PASSING OFF-continued. they alleged that they had advertised it largely in American journals, some of which came into England, and that it had been sold in England prior to 1889 and since. Witnesses were called for the Defence, who gave evidence of small sales in England of the "Ivory soap" during the period last aforesaid, but mainly to American customers.-Held, at the trial, that the Plaintiff's case failed. The Plaintiff appealed.-Held, that the Plaintiff's and Defendants' goods being got up in a perfectly different manner no one could mistake the one for the other; that any similarity in sound that there might be between "Ivy" and "Ivory" would not lead to the inevitable deduction that what the Defendants were doing must be calculated to deceive; and that the Defendants had proved their right to the use of the word "Ivory." The appeal was dismissed with costs, including the costs of a motion to admit further evidence on appeal. GOODWIN v. IVORY SOAP CO. AND PROCTER & GAMBLE Co., p. 389. 66 5. "Whitstable Native Oysters.' Alleged secondary meaning. Sole right not in Plaintiffs. Secondary meaning held not to be established. "Imperial" oysters. Name held to be common. Action dismissed. Appeal as to "Whitstable Native Oysters" dismissed. A Company, whose business was the cultivation of oysters at Whitstable, brought an action against the H. Company and T. to restrain the application by them of the term "Whitstable" to oysters not cultivated on the beds of the Plaintiffs or of the S. Company, and to restrain the application by the Defendants of the term "Imperials" to oysters not cultivated on the Plaintiffs' beds. It appeared that the Plaintiffs and their predecessors in title had for a great number of years had beds at Whitstable, and also that since the year 1888, after litigation with the S. Company, the Plaintiffs had admitted the right of that Company to use the term " Whitstable" for oysters cultivated on a bed adjoining the Plaintiffs' grounds. The Plaintiffs alleged that the word "Whitstable" in connection with oysters had come to have a secondary meaning, indicating either certain of their oysters or of those of the S. Company. The Defendants claimed the right of applying the word to oysters cultivated on a bed belonging to the Defendant Company, known as the East End bed, close to or adjoining the Plaintiffs' grounds; the Plaintiffs, however, alleged that this bed was in Faversham and not in Whitstable. The Defendants alleged that the term "Whitstable" had been applied to oysters other than those cultivated by the Plaintiffs or the S. Company by C., by dredgermen in Whitstable, and by the Plaintiffs themselves. The Plaintiffs contended that C. had not so applied the term, or, at all events, not to their knowledge, he having been one of their customers, and denied the other alleged users. Plaintiffs had formerly a Trade Mark, of which the words "Whitstable Native "Oysters" formed part, but in 1888 they cancelled the registration of this mark and registered a Trade Mark, of which the words "Royal Whitstable Native Oysters" formed part, and the Defendants alleged that the Plaintiffs had shown an intention of relying on the word "Royal" to distinguish their oysters. The Plaintiffs alleged that they and the S. Company had been known to the trade as the only producers of "Whitstable Oysters." By certain Orders the Plaintiffs were precluded from giving evidence of actual deception, PASSING OFF-continued. having given no particulars thereof. The Defendant Company had not used the word "Imperial." The Defendant T. alleged that it was in common use in the trade. At the trial it was held that the term "Whitstable" as applied to oysters indicated a particular class of oyster having certain characteristics recognisable by the trade, and had also a geographical meaning, in that such oyster must have a connection with Whitstable; that the Plaintiffs had not established the alleged secondary meaning of the name; also that it had been not confined to oysters of the Plaintiffs and the S. Company, and that oysters cultivated on the Defendant Company's bed might properly be described as "Whitstable Oysters."- Held, also, that the term "Imperial" had been commonly used by the trade as a mark of superior quality. The action was dimissed with costs. The Plaintiffs appealed from the part of the judgment which related to "Whitstable Oysters."-Held, by COLLINS, L.J., and ROMER, L.J., (RIGBY, L.J., dissenting), that the appeal should be dismissed. WHITSTABLE OYSTER FISHERY CO. v. HAYLING FISHERIES, Ld., AND TABOR, p. 434. 6. Probability of Deception. Similarity of get-up. Evidence. Inspection by Judge. Order L., Rule 4. Delay and Acquiesence. At the trial of an action by the London General Omnibus Company against a private omnibus proprietor for an injunction to restrain him from ruuning a certain omnibus alleged to be painted and lettered in imitation of the Company's omnibuses, the Plaintiffs relied upon an inspection by the Judge of the rival omnibuses and adduced no evidence of actual or probable deception. The Defendant's omnibus had been running along the same route in substantially the same condition for ten years without any complaint by the Company. FARWELL, J., granted an injunction.-Held, by the Court of Appeal, that the Court was not justified in granting relief in the absence of evidence that persons using omnibuses either had been or were likely to be misled. The Appeal was allowed and the action was dismissed with costs. Per LORD ALVERSTONE, L.C.J.-In an action of deceit founded upon similarity of get-up, except where the articles are identical, the Judge ought not to substitute a view under Order L., Rule 4, for evidence that the get-up of the Defendant's goods is calculated to deceive, the object of the view being to enable the Judge to understand the question in dispute and to follow and apply the evidence. LONDON GENERAL OMNIBUS Co. v. LAVELL, p. 74. PATENTS, &C. ACT, 1883. Section 32. RIPLEY V. ARTHUR & CO., p. 82. Section 62. PLAYER & SONS' APPLICATION, p. 65. Section 64 PLAYER & SONS' APPLICATION, p. 65. FAULDER'S TRADE MARK, pp. 37, 535. HARRISONS AND CROSFIELD'S APPLICATION, p. 34. NATIONAL BISCUIT Co.'s APPLICATION, p. 170. PATENTS, &c. ACT, 1883-continued. Section 66. PLAYER & SONS' APPLICATION, p. 65. PATENTS, &c. ACT, 1888. Section 10 HARRISONS AND CROSFIELD'S APPLICATION, p. 34. PRACTICE. See also R. S. C. TRADE NAME, Nos. 3 and 5. REGISTRATION, No. 1. 1. Counterclaim.-Leave to amend.-Passing-off action.-Threats.-Malice. -Bona fides.-Patents, &c. Act, 1883, 46 & 47 Vict. c. 57, s. 82.Rules of the Supreme Court, Order XXV., Rule 4. A counterclaim in a passing-off action which alleges threats barely, and claims an injunction to restrain such threats, but shows no malice or bad faith on the part of the Plaintiff who is maintaining the action which he has brought, can be struck out under R. S. C. Order XXV., Rule 4, as disclosing no reasonable cause of action under section 32 of the Patents, &c. Act, 1883, or otherwise. Leave to amend the counterclaim by alleging malice was refused., RIPLEY v. ARTHUR & Co., p. 82. 2. Form of injunction in infringement action. MARECHAL & RUCHON v. M'COLGAN, p. 262. RECTIFICATION OF REGISTER. Addition to 1. Motion to rectify. Word whether distinctive. registered mark.-Motion dismissed.-Appeal allowed.-Patents, &c. Act, 1883, sections 64 and 74. In 1886 a firm of jam manufacturers registered a Trade Mark in Class 42 for preserves, consisting of their signature and the word "Silverpan." In 1900 a Company, who were being sued by the registered proprietors for "passing off" by the use of the word "Silverpan," moved to rectify the Register by expunging the mark or entering a disclaimer of the exclusive right to the word "Silverpan," and at the hearing they contended that it was a distinctive word common to the trade within section 74, or a word which would, by reason of its being calculated to deceive or otherwise, he deemed disentitled to protection within section 73 of the Patents, &c. Act, 1883. The Respondents stated that they did not claim by virtue of the registration the exclusive use of the word. On the hearing of the motion, KEKEWICH, J., held that the word "Silverpan" was not a distinctive word within the meaning of section 74, and was not calculated to deceive or otherwise disentitled to protection, and refused the motion with costs. The Applicants appealed.-Held, that the word "Silverpan was an addition to the Trade Mark within section 74 of the Patents, &c. Act, 1883, and was distinctive within the meaning of that section and ought to be disclaimed. At the request of the Respondents the RECTIFICATION OF REGISTER-continued. mark was, however, ordered to be expunged, instead of a disclaimer being entered. The decision of Chitty, J., in Burland v. Broxburn Oil Company (6 R.P.C. 482) that "distinctive" in section 74 means prima facie distinctive, approved. A word apparently chosen by an Applicant for registration of a Trade Mark, and prima facie suitable at the date of registration, for the purpose of distinguishing his goods from those of other persons is distinctive within the meaning of that section. FAULDER'S TRADE MARK, pp. 37, 535. Assignment. 2. Motion to expunge. Assignment. Goodwill. Marks alleged to be deceptive. Non-user. Marks expunged. V., in 1897, registered three Trade Marks, each consisting of the word "Valtine," for all goods in Classes 3 and 42, and in Class 43 for beer and spirits, and purported to assign them to a Limited Company formed to carry on the business of meat extract manufacturers, with his good will, if any. Another Company obtained an injunction restraining the Limited Company from selling meat extract or meat juice under the name of "Valtine," and subsequently moved to remove the marks from the Register of Trade Marks, the grounds of the application being that at the date of the assignment V. had no good will to assign, that the marks were deceptive, and had not been used except for meat extract. An Order was made removing the marks from the Register with costs. VALENTINE EXTRACT Co.'s TRADE MARKS, p. 175. REGISTRATION. 1. Mark already on the Register with a non-essential difference. Refusal by Comptroller. Appeal to Board of Trade referred to Court. Objection by Comptroller in Court to the form of application. Applicants offering to submit to amendment. Appeal dismissed. Patents, &c. Act, 1883, sections 62, 64, and 66. P. & Sons in 1891 registered a Trade Mark for tobacco containing the words "Navy Cut," the application stating that "Navy Cut" would be in use varied by substituting names of other goods. In 1899 they applied to register for tobacco the same mark, except that "Navy Mixture was substituted for "Navy Cut," and that the head of the sailor was slightly altered in respect of the face. The Comptroller having refused to proceed with the application, P. & Sons appealed to the Board of Trade, who referred the appeal to the Court. In the course of the proceedings in Court the Comptroller raised the point of the application being defective in two respects, which point had not been taken in the proceedings in the Patent Office. The Applicants offered to submit to an amendment of their application on this point. The Comptroller contended that the application could not be amended after the case had come into Court. He also contended that the appeal ought to be dismissed on the merits.-Held, that the appeal failed in point of form and in point of substance; in point of form because it was too late for an amendment of the application to be allowed, and in point of substance because, putting the matter most favourably for the Applicants, they were applying to register a Trade Mark which was in all the essentials the same as their earlier Trade Mark, and that, having regard to the varying note, the registration of that mark E REGISTRATION-continued. 2. absolutely covered the mark now applied for, and (following North, J., in Baker v. Rawson, 8 R.P.C. 89; L.R. 45, C.D. 519) that the application was an absurd one, and that a mark which is superfluous as far as English law is concerned, and would unnecessarily cumber the Register, ought not to be put on the Register simply on the suggestion that it might be a convenience in some foreign countries, with a view to some other proceedings, to have a duplicate registration of the mark. No decision was pronounced on the other points raised. PLAYER & SONS' APPLICATION, p. 65. "Nectar." Application refused on ground of reference to the 3. "Uneeda." Invented word." "Word having no reference to "character or quality of goods."-Appeal dismissed.-Patents, &c. Act, 1883, section 64; Patents, &c. Act, 1888, section 10. A Company having applied to register the word "Uneeda" as a Trade Mark in Class 42, the Comptroller refused the application. The Applicants appealed, and the appeal was referred to the Court. The Applicants alleged that the word in its inception was not arrived at from the words "You need a," but they admitted that the public had read it with the pronunciation and meaning of those words.-Held, that "Uneeda was a mere putting together of three ordinary English words with a misspelling without any change of pronunciation and was therefore not an invented word; also that it was not a word having no reference to the character or quality of the goods. The appeal was dismissed with costs. NATIONAL BISCUIT Co.'s APPLICATION, p. 170. 4. Conflicting marks.-Appeal from refusal of Comptroller dismissed.— Patents, &c. Act, 1883, section 72, subsection (2). A Company, who were the registered proprietors of a Trade Mark "Pomril" for cider, applied for registration, as a Trade Mark also for cider, of a mark consisting of a representation of the cut side of half an apple, cut vertically, with the word "Pomril" across it. The Comptroller required the consent to be obtained of the owners of a Trade Mark registered for cider, comprising (inter alia) the words "Apple "Brand" and the representation of an apple, these owners also being the registered proprietors of a mark consisting of the words "The "Apple Brand," and registered for bottled cider. The consent not being obtained, the application was refused. The Applicants appealed, and the appeal was referred to the Court with a direction to serve the owners of the said registered marks, and they appeared on the hearing to oppose.-Held, that the proposed mark was likely |