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DIGEST OF
OF TRADE MARK

CASES.

APPLICATION FOR REGISTRATION. See REGISTRATION.

CONCURRENT USER.

1. Plaintiff, in trade name action, held entitled to succeed notwithstanding previous concurrent user by Defendant, which had ceased before action. DANIEL AND ARTER. WHITEHOUSE AND BRITTON, p. 134.

2. Alleged but not established. EDGE AND SONS, LD. v. GALLON AND SON, p. 689.

3." After a trade name is established in the market, user by others unknown "to the owner does not prejudice his rights," per BRUCE, J. EDGE AND SONS, LD. v. GALLON AND SON, p. 696.

COSTS. (See also PRACTICE, No. 2.)

1. Passing off action dismissed without costs on account of Defendants having kept back material matters. MEABY & Co., LD. v. TRITICINE, LD., AND OTHERS, p. 14.

2. Special order as to. LEVER BROTHERS, LD. v. BEDINGFIELD, p. 465. 3. There is no jurisdiction to order the Comptroller to pay the costs of successful appeal against a refusal to register. EASTMAN PHOTOGRAPHIC MATERIALS Co.'s APPLICATION, p. 487.

4. On a successful appeal to the House of Lords from a refusal by the Comptroller to register Trade Mark, which refusal had been upheld by KEKEWICH, J., and the Court of Appeal, the House intimated that the Crown ought to return the costs received in the Court of Appeal, but this intimation did not extend to the costs incurred before KEKEWICH, J. EASTMAN PHOTOGRAPHIC MATERIALS Co.'s APPLICATION, p. 488.

DECEPTION (PROBABILITY OF).

1. Discussed where no actual deception proved. MEABY & Co., LD. v. TRITICINE, LD., AND OTHERS, p. 13.

2. Use of the word "Kodak," in connection with cycles held calculated to deceive. EASTMAN PHOTOGRAPHIC MATERIALS Co., LD., AND ANOTHER V. THE JOHN GRIFFITH'S CYCLE CORPORATION, LD., AND THE KODAK CYCLE Co., LD., AND IN THE MATTER OF THE TRADE MARK, No. 207,006 (KODAK), p. 105.

3. Probability of, held not to have been established. CLARK v, SHARP, pp. 141, 268,

DESCRIPTIVE WORD.

See also TRADE NAME No. 1.

"Solio" when applied to photographic paper, held to be an invented word and not descriptive. EASTMAN PHOTOGRAPHIC MATERIALS Co.'s

APPLICATION, p. 476.

FANCY WORD.

"Triticumina" held not to be.-Action to restrain infringement of Trade Mark and passing off-Motion to rectify "Triticumina ”Fancy word.-Representations as to patents.-Alleged infringement. -"Triticine."-Action dismissed.-Mark struck off-Patents, &c. Act, 1883, Section 64 (1) (e). In March 1886, the Plaintiffs' predecessors in business registered the word "Triticumina" as a Trade Mark in Class 42, in respect of leaven and wheat-meal biscuits, bread, cakes, and other preparations from wheat. Patents were taken out in 1885 and 1886 for improvements in wheaten meal by the same persons. In 1891, this Trade Mark and these patents became vested in the Plaintiffs. In 1896, the Plaintiffs brought an action (1) for infringement of the said Trade Mark, and (2) alleged passing off by the Defendants of their goods as the Plaintiffs' by the use of the word "Triticine." The Defendants alleged that they had used the words "Triticine " before the invention of the word "Triticumina." They moved to expunge the Trade Mark from the Register on the grounds (1) that it was the name of a patented article; (2) that it was descriptive. The Plaintiffs had for some years sold "Triticumina" flour, "Triticumina" meal, "Triticumina" food, and other products in the name of which the word "Triti"cumina" occurred. It appeared that in certain advertisements the Plaintiffs had used the word "patent" in connection with these articles. The trial of the action and the hearing of the motion came on together.-Held, (1) that the word "Triticine" had been used by the Defendants' predecessors for wheat-meal products before the registration or use by the Plaintiffs of the word "Triticumina"; and, further, (2) that the Plaintiffs had not shown that the use of "Triticine" by the Defendants would deceive, and that the action must be dismissed, but, under the special circumstances of the case, without costs.-Held also, that the word "Triticumina was not a fancy word, being derived from "Triticum " wheat by the addition of the suffix "ina," and being intended to be descriptive; also that the word was either the name of a patented article, in which case it was not a good Trade Mark, or else that the Plaintiffs and their predecessors had represented their articles sold under the word "Triti"cumina as patented, and semble (without deciding the point) that in such case the word could not be a good Trade Mark. The Trade Mark was, therefore, ordered to be expunged, with costs against the Plaintiffs. The test laid down in Re Van Duzer and Leaf's Trade Mark, 4 R.P.C. 31, has not been altered by the decision in Re The Trade Mark Bovril, 13 R.P.C. 382. MEABY & Co., Ld. v. TRITICINE, LD., AND OTHERS, p. 1.

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INFRINGEMENT. See Passing off, Nos. 8 and 9.

1. "Triticumina " held not infringed by "Triticine." MEABY & CO., LD. v. TRITICINE, LD., AND OTHERS, p. 1.

2. Not found, but an injunction granted against the Defendant for passing off. LEVER BROTHERS, LD. v. BEDINGFIELD, p. 453.

3. Not found, but an injunction granted against the Defendant Company for passing off. HODGSON AND SIMPSON v. KYNOCH, LD., p. 465,

INVENTED WORD.

1.

"Solio" held to be an invented word and not to be descriptive
when applied to photographic paper.-Application to register
"Solio" in respect of photographic paper.-Registration refused by
Comptroller.-Practice in Patent Office as to devices and words rela-
ting to the sun.-Appeal to the House of Lords allowed.-Invented
word.-Word having no reference to the character or quality of
the goods.-Patents, &c. Act, 1888, Section 10. The Applicants
applied to register the word "Solio" in Class 39 for photographic
paper. The Comptroller General refused to register the word, on
the ground that it was the practice of the Patent Office to refuse any
device of the sun, or any word indicating the sun, in connection
with photographic materials, as having some reference to the quality
or character of the goods. The Applicants appealed from the
decision of the Comptroller, and the appeal was referred to the
Court.-Held, by Kekewich, J., (1) that unless there was a manifest
error, it was not convenient to reverse the practice of the Patent
Office; and (2) that the word "Solio " would be understood to refer
to the sun, and that, as applied to photographic paper, it was not a
word having no reference to the character or quality of the goods.
The Applicants appealed to the Court of Appeal, who held that
"Solio was an invented word. But that as applied to photographic
paper it had some reference to the character or quality of the goods,
and therefore could not be registered. The appeal was dismissed,
with costs. The Applicants appealed to the House of Lords.-Held,
by the House of Lords :-(1) That an invented word may be
registered, although it has reference to the character or quality of the
goods. Sub-sections (d) and (e) of Section 10 of the Act of 1888 are
to be construed as distinct and alternative. The "Somatose case
(In Re Farbenfabriken vormals Fried. Bayer & Co.'s Application,
11 R.P.C. 84 disapproved. (2) That "Solio" was an invented word.
(3) That it was also a word having no reference to the character or
quality of the goods in question. (4) That there is no jurisdiction
to order the Comptroller to pay costs. By the LORD CHANCEllor.-
The report of the Departmental Committee of 1887 may be referred
to in order to ascertain wnat mischief the Act of 1888 was directed to
remedy. By Lord HERSCHELL.-The decisions before the Act of
1888 afford no assistance in the constructton of sub-sections (d) and
(e) of the Act of 1888. The quantum of invention in an invented
word is immaterial. By Lord MACNAGHTEN.—It is no objection to
an invented word that it may be traced to a foreign source, or that it
may contain a covert allusion to the character or quality of the goods.
It need not be wholly meaningless. The judgments of Kekewich, J.,
and the Court of Appeal reversed. EASTMAN PHOTOGRAPHIC
MATERIALS Co.'s APPLICATION, p. 476.

2. What is. See EASTMAN PHOTOGRAPHIC MATERIALS Co.'s APPLICATION, p. 476.

3. "Quantum " of invention is not material, per LORD HERSCHELL. EASTMAN PHOTOGRAPHIC MATERIALS Co.'s APPLICATION, p. 485.

4. An invented word may have reference to the character or quality of the goods, per LORD HERSCHELL. EASTMAN PHOTOGRAPHIC MATERIALS Co.'s APPLICATION, p. 485.

MISREPRESENTATION.

Misrepresentation by a Plaintiff is no answer to his claim for damages in a common law action for deceit, per VAUGHAN WILLIAMS, L.J. JAMIESON & Co. v. JAMIESON, p. 191.

PASSING OFF.

1. Held not to have been shown that the use of the word "Triticine would deceive, the Plaintiffs' trade mark being "Triticumina." MEABY & CO., LD. v. TRITICINE, LD., AND OTHERS, p. 1.

2. Defendant held to have passed off by reviving a trade name which he had abandoned. DANIEL AND ARTER . WHITEHOUSE AND BRITTON, p. 134.

3. Plaintiff held not to have established probability of passing off, nor that the Defendant had copied his label.-Action for passing off Defendant's goods as Plaintiff's. Alleged similarity of get-up.-Copying by Defendant held not proved.-Probability of deception not established. C. sold lemonade powder in penny packets with a band label round them, the letterpress being printed in gold on white glazed paper. S. subsequently sold lemonade powder in penny packets with a somewhat similar band label round them printed in gold on white glazed paper. C.'s labels had "Eiffel "Tower" on them. S.'s labels had not these words or anything like them. C. commenced an action against S. to restrain him from selling his packets, as being liable to be passed off as the Plaintiff's packets. No other packets of lemonade powder were proved at the trial with labels in white and gold except one, which was discontinued after the commencement of the action on pressure by the Plaintiff. Two other penny packets of lemonade powder were proved to have been on the market before the Plaintiff's, one only having a band label.-Held, that the Plaintiff had not established that the Defendant's packets were liable to be passed off as the Plaintiff's, and the action was dismissed, with costs. CLARK V. SHARP, pp. 141, 268.

4. Where "passing off" by imitation of "get up" is alleged, proper method of trying the issue discussed, per BYRNE, J. CLARK v. SHARP, p. 146.

5. Held at the trial that the Defendant's combination was calculated to deceive; but held on appeal that the Defendant's goods were only similar to the Plaintiff's in features which were common to the trade.-Action for passing offPerson trading in his own name.-Get-up.-Features common to the trade.-Injunction granted at trial.-Appeal allowed. The Plaintiff, who carried on business as Jamieson & Co., at Aberdeen, as a manufacturer of harness composition, brought this action to restrain George Jamieson, who was also a manufacturer of harness composition at Aberdeen, from passing off his goods as the goods of the Plaintiff. It appeared, at the trial, that there were two other manufacturers of harness composition named Jamieson at Aberdeen, one being Peter Jamieson, who was prior in date to all the others. The evidence was to the effect that the tins used by the Defendant were, as regards size and shape, and that the labels thereon were, as regards their colour and the colour of the printing, similar to the Plaintiff's and to Peter Jamieson's, but were common to the trade.

PASSING OFF-continued.

In 1892, the Plaintiff, in consequence of proceedings taken by Peter Jamieson, agreed with him that he, the Plaintiff, should put on his tins, "Jamieson & Co.," diagonally in writing, and a registered Trade Mark consisting of a horse. The Defendant, when he first started business at Aberdeen, put "G. Jamieson" on his tins, but subsequently, on the complaint of Peter Jamieson, substituted "George Jamieson." "Aberdeen" appeared on all the labels above referred to.-Held, by BYRNE, J., that the whole combination used by the Defendant was calculated to deceive; that the arrangement between Peter Jamieson and the Plaintiff, and the fact that each of them might be injured, did not prevent the Plaintiff suing alone; and that there had not been such delay or acquiesence on the part of the Plaintiff as disentitled him to sue. (Fullwood v. Fullwood, 9 Ch.D. 176, followed.) An injunction was granted, with costs. A man entering a trade in which other persons of a like name have established a reputation has a burden cast on him to distinguish his goods from theirs. The Defendant appealed.-Held, on Appeal, that the distinctive features of the Plaintiff's tins were the signature, "Jamieson & Co.," and the Trade Mark, and that the Defendant's goods had no similarity to the Plaintiff's goods, except in features that were common to the trade, and that he had not passed off his goods as the goods of the Plaintiff. The appeal was allowed, with costs. A man is not bound to use extra precautions to avoid confusion between his goods and those of other persons in the trade, if such confusion arises solely from similarity of his own name with theirs, and from the use of features common to the trade; but such a case must be distinguished from the case where the name of a particular trader has in the market, come to denote his goods. Per VAUGHAN WILLIAMS, L.J.-A misrepresentation by a Plaintiff on his goods does not preclude him from recovering damages at law. JAMIESON & CO. v JAMIESON, p. 169.

6. Probability of deception owing to close approximation by Defendants to the Plaintiffs' label.-Action to restrain passing off Defendants' goods as the Plaintiffs'.-Similarity of get up.Change by Defendants of their label.-Close approximation to Plaintiffs' label. J. and J. C. for many years sold mustard in tins bearing a distinctive label. F. and Co. sold mustard in similar tins bearing a label somewhat similar in colours, type, letterpress and arrangements, to J. and J. C.'s label, to which J. and J. C. raised no objection. In 1897, F. and Co. changed their label for one having a much closer resemblance to J. and J. C.'s label. J. and J. C. thereupon brought an action against F. and Co. to restrain the use of this new label, and moved for an inte locutory injunction. Affidavits of traders were filed by both sides on the qu stion of the probability of deception.-Held, that the approximation of the Defendants' new label to the Plaintiffs' label was close; that, treating it as a matter to be judged simply by the eye, there was a reasonable probability that at the trial a case of deception would be made out, and that an injunction ought to be granted until the trial to restrain the Defendants from using the label complained of, or any other label which would lead the public to believe that the Defendants' goods were the goods of the Plaintiffs. Subsequently, by consent, a perpetual injunction was granted in the above terms, and the Defendants were ordered to pay 201. damages, and the costs of the action. J. & J. COLMAN, LD, v. FARROW & CO., p. 198,

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