Page 1

*234 Farah Trade Mark

In the High Court of Ireland
22 February 1972

[1978] F.S.R. 234

Before: Mr. Justice Kenny
22nd February 1972
Trade Mark—Ireland—FARAH—Application for registration in Part A refused by
controller—Appeal—Whether FARAH surname or geographical name—Ordinary
signification—Whether adapted to distinguish—Appeal allowed.

Trade Marks Act 1963, ss. 16, 17.1

The applicants sought to register FARAH as a trade mark for men's clothing. The word was
derived from the name of the applicant company's founder. The Controller refused registration in
Part A of the register on the grounds that the word was a surname, that it was a geographical
name and that it was neither adapted to nor was capable of distinguishing. The applicants
appealed.
Held, allowing registration to proceed,
(1) That the words “according to its ordinary signification” in section 17 of the Act meant the
ordinary meaning of the word to an Irish man or woman; on that basis, FARAH was not a
surname within the meaning of the Act;
(2) That a word was not disqualified from registration in Part A on the ground that it is a
geographical name unless it was one according to its ordinary signification to an Irish man or
woman; in this case, FARAH was not a geographical name within the meaning of the Act;
(3) That the word FARAH, being unusual and one which few people in Ireland would have heard
of before, was adapted to distinguish.
The following cases were referred to in the judgment:

Magnolia Metal Co. v. Atlas Metal Co. [1897] 2 Ch. 371; (1897) 14 R.P.C. 265 and 621.

Leopold Cassella & Co.'s Application [1910] 2 Ch. 240.

Teofani & Co. Ltd. v. Teofani [1913] 2 Ch. 545; (1913) 30 R.P.C. 446.

H. G. Burford & Co.'s Application [1919] 2 Ch. 28; (1919) 36 R.P.C. 1 and 139.

Boots Pure Drug Co. Ltd.'s Trade Mark [1938] Ch. 54; (1937) 54 R.P.C. 327.

Application of Mothercare Ltd. [1968] I.R. 359. *235

This was an appeal to the High Court from the refusal of the Controller of Patents to register the mark
FARAH in Part A of the register of trade marks in respect of an application therefor by Farah
Manufacturing Company Incorporated.

Representation
 Page 2

Brian McCracken, instructed by Whitney, Moore and Keller, appeared for the applicants. Claude
Sainsbury, instructed by The Chief State Solicitor. appeared for the Controller.
Kenny J:
Farah Manufacturing Co. Incorporated, a company incorporated in the State of Texas, applied for
registration in Part A of the Register of the word “Farah” as a trade mark in connection with men's and
boys' walk shorts, slacks and jeans. On 1 March 1971 the Controller refused the application and on
31 May 1971 gave his reasons for doing so. These were that the word was a surname, was a
geographical name and was not adapted to or capable of distinguishing. The plaintiffs have now
appealed to this court against the decision. There was no evidence of user of the mark in the State.
The word “Farah” does not appear in the Irish Telephone Directory. There are 4 entries of it in the
London Directory, 4 in the Paris Directory and 22 in the New York Telephone Directory. It is a highly
unusual surname.
Farah is also the name of a stream in West Afghanistan, of a province in that country and of a small
town on that stream.
Section 17 of the Trade Marks Act 1963, so far as relevant to this application, provides:

“17 (1) In order for a trade mark to be registrable in Part A of the Register it must contain or
consist of at least one of the following essential particulars: (d) a word or words having no direct
reference to the character or quality of the goods, and not being according to its ordinary
signification a geographical name or a surname; (e) any other distinctive mark, but a name,
signature or word or words, other than such as fall within the descriptions in paragraphs (a), (b),
(c) and (d) of this sub-section shall not be registrable under this paragraph except upon evidence
of its distinctiveness.
(2) For the purposes of this section 'distinctive' means adapted, in relation to the goods in respect
of which a trade mark is registered or proposed to be registered, to distinguish goods with which
the proprietor of the trade mark is or may be connected in the course of trade from goods in the
case of which no such connection subsists, either generally or, where the trade mark is
registered or proposed to be registered subject to limitations, in relation to use within the extent
of the registration.”

The plaintiffs derive their name from that of their founder and Farah is a surname in the United States
of America, in France and in England. The word “Farah” has been registered as a trade mark in the
United States Register of Patents but as no evidence of United States of America law was given and
as I do not know whether a surname may be registered there as a mark, the registration in the United
States of America has no significance. The question is not however whether the word proposed is a
surname but whether it is, according to its ordinary signification, a surname. *236
The Patents Designs and Trade Marks Act 1883 did not contain any prohibition on the registration of
a surname as a trade mark and the amending Act of 1888 did not change this. The British Comptroller
refused, however, to register surnames as trade marks (see Kerly on Trade Marks (2nd ed., 1901) at
p. 731 ). Section 9 of the Trade Marks Act 1905 allowed the registration of a distinctive word or words
which was not, according to its ordinary signification a surname and the decisions in Teofani and
Company Limited v. Teofani [1913] 2 Ch. 545; 30 R.P.C. 446 and H.G. Burford and Company's
Application [1919] 2 Ch. 28; 36 R.P.C. 1and 139 show that while an application to register a surname
as a trade mark must be treated with care, it may be registered if it is unusual or if it has become
distinctive of the goods by user. The words “according to its ordinary signification” mean its ordinary
meaning to an Irish man because these words govern both the words “a geographical name” and the
word “surname.” In my opinion “Farah” is not, according to its ordinary signification, a surname. I had
never heard of it before the case began and at first I thought it was a variation of Pharoah. I am
convinced that no Irish man or woman would think that “Farah” was a surname and it is not,
accordingly a surname according to its ordinary signification. The Controller's decision that it is, was
incorrect.
The next question is whether it is according to its ordinary signification a geographical name. This
means whether it is this to a person living in Ireland and I am convinced that very few people in this
community would think that it was a geographical name.
 Page 3

Reliance was placed on the decision of the Court of Appeal in England in Boots Pure Drug Co.'s
Trade Mark (the “Livron” Case) [1938] Ch. 54; (1937) 54 R.P.C. 327. In that case Boots Pure Drug
Company had registered a trade mark “Livron” which they had made up from the words “liver” and
“iron.” At the date of the registration of the mark in the United Kingdom, there was a town in France
called Livron where another company had a factory in which they carried on a business similar to that
of Boots. The Court of Appeal held that the mark should be removed from the Register because it
was calculated to deceive and was not adapted to distinguish the goods of the proprietor. Two
members of the court held that the word was geographical and so could not be an invented word and
that it was a geographical name. Romer L.J. agreed with the other two judges that the appeal should
be dismissed but did not concur in the conclusion that the word was a geographical name in its
ordinary signification. He said:

“The question which arises on that sub-section seems to me to be this, so far as the arguments
in the present case have been addressed to it: can it be said of a word that has no signification
whatsoever to the ordinary Englishman that it is, according to its ordinary signification, a
geographical name? I confess that I myself can give only one answer to that question. If there is
no signification to the ordinary Englishman, it certainly cannot have a geographical signification.”
*237

I prefer the views of Romer L.J. to those of the other two judges and I think that they are supported by
the history of the legislation in this matter.
Section 64 of the Patents Designs and Trade Marks Act 1883 provided that for its purposes a trade
mark had to consist of or contain at least one of the following essential particulars: “(c) a distinctive
device, mark, brand, heading, label, ticket or fancy word or words not in common use.” There was no
prohibition in it on the use of geographical names. Section 10 of the Patents, Designs and Trade
Marks Act 1888 substituted a new section 64 for that in the Act of 1883. It provided that for its
purposes a trade mark had to consist of or contain at least one of the following essential particulars:
“(c) a distinctive device, mark, brand, heading, label or ticket: or (e) a word or words having no
reference to the character or quality of the goods and not being a geographical name.”
In the Magnolia Case [1897] 2 Ch. 371; (1897) 14 R.P.C. 265 and 621, the question was whether the
word “Magnolia” could be registered as a trade mark in respect of a particular kind of metal which was
imported from the United States of America where there were several places known by that name
although the goods did not have any connection with any of those places. In the course of his
judgment Rigby L.J. said:

“It is no doubt, shown by the evidence that there are places in the United States called by the
name 'Magnolia' and if geographical name in s. 64 sub-s. (e) were equivalent to the name of any
place, Magnolia as the name of places mentioned in the evidence would fall within the exception.
But in our judgment the phrase 'geographical name' in s. 64 sub-s. (e) ought not, in general, to
receive so wide an interpretation. It must, we think, in the absence of special circumstances be
interpreted so as to be in accordance, in some degree, with the general and popular meaning of
the words, and a word does not become a geographical name simply because some place upon
the earth's surface has been called by it.”

When the Trade Marks Act 1905 was passed, the words “according to its ordinary signification” were
inserted before the words “a geographical name” and these were used in the Industrial and
Commercial Property (Protection) Act 1927 and the Trade Marks Act 1963. It seems to me that the
legislature by inserting the words “according to its ordinary signification” adopted the view expressed
in the Magnolia Case [1897] 2 Ch. 371; (1897) 14 R.P.C. 265 and 621 that a word is not disqualified
from registration in Part A on the ground that it is a geographical name unless it is this according to its
ordinary signification to an Irish man or woman. There is also the factor that in the Livron Case [1938]
Ch. 54; (1937) 54R. P. C. 327 the goods to which the trade mark registered in England was being
applied were being manufactured in Livron while in this case there is no suggestion that the goods
have any connection with Afghanistan.
I think that the Controller was in error in thinking that the word “Farah” was a geographical name
according to its ordinary signification. *238
 Page 4

Is the word distinctive in the sense that it is adapted to distinguish? “The Act meant that the trader
may take a word which from something in the word itself say the fact that no one had ever heard the
word before, that it was an invented word, or that it indicated the particular trader as distinguished
from another trader, but always from something found in the word itself as distinguished from the way
in which it is used is such as to answer the description of being adapted to distinguish the goods
(Buckley L. J. In Re Leopold Cassella and Co. [1910] 2 Ch. 240 and see also In re Mothercare
Limited [1968] I. R. 359).
In my opinion the word is adapted to distinguish. It is a very unusual word and very few people in
Ireland would have heard it before. The cases in which a word is adapted to distinguish when there is
no evidence of user, must be few but I think this is one of them.
It was also argued that registration of the word might interfere with the use of it by those who have a
similar name or by those who export goods to Ireland from the province or town of Farah. If anyone
who had the highly unusual name of Farah, wished to use it in connection with his goods or if there
were any exporter from the province of that name to Ireland, section 16 of the Act of 1963 would
prevent the plaintiffs taking action against such a person. That section, so far as relevant provides:
“No registration of a trade mark shall interfere with (a) any bona fide use by a person of his own name
or of the name of his place of business, or of the name, or of the name of the place of business, of
any of his predecessors in business.”
The case will accordingly be referred back to the Controller on the basis that “Farah” is not according
to its ordinary signification a geographical name or a surname and that it is adapted to distinguish.
*239

1. Corresponding U.K. statute: Trade Marks Act 1938, ss. 8, 9.

© 2013 Sweet & Maxwell