The High Court has allowed Bus Éireann / Irish Bus to file a further statutory declaration in its trade mark dispute over “Aircoach”, setting aside the Controller’s refusal to admit it.
The judgment, delivered by Miss Justice Laffoy on 13 June 2007, concerns an interlocutory appeal about evidence in a still-pending opposition to Bus Éireann’s application to register the mark for transport services. It does not decide whether the mark should be registered or whether either party acted in bad faith.
Last Passive Limited opposed the application, alleging that Bus Éireann adopted the name in bad faith and lacked a genuine intention to use it for the specified services. Bus Éireann denied those allegations and said it had first used the mark in 1989. These remain allegations and responses in the underlying proceedings.
The appeal concerned the Controller’s refusal to grant leave under Rule 23 of the Trade Marks Rules, 1996, for Bus Éireann to file a third declaration by its Business Development Manager, Timothy Hayes, dated 23 March 2005 and referred to as TH3. The Controller had considered that the proposed evidence could have been filed earlier and was not sufficiently significant to justify leave.
Justice Laffoy said the rules generally require evidence to be filed in stages, and parties should not hold back evidence for tactical advantage. But she found that where bad faith is alleged, fairness requires an opportunity to answer evidence tending to support that charge before it is adjudicated.
The judgment identified material in Last Passive’s reply evidence that went beyond the earlier evidence, including a second Irish Times article dated 16 July 1999 and assertions about publicity, the applicant’s business and its response to the opponent’s plans. The court said Bus Éireann had not had an opportunity to respond to those matters. It also referred to assertions drawing on Bus Éireann timetables, service branding and other trade mark applications.
The court did not determine the truth or weight of those assertions, or assess the probative value of TH3. It held that Bus Éireann should be allowed to file the declaration so the Controller can consider its value at the substantive hearing. The order set aside the Controller’s decision and granted leave to file TH3; the registration application and opposition remain pending before the Controller.