In the Matter of John Player & Sons' Application for a Trade Mark. 5 IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION. Before MR. JUSTICE COZENS-HARDY. December 6th, 1900. IN THE MATTER OF JOHN PLAYER & SONS' APPLICATION FOR A TRADE MARK. Trade Mark.-Application to register.-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.10 Patents, &c. Act, 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 15 "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 20 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. 25 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, 30 and that, having regard to the varying note, the registration of that mark 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 G In the Matter of John Player & Sons' Application for a Trade Mark. 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. On the 9th of February 1891 the firm, then trading as John Player, registered 5 for cigarettes, under No. 153,944, the following Trade Mark : GARCTICS On the 12th of February 1891 they registered, under No. 154,011, for tobacco, whether manufactured or unmanufactured, the first Trade Mark appearing on page 67. 66 6 The application for this Trade Mark stated :-"The Applicants will in use 10 vary the use of the words Navy Cut' by substituting therefor the names of "other articles included in the specification of goods." The essential particular of the mark was stated to be "the combination of devices" and the applicants disclaim any right to the exclusive use of the added matter except their name. The statement as to variation in use does not appear on the Register. 15 The sailor's head forming the centre of these two Trade Marks was taken with a slight alteration from another Trade Mark (No. 34,182) registered for manufactured tobacco on the 9th of November 1883, of which Players had become the registered owners. There were also on the Register at this date two other Trade Marks for tobacco-No. 3621, registered in 1876, and 20 No. 25,933, registered on the 31st of March 1881 as an old mark (these are the second and third Trade Marks on page 67). On the 24th of July 1891 Players applied to register for cigarettes under No. 157,774 a Trade Mark consisting of a label deposited in colours which was identical with Trade Mark No 153,944, except that two ships appeared, one on 25 each side of the sailor's head, as in Trade Mark No. 154,011, and the nose of the In the Matter of John Player & Sons' Application for a Trade Mark. sailor was slightly less hooked, and the sailor's face was without wrinkles' thereby giving him, as was alleged by the Comptroller, a more juvenile PLAYER'S NAVY GUT appearance. This application was refused by the Comptroller, and, on appeal, his decision was affirmed by the Board of Trade. 5 ROBINSON & SONS On the 21st December 1895 John Player & Sons, Ld., who had succeeded to the business of the firm trading as John Player, registered for tobacco, In the Matter of John Player & Sons' Application for a Trade Mark. manufactured or unmanufactured, under No. 192,022 the following Trade Mark : On the 2nd of August 1899 John Player & Sons, Ld., applied to register for tobacco, manufactured or unmanufactured, under No. 225,035 the following Trade Mark : PLAYERS AVY MIXTUR The essential particulars were stated to be the combination of devices and the word "Hero," and the Applicants disclaimed any right to the exclusive use 5 In the Matter of John Player & Sons' Application for a Trade Mark. After a of the added matter except in so far as it consisted of their own name. great deal of correspondence, in which a variety of questions were raised by the Comptroller, and replied to by the Applicants' agent, the mark was ultimately refused, the final letter of refusal being as follows (omitting formal 5 parts) I think all I need say is that I look upon the matter as res judicata." The Applicants appealed to the Board of Trade, who referred the appeal to the Court, and directed the Applicants to serve the proceedings on the Comptroller, and also on the owners of Trade Marks Nos. 3621 and 25,933. : The Applicants gave the usual notice of motion, and the matter came before 10 the Court. The owners of the two last-mentioned marks did not appear. The Applicants filed several affidavits, of which only the following portions appear to be material for the purposes of this report :-J. D. Player deposed as to the extensive use of the device of a sailor's head within a lifebuoy as his Company's Trade Mark, and that, as the result of their advertisements and 15 sales, the device was generally known to the trade and the public throughout the civilized world as distinguishing his Company's goods; that they had adopted "Navy Mixture" as a fancy term like "Army and Navy Smoking "Mixture and other terms to which he referred; that their instructions to their colour printers were to prepare a suitable box for their "Navy Mixture," 20 including the reproduction in colours on such box of the sailor's head and lifebuoy appearing on Trade Mark No. 154,011; that he believed that the box contained what was substantially, and to all practical purposes, a reproduction of such sailor's head*; that they were applying for registration of their new mark in order to be able to register it abroad, as he believed that it was in most 25 cases impossible to stop imitation of Trade Marks abroad without the protection afforded by registration. W. H. Reddan, a director of Barringer, Wallis, and Manners, Ld., of Mansfield, colour printers, deposed to his Company receiving the instructions mentioned in the affidavit of J. D. Player, and that the sailor's head in the 30 mark which they were applying to register was a reproduction of the head in No. 154,011, as near as it was possible by the ordinary methods of colour printing to reproduce the same, and that it would be impossible for any colour printer, without adopting expensive and elaborate methods, which would render colour printing on tin impracticable for commercial purposes, to reproduce the 35 head more accurately, and that for all practical purposes the head appearing on This the new mark and the head appearing on No. 154,011 were the same. statement as to similarity was corroborated by several members of the tobacco trade, two of whom in their affidavits stated to the effect that "Navy Mixture would not lead the trade or the public to believe that the tobacco bearing the 40 said Trade Mark had any connection with the Navy. 66 The only affidavit filed on behalf of the Comptroller was an affidavit by the Registrar of Trade Marks, the following portions of which appear material for the purposes of this report: (8) I have perused the affidavit of Mr. Reddan "filed in these matters, and I am surprised to learn that it is impossible for 45 "him to get a better representation of the sailor's head as it appears in Marks "Nos. 34,182 and 154,011 than appears in B.W.M. 2. Whatever may be the difficulty in colour printing on tin, it is clear that there is no difficulty in "printing in the ordinary way in black and white, as appears from Marks and "Nos. 154,011, 153,944, 192,022, being respectively Nos. of 50 the said exhibits, and that, therefore, there is no difficulty in putting such a "sailor's head upon the Mark No. 225,035. It is (as I submit) undesirable "where there are various owners of marks containing sailors' heads that one owner should be permitted to vary his head in any way so as to bring it nearer 66 46 to the head forming part of the other similar marks registered in the class. * The Trade Mark No. 225,035, as applied for, was in black and white that which appeared in colours on the lid of the box. |