, the claimant must prove firstly that there is goodwill attaching to the claimant’s goods or services, secondly, that the defendant’s actions constitute a misrepresentation (intentional or otherwise) to the public that leads or would be likely to lead the public to believe that the defendant’s goods or services are those of the claimant and thirdly, that the claimant has suffered or is likely to suffer damage as a consequence of that misrepresentation.

On the issue of goodwill, the Court found that the evidence established that there had been significant sales and promotion of the Opponents’ MARIE CLAIRE products in Ireland prior to the date of filing of MCN’s application, with wholesale sales amounting to in excess of €3 million during the period 1992-1997.  Such a level of turnover was deemed to be impressive considering the relatively inexpensive nature of the products in question. The Court therefore concluded that the Opponents enjoyed a substantial and valuable goodwill in Ireland, sufficient to ground an action for passing off at the date of filing of the opposed application.

Dealing with the element of misrepresentation, the Court  commented that since the opposed trade mark is identical to MCSA’s MARIE CLAIRE trade mark and is intended for use in respect of clothing, which would include the goods on which MCSA’s trade mark is  used, that it was difficult, if not impossible, to see how the use  by MCN of  the MARIE CLAIRE  trade mark would not be likely to lead members of the trade or the general public to conclude erroneously that MCN’s  goods were those of MCSA or at least associated with MCSA.

Finally, in considering the issue of damage, the Court expressed the view that the normal use by MCN of the trade mark MARIE CLAIRE in respect of clothing would result in damage to the Opponents’ goodwill. MCN had argued that any goodwill capable of being asserted by the Opponents should extend only to hosiery and contended that the market for hosiery is separate from the market for other clothing. However, the Court reject both of these arguments and held that the Opponents’ business was not confined to hosiery but extended also to lingerie and swimwear and commented that MCN had not , in any event, proved that there is a separate market for hosiery within the wider clothing market.

The Court therefore concluded that MCN’s application should be rejected under Section 10(4)(a)  Of the Trade Marks Act on the basis that use of the mark applied for is  liable to be prevented by virtue of the law of passing off.

Bad Faith

The Opponents argued that Montagute, the original Applicant, acted in bad faith in filing the opposed application because Montagute was aware of the prior use of the trade mark MARIE CLAIRE by MCSA’s predecessor in business and knew that it could not claim to be the owner of the trade mark in Ireland at that time.  The Opponents also contended that Montagute was aware that it was not free to use the trade mark in respect of the goods for which registration was sought having regard to the earlier common law rights enjoyed by MCSA’s predecessor in business and that Montagute could not therefore have possessed the necessary bona fide intention that the trade mark MARIE CLAIRE would be used by or with its consent at the date of filing of the opposed application.

In the absence of any legislative definition of what constitutes bad faith, the Court reviewed the leading Irish and International cases which dealt with the issue of bad faith, including the GROMAX. DIESEL and CIPRIANI cases. Having done so, the Court concluded that the MARIE CLAIRE proceedings concerned what appeared to the Court to be an honest application to register a genuinely disputed trade mark. The Court therefore held that MCN’s application was not tainted by bad faith.

Request for Leave to Appeal to the Supreme Court

MCN subsequently sought leave to appeal to the Supreme Court under Section 79(3) of the Trade Marks Act,1996, which provides  that “By leave of the Court, an appeal from a decision of the Court under this section shall lie to the Supreme Court on a specified point of law.”

In its application to the Court, MCN identified nine separate points of law on which it wished to appeal to the Supreme Court. The Opponents, in response, argued that none of the issues identified by MCN concerned points of law. Having reviewed the submissions filed by both parties, the Court concurred with the Opponents and in a detailed judgment delivered on July 21 2014, held, inter alia, that the issues identified by MCN did not relate to any specific point of law which could be said to arise from the Court’s judgement and refused MCN’s request for leave to appeal to the Supreme Court.