Marie Claire Trademark

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 -

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...