TRADE MARKS ACT, 1963 - Irish Patents Office

prudent measure on the part of the Applicant in circumstances where its
entitlement to use the mark was clearly being put in issue. Finally, with regard to
the “non-obvious” nature of the mark itself, there is nothing unusual about the
adoption as trade marks of words that bear no relation to the goods on which they
are used; indeed, that is what gives most marks their distinctiveness and is often
the basis on which registration is granted.
26. Of course, the Opponent would say that it is unreasonable to look at each of these
various factors in isolation and that it is the cumulative or combined effect of them
that creates the appearance of bad faith about the present application. Even when
looked at from that perspective, however, I think that the facts of the present case
do not support the inference that the application was made in bad faith. In my
view, the combined effect of the factors identified is not substantially more
indicative of the fact that the application was made in bad faith than is any one of
those factors individually. Thus, the fact that the Applicant has applied to register
a distinctive mark that resembles marks owned by the Opponent in respect of the
same goods as those in respect of which the Opponent’s marks are registered and
in circumstances where the Applicant was aware of the existence of the
Opponent’s marks and had previously used devices resembling devices used by
the Opponent does not necessarily lead to the conclusion that the application must
have been made in bad faith. It is equally arguable that the Applicant adopted its
mark independently and without the ulterior motive suggested by the Opponent
and, even on the balance of probabilities, I think that the Opponent has not made
out the case on bad faith such that there is any onus on the Applicant to prove
otherwise.
27. If I am wrong on this point and there is an onus on the Applicant to show that the
application for registration was not made in bad faith, then I think that the
Applicant’s evidence answers the charge sufficiently. While the Opponent may
regard Mr. McGarry’s evidence to the effect that his nickname is Tommy as
suspiciously convenient, the fact is that he made that statement under oath in a
Statutory Declaration and I feel obliged to accept it as true unless the contrary is
shown. The fact of the nickname then establishes the independent provenance of
the Applicant’s trade mark and provides an answer to the suggestion that it was
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