In Holyrood Publications Limited (the “Applicant”) v Professional Insurance Brokers Association (PIBA) (the “Opponent”), the Hearing Officer acting for the Controller of the Irish Patents Office dismissed an opposition to THE BROKER (the “Mark”) in Class 16 in respect of “Insurances and financial services publications” and allowed the Mark to proceed to registration.
The Opponent argued that the application was made in bad faith and that the use of the Mark was liable to be prevented by the law of passing off.
The Opponent alleged that a dispute between it and its competitor (the Irish Brokers Association (IBA) was relevant to the within proceedings, as it alleged that the Applicant’s magazine was published at the direction of the IBA. By way of background, various attempts to merge the two competing trade associations PIBA and IBA had ended in failure. The Hearing Officer rejected the Opponent’s attempt to pitch the proceedings as a conflict between the IBA and the PIBA. He stated that the IBA is not a party to the proceedings.
The Opponent alleged that it had rebranded its long running magazine, “The Professional Insurance Broker” to the “The Broker” in 2011 and that three editions of the magazine were published under the new name.
The Opponent alleged that in applying for the Mark, “the Applicant’s objective is to stymie PIBA’s continued, bona fide use of the term “The Broker” as the title of its publication”. The thrust of the Opponent’s argument was that the Applicant had no intention of using the Mark and its only motive in applying for the registration was to block the Opponent from continuing to use that term on its magazine. The Opponent alleged that the Mark was a “ghost” mark.
The Opponent argued that the circumstances of Imperial Group Limited v Philip Morris & Company Limited (where the court had found that the use of the mark was for an ulterior and independent objective of blocking use by another of the mark) were repeated here.
The Applicant alleged that it had published a magazine under the title “Irish Broker” since 1984. The Applicant maintained that the “motive behind the application is solely to protect the Applicant’s interest, investment and goodwill in the “Irish Broker” magazine, which is also commonly known in the industry as “The Broker” and/or “Broker” magazine”.
The Applicant gave the example of the Irish Independent newspaper being colloquially known as the “Independent” or the “Indo” and, in fact, it had actually been referred to by the Opponent in its evidence as the “Independent”. The Applicant argued that it is usual for Irish people to drop the “Irish” term when referring to the Irish independent.
The Hearing Officer held that “there is no question that the Applicant is attempting to ensure PIBA does not use the mark “The Broker”. However, as long as blocking another’s use of the mark is not the sole motive for the making of the application, there is nothing wrong with that. Trade mark registration grants exclusivity to the proprietor of the mark in question…… I must decide if the Applicant is seeking to merely block the Opponent or has the Applicant applied for the registration of “The Broker” in good faith”.
He went on to state that it is common for titles of publications to be shortened by consumers such as “The Herald” for the “The Evening Herald”, “The People” for the “Kilkenny People” and the “Indo” for the “Independent”.
The Hearing Officer was satisfied that the terms “The Broker” and “Broker” were commonly used in reference to the Applicant’s magazine and such use predated use by the Opponent of “The Broker” for its publication. Accordingly, he dismissed the Opposition argument of bad faith and held that the Applicant did have a genuine intention to use the Mark as a trade mark.
The Hearing Officer held that the Opponent had failed to pass any of the elements of the three stage test for passing off.
He held the Opponent had not built up any discernable goodwill in the Mark.
In relation to misrepresentation, the Hearing Officer held that the Mark is far closer to the title of the Applicant’s magazine than the old title of the Opponent’s magazine. Therefore if misrepresentation were to occur it would most likely be in the opposite direction.
With respect to damages, he held that if both parties were to sell their magazines under the Mark he had no doubt that damage would be done, but to the Applicant rather than to the Opponent.