Marie Claire magazine group may not register “Marie Claire” as a trade mark in Ireland as per the decision of the High Court delivered 1st April 2014
Mr. Justice Barrett of the Commercial Court delivered his judgement in respect of an appeal by the Marie Claire magazine group (Marie Claire Netherlands B.V) against the decision of the Controller of Patents, Designs and Trademarks to refuse registration of the trademark “Marie Claire” in Ireland in respect of clothing and headgear based on the opposition by an Irish company, Brandwell (IRL) Limited and a Spanish company, Marie Claire SA against the registration.
Mr. Justice Barrett decided against the Marie Claire magazine group on the basis of s.10 (4) (a) of the Trade Marks Act, 1996 which provides that;-
“A trademark shall not be registered if, or to the extent that, its use in the State is liable to be prevented –
(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trademark or other sign used in the course of trade…”
In finding that the prior use of ‘Marie Claire’ in Ireland by the opponents to the trade mark registration application was protected by the law of passing off, the Commercial Court referred to the three classic elements that must be established in order to exceed in a claim for passing off namely, goodwill/reputation, misrepresentation and damage. The court dealt with each of these elements as follows:-
- Goodwill/ Reputation
In order to succeed in a claim for passing off, a claimant must establish that there is goodwill/ reputation attached to the goods/services the subject matter of the passing off action in the minds of the purchasing public. The court referenced the decision of C&A Modes v C&A (Waterford) Limited  I.R.198 where it was explained with regard to goodwill that:
“What has to be established for the success of a plaintiff’s claim in an action such as this is that by his business and activities…he has generated within the State a property right in a goodwill which will be violated by the passing-off.”
The court was satisfied that the opponents Marie Claire SA and Brandwell (IRL) Limited had proved that there had been direct sales and promotions of their product that had given rise to significant and valuable goodwill in Ireland. The court stated that not only had there been sales throughout the country but that advertisements had been carried out in a variety of periodicals that were specific to Ireland. The total turnover in respect of their products during the years 1992-1997 amounted to almost €3 million of wholesale sales, a particularly significant sum given the relative inexpensive nature of the products in question. Thus, the court concluded that the opponents had the necessary goodwill to ground an action in passing off.
The second element required in order to establish a claim for passing off is a misrepresentation (intentional or otherwise) by the defendant to the public that leads or is likely to lead the public to believe that the defendant’s goods or services are those of the claimant. The court commented that the Marie Claire mark used in Ireland by the opponents was identical to the mark the subject matter of the application. In addition, the mark was used by the opponent in respect of hosiery, lingerie and swimwear which were items of clothing (clothing being the subject matter of the application for registration being opposed). The court commented that it was difficult, if not impossible, to see how the use of the ‘Marie Claire’ mark would not be likely to mislead members of the trade or the general public to conclude erroneously that Marie Claire’s Netherlands goods (i.e. the Marie Claire magazine group’s goods) were those of Marie Claire SA or at least associated with Marie Claire SA (one of the opponents).
The third element necessary in order to succeed in a claim for passing of is that the claimant suffers or is likely to suffer damage by reason of this misrepresentation.
The court commented that the concept of damage in the context of passing off involves a relatively modest threshold. The recent decision of the Supreme Court in McCambridge was also referenced. It was noted in that case that “passing off does not… require an actual or potential diversion of business from a plaintiff or a defendant. What is necessary to show by inference or evidence, is damage to the claimant’s goodwill”.
The Commercial Court stated that it appeared that if Marie Claire Netherlands (the Marie Claire magazine group) engaged in a normal use of the mark ‘Marie Claire’ in respect of clothing it would damage the goodwill of the opponents which had evolved on the basis of the substantial sales and promotion of their products. Marie Claire Netherlands argued that in the event that the court found goodwill capable of assertion against use of the ‘Marie Claire’ mark by a member of the Marie Claire magazine group that goodwill should only extent to hosiery, it being asserted that the market for hosiery is generally separate to the market for other clothing. The court commented that the business of the opponents, whilst predominantly in selling hosiery, was not confined to hosiery and extends, in part, to lingerie and swimwear and thus, at the least, to a wider segment of the clothing market. Even if this were not the case, it had not been proved before the court that there was a separate market for hosiery within the wider clothing market. It also appeared to the court that in any event the opponents have acquired goodwill in a significant area of clothing and that misrepresentation and damage are likely to arise if a party such as Marie Claire Netherlands is allowed to sell clothing, even clothing that is not hosiery, lingerie and swimwear under a mark that is identical to that of the opponents.
For these reasons, the court rejected the Marie Claire magazine groups’ appeal against the refusal of the registration of its trademark, Marie Claire in Ireland on the grounds of s.10 (4) (a) of the Trademarks Act, 1996. The court also considered arguments concerning bad faith applications and intention to use the mark but this case was decided on the grounds of the prior unregistered rights of the opponents.
Hogan Dowling McNamara
15th April 2014