64 Reddaway & Co. Ld. v. Irwell and Eastern Rubber Company Ld. "coloured brown upon one surface, which is a ribbed surface of 'Balata' composition brown in colour, while the other surface is a plain cotton sheeting surface. Such differences further accentuate the impossibility of confusion "between the two, which are entirely distinct in material, in manufacture, and in appearance. Moreover, purchasers and users of belting are 5 "engineers and persons of experience with regard to belting, and have a "clear knowledge of what precise goods it is they require. (4) A further "distinction between hair belting and 'Balata' belting is that 'Balata' belting is "always listed and priced in various thicknesses, according to the number of folds "of cotton duck or cotton sheeting, such folds being called plies, and there being 10 "no recognised standard of thickness corresponding to the width. In ordering "or purchasing Balata' belting, therefore, it is necessary to specify the thick"ness by stating the number of plies, as 3-ply, 4-ply, 5-ply, &c. Hair belting, on the other hand, is listed and priced by the width only, each width being "made, except for special belts, of a recognised and understood thickness, and 15 "in ordering hair belting it is not usual or necessary, except for special belts, "to specify any thickness, and hair belting is, except in the case of special "belts, ordered and purchased by width only, without stating the thickness. (5) Save as aforesaid, the Defendants deny the allegations contained in paragraph 3 of the Statement of Claim, and in particular deny that they have, 20 “fraudulently or at all, attempted to pass off, or have passed off, belting not of "the Plaintiff Company's manufacture as and for belting of the Plaintiff Company, or that they threaten and intend to continue such acts. The name "Lanco' is not a colourable imitation of any trade name to which the Plain"tiffs are entitled, or of any trade name used by them or applied to their 25 goods, nor is it calculated or intended to deceive. (6) The Plaintiffs have a registered Trade Mark under Class 35 of the classes under the Patents, "Designs, and Trade Marks Act, being the class for worsted, woollen and hair "goods, and the Defendants submit that this action is an attempt to extend "such Trade Mark to goods not included in such class, namely, india-rubber 30 66 goods, and to extend such Trade Mark so as to include the abbreviations "thereof mentioned in paragraph 1 of the Statement of Claim, which abbrevia"tions form no part of the said Trade Mark, and the Defendants submit that "this action ought to be dismissed with costs." 64 66 66 66 66 On the 4th of August 1905 the Defendants applied for the registration of a 35 Trade Mark (No. 274,825 in Class 40) consisting of the word "Lanco," and on the 21st of September 1905 they applied for the registration of a Trade Mark (No. 275,883 in Class 40) consisting of the words "Lanco Balata Belting" with a device. The Certificates of Registration of both marks were dated the 6th of March 1906. 40 The Plaintiffs moved that the Register of Trade Marks be rectified by expunging therefrom-(1) the Defendants' Trade Mark No. 274,825, and (2) so much of the Defendants' Trade Mark No. 275,883 as consists of the word "Lanco." On the 7th of April 1906 the motion was ordered by Mr. Justice Swinfen Eady to be heard with the action for passing off, and the applicants 45 were to be at liberty to amend the notice of Motion, which they did by striking out the words "so much of" and "as consists of the word 'Lanco.'" On the same date the Plaintiffs moved for an interim injunction to restrain the alleged passing off, but no Order was made except that costs be costs in the action. The Action came on for trial on the 10th of July 1900 before Mr. Justice 50 Neville, who held that the use of the name "Lanco" was not calculated to deceive. The Action and Motion were dismissed with costs (23 R.P.C. 621). The Plaintiffs appealed. The appeals came on for hearing on the 15th of February 1907. Cripps K.C., Astbury K.C., and Clauson (instructed by W. J. and E. H. 55 Tremellen, agents for Blair and Seddon of Manchester) appeared for the Reddaway & Co. Ld. v. Irwell and Eastern Rubber Company Ld. Appellants; Jenkins, K.C., Sebastian, and A. Grant (instructed by Pritchard, Englefield & Co., agents for Earle, Sons & Co., of Manchester) appeared for the Respondents. Cripps K.C. for the Appellants. It is conceded that hair and Balata beltings 5 have in common the property of not being affected by the weather. The name "Lanc" or "Lancs" denotes the place of manufacture. On the application for an interlocutory injunction, Mr. Tinto said his firm had never dealt in their belting as "Lanco" belting, but always as "Lanco Balata" belting. At the trial he said it had been sold under the name of "Lanco" alone. There is no 10 reason for the use of the word "Lanco" unless to deceive purchasers. The resemblance between the two beltings is in the name. A person ordering "Lanc" 66 or Lanco belting might get the Defendants' belting thinking that he had got the Plaintiffs', and distinctions of price would not prevent deception. The Defendants say that if they had not forgotten all about the "Lancashire" 15 Company's belting they would not have used a name so near; then, when the Plaintiffs object, they say they have spent so much on advertising that they are unwilling to give up the name they have adopted. The case has been decided by the wrong test-that of the probability of deception of the expert, not of the ordinary ultimate purchaser-and undue weight has been put upon 20 the distinction between hair and Balata. Belting is used for agricultural purposes, and persons not profoundly ignorant would be liable to be deceived. A competent user would know there was a "Lancashire," or "Lancs "Lanco" belting, and would not notice the distinction of the plies. Both the beltings are good, and the purchaser would not care which he got. The 25 manufacturers might be perfectly innocent and yet deceive. One witness said that persons buying from ironmongers would be deceived. It is not admitted that the Plaintiffs' goods are only known as "Lancashire." [Barlow v. Johnson (7 R.P.C. 395, 419), and Lever v. Goodwin (4 R.P.C. 492; L.R. 36 C.D. 1) were cited.] The Defendants' belting has not always 30 been ordered as "Lanco Balata" belting-the word "Balata" has occasionally been omitted. Why do the Defendants take the name "Lanco"? It means "Lancashire "the "o" does not distinguish it. They could have no object except to connote that they were selling the well known "Lancashire" belting. 66 or 35 Astbury K.C. followed.-First, it is admitted that "Lanco" is intended to mean Lancashire "it is a diminutive. No one would know that the last syllable of it stood for "cotton." Purchasers would not distinguish between "Lanco," "Lanc," and "Lancs." The Defendants want to sell Balata only, and they advertise only Balata; from their catalogue no one could suppose their 40 belting to be the Plaintiffs'. But the middlemen would call it simply "Lanco " belting. If one is trying to get an article known by a fancy name, one uses a short name. If the belting is called "Lanco" simply, it is so called to deceive. Secondly, if it was called "Lancashire Balata " belting, would that be allowable? That is the test. The Plaintiffs have never made any Balata 45 belting. Any belting with a name containing the word "Lancashire" would connote belting made by the Plaintiffs. There are two kinds of belting-one for use in a dry atmosphere, the other that can be used in a humid atmosphere. "Lanco" and "Lancashire" belting can be used under the same conditions. Many users would not cut open a belt to see what it was made of; and the 50 colour would be no indication. These users would know the character of the Plaintiffs' belting without knowing its construction. Why should the Defendants want to go on calling their belting "Lanco"? They say that, although they have been selling it for a year, there is no evidence of deception, and therefore there is no probability of deception. The Plaintiffs say that the 55 name is reasonably calculated to lead to deception.. Counsel for the Respondents were not called upon. Reddaway & Co. Ld. v. Irwell and Eastern Rubber Company Ld. Sir GORELL BARNES.-This case has been very fully argued for the Appellants, but it seems to me that it raises no question of law, and that the matter was a question of fact for the learned Judge. I think that his judgment was perfectly right. At the conclusion he said- "Here it appears to me that there is no reasonable probability of deception of any kind. I think that their "— 5 that is, the Defendants'-" action was fairly meant, and I do not think it will "result in any unfair treatment of the Plaintiffs." This is a finding with which I am entirely in accord, and, therefore, I think this appeal ought to be dismissed. FARWELL L.J.-I entirely agree. The only thing I wish to say is that I 10 think Mr. Astbury has failed on the first point. I think that the evidence has not proved, nor could it have proved, that "Lanco" is the same thing as "Lancashire." On the contrary, the evidence shows that no single order was given as "Lanco." The witnesses said they never heard "Lancashire called "Lanco," and I think they never did. I, therefore, agree that the appeal should 15 be dismissed. BUCKLEY L.J.—I am of the same opinion. I think this is a perfectly plain case. The Plaintiffs, if they are to succeed, must establish first that the word "Lancashire" and its abbreviations in connection with belting connote the Plaintiffs' goods. And that would not be enough for them-they must go on 20 to say that such a word as "Lanco" conveys, among other ideas, the idea that "Lancashire" connotes the Plaintiffs' goods, and that that is so even when the word "Lanco" is used with a qualification, as it is in this Circular, which plainly shows it does not refer to the Plaintiffs' goods. I do not think that the Plaintiffs have discharged the onus upon them in this case, and I think that the 25 appeal fails. The appeals in the Action and on the Motion were dismissed with costs. In the Matter of the Deutsche Gold & Silber-Scheide Anstalt vorm.` 5 Before THE SOLICITOR-GENERAL. November 9th and 15th, 1906. IN THE MATTER OF THE DEUTSCHE GOLD & SILBER-SCHEIDE ANSTALT Application by a foreign Patentee under Section 103 of the Patents, &c. Act, 1883.-Date of application. A German Company applied in this country for a Patent on the 4th of August 1905, asking that the Patent might be dated the 13th of August 1904, which was the date of their German application. The Chief Examiner, acting for the 10 Comptroller-General, decided under the Patents Act 1902 to insert in the Applicants' Specification a reference to a Specification which was accepted and published on the 11th of May 1905 on an application made on the 12th of May 1904. The Applicants appealed. 15 Held, by the Law Officer, that the Chief Examiner's decision be affirmed. On the 4th of August 1905 the Deutsche Gold & Silber-Scheide Anstalt vorm. Rössler made an application under Section 103 of the Patents, &c. Act, 1883, for a Patent, No. 16,012 of 1905, for the invention of "Improved manufacture of "indigo Leuco-bodies," asking that the Patent might have the date of the 13th of August 1904, which was the date of their application for a Patent for the 20 invention in Germany. The Examiner, acting under Section 1 of the Patents, &c. Act, 1902, reported that the invention had been in part claimed or described in a Specification, filed in pursuance of an application, No. 10,925 of 1904, dated the 12th of May 1904, which Specification was accepted and published on the 11th of May 1905, a 25 Provisional Specification having been filed on the 12th of May 1904. The Chief Examiner, acting for the Comptroller General, decided to insert in the Applicants' Specification a reference in the prescribed form to Specification No. 10,925 of 1904 unless the Applicants' Specification were suitably amended. The Applicants appealed. 30 A. G. Bloxam appeared as agent for the Appellants, and the Chief Examiner appeared in support of his decision. Bloxam contended that the date which would be granted as the date of the Applicants' Patent, viz., the 13th of August 1904, ought to be regarded as the date of the application for the Patent in this country, and that accordingly a 35 reference to Specification No. 10,925 of 1904, which was not published until the 11th of May 1905, ought not to be inserted in the Applicants' Specification. A decision to the contrary would derogate from the right which a foreign applicant has under Section 103 of the Patents &c. Act, 1883 (as amended by the Patents, &c. Act, 1901) to delay making his application here for 12 months from 40 the date of his foreign application. The Chief Examiner contended that the date on which the Applicants filed their application in this country ought to be regarded as the date of that application. R In the Matter of the Deutsche Gold & Silber-Scheide Anstalt vorm. Sir W. ROBSON S.G.-I think I appreciate all the points which Mr. Bloxam has put to me, and the case is now very clear. An application for a Patent in relation to the subject-matter of the present Applicants' Patent was made on the 12th of May 1904, the date and description being No. 10,925 of 1904. On the 13th of August 1904 the Applicants-the present Appellants-lodged in Germany 5 an application for a Patent upon which they took no steps in England until the 4th of August 1995, when they made their application to the English Patent Office. But in the meantime the Patentee of the Patent No. 10,925 had filed his Complete Specification, which was accepted and laid open to public inspection on the 11th of May 1905; and when the Examiner came to make his investigation 10 under the Patents Act 1902 into the Appellants' application, which, of course, he could not make until the application had been filed in England, on the 4th of August 1905, he discovered the Complete Specification in relation to the same subject-matter, which had been published, as I have said, on the 11th of May of that year following the Provisional Specification, which was long antecedent in 15 date to the present Appellants' application either in England or abroad. The Examiner could not avoid accepting the Complete Specification on the antecedent English application of the 12th of May 1904, and he, therefore, treated that, and I think quite properly, as being a publication antecedent to the application made to the English Patent Office by the present Appellants. 20 It 30 The sections which relate to the matter are few, and I think are fairly simple. First of all by Subsection 1 of Section 1 of the Patents Act of 1902 the Examiner's duty is described. Under that subsection where an application for a Patent has been made the Examiner is to make an investigation for the purpose of ascertaining whether the invention claimed has been wholly or in 25 part described in any Specification published before the date of the application. Now what is meant there by the date of the application? Mr. Bloxam says that it means, in relation to the facts of the present case, the 13th of August 1904, that is to say the date when the Appellants lodged their application in Germany. But it cannot mean anything of the kind. must mean the date of the application to the English Patent Office. That is made perfectly clear by Section 5, Subsection 1, of the Act of 1883, which states that the application "must be left or sent by post to the "Patent Office in the prescribed manner"; so that the word "application " which is used in this section obviously means the application to the English 35 Patent Office. What was the Examiner to do? He was bound to investigate as on that date to search for any prior Specification, and he discovered, as I have said, this Specification, No. 10,925, and, finding it very closely similar to the present Appellants' he decided to insert a reference. He said that in his opinion the Appellants' Specification differed from the Specification cited only 40 in a slight modification of the process, and one which in his opinion justified a reference. Why should not a reference be made? Mr. Bloxam's contention was that, on the true construction of the Section, his client's application was of prior date to the English application. I think not. The English Patentee was first both with his Provisional Specification and with his Complete Specification, 45 and I think the Examiner's action has been correct. Mr. Bloxam raises a great many points of law as to what might happen in certain hypothetical cases, but those hypothetical cases are not this case, and I think, therefore, that the decision must be affirmed. |