PASSING-OFF-continued,

66

3. The Plaintiffs' cycles being known as "Star" cycles, but other traders using the word "Star" as part of the name of their cycles, the use by the Defendant of the words "Midland Star" in catalogues and advertisements directed only to the trade held not to be calculated to deceive.-Actual fraud held not proved.-Concurrent user of name by third parties.-Probability of deception not established.—Action dismissed.-Appeal dismissed. The Plaintiffs and their predecessors had carried on business for many years as makers of cycles at the Star Cycle Works, Wolverhampton, and had used a Trade Mark, registered in 1891, and consisting of the device of a Star, in connection with the sale of their cycles, which were well known as Star" cycles. In an action for passing-off and infringement of the Trade Mark, the Plaintiffs complained of an advertisement of "Midland Star cycles and cycle frames in the Defendant's Price List; they also charged the Defendant with having accepted an order for a "Star" cycle, but on a Motion for an interlocutory injunction that charge failed, and it was held that probability of deception had not been established, and no Order was made, except as to costs. The Plaintiffs claimed to be entitled to the exclusive right to the use of the word "Star," alone or in combination, in the sale of cycles and cycle parts and accessories, but at the trial they limited their claim to cycles and frames. The Defendant proved that a considerable sale of cycles under various names of which "Star" formed a part had been going on openly for several years unchallenged by the Plaintiffs. The Defendant alleged that the name "Midland Star" was innocently adopted; that his price list was issued, and his cycles were sold, to the trade only; that the advertisement could not deceive; that his device containing a Star had never been affixed by him to any cycle; that he had never sold a cycle or frame under the name "Midland Star"; and that the Plaintiffs regularly sold cycles without any name on them. It was held at the trial, that the Defendant had adopted the name "Midland "Star" without any fraudulent intention; that the Plaintiffs had no exclusive right to the use of the word "Star"; and that probability of deception had not been established. The action was dismissed with costs. The Plaintiffs appealed. The appeal was dismissed with costs. STAR CYCLE CO. LD. v. FRANKENBURGS, pp. 46 and 405.

4. Name of Defendants' goods descriptive of one of the components, but chosen because it would lead to confusion with the Plaintiffs' goods.-Fancy name. "Iron-Ox Tablets.". Action to restrain passing-off and the use of the words "Iron Oxide" likely to cause confusion. No actual deception.-Probability of deception. - Unfair competition.-Injunction granted. The Plaintiffs, who sold "Iron-Ox "Tablets," brought an action to restrain the Defendants from selling medicinal tablets under the description "Iron Oxide Tablets" and from passing off their goods as the Plaintiffs' goods. The Defendants, being unable to obtain the Plaintiffs' goods for sale, obtained from a manufacturer, and sold to retailers for re-sale, "Compound Iron "Oxide Tablets" which contained iron oxide, practically useless as a drug, and also other and useful drugs, with the avowed intention of facilitating competition with "Iron-Ox Tablets," which contained. no iron oxide. There were other tablets called "Iron Oxide "Tablets" placed upon the market after the time when the Plaintiffs commenced advertising, but before the Defendants' sales began ; the Plaintiffs had stopped the sale of some of these tablets. The

PASSING-OFF-continued.

Defendants contended that iron oxide was in popular demand as a medicine and that they were entitled to supply this demand in the way they did, there being no complaint of get-up and no actual deception, but only cases in which the person receiving the Defendants' goods ordered the Plaintiffs' goods from the retailers, but was not himself deceived.-Held, that the Defendants had not put "Iron Oxide Tablets upon the market to satisfy a popular demand, but in order to supersede "Iron Ox Tablets," that under the circumstances the choice of this name was not legitimate trading, and that it would lead to confusion and was chosen for that reason, and not because it could in any sense be said to correctly describe the article. An injunction was granted to restrain the use of the term "Iron Oxide " by the Defendants without better distinguishing their goods from the goods of the Plaintiffs. IRONOX REMEDY Co. LD. v. CO-OPERATIVE WHOLESALE SOCIETY LD., p. 425.

5. Name of goods sold by Defendants and labels calculated to cause confusion with goods of Plaintiffs.-Fancy name. "Iron"Ox Tablets."-Action to restrain passing-off and the use of the words "Iron Oxide."—Get up.-Fraudulent intention on the part of salesmen alleged but not insisted on.-Injunction granted. An action for an injunction was brought against certain retailers who had bought "Compound Iron Oxide Tablets" from the Co-operative Wholesale Society Ld., and had sold them in response to orders for “Iron-Ox "Tablets," and had also put up and sold Iron Oxide Tablets of their own. Fraudulent intention was alleged on the part of the salesmen who had supplied the Defendants' goods in response to written orders for "Iron-Ox Tablets." The get-up of the Defendants' goods was also complained of. Upon abandonment of the charge of fraudulent intention, the evidence in Iron-Ox Remedy Co. Ld. v. Co-operative Wholesale Society Ld. as to the use and meaning of the words "Iron "Oxide" was admitted in this case, and an injunction was granted to restrain passing-off by the use of the words "Iron-Oxide without distinguishing, and to restrain the use of the labels complained of. IRON-OX REMEDY CO. LD. v. LEEDS INDUSTRIAL CO-OPERATIVE SOCIETY LD., p. 434.

manu

6. Difference in the nature of the goods. Motion for interlocutory injunction refused.-The Plaintiffs, who were facturers of steam motor cars, and who alleged that their cars had become known as "Miesse Cars," brought an action against the Miesse Petrol Car Syndicate Ld. to restrain them from using the name "Miesse" in connection with cars sold by them. The Defendants were the agents in this country of a Mr. Miesse, and were selling motor cars as "Miesse Petrol Cars." The Plaintiffs moved for an interlocutory injunction.-Held, that having regard to the difference in the goods, no passing-off had been established, and the Motion was refused with costs. TURNER'S MOTOR MANUFACTURING CO. LD. v. MIESSE PETROL CAR SYNDICATE LD., p 531.

7. Shop window dressing. Alleged passing-off by means of similarity of window dressing and other means.-Judgment for Defendant. PLOTZKER v. LUCAS, p. 551. See TRADE NAME, No. 7.

8. Secondary meaning. Effect of small local user. STAR CYCLE Co. LD. v. FRANKENBURGS, p. 405. See PASSING-OFF, No. 3.

PATENTED ARTICLE.

The name of a patented article cannot be a Trade Mark" within the definition contained in Section 3 of the Trade Marks Act, 1905. IN RE GESTETNER'S TRADE MARK, p. 545. See RECTIFICATION, No. 2.

PATENTS, &c. ACT, 1883.

Section 64

IN THE MATTER OF GESTETNER'S TRADE MARK, p. 545.

PATENTS, &c. ACT, 1888.

Section 10

IN THE MATTER OF GESTETNER'S TRADE MARK, p. 545.

PRACTICE. See also COSTS and DAMAGES.

1. Extension of time for appeal granted in the exercise of the discretion of the Court of Appeal.-Action for passing-off.Motion to expunge Defendants' Trade Marks.-R.S.C., Order LVIII., Rule 15, and Order LXIV., Rule 7. An action for passing-off and a motion to expunge the Defendants' Trade Marks were dismissed and refused respectively on the 11th of July 1906, and the Orders were entered on the 26th of July. Notices of appeal were given on the 24th of October. The Plaintiffs applied to the Court of Appeal for leave to appeal notwithstanding that the notices had not been given within the prescribed time, or that the time for giving the notices might be extended. They alleged that the delay in giving the notices was due to the fact that the Plaintiffs had been advised by Counsel, and also by a clerk in the Office of the District Registry in which the action was set down, that the time for giving notice of appeal ran from the date when the Orders were entered.-Held, that the Court of Appeal had no power to enlarge the time under the Rules of the Supreme Court, 1883, Order LXIV., Rule 7, but that it had power under Order LVIII., Rule 15, and that special leave to appeal ought to be granted. The Applicants were ordered to pay the Respondents' costs of the application. In re Manchester Economic Building Society (L.R. 24 C.D. 488) followed. REDDAWAY & Co. LD. v. IRWELL AND EASTERN RUBBER CO. LD., p. 93.

2. Scotch practice in rectification cases.

BOORD & SON v. THOM AND

CAMERON LD., p. 698. See RECTIFICATION, No. 4.

RECTIFICATION OF THE REGISTER. See also REGISTRATION, No. 6.

1. Trade Mark registered for substantially the whole of a Class.-Non-user in respect of certain goods in the Class.-Motion to rectify by limiting the registration so as to exclude the last-mentioned goods.-Order made.— Costs. IN THE MATTER OF HARE'S TRADE MARK, p. 263.

2. "Cyclostyle" held to be the name of a patented article and not capable of being a Trade Mark, and also held not to be a fancy word, nor at the date of the decision an invented word. Section 36 of the Trade Marks Act, 1905, only protects marks registrable under that Act at the date of the decision.Invented word.-Descriptive word.-Name of a patented article.

RECTIFICATION OF THE REGISTER-continued.

Trade Marks registered under previous Acts.-Trade Marks Act, 1905, Sections 3, 9, 35 and 36. The word "Cyclostyle" was registered for stationery in 1882 by F. & Co., the predecessors in title to the Trade Mark of G., who in 1881 and 1888 took out Letters Patent for a wheelpointed pen which in his Specifications was frequently spoken of as a "Cyclostyle." From 1882 onwards the word was frequently used by F. & Co. for the pen, ink, paper and other accessories of duplicating apparatus. K., a manufacturer of duplicating apparatus, applied, as a person aggrieved by the registration, to have the Trade Mark removed from the Register.-Held, that the word "Cyclostyle," being the name of a patented article and also being composed of two known, though foreign, words, was not a fancy word at the date of its registration in 1884 within the meaning of Section 64 of the Patents &c. Act of 1883, but was descriptive; and that, inasmuch as Section 36 of the Trade Marks Act, 1905, uses language of the present tense and points to the question whether, if a mark were removed from the Register, it would be such a mark as could be registered again under that Act, it must be considered whether the word "Cyclostyle" was at the present time an invented word capable of registration under the new Act, and that it was not an invented word within Section 9, and did not satisfy the definition of a Trade Mark given in Section 3. The Register was accordingly ordered to be rectified by the removal of the mark. IN RE GESTETNER'S TRADE MARK*, p. 545.

3. Mark common to the Trade..-Order to strike off mark.—Costs.— Trade Marks Act 1905, Section 35. IN THE MATTER OF KNAPTON'S TRADE MARK, p. 550.

4. Common user held not to be established sufficiently to displace a trade mark long registered. "Cat and Barrel" marks held to infringe a registered "Cat and Barrel 'mark, although differing in the manner in which the idea was carried out.-" Cat and "Barrel" mark for "Old Tom" gin.-Action of declarator and interdict for infringement.-Counter action of declarator and reduction of Trade Mark.-Honest concurrent user.-Device common to the trade.-Procedure.—Rectification of the Register must be craved.Onus of proof.-Common user must be substantial.--Reduction refused. Interdict granted.—Similarity of infringing devices. Before 1850" Old Tom" was a name of unknown origin used by the public for gin. About 1849 the predecessors in business of B. and S. adopted a cat and barrel device for their gin, and from that time onward did as before a large trade in England and abroad. They registered their mark in 1879 for fermented liquors and spirits, namely, wine, whisky, and liqueurs, and in 1904 they registered similar marks for dry gin, cordial "Old Tom," bottled cordials (alcoholic), " Old Tom," &c. For gin they had used the device registered in 1879 since about 1850, and from time to time they procured other traders to desist from using cat and barrel devices. There was evidence to show that (especially in the "native" markets abroad) B. and S.'s gin had become known as "Cat and Barrel" brand. From 1848 T. and C. or their predecessors carried on a similar business at home and abroad. There was evidence that before 1879 they and other firms in Glasgow and Dublin had used devices representing a cat and barrel in various positions and with various lettering as marks for gin, but their use of such marks was small. B. and S. raised an action against T. and C. for

The decision in this case has since been affirmed on appeal.

RECTIFICATION OF THE REGISTER-continued.

infringement of their Trade Mark. T. and C. raised a counter action against B. and S. for declarator that the device of cat and barrel was common to the trade long prior to registration by B. and S., and that the mark of B. and S. should be expunged from the Register.Held, by the Lord Ordinary, that B. and S. had no exclusive right to the device of a Cat or of a Cat and Barrel in connection with "Old Tom" gin, but that T. and C. were entitled to use the same. T. and C. were assoilzied in the first action with expenses, and held entitled to expenses in the second action (23 R.P.C. 521). B. and S. reclaimed.-Held, by the First Division of the Court of Session, that where in an action of infringement of Trade Mark the defence of common user is taken, it is necessary to crave that the mark of the Complainer in the action of infringement be removed from the Register; that where the defence of concurrent user by the Respondent is taken, it is necessary to crave that the mark of the Respondent in the action of infringement be put on the Register; and that T. and C. had not properly raised the defence of concurrent user in the present case. Dewar v. Dewar (17 R.P.C. 341; 2 F. 249) commented on. Held also, that when a Trade Mark has been registered and has remained many years on the Register there is an onus' on a person alleging common user to prove that it should not have been put on the Register, which onus is not discharged by proving that there has been occasional use of the mark by others prior to its registration, unless it is proved that there has been sufficient trade under the mark to associate the goods of others there with; and that, regarding the evidence as a jury would, such trade had not been proved in the present case. Observations on the nature of the right to a Trade Mark. Held also, that designs representing a cat and barrel, though not closely resembling the cat and barrel in B. and S.'s registered Trade Mark were, in view of the evidence associating the "Cat and Barrel" with B. and S.'s goods, infringements of their mark. BOORD & SON v. THOM AND CAMERON LD., p. 697.

REFERENCE TO CHARACTER OR QUALITY OF GOODS. See WORD.

REGISTRATION. See also RECTIFICATION, No. 2.

1. Proposed Trade Mark held not to be calculated to deceive. Concurrent user by Applicants and Opponents.-Application to register a label with a blank to be filled in by inserting a word.Opposition.-Trade Mark whether calculated to deceive.-Previous user in conjunction with wrongful representation as to registration.Application allowed by the Comptroller.-Appeal to the Court dismissed.-Appeal to the Court of Appeal dismissed. An application was made by L. and K., a Belfast firm of whisky distillers, to register a label including a scroll with a blank left in front of the words "V.O. Whisky." It appeared that the label had been actually used for some time with the word "Kinahan's" there inserted and that a representation had been made in the Applicants' Price Lists that it was already registered, and that the Applicants had done little business outside the Belfast district. The Opponents, K. & Co. Ld., trading as distillers in both Dublin and London, opposed the registration on the grounds that the term "Kinahan's Whisky" was invariably used for their whisky and meant their whisky, and that the Trade Mark applied for would deceive in use; that the Applicants in view of one of their previous registrations ought not to