In the Matter of an Application to Register a Trade Mark by be refused. The Registrar decided in favour of the Applicants on all three grounds and allowed the application. The Opponents appealed. The appeal was referred to the Court. Held, that the term "Kinahan's Whisky" had no secondary meaning signifying the Opponents' whisky only, and that the proposed Trade Mark 5 was not calculated to deceive; and also that the conclusions of the Registrar on the other two points were sound. The appeal was dismissed with costs. This was an appeal from the decision of the Registrar dated the 5th of December 1905, whereby he allowed, in favour of the Applicants, Lyle and Kinahan Ld., of 51 Donegall Place, Belfast, Ireland, the registration of a Trade 10 Mark (No. 264,958) to proceed. The Appellants were Kinahan & Co. Ld., of Carlisle Building, Dublin, Ireland, and Guildford Street, York Road, Lambeth, Surrey, who had opposed the application. Both parties were whisky merchants and distillers. The Trade Mark which was applied for consisted of the following label : 15 It was sought to be registered in Class 43, with a statement that "the essential "particular of the Trade Mark is the combination of devices, and the Applicants "disclaim any right to the exclusive use of the added matter except in so far "as it consists of their own name." The Applicants were a Company incorporated in 1888 to take over the 20 business which had been carried on by the firm of Lyle & Kinahan from prior to 1850. The present chairman of the Board of Directors was John Kinahan, a son of one of the founders of the firm, who had been in the business since 1882. The Applicants first began to use the label in question in these proceedings in 1890, the word "Kinahan's" appearing in the circular band in front of the 25 words "V.O. Whisky," and a statement that "To counterfeit this label is In the Matter of an Application to Register a Trade Mark by "forgery" being printed on the top edge of it. In 1890, as appears from the report of Kinahan & Co. v. Lyle & Kinahan in 8 R.P.C. 18, the present Opponents succeeded in removing from the Register of Trade Marks Trade Mark No. 14,636, consisting of a label with the words "Kinahan's V.O. 5" Whisky," followed by the signature "Lyle & Lyle & Kinahan," upon the ground that it was improperly registered. Early in 1904 the Applicants commenced to advertise their present label, with the word "Kinahan's," in their price-lists, together with a statement that the same was their registered Trade Mark, which was a misrepresentation as applied to that label; they 10 continued ever since 1890 to sell whisky under this label, which, on the 16th of July 1904, they applied to have registered in the form above depicted. Their sales of the blend sold under this label had not been large, averaging only about 3300 gallons a year in seven years. Of this amount about 200 gallons was sold "in bulk," the rest in bottles. The sales were mainly 15 confined to the Province of Ulster, but there had for several years been a few trade and private customers in the rest of Ireland, and a few in England. It was stated by W. Nash, the director responsible for the untrue statement as to the label being registered, that the insertion of the misrepresentation was made by inadvertence and without any intention to mislead, and that it was 20 removed as soon as the Company's attention was drawn to it. for was The Opponents manufactured their whisky in Ireland exclusively, but had many years carried on, both in Dublin and in London, a business which far larger than that of the Applicants. George Percy Daniel Kinahan, who gave evidence, had originally come over to the London Office in 1878, and since that time been a manager or director. The Opponents sold some seven or eight brands of whisky the best known being the "L. L." whisky, but they claimed that all their whisky, whatever the particular brand might be, had always been known and sold as "Kinahan's Whisky." The grounds on which their Notice of Opposition was based will appear from the decision of 30 the Registrar which is stated below. 25 had The Registrar heard the opposed application on the 25th of October 1905, and the 5th of December 1905 gave his decision as follows:-"This is an application to register a label for whisky and the opposition, curiously enough, on 66 "is 66 66 66 66 not directed to anything that appears on the label itself, but it is said that 35" the label in use is calculated to deceive, because in the left-hand arc of the circle, on the label, there is a blank, which blank is in practice filled by the name 'Kinahan's' and it is alleged that when the label is used with the "word 'Kinahan's' in it, it is calculated to deceive, and is not entitled to registration on that account. On the part of the Applicants, it is not denied 40" that the label is so used and will in the future be so used, and that I must consider the label as if such blank were so filled up and the reason given, and "I have no doubt it is the right one, for the omission is, that the disclaimer of added matter which is necessary might be thought to extend to it. There is one matter which I may deal with here and dispose of it at once, because I think 45 "it has no bearing upon the present case. In the year 1890 there was upon the "Register, a mark, No. 14,636, which was the property of the Applicants' predecessors in business, and in such registration it was asserted that the mark "was old.' In that year, predecessors of the Opponents took steps to have it expunged, and an Order to that effect was eventually made. That Order was "by consent, and no Order was made as to costs against the Respondents. "is said on the one side that the mark was expunged because it was calculated deceive. It is said upon the other side that the mark was expunged 50 66 55 35 "to 6 It "because it was not old. No particulars of the evidence are before me, and no grounds for the Motion are stated in the notice of Motion, therefore I do not see that the expunging of the mark has any bearing upon this case. Of 66 66 66 66 66 66 In the Matter of an Application to Register a Trade Mark by "course if the Court had solemnly decided that the mark then in question was "calculated to deceive, that decision would have had a good deal of bearing upon the present case, but seeing that the Order was a consent Order I do not regard it as relevant to the present case either one way or the other. But "there is one thing which does seem to me very material, and that is this. I 5 "have a declaration from Mr. John Kinahan, on the part of the Applicants, "who say this:-In the year 1858 his predecessor started to make and sell "Kinahan's very old or Kinahan's V.O. whisky, and there appears to be "evidence of an extensive and a continuous user of this, from 1866 to the "present time, and the label in question, under No. 14,636, was in substance, 10. "if not technically, an old label, for it had been varied. At the time when "the Opponents' predecessors sought to have that label expunged they com"menced an action against the Applicants to restrain the use of that label. "For some reason, which does not seem material, that action did not proceed, "and the Applicants have been since using a label, like 14,636, or substantially 15 "the same since that date, namely, 1891, notwithstanding that the label 14,636 was expunged from the Register. It appears to me that that state of affairs puts the Opponents in a good deal of difficulty, for on their part there is no "denial of the continued use of that label or substantially the same label though the Register was rectified, all that Mr. G. P. D. Kinahan says is that 20 they did not consider it necessary to take any further legal proceedings to "restrain its use. It seems to me that the Opponents having accepted that "state of affairs cannot now be heard to complain, for I think that if label "14,636 is not calculated to deceive it follows that the present label is not "calculated to deceive, and that as the Opponents are not in a position now to 25 "challenge the use of the label 14,636 they cannot object to the registration of "the present label. I do not forget also in this connection a case which was "before me in 1893, which was an opposition by the present Applicants to an "application of the present Opponents. The case went to the Court and is in "10 R.P.C. 393. I need not go into the circumstances of the case further than 30 "to say that throughout it, the present Applicants asserted their old and "continued use of the name 'Kinahan's' and strenuously insisted on their "title to use it, without hindrance from the present Opponents, yet in the face "of such a challenge the Opponents have done nothing for upwards of 10 years. "But I put my decision upon much broader grounds. The Opponents set out 35 "to prove that Kinahan's Whisky' means their whisky and nobody else's. "On the evidence I think they have failed. It is true that a large number of persons have told me that if they were asked for 'Kinahan's Whisky,' they "would think the Opponents' whisky was intended. I have also evidence that "people ask for Kinahan's Whisky' and expect to get the Opponents' whisky. 40 "On the other hand, I have a quantity of evidence from persons who, asking for "Kinahan's Whisky', expect to get the Applicants' whisky, and also from persons "who if asked for Kinahan's Whisky' would supply the Applicants' whisky. "The truth is that both parties have equal rights as old users to the use of the name 'Kinahan.' One is known as Kinahan's V.O. Whisky' and the other 45 as' Kinahan's L.L. Whisky.' These are broadly the facts. No doubt the "Opponents have sometims dropped the 'L.L.,' though I do not observe that "the Applicants have anywhere dropped the 'V.O,.' which letters so far as I "have seen are not used by the Opponents. The result seems to be that "founded on their old user both parties have equal rights in the name 50 "Kinahan's' and the result is that neither of them can complain of the other. "In these circumstances on the merits the Opponents fail and the mark must "be registered, but two points have arisen. One is made by the Notice of Opposition, and it is this that the Applicants have already in substance this "mark on the Register, and that to register this present mark will only be 55 66 66 66 5 In the Matter of an Application to Register a Trade Mark by "cum bering the Register within Players' case. It is suggested that the mark "71,721 is practically identical with this one. The claim made on the present application is to register a mark of which the essential particular is a com"bination of devices. Those devices nowhere appear in 71,721, which is a mark "of which the essential part appears to be a signature. Comparing the two ❝ marks, I cannot say that they are substantially identical nor do they I think "come within the rule in Players' case. This point in my judgment fails. "Then there is another point which is not raised by the Notice of Opposition. “It is said that the statement in the Catalogue of the Applicants which I have 10" before me is misleading as to their registration, and that they do not come "before me with clean hands. I am disposed to look with considerable 66 66 ་་ suspicion on applicants who make these misstatements and I think that persons who mistake their registered rights ought to have little consideration "shown them. The statement in the catalogue is, as has been pointed out, 15 most misleading. I have given the Applicants an opportunity of explaining "and they have explained. Mr. Nash has frankly taken on himself the whole "blame and has undertaken that no more of such statements shall go forth. In "the circumstances, having regard to his explanation, I am inclined to be "lenient and not on this ground refuse registration, but I hope in the future 20 "he and all other Trade Mark owners may be careful to settle such particulars "with their Trade Marks and with reference to the Certificates we issue so as "to get them accurate. What is registered appears from the Register. What "they think is registered is often quite a different thing, and they should remember that they are not entitled to put their own interpretation on the 25 "matter. The only thing, that they are entitled to say is registered, is the exact "thing that is on the Register, nothing else. The result is that both points are "resolved in the Applicants' favour. Registration will proceed but the mark "will not be placed on the Register for one month to enable the Opponents "to appeal if they are so advised, and if they do appeal will not be registered 30 “until that appeal is determined." "the The Opponents appealed and delivered the following "Case on Appeal" to the Board of Trade:-" 1. The Appellants Kinahan & Co. Ld. carry on at Car“lisle Building, Dublin, Ireland, and Guildford Street, York Road, Lambeth, "Surrey, and elsewhere, an old and very important business as whisky 35 "merchants and distillers. 2. The Appellants' whisky always has been and is "invariably sold as Kinahan's Whisky' all over the world and the term "Kinahan's Whisky' means the Appellants' whisky. 3. The Appellants are registered proprietors of certain Trade Marks, including No. 8683, regis"tered as of the 18th day of August 1876 as an old mark and advertised in the 40 "Trade Marks Journal' of the 10th day of January 1877 (No. 50) at page 67, "and No. 158,266 registered as of the 20th day of August 1891 as an old mark, "and advertised in the Trade Marks Journal' of the 10th day of February “1892 (No. 724) at page 121. Both of the said Trade Marks contain the said "distinctive words Kinahan's Whisky' and have been used for many years in 45 “connection with the Appellants' whisky and are well known both in the trade "and by the public. 4. The Respondents Lyle and Kinahan Ld. carry on a "similar business to the Appellants in Belfast and are applying for the "registration of the above-mentioned Trade Mark No. 264,958, which when as intended to be used and as in fact used, viz., with the name 50 "Kinahan's' introduced, is calculated to deceive purchasers and to injure the "Appellants in their business by causing the said Respondents' whisky sold "thereunder to be believed to be and to be passed off and sold as being the "Appellants' whisky. 5. By an Order of the High Court of Justice dated the 55 "used 6 Williams on the application of the Appellants another Trade Mark which had In the Matter of an Application to Register a Trade Mark by "been registered by the said Respondents under No. 14,636 was ordered to be "expunged from the Register with the said Respondents' consent. The said "mark was objected to by the Appellants on the ground of its containing the "said words' Kinahan's Whisky' and since it was expunged as aforesaid the "said Respondents have had no registered Trade Mark containing those words. 5 "Their present application is in effect an attempt to place on the Register a "mark substantially similar to the said Trade Mark so expunged except that "the name ‘Kinahan's' is left to be filled in afterwards. 6. The said Trade "Mark the subject of this appeal is in all material respects the same as the "Trade Mark No. 71,721 already registered by the said Respondents as of the 10 "17th day of January 1888 and advertised in the Trade Marks Journal' of the "25th day of April 1888 (No. 526) at page 530 with merely immaterial and "non-essential additions, and the Register ought not to be cumbered by the registration of the said Trade Mark. 7. It appeared in the course of the "Opposition, and it is the fact (although previously unknown to the Appellants) 15 "that the said Respondents have for several years past been in the habit of representing (contrary to the fact) that the said Trade Mark now sought to be "registered but with the name ' Kinahan's' filled in was their registered Trade "Mark in breach of the provisions of the Patents, Designs, and Trade Marks "Act, 1883, and so as to mislead and deceive the public and the said Trade 20 "Mark ought not now to be registered so as to condone the said offence and to "enable the said Respondents to continue to enjoy the advantages already "improperly obtained by them by means of their wrongful conduct aforesaid." The Board of Trade having referred the hearing of the appeal to the Court, each side gave notice to the other of their intention to cross-examine certain of 25 the witnesses who had made affidavits, it being agreed to take not more than seven trade witnesses on either side. 66 The appeal came on for hearing before Mr. Justice KEKEWICH on the 20th of November 1906. John Cutler K.C. and Sebastian (instructed by C. Urquhart Fisher) appeared 30 for the Opponents; P. O. Lawrence K.C. and Waggett (instructed by Campbell and Baird) appeared for the Applicants. John Cutler K.C. opened the appeal.-With reference to the proposed Trade Mark of the Applicants, the Court must regard it as actually used, viz. with the word "Kinahan's" in the blank space (Christiansen's Trade Mark, 3 R.P.C. 35 54; and Farrow's Trade Mark, 7 R.P.C. 260). The application is in effect an attempt to place on the Register the mark struck off in 1891. The Register must not be cumbered with marks closely resembling one another (Player's Trade Mark, 18 R.P.C. 65). The Opponents' whisky is known universally as "Kinahan's Whisky"; they admit that the Applicants have sold whisky as 40 "Kinahan's V.O. Whisky" for many years, and that they have long carried on business in the Belfast district, but the Opponents object to the Applicants being registered for a Trade Mark which when used, as is intended, and in England, will infallibly lead to the Applicants' whisky being passed off for the Opponents'. The applicant in such a case is in petitorio (Eno v. Dunn, 7 45 R.P.C. 311; L.R. 15 A.C. 252), and the onus is on him to prove his case; if the matter is in dubio registration should be refused. The Applicants here have not discharged the onus. A large body of evidence by affidavit was then read, the trade witnesses of the Opponents, who spoke as to the whisky of the Opponents being known as 50 "Kinahan's Whisky," coming from every part of England and many parts of Ireland. The affidavits filed on behalf of the Applicants included those of several deponents who spoke to sales to private customers in England of the Applicants' whisky. The Opponents' witnesses cross-examined on behalf of the Applicants included the above named G. P. D. Kinahan, and the following 55 |