O'Riain & Anor v Trade Marks Act 1996 & Anor (Approved)

Factual and Procedural Background

This case concerns a dispute over the ownership and registration of the trade mark "GAA," originally registered in 2007 in the name of a sporting association ("the Association") across various classes including clothing. A private company ("Company A") operating under the name T-Rex Clothing was alleged to have infringed on trademarks relating to county crests and the "GAA" mark by selling unlicensed products.

Following complaints and correspondence between Company A and representatives of the Association, Company A challenged the validity of the trade mark registration on the basis that the Association, as an unincorporated association, lacked legal capacity to hold property such as registered trademarks. Company A applied to the Controller of Patents Designs and Trade Marks for a declaration of invalidity of the registration.

The Controller rejected the invalidity application but noted the registration should be rectified to reflect ownership by the trustees of the Association rather than the Association itself.

Company A appealed the Controller’s decision to the High Court, naming the Controller, the Association, and its corporate trustee as defendants. Subsequently, two individuals associated with the Association ("Applicants") applied for an order to rectify the register to record ownership of the mark in the name of one of the trustees.

The proceedings involved multiple affidavits, including from the Applicants and Company A, and disputes over procedural matters, notably whether Company A was entitled to cross-examine one of the Applicants on his affidavit evidence.

Legal Issues Presented

1. Whether Company A, as a party to special summons proceedings, is entitled to serve a notice to cross-examine an applicant deponent on affidavit evidence.
2. Whether the court should exercise its discretion or inherent jurisdiction to refuse permission for cross-examination in the circumstances of this case.
3. The proper legal interpretation of the status and capacity of the Association as owner of the trade mark and the implications for the rectification of the register.

Arguments of the Parties

Company A's Arguments

• Company A contended that the evidence supporting the rectification application was insufficient and that cross-examination of the Applicant trustee was necessary to clarify conflicting or incomplete evidence.
• It argued that the Applicant’s affidavit lacked detail about the property vested in him as trustee, his understanding of his role, and his involvement in the trade mark registration and related proceedings.
• Company A maintained that it was entitled to challenge the evidence, even if no direct conflict of fact was apparent, and that cross-examination should be permitted to test the veracity and reliability of the evidence.

Applicants' Arguments

• The Applicants submitted that there was no conflict of fact warranting cross-examination and that the matters Company A wished to explore were irrelevant to the issues before the court.
• They argued that Company A was not an "opposite party" entitled to cross-examine under the applicable rules, as it had no direct interest in the mark and sought no relief against Company A.
• The Applicants contended that the court should exercise its inherent jurisdiction to refuse permission for cross-examination to avoid abuse of process and unnecessary delay.

Controller's Position

• The Controller took a neutral stance, indicating that if the rectification application succeeded, the appeal by Company A would become moot.

Table of Precedents Cited

Court's Reasoning and Analysis

The court carefully examined the procedural context, distinguishing between different rules governing cross-examination rights depending on the nature of the proceedings. It found that Company A was unquestionably a party and an opposing party to the rectification application, having filed affidavits and been served accordingly.

The court rejected the Applicants’ argument that Company A was not entitled to cross-examine on the basis that it was not an "opposite party." It noted that the Applicants themselves had joined Company A as a party, and that Company A had a direct interest in opposing the rectification application to preserve its appeal.

Applying relevant case law, the court held that under Order 38, rule 3 of the Rules of the Superior Courts, Company A had a presumptive entitlement to serve notice for cross-examination without requiring prior leave. The court acknowledged that this entitlement is not absolute and that the court retains discretion to refuse cross-examination where it would be an abuse of process or unnecessary.

On the facts, the court found no sufficient basis to refuse cross-examination. The issues raised by Company A regarding the Applicant trustee’s role and evidence did not amount to an abuse of process, and cross-examination was deemed necessary for a fair and proper disposal of the proceedings. The court noted that any unnecessary prolongation or costs could be addressed later by the trial judge.

The court also observed the somewhat paradoxical position that while the Association may lack legal capacity to hold the trade mark, it was nonetheless named as a party and capable of defending the proceedings, but did not decide on that issue at this stage.

Finally, the court declared that the form of the motion was incorrect but granted the substantive relief sought by confirming Company A’s entitlement to serve notice to cross-examine the Applicant trustee on his affidavit.

Holding and Implications

The court GRANTED the application by Company A to serve notice requiring the production of the Applicant trustee for cross-examination on his affidavit filed on 10th May 2019.

The Applicants failed to establish any grounds to refuse cross-examination or to demonstrate that permitting it would constitute an abuse of process.

The decision means that Company A may cross-examine the Applicant trustee, which may influence the evidence available at trial concerning the ownership and registration of the trade mark.

No new legal precedent was established; the ruling applied established principles regarding cross-examination rights in special summons proceedings and the court’s discretion to control abuse of process.