In re Gestetner's Trade Mark.

Fairholme & Co., the Respondent's predecessors, had registered on the 25th of February 1882 a Trade Mark No. 27,726, consisting of the device of a coggedwheel over the word "Cyclostyle" for Stationery and Printing in Class 39, and sold a large number of goods under that mark as selling agents for the Respondent Gestetner, who had invented the duplicating apparatus for which it 5 was used, although the actual word "Cyclostyle was first suggested by Walter Binns, then in the service of Fairholme & Co. The essential part of the apparatus was a wheel-pointed pen, used to perforate waxed stencil paper, and it was to this pen that the name "Cyclostyle" was primarily applied, although it was subsequently used to denote the ink, paper, and other apparatus.

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The wheel-pointed pen was manufactured by the Respondent under two Letters Patent, viz., No. 2450 of 1881 and No. 11,832 of 1888, and the word Cyclostyle was used by him with the words " pens and "wheel" in at least nine places in the title and Complete Specification of the second Letters Patent.

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In an affidavit sworn by the Respondent on the 18th of March 1904, in an action of "Gestetner v. Cyclostyle Company and Others-1904, G. No. 579," he himself stated that the pen the subject-matter of the Letters Patent No. 2450 of 1881 he determined to call the "Cyclostyle," adding that "Walter Binns suggested to me that the word 'Cyclostyle' would be a very suitable word by 20 "which to describe my new invention, the word being derived from the Greek "kuklos,' a wheel, and 'stylus' or style, otherwise a wheel pen, and the pens "the subject-matter of my last named invention have always since been known "as Cyclostyles." " The affidavit contained numerous other references to

"Cyclostyle pens."

It appeared that on the 26th of September 1881 the Respondent had entered into an Agreement with Fairholme & Co. whereby he made over his invention for the "Cyclostyle" pen, retaining in certain circumstances the right to have the Letters Patent restored to him.

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From about 1882 onwards Fairholme & Co. used the word "Cyclostyle" not 30 only in connection with the pen itself but in connection with everything which they sold relating to it-ink, paper, and boxes of duplicating apparatus, including a device for recording writing by a type-writer and producing duplicates in which the pen was not included.

The Motion was heard by Mr. Justice NEVILLE on the 10th and 11th of 35 July 1907.

Jenkins K.C. and L. B. Sebastian (instructed by C. Urquhart Fisher) appeared for the Applicants; T. Terrell K.C. and Walter K.C. (instructed by Pritchard, Englefield & Co.) appeared for the Respondent.

Jenkins K.C. for the Applicants.-The word "Cyclostyle" is part of the 40 English language. It is the name applied to an article by the inventor of it, whom the law does not allow to monopolise the name either before or after the expiry of his Letters Patent. This is an entry "wrongly remaining on the "Register" within the meaning of Section 35 of the Trade Marks Act 1905. The word is descriptive of the goods (In re Magnolia Metal Company 45 14 R.P.C. 621; L.R. (1897) 2 Ch. 385; Linoleum Manufacturing Company v. Nairn L.R. 7 Ch. D. 834; and Braham v. Bustard 1 H. & M. 447). The Respondent has himself described the article by the name, which is also used descriptively in dictionaries-e.g., Encyclopædia Britannica, 10th edit., vol. 24, page 88; Century Dictionary, 1899 edit., vol. 2, sub nom. The word should 50 never have been registered as a Trade Mark at all; in any case it is liable to be struck off now. It is not an invented word within the 9th Section of the Act of 1905. Section 36 of the Act speaks of a Trade Mark "which under this "Act is a registrable Trade Mark" and uses the present tense, thus meaning

* Çf. In re Neostyle Manufacturing Company Ld.'s Trade Mark (20 R,P.C, 803).

In re Gestetner's Trade Mark.

what is registrable to-day. In Kodak Ld. v. London Stereoscopic and Photographic Company Ld. (20 R.P.C. 337) it was decided that the word "Kodak" was the name of the origin of the article and not of the article itself.

Sebastian followed for the Applicants.-" Cyclostyle" is a word not now and 5 never previously registrable as a Trade Mark. It has been descriptive for nearly a quarter of a century of the goods to which it has been attached. The name has been given to a patented article by the inventor of it; if used for anything else than the pen, it has been a cheating of the public.

T. Terrell K.C. for the Respondent.-A Trade Mark depends upon dedication 10 by identification of the article and not upon registration. If a man has said "This is my Trade Mark," he is entitled to it as from that time, whether he registers it then or at a subsequent date. In Re Batt & Co. (L.R. (1898) 2 Ch. 432; 15 R.P.C. 534) and Re Apollinaris Company's Trade Marks (8 R.P.C. 137, 154; L.R. (1891) 2 Ch. 186, 213), the Trade Marks were taken off 15 the Register on the ground that they were put on for the purpose of stopping trade. The registration in 1882 of the word "Cyclostyle" with a coggedwheel device above it is evidence that it is a Trade Mark dedicated to the trade, and not a name given to the article. Section 36 of the Act of 1905 deals with the question as to the registrability of the word and is wide in its 20 language.

Walter K.C. followed for the Respondent.-The word was registered not by an inventor but by a trader, so that the " Magnolia" and "Linoleum cases do not apply. When registered it was at once applied to paper, ink, and pens, so there can be no question of it having been used descriptively. The fact that 25 registration does not take place till after the invention does not the less make it a fancy or invented word for the purposes of the Act (Leonard and Ellis v. Wells & Co. L.R. 26 C.D. 288). Section 36 of the new Act dates back to the original registration. The word "Tabloid" was only applied originally to the small tablet but later on to other things (Burroughs, Wellcome & Co.'s Trade 30 Marks 21 R.P.C. 69, 217; L.R. (1904) 1 Ch. 736; see also Re Bovril 13 R.P.C. 382; L.R. (1896) 2 Ch. 600, and Re Linotype Company's Application 17 R.P.C. 380; L.R. (1900) 2 Ch. 238). The Applicants are not aggrieved; they only want to sell paper for the Rotary Cyclostyle, and not pens or paper for the pens. Section 41 of the Act of 1905 makes a Trade Mark unassailable after 35 seven years.

Jenkins K.C. in reply.-The saving words of Section 36 were intended to meet the point raised in the "Apollinaris" case; it means that marks which could be registered now are saved, not that this Act is to be supposed to have been in force in 1884. The date of registration is the date when the mark must be 40 valid (Bourne v. Swan and Edgar Ld. (20 R.P.C. 105; L.R. (1903) 1 Ch. 211). "Cyclostyle" is no more a fancy word than "Triticumina" in Meaby v. Triticine Ld. (15 R.P.C. 1). It is of the essence of a Trade Mark that it should distinguish the goods from those of others; with a patented article there are no other goods to be distinguished. "Cyclostyle" does not satisfy the requirements of 45 the definition of Trade Mark given in Section 3 of the Act of 1905. The Trade Mark of 1882 was registered under Section 10 of the old Trade Marks Act of 1875. [He was stopped by the Court.]

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NEVILLE J.-In this case the question is whether the mark "Cyclostyle," registered on 27th of May 1884, ought to remain upon the Register.

I have, in the first instance, to consider whether it was properly registered at the date of registration. Of course one has to see what were the facts connected with the word "Cyclostyle," at the time of registration; and I think it is quite clear that at that date, and for several years before, "Cyclostyle" was the name of an invention patented in 1881 by Mr. Gestetner, the present Respondent. 55 On the evidence of the witnesses I should have been compelled to come to that conclusion, although, inasmuch as this is a case in which the mark has remained on the Register from 1884 until the present time, I think that where

In re Gestetner's Trade Mark.

any matter is left for the inference of the Court, that inference ought to be drawn in favour of the owner of the mark; and I think it is not going too far to say that the Courts have laid down that a mark which has been used for 20 years and upwards should, at all events, be benevolently considered in considering whether it is a good mark or a bad one. But on the evidence of the 5 witnesses itself, I think I should have been compelled to come to the conclusion that "Cyclostyle" was the name of an invention. Mr. Binns is the person who originally suggested the name. He says he created the name, or invented it, and he speaks of the pen as the actual cyclostyle. He made, later on, the ink and the paper, but at one time he only made the pen; and I think it is quite 10 clear that in his mind "Cyclostyle" had reference to the invention of Mr. Gestetner. You find the same thing in Mr. Klaber's evidence, for he says that he was the first person to sell the invention in this country. He was asked"What was the paper and ink described as?" and he said, "Cyclostyle paper' " and "Cyclostyle ink' and sometimes 'ink for the Cyclostyle.""" So that clearly 15 in his mind the Cyclostyle was an article which he knew by that name. All doubt is removed upon that point, I think, by reference to the affidavit which Mr. Gestetner made in the year 1904, for there he says, in paragraph 7-" The pen the subject-matter of such last named invention I determined to call the "Cyclostyle," and on the 26th September 1881, he entered into an Agreement 20 with Messrs. Fairholme & Co., under which he agreed to make over to Messrs. Fairholme & Co. his invention for a cog-wheel pen to be called the "Cyclostyle." Under the terms of that Agreement, in certain circumstances he had the right to have the Letters Patent restored to him; so that he had not entirely divested himself of interest in the invention by virtue of that Agreement. It appears by 25 his affidavit that that Agreement was subsequently carried into effect by the execution of an assignment by him; but I think that that evidence is quite conclusive on the question whether "Cyclostyle" was or was not the name of Mr. Gestetner's patented invention. I may mention in passing that in 1888 he invented improvements upon what in his Specification he refers to as "Cyclo- 30 "style Pens" or the "The Cyclostyle Pen."

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There is, I think, no doubt that from 1884 onwards, and possibly from 1882 onwards, Messrs. Fairholme & Co. had used the word "Cyclostyle " not only in connection with the pen itself, but in connection with everything which they sold which related to it-the ink, the paper, the box in which it was sold, and 35 so forth. Ultimately a device for recording writing by a typewriter and producing duplicates by a similar process to that which was used in connection with the Cyclostyle pen was invented, and after that date several kinds of apparatus, which were sold by Messrs. Fairholme & Co., were marked with the mark "Cyclostyle," although with regard to one of them, at all events, the 40 cyclostyle pen, it did not, or, at all events, did not necessarily, come into operation at all.

The first question, therefore, which it seems to me I have to consider, inasmuch as the mark was registered under the Act of 1883, is whether, under Section 64 of that Act, it was a good registration. I need not refer to the 45 Section beyond saying that the question there is whether it was a fancy word not in common use. In my opinion a word, although invented, which has already been applied as a name to a patented invention, cannot be a fancy word within the meaning of the Statute. I think in the present case the word was descriptive; and for two reasons. In order to satisfy the words of the Act of 50 1883 it has long been held that a fancy word must be non-descriptive. Here, I think it was both descriptive inasmuch as it was the name of a particular article, and descriptive inasmuch as it did give, although in languages other than English, a combined word which does describe the article in question. I think that from the name you would expect the article in question to exhibit the 55 attributes of a circle and to exhibit the attributes of a pen; and I think that the article does so. I do not think it proves that a word is not descriptive because

In re Gestetner's Trade Mark.

from the description alone you could not possibly either make the article or form an absolute and definite conclusion as to what shape or character the article would take. I come, therefore, to the conclusion that in 1884, at the date of registration, the word was not a fancy word. I think that what I have said with 5 regard to 1884 applies with equal force to 1882 when Messrs. Fairholme & Co. registered Cyclostyle" as a word added to a distinctive device which was a representation of the small wheel used at the tip of the pen. I may also say that I do not think that the use of that word, as an added word to the Trade Mark in 1882, in any way made the word distinctive of Messrs. Fairholme & 10 Co.'s trade so as to put them in a better position in 1884 than if that registration had not been effected.

That being so, it seems to me that the next question I have to consider is, whether, under the Act of 1905, the word in question was an invented word, because if the word was an invented word then I have to apply Section 36 of 15 the Act, which provides that-"No Trade Mark which is upon the Register at "the commencement of this Act, and which under the Act is a registrable Trade "Mark shall be removed from the Register on the ground that it was not regis"trable under the Acts in force at the date of its registration." Before I can properly consider that question, I have to arrive at a conclusion as to the 20 meaning of Section 36, that is whether it means that a mark which at the date of its registration would have been properly registered had the Act of 1905 applied, or whether it means that a mark which would be at the time of the decision registrable under the Act of 1905, is to be left upon the Register, and not, as was done in the Apollinaris case, removed, although the result might be that 25 upon taking the necessary steps the mark might be restored to the Register.

I do not think that so wide a construction as was contended for on behalf of the Respondent can be put upon Section 36. I think that the Legislature would have used words of another character had it intended to validate the registration under former Acts of all marks which fulfilled the conditions provided 30 by the Act of 1905, and I think that what appears to me to be the strictly grammatical construction of the Section is the true one, and that the present tense, “which under this Act is a registrable Trade Mark," was advisedly used, the question to be solved being, not whether the mark would have been registrable under the provisions of the Act of 1905, had it been in operation at the 35 date of registration, but whether, supposing the mark were removed from the Register, it would be such a mark as could be registered again under the Act of 1905. If that is so, what I have to consider is whether the word "Cyclostyle" is at the present time an invented word capable of registration under the Act. It seems to me that, under the Act of 1905 itself, a word which has been created 40 and applied as the name of a patented article is not within the purview of the Act. I think that that is so upon one or both of two grounds. First of all, that in such a case it is not "invented" within the meaning of Section 9; and, secondly, that it does not come within the definition of "Trade Mark" in Section 3 of the Act, inasmuch as it appears to me impossible that the name of a 45 patented article can be distinctive of the trade of a particular individual, and I think it would not be used or be proposed to be used in connection with goods for the purpose of indicating that they are the goods of the proprietor of such Trade Mark, for I think it would be impossible that such a word could fulfil any such purpose.

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I come, therefore, to the conclusion that the mark must be removed from the Register, and that the Applicants must have the costs.

In the Matter of Knapton's Trade Mark.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE WARRINGTON.

May 10th and June 12th, 1907.

IN THE MATTER OF KNAPTON'S TRADE MARK.

Trade Mark.-Motion to rectify the Register.-Order to strike off Mark.- 5 Costs.-Trade Marks Act 1905, Section 35.

In 1889 the words "Sugar Soap " were registered under No. 92,692 as a Trade Mark for "A detergent powder or substance included in Class 47" by Frank Lyon. The user claimed was for ten years before the 30th of August 1875. The Mark was transferred to Abel Knapton, who became the registered pro- 10 prietor thereof. Knapton sold his business to the London and Hull Soap Works Ld., who thereby became the beneficial owners of the Mark. In 1907 notice of Motion was given by Edward Cook & Co. Ld. to rectify the Register of Trade Marks by expunging the Mark. The Respondents to the Motion were the London and Hull Soap Works Ld. and Knapton.

The Motion came before Mr. Justice WARRINGTON on the 10th of May 1907. Sebastian (instructed by Clapham, Fitch & Co.) appeared for Edward Cook & Co.; Ward Coldridge (instructed by Corbould, Ellis and Mitchell) appeared for the London and Hull Soap Works Ld.; and Ashton Cross (instructed by E. C. Barrett) appeared for Knapton.

Ward Coldridge stated that the London and Hull Soap Works Ld. did not resist the Motion.

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Ashton Cross, for Knapton, asked that it might go into the witness list. WARRINGTON J. adjourned the Motion till the 12th of June, to be heard with witnesses; but as regards the London and Hull Soap Works Ld., as they 25 submitted to have the Mark struck off the Register, he ordered them to pay the costs of the Motion up to and including the 10th of May, and stayed further proceedings against them.

On the 12th of July the Motion came on again.

Sebastian (instructed as above) appeared for Edward Cook & Co. Ld., but 30 Knapton did not appear.

Sebastian stated that Knapton had intimated that he did not intend now to be represented or to oppose. He called the attention of the Court to the affidavits which had been filed, which went to prove that the term " Sugar "Soap" was common to the trade, and he asked for an Order for rectification 35 and for costs.

WARRINGTON J. made the Order asked.