In the Matter of an Application to Register a Trade Mark by been caused. But I put the case much higher than that. I cannot see why we should refuse a small trader the privilege of putting his label, which he has an unchallenged right to use in his trade, upon the Register, and thereby give him the convenient remedies for the defence of the label which arise from its being 5 registered. In addition, its being registered gives him the right to object to the registration of other Trade Marks which would cause confusion as compared with it. These are two rights which, although they are not ex debito justitiæ, give to an applicant the rights which the Legislature means a trader to possess in defence of those things which he uses as marks of origin in a lawful trade. 10 I therefore see no reason why we should refuse the registration of this label. Then a secondary point was raised of a totally different character, namely, that we ought to refuse registration because the Respondents have improperly spoken of this label as being a registered label in their Price Lists. Had they done so in the label itself it would, to my mind, have, been a much more serious 15 objection. I do not treat as wholly trivial the fact that they have spoken of it as being registered in their Price Lists, but when I come to look at the evidence with regard to that I find that the man, who was directly responsible for the statement being put in the Price List, said that he thought when he put it there it was rightly put there, and that it was a 20 mistake on his part, and I find evidence that the directors of the Company were ignorant that it had been put there, and that, as soon as their attention was called to it, they immediately had it removed. Under these circumstances I see no sufficient cause for our depriving the Applicants for registration of the privilege which the Legislature intended them to have with regard to their 25 legitimate trade. BUCKLEY L.J.-I am of the same opinion. I will only add a few words upon the principal point of the case. The label which the Belfast firm seek to register does not contain the word "Kinahan's," but they intend to fill up the blank which they have left in the label with the word "Kinahan's." That is 30 not in dispute between the parties. Upon the authority of Christiansen's case we ought under those circumstances to deal with the case, not upon the mere form of the label, but, as in Christiansen's case, upon the label as it would probably be used in the trade, or as in this case confessedly it would be used in the trade. The question is therefore whether the Belfast firm are entitled to 35 register a Trade Mark which, it is said, will contain the words "Kinahan's V.O. "Whisky." Two things are proved as a matter of fact that this is "Kinahan's "Whisky" in the sense that gentlemen of that name have for many years past— fifty years and upwards-carried on the business, and that the persons who now carry on the business are named Kinahan. That is a perfectly true representa40 tion so far as that is concerned, and it is also proved that, at least as early as the year 1867 when a Price List is proved, they were calling it "Kinahan's V.O. "Whisky," and Mr. John Kinahan speaks from his personal knowledge from the year 1882 of "Kinahan's V.O. Whisky" being sold. The former of those times is 40 years and the latter 25 years. Then it is further proved in 45 certain proceedings that in 1891 and 1893 the Belfast firm were carrying on business in " Kinahan's Whisky," and that there was a dispute between them and their present opponents as to their rights in respect of that name. The facts are therefore that for years past "Kinahan's V.O. Whisky" has been honestly sold upon the market as being that which it was, the particular 50 whisky made by people named Kinahan. Then it is not in dispute that over a certain area-I agree a small areathere was a concurrent honest trade by both the Appellants and Respondents. That comes out upon the Appellants' own evidence. They say they sell all the world over. I presume they do; but they add, which is the In the Matter of an Application to Register a Trade Mark by point, "and we sell in Belfast," which is where the Respondents sell. So that there were the two parties in Belfast carrying on concurrently a trade, both of them speaking of their whisky as "Kinahan's Whisky." There is no question but that the Belfast firm can and are entitled to do that. They are not entitled of course to pass themselves off as being the Dublin firm. No question as to 5 that arises in this case. The only other point I want to say a word or two on is this-in Mr. Cutler's argument in particular he advanced this proposition. He said, "I admit that I cannot object to their using their unregistered labels in "the future as they have used them in the past, but I object to their obtaining a registration which will give them a right to go and use that label somewhere 10 "else." It appears to me that this is a contention which is not capable of being supported. The registration of a Trade Mark does not confer any right at all of the description there pointed to, but it does confer a right, and the only right is the right to prevent anybody else from using that Trade Mark as a mark for their goods, but it does not give the registered owner of the Trade 15 Mark any right to use that Trade Mark if the Trade Mark would deceive. I conceive that if at the date when application is made to register a Trade Mark there is no ground of objection upon the footing that it will be calculated to deceive, and if subsequently by alterations in the character of the business of the two parties respectively the use of the Trade Mark will be calculated to deceive 20 and a passing-off action were brought by one party against the other, it would be no defence at all on the part of the owner of the registered Trade Mark to say— "Deception or no deception I am entitled to do it because that is my registered "Trade Mark." That could not be advanced for a moment. In other words, the registration of a Trade Mark does not confer any right to do that which could 25 not have been done irrespective of the Trade Mark, in the sense of doing any acts which would be competition in business. The only right which it confers is a right to restrain others from using that Trade Mark. It seems to me, to put the Appellants' case at its highest, that they are really seeking to prevent registration, not because the Trade Mark is in any way 30 dishonest, or will deceive, but because they say that, when registered, it will give some other right. I think, therefore, this appeal fails. Hare's Trade Mark. IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION. Before MR. JUSTICE SWINFEN EADY. March 15th, 1907. IN THE MATTER OF THE TRADE MARK OF CHARLES BOWLES HARE. 5 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 1901 a Trade Mark (No. 237,171), consisting of the word "Rainbow" and a device, was registered by Charles Bowles Hare, trading as John Hare & Co., 10 oil and colour manufacturer, for all goods included in Class 1, but not including mineral dyes, and not including any goods of a like kind to mineral dyes. On the 28th of February 1907 notice was given of a Motion by George Nelson Dale & Co. Ld. that the Register of Trade Marks might be rectified by limiting the registration of Trade Mark No. 237,171 so as to exclude from the goods for 15 which the same had been registered photographic dry plates and films and all goods of a like kind in Class 1. 20 The notice was served upon C. B. Hare and the Comptroller-General. The Motion came on for hearing before Mr. Justice SWINFEN EADY on the 15th of March 1907, affidavits having been filed on behalf of the Applicants. Waggett (instructed by Campbell, Baird, and Perkins) appeared for the Applicants; Ernest C. Clay (instructed by Whites & Co.) appeared for the Respondent. The Comptroller-General did not appear by Counsel. I ask that the Waggett. The Motion is not opposed on the merits, but I understand that Mr. Clay has some suggestion to make about the costs. 25 Respondent pay the costs of the Motion. The case is this. Dale & Co. Ld. have for many years past made photographic dry plates that have been called "Rainbow" plates, and they have acquired a great reputation. At the end of last year they applied to register the name "Rainbow" for photographic plates. The Registrar pointed out to them that Hare was 30 registered for the whole of Class 1, in which photographic plates come, with the exception of mineral dyes, and that therefore, without Hare's consent or without some rectification of the registration, he could not put "Rainbow" on the Hare's Trade Mark. Register for photographic plates. My clients thereupon called attention to the objections of the Registrar and asked Hare whether he would consent to limit his registration and he refused. [SWINFEN EADY J.-Had he traded in these goods ?] Never. Our case is that, except for paints, he had never used the word "Rainbow" at all, and that he has never dealt in photographic goods 5 of any sort. So, in the way that a great many other traders have done, he had secured the whole Class and kept other people out. As long ago as the 30th of October his consent was asked for and it was refused. Correspondence went on down to December, and at last he was told that the Registrar had written to the Applicants a letter saying that he could do nothing for them unless they 10 applied to rectify the Register. So they have done so. Clay. The only reason the Respondent refused to give the consent, that was asked, was that he was advised that by doing so he would open the door to giving other people consents and that he would not be able to refuse to do so; that would be to make the Trade Mark common to other traders. The 15 Applicants have been using the word "Rainbow" for their plates for six or seven years and the Respondent never objected to their doing so. Now suddenly they come to the conclusion that they want to register, and I contend that, if they want to do so, they ought to pay the costs. SWINFEN EADY J.-I think the Applicants are clearly entitled to costs. An Order for rectification of the Register in the terms of the Notice of Motion was made, and the Respondent was ordered to pay the costs. Notice of the rectification was ordered to be given to the Registrar of Trade Marks by leaving an Office Copy of the Order at the Patent Office. 20 Hutchison, Main & Co. Ld. v. St. Mungo Manufacturing Company. IN THE COURT OF SESSION IN SCOTLAND.-OUTER HOUSE. Before LORD SALVESEN. December 8th, 19th, and 20th, 1906; January 22nd, February 20th, and 5 HUTCHISON, MAIN & Co. LD. v. ST. MUNGO MANUFACTURING COMPANY. Design.-New or original.-Infringement.-Obvious imitation. H. M. & Co. registered a Design for a golf ball, showing a brambled ball having round each of the six poles, formed by axes at right angles through the centre of the ball, a small circular smooth raised band containing seven brambles 10 and having lettering incised on it. The brambles were arranged in concentric circles round the six poles. Concentric brambling round six poles and name circles round two poles had been previously employed, but never name circles round six poles. The M. M. Company manufactured a ball having six poles at the extremities of axes at right angles through the centre of the ball, and 15 concentric brambling round these poles. The first circle of brambles round each pole was omitted, and on the space thus left was raised lettering. In an action for infringement of copyright in H. M. & Co.'s Design, Held, that H. M. & Co.'s Design was novel; that it was not necessary that it should be novel and original, and that it was validly registered. Held, 20 further, that an essential feature of the Design was the six circular raised bands, and that H. M. & Co. had not acquired a monopoly of six similar distinctive and equidistant marks; and that the M. M. Company had not infringed H., M. & Co.'s Design. This was an action of suspension and interdict at the instance of Hutchison, 25 Main & Co. Ld., having their registered office at Springvale Works, Cowlairs, Glasgow, india rubber, gutta percha, and golf ball manufacturers, owners and makers of the "Kite" golf ball, Complainers, against the St. Mungo Manufacturing Company, india rubber, gutta percha, and golf ball manufacturers, Broomloan Road, Govan, and J. C. Robertson, M. Inglis, and A. C. Wood, the 30 individual partners of the said firm, as such partners and as individuals, owners and makers of the "Colonel " golf ball, Respondents. Y |