PRACTICE-continued.

3. Where the Comptroller has on opposition refused to register, and an appeal to the Board of Trade is referred to the Court and the opposition is withdrawn before the hearing, the proper course is to take an order by consent dismissing the appeal.-Trade Marks.Application to register.-Oppositions.-Registration allowed by Registrar.-Appeal from Registrar's decision referred to Court.Appeal motion set down in non-witness list.-Agreement between the parties that motion be dismissed without costs, that opposition be withdrawn, and that the Comptroller be directed to proceed with the registration.-Application for order pursuant to agreement.Practice. CROSFIELD & SON'S APPLICATION, p. 754.

RECTIFICATION OF THE REGISTER.

1. The word "Kodak," which had been registered as a Trade Mark for cycles, struck off on the application of the E. Company, who sold Kodak cameras, as calculated under the circumstances to deceive.-Motion to expunge.-Action for infringement and for passing off-Same description of goods.-Calculated to deceive.-Mark expunged.-Interlocutory injunction granted.— Patents, &c. Act, 1883, Sections 72 and 90. The E. Company invented, and had for some years used, the word "Kodak " in connection with their goods, and especially for cameras; and the word occurred in all their registered Trade Marks. The Company had made a speciality of cameras suitable for bicyclists, and the appliances for fixing the same to bicycles, and had largely advertised "Bicycle Kodaks." They held all the shares in a Limited Company called The Kodak Company, Ld., which, however, had not commenced business. In August 1897, the J. G. Company applied for and obtained registration of the word "Kodak" as a Trade Mark in Class 22 (in which the E. Company had no registered Trade Mark) for bicycles and other vehicles included in that class; and in October 1897, The Kodak Cycle Company, Ld., was registered, with a nominal capital of 1007., and this Company and the J. G. Company commenced to advertise "Kodak Cycles." The E. Company and The Kodak Company, Ld., commenced an action against the J. G. Company and The Kodak Cycle Company, Ld., to restrain the Defendant Companies (1) from carrying on business under the name Kodak Cycle Company, Ld.; (2) from passing off their goods as the goods of the Plaintiffs; (3) for infringing the Trade Marks of the E. Company. They moved for an interlocutory injunction, and also moved to expunge the registration of "Kodak" by the J. G. Company.-Held, that the word "Kodak" had become identified with the E. Company and with their goods, that the evidence showed a close connection between the bicycle and photographic trades, that registration had been obtained by an untrue statement to the Registrar, that the Defendants were trying to get the benefit of the reputation of the E. Company, and that the Trade Mark must be expunged as being calculated to deceive; also that the Plaintiffs were entitled to an injunction to restrain the Defendants from trading under the name Kodak Cycle Company, Ld., and from selling their goods as "Kodak." EASTMAN PHOTOGRAPHIC MATERIALS CO., LD., AND ANOTHER V THE JOHN GRIFFITHS CYCLE CORPORATION, LD., AND THE KODAK CYCLE CO., LD., AND IN THE MATTER OF THE TRADE MARK, No. 207,006 (KODAK), p. 105.

RECTIFICATION OF THE REGISTER-continued.

2. Two marks expunged as to the whole of Class 42, on the ground that there had been no bona fide intention to use them in that class.-Application for registration.-Comptroller's refusal to register by reason of resemblance to registered marks. Motion to expunge such marks.-Marks registered without a bonâ fide intention to use.-Marks expunged.-Appeal dismissed.—Patents, &c. Act, 1883, Sections 65, 72, 75, 76, and 90; and Patents, &c. Act, 1888, Section 17. On an application for registration of a Trade Mark in Class 42 for oats, the Comptroller refused registration on the ground of the similarity of two marks registered, one in 1882 and one in 1888, for the whole of Class 42. The Applicants moved to expunge these marks, and at the hearing asked alternatively to limit the registration of them to goods other than outs, and moved also that the Comptroller should be directed to proceed with their application to register. The owners of the two marks appeared to oppose the motions.-Held, by ROMER, J., that there had been no real user of the Respondent's marks before or since registration, and that they had been registered in Class 42 without any bond fide intention to use them in that class, and that the marks must be expunged as to the whole of Class 42 from the Register. The Comptroller was directed to proceed with the application to register. The Respondents were ordered to pay the costs of the motion to rectify. The Respondents appealed from the order to expunge. The appeal was dismissed, with costs. A Trade Mark cannot properly be registered for goods in which the Applicant does not deal or intend to deal. If an entry as to a Trade Mark is on the Register without sufficient cause, it can be removed under Section 90 of the Patents, &c. Act, 1883. J. BATT & Co.'s TRADE MARKS, p. 534.

3. If an entry as to a Trade Mark is on the register without sufficient cause, it can at any time be removed under Section 90 of the Patents, &c. Act, 1883. J. BATT & Co.'s TRADE MARKS, p. 534.

REGISTERED." (MISUSE OF).

1. Using word "Registered" in reference to a Trade Mark not registered in United Kingdom, although registered in a foreign country. The Defendants, who were merchants in Belfast, sold a box of baking powder,bearing a label with the words "Trade Mark-Royal -"Registered"; and on the obverse side were the words "Manu"factured by Royal Baking Powder Company, New York." The Trade Mark had been for many years, and at the time of the sale was, registered in the United States, and had also been for some years registered in England; but seven weeks previous to the sale it had been expunged from the Register in this country. The Defendants. were prosecuted at Petty Sessions under the 105th Section of the Patents, &c. Act, 1883, for describing the Trade Mark as registered; and the Magistrates being of opinion that the word "Registered" on the label did not necessarily imply that the Trade Mark was registered in the United Kingdom, and that being coupled with the words "Manufactured by Royal Baking Powder Company, New York," it might mean registered in the United States, they dismissed the summons; but stated a case for opinion of the Court as to whether the Act had been infringed or not.-Held, that the use of the word Registered" amounted to a representation that the Trade Mark was

66

"REGISTERED." (MISUSE OF)-continued.

registered in the United Kingdom, which was not affected by the words describing where the article was manufactured, and that the Magistrates ought to have convicted. WRIGHT, CROSSLEY, & Co. v. WILLIAM DOBBIN & CO., p. 21.

2. Using word "Registered" in reference to a Trade Mark not registered in the United Kingdom, although registered in a foreign country. Patents, &c. Act, 1883, Section 105. MAC SYMONS STORES, LD. v. SHUTTLEWORTH, p. 748.

REGISTRATION. (See also PRACTICE, Nos. 1 & 4.)

1. Application for registration refused on the ground that the word was identical in sound with another word not capable of registration.-Application for registration.-Invented word.— Reference to character or quality of the goods.-Word identical in sound with non-registrable word.-" Pirle."-Registration refused.Patents, &c. Act, 1883, Section 64, and Patents, &c. Act, 1888, Section 10. In 1895, E. Ripley & Son applied for the registration of the words "Pearl" and "Pirle " as Trade Marks for goods in Class 34, namely, cloths and stuffs of wool, worsted, and hair, the word 66 Pirle being formed from the name Ripley with the omission of the "y." These applications were refused. In November 1896, the same firm again applied for the registration of "Pirle" as aforesaid, but the application was refused by the Comptroller. The Applicants appealed to the Board of Trade, by whom the matter was referred to the Court. From the evidence, it appeared that registration was refused by the Comptroller on the ground that the word was identical in sound with "Pearl," and that "Pearl " itself was not eligible for registration, being a term of commendation, and " Pearl Finish" being the name of a particular kind of finish. The Applicants, who used the words "Ripley's Pirle Finish," denied that "Pearl" or "Pearl "Finish" had any descriptive meaning in reference to goods included in Class 34.-Held, by KEKEWICH, J., and the COURT OF APPEAL, that "Pirle " being identical in sound with "Pearl," and "Pearl" not being capable of being registered, "Pirle " was also incapable of being registered. The application was refused, and the appeal was accordingly dismissed, with costs. EDWARD RIPLEY & AND SON'S APPLICATION, p. 151.

2. Registration refused on the ground of previously registered similar marks. These marks being subsequently expunged, the Comptroller was directed to proceed with the application to register.-Application for registration.-Comptroller's refusal to register by reason of resemblance to registered marks.-Motion to expunge such marks.-Marks registered without bonâ fide intention to use.-Marks expunged.-Motion to proceed with registration.Patents, &c. Act, 1883, Sections 65, 72, 75, 76, and 90. On an application for registration of a Trade Mark in Class 42 for oats, the Comptroller refused registration on the ground of the similarity of two marks registered, one in 1882 and one in 1888, for the whole of Class 42. The Applicants moved to expunge these marks, and at the hearing asked alternatively to limit the registration of them to goods other than oats, and moved also that the Comptroller should be directed to proceed with their application to register. The owners of the two marks appeared to oppose the motions.-Held, that there

REGISTRATION-continued.

had been no real user of the Respondents' marks before or since. registration, and that they had been registered in Class 42 without any bond fide intention to use them in that class, and that the marks must be expunged as to the whole of Class 42 from the Register. The Comptroller was directed to proceed with the application to register. The Respondents were ordered to pay the costs of the motion to rectify. CARTER'S APPLICATION, p. 262.

3. A Trade Mark cannot properly be registered for goods in which the Applicant does not deal or intend to deal. J. BATT & Co.'s TRADE MARKS, p. 534.

REPORT OF 1887 COMMISSION ON TRADE MARKS.

Referred to by the LORD CHANCELLOR on a question of construction on the Act of 1888. EASTMAN PHOTOGRAPHIC MATERIALS COMPANY'S APPLICATION, p. 481.

TRADE LIBEL.

Circular referring to an order of the High Court.-Untrue statement.-Malice.-Authority of agents.-Special damaye. In 1897, two Trade Marks, registered by the R. Company, of New York, were expunged from the Register of Trade Marks by the order of the Court, at the instance of W., C., & Co. Both Trade Marks were labels containing prominently the words "Royal Baking Powder." Shortly afterwards W., C., & Co. issued a circular referring to the said order, which circular, and the statements of travellers and agents of W., C., & Co., were alleged by the R. Company to be an intimation that the R. Company were not entitled to sell baking powder as "Royal Baking Powder," and that W., C., & Co. intended to proceed against persons using the labels to stop the use of those words. The R. Company commenced an action to restrain W., C., & Co. from representing that the Plaintiffs were not entitled to sell their Royal Baking Powder in the United Kingdom, and from maliciously threatening the customers of the Plaintiffs with legal proceedings in respect of their sales of the Plaintiffs' said baking powder.-Held, that the circular represented what was not true with regard to the Plaintiffs' Baking Powder and trade, and was issued not in good faith in support of a claim or right really made or intended to be exercised by the Defendants, but maliciously, and had caused special and substantial damage to the Plaintiffs. An injunction was granted in the terms of the first part of the writ, and an inquiry as to damages was also granted, with costs up to and including judgment; the costs of the inquiry were reserved. ROYAL BAKING POWDER Co. v. WRIGHT, CROSSLEY, & CO., p. 677.

TRADE MARK.

1. Held to be included in the assets of a business on transfer, although not registered. Continued user by transferor after transfer.-Trade name.-Transfer of business, including trade name in assets.-Construction of agreement. Prior to 1892, J. and W. C. carried on business as wine and spirit merchants under the style of J. and W. C., and used the words "Prince Charlie as a Trade Mark, which they did not register. In April 1892, the

TRADE MARK-continued.

partnership wis dissolved by W. C. paying to J. C. his share of the
partnership assets. There was no deed of dissolution, but terms
were arranged by correspondence, in which no reference was made
to the goodwill or the Trade Mark, but it was stipulated that the old
firm nime should no longer be used. After the dissolution both
parties carried on rival businesses-W. C. as W. C. & Co., and J. C.
in his own name. Both parties continued to use the words
"Prince Charlie." In 1896, W. C. & Co. registered a Trade Mark,
of which the material particular was "Prince Charlie." The
registration was unsuccessfully opposed by J. C. W. C. & Co.
brought an action against J. C. for a declaration that they were
entitled to the sole and exclusive use of the words "Prince Charlie,"
and that the Defender should be prohibited from using the words
"Prince Charlie" in connection with the sale of whisky.-Held, that
the Pursuers were entitled to interdict and 257. damages and
expenses. WILLIAM CURRIE & Co. v. JAMES CURRIE, p. 339.

2. A Trade Mark registered for ammunition held not entitled to be used
for soap.
HODGSON AND SIMPSON v. KYNOCH, LD., p. 465.

TRADE NAME.

1. "Flaked Oatmeal " held not to be.-Suit for passing off by use of such
name.-Name descriptive of goods.-Distinctiveness of get-up.
P. & Co., of Sydney, in 1890, began to sell, and continued to sell,
a preparation of oats as "Flaked Oatmeal," and registered a Trade
Mark in New South Wales containing those words, which they
claimed to be the designation of their goods in the market.
G. & Co., in 1894, applied to register in New South Wales a Trade
Mark containing the words "Flaked Oatmeal," but were refused in
consequence of P. & Co.'s registration. They then put upon the
market a preparation of oats under the title of "G.'s Flaked
"Oatmeal." P. & Co. commenced a suit against them to restrain
them from selling any preparation not being the Plaintiffs' as
"Flaked Oatmeal." The get-up of the Plaintiffs' packets and the
Defendants' packets were very different, and the Defendants' name
appeared in large letters on their packets. It was held, at the trial,
that the Defendants had sufficiently distinguished their preparation
from the Plaintiffs', so that it was not calculated to deceive the
public; and the suit was dismissed, with costs. The Plaintiffs
appealed.-Held, that the Plaintiffs had not proved that the term
"Flaked Oatmeal " was identified with the Plaintiffs' manufacture,
and that the Defendants had done no more than they had a right to
do in taking appropriate words of ordinary description to indicate
their preparation, and that their acts were not calculated to pass off
their manufacture as that of the Plaintiffs', and it was not proved
in point of fact to have done so. The appeal was dismissed, with
costs. PARSONS BROS. & Co. v. JOHN GILLESPIE & Co., p. 57.
2. Use of the name "Pinet" by the Defendants absolutely re-
strained.-Old established business in boots and shoes known as
P.-Adoption by D. of the name P. for the purpose of a boot and shoe
business.-Sale of this business to a Company-Injunction granted
to restrain Company from using the name P. D., an Irishman,
having changed his name several times, ultimately took the name of
P. for the purposes of a business in boots and shoes. P. was the trade
name of the business of a well-known French Company dealing in