In the Matter of Edward Ripley and Son's Application for a 5 IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION. Before MR. JUSTICE KEKEWICH.-December 3rd, 1897. IN THE COURT OF APPEAL. Before THE MASTER OF THE ROLLS and LORDS JUSTICES RIGBY and IN THE MATTER OF EDWARD RIPLEY AND SON'S APPLICATION FOR A TRADE MARK. Trade Mark.-Application for registration.-Invented word.-Reference to character or quality of the goods.—Word identical in sound with non-registrable 10 word." Pirle."-Registration refused.—Patents, &c. Act, 1883, Section 64, and Patents, &c. Act, 1888, Section 10. In 1895, E. Ripley and 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 “Pirle" being formed from the 15 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 20 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 25 included in Class 34. 30 66 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. On the 24th of October 1895, Edward Ripley and Son made an application (No. 190,706) for the registration of the word "Pearl" as a Trade Mark in Class 34 in respect of cloths and stuffs of wool, worsted, and hair. On the same date, the said firm also made an application (No. 190,707) for the registration of the word "Pirle" as a Trade Mark in the same class in respect of the 35 same goods. The first-mentioned application was refused upon a preliminary In the Matter of Edward Ripley and Son's Application for a Trade Mark. objection, one of the grounds of objection being that the word "Pearl" was a word of commendation and description. Objection was also taken to the word "Pirle" on the ground that it was a mere mis-spelling of "Pearl," and, after a hearing, the registration of this word was also refused. On the 18th of August 1896, a fresh application (No. 197,303) was made by the same firm for registration 5 of the word "Pirle,” which was refused. On the 17th of November 1896, an application (No. 199,537) was again made by the same firm for registration of the word "Pirle as a Trade Mark in the same class and for the same goods as before. The Comptroller objected to proceed with the registration on the ground that the mark did not consist of 10 any of the essential particulars required as a condition of the registration of a new mark, and stated also that the mark might conflict with other marks already on the Register, and, after a hearing, registration was, on the 5th of January 1897, refused. On the 2nd of February 1897, the Applicants appealed to the Board of Trade against this decision, and on the 18th of March 1897, the Board 15 of Trade referred the appeal to the Court. On the 29th of July 1897, the Applicants gave notice of a motion that the Comptroller might be directed to register the word "Pirle " as a Trade Mark in Class 34 in respect of all goods included in that class, being the goods already mentioned. Affidavits in support of the motion by Sir Henry Mitchell and Messrs. George 20 Douglas, a partner in the Applicants' firm, J. E. Ackroyd, J. A. Goodwin, J. Bairstow, M. Shephard, F. M. Bridgewater, and D. O. Nowell, were filed by the Applicants. Mr. Ralph Griffin, the Registrar of Trade Marks, made an affidavit in opposition, and affidavits in reply were made by Messrs. Douglas, Nowell, and R. Rogers. 25 Mr. Douglas, in his affidavit, stated that the word " Pirle " was invented by the Applicants, and was formed by transposing the first and third letters of their name of "Ripley" and omitting the last letter; that it was used by the Applicants to indicate to merchants and wholesale dealers in the trade that the goods so marked had been dyed and finished by the Applicants; that the word 30 "Pearl" had no descriptive meaning as applied to any fabric; that the use of the proposed mark had nothing to do in the trade with colour; that his said firm had used the said Trade Mark very extensively for a considerable period, and had spent large sums of money in advertising the same. Mr. Nowell stated that he had effected the registration for the Applicants of 35 the said Trade Mark in certain countries abroad. The other affidavits filed by the Applicants contained a paragraph as follows: "The term Pearl' has no descriptive meaning in the trade as applied to "fabrics included in Class 34, and, in my opinion, neither the term 'Pirle' nor "Pearl' is in any sense descriptive of the goods for which the Applicants desire 40 "to register their mark." 66.6 Mr. Griffin stated in his affidavit :-"(6) The word 'Pearl' was like the "word 'Gem,' frequently used as a term of commendation, and in this "connection the word 'Pearl' is used when a well-known wine is described as "the Pearl of the Moselle.' The word 'Pearl' is sometimes used as describing 45 "colour, and is equivalent to Perlaceous,' as in pearl bird,' pearl moth,' pearl gray,' 'pearl white,' and the adjective pearley' is also used in a "similar sense. (7) The word 'Pearl' is also used to describe a particular kind "of edging, a pearl-edged ribbon being a ribbon with a border formed by loops "of fabric projecting, and pearl stitch is used in the same sense in embroidery. 50 (8) There is, in fact, a species of finish known as 'Pearl Finish,' and from an "advertisement issued by the Applicants, it appears that they intend "to use the word 'Pirle' in some such sense. I find from a dictionary that 'pirl' appears to be another way of spelling 'purl.'" The advertisement referred to was an advertisement of "Ripley's Pirle Finish." Mr. Griffin also 55 66 66 6 66 66 66 66 6 In the Matter of Edward Ripley and Son's Application for a 66 stated that it had been the practice of the Office to refuse registration to words which in pronunciation would have the same sound as known words, where those known words were not eligible themselves for registration, and he referred to answers received to communications made by him to 5 the Bradford Chamber of Commerce and the Trade Marks Committee of the Manchester Chamber of Commerce. The first of these bodies replied to questions put to them as follows:-"(1) The word 'Pearl' is descriptive, and "should not be allowed to be used as the exclusive property of any one person. (2) The word Pirle' as a mere combination of letters, is quite distinctive, and 10" has not hitherto been used in connection with Bradford goods. (3) Related "to certain registered marks. The Board is, therefore, of opinion that the word "Pirle' as an invented word is a perfectly legitimate word for registration, and "they do not see any reasonable grounds for opposing the registration of "such word." The Manchester Committee stated that the objections to 15 the registration of Pirle in Class 34 were :-" (1) Certain registered marks ; (2) from the word 'Pirle' having an implied reference to the character or quality of the goods. . . The word 'Pirle' has the sound of purl' and "of 'pearl,' both which words are indicative of the character or quality of the 'goods.' (a) To purl' or 'pirl' is to wind upon a spindle or reel, to twist 20"the separate strands or threads; and the articles to which the proposed mark, 199,537, is applied will in many cases have a twisted, ribbed, or twilled "character. It is also specially used of 'hair-one of the articles woven into "cloth, upon which the Applicants claim to use the mark. () In regard to the "word Pearl,' the goods to which the mark' Pirle' would be applied are thus 25" characterised as being the 'pearl' of their class, the word thus being "equivalent to 'best,' ne plus ultra,' and similar unregistrable words and "phrases. That the word 'Pirle' implies 'character' or 'quality' is shown by "the way in which the Applicants display their proposed Trade Mark on their "show card, where it appears as 'The Pirle,' the word 'The' being prefixed to 30" the representations of the mark, the registration of which is applied for. (c) "The French word 'perle,' meaning 'brilliant,' is also descriptive of quality, "and the English word 'pearl' is a common term for a kind of finish used in "cotton piece goods." (4) and (5) related to objections founded on similarity to surnames and geographical names. Mr. Nowell, in answer, referred to the 35 registration f "Orphol" (awful), and other words identical in sound with known words, and Mr. Douglas stated that "Pearl Finish" was not known in connection with any goods included in Class 34, and that the expression "Pearl "Finish" was not descriptive. The motion was heard on the 3rd of December 1897. 40 66 Moulton, Q.C., and A. J. Walter (instructed by Speechly, Mumford, Landon, and Rodgers) appeared for the Applicants; the Attorney-General (Sir R. Webster, Q.C.) and Ingle Joyce (instructed by the Solicitor to the Board of Trade) appeared for the Comptroller. Moulton, Q.C., for the Applicants, after stating the facts and reading the 45 evidence, continued.-The fact that we applied for "Pearl " erroneously ought not to prejudice us. The objections on account of the other marks which are registered are untenable. If "Pearl" be used to describe colour, or an edging, or a kind of finish, this is not in reference to the goods included in Class 34. As to what the Manchester Committee say, we are not applying in the cotton 50 classes. "Pirle" is an invented word, and ought not to be refused because it has the same sound as "Pearl." It is not suggested that it has a meaning which would make the use of the word right or wrong in connection with these goods. Anyone looking at the mark would see it was not "Pearl." Primarily, the mark must be judged by the eye. It would not lead to confusion with any 55 registered mark, In the Matter of Edward Ripley and Son's Application for a KEKEWICH, J.-This application ought, I think, to be disposed of on an extremely short ground. I am not now asked to consider whether the word "Pearl is capable of registration or not. I wish to say nothing on that point, because it may be competent to the Applicants to bring forward that word again, and it may have to be considered on the grounds mentioned in the affidavits before me, or on 5 other grounds; and when it has to be considered, it is right, of course, that that should be done without any prejudice from what happens on the present occasion. But the word "Pearl" was brought forward and was rejected, and there was no appeal from that rejection. I think I am bound to take it for granted that whether for the reason mentioned or for some other reason that 10 word cannot be properly registered. That seems to me to put an insuperable difficulty in the Applicants' way when they come to register "Pirle." Of course it is a different word to the eye, and if the eye only were concerned, there might be a good deal to be said in favour of Mr. Moulton's argument. But it is not the eye only, even if it is the eye principally, that is consulted. The ear 15 must be consulted, and to any ordinary person the difference between "P-e-a-r-1" and "P-i-r-le" is not to be perceived. If " Pearl is wrong, it seems to me that "Pirle " must be clearly wrong. I agree with the Comptroller in saying it is a mere mis-spelling of the former word. If the Applicants fail as regards one, they must fail as regards the other. 20 It is said that "Pirle" is an invented word. It may be, and I do not say it is not an invented word. I do not say there are not objections to it standing alone, though bringing it forward as a transposition of the letters forming Ripley, with the final letter left out, seems to me a rather poor attempt at humour. I do not wish to go into that part of the case. I base my decision 25 simply on the ground that "Pearl" being now, at any rate, not capable of registration, another word, which is precisely the same in tone and sound, so that every ear would be deceived, is equally incapable of registration, and on that ground I refuse the motion, with costs. 30 The Applicants appealed. During the hearing of the appeal their Counsel asked for leave to read, and was allowed to read an affidavit of Mr. Douglas, filed the 9th of February 1898, in which a further communication from the Bradford Chamber of Commerce was set out, containing the following further answers :-" (1) The word 'Pearl' is neither known or (sic) used in Class 34 as 35 a term of commendation of goods. (2) The word 'Pearl' is not known in "Class 34 as describing a finish of goods. (3) The word has no reference to the "character or quality of the goods in Class 34. (4) When stating 66 66 to "the Comptroller that the word 'Pearl' was descriptive, the Board was "considering the word broadly, and not with definite reference to goods in 40 "Class 34." Moulton, Q.C., and A. J. Walter for the Applicants.-The word is made from the letters of our name except the "y." "Pirle Finish" is not descriptive; it indicates that it is Ripley's. How far the word is objectionable is a matter of degree. The refusal will only drive us to our common law right; no advantage 45 will be gained by the public. It is not an advantage to the public that as few marks should be registered as possible. In each case it is a question for the judgment of the Court. In this case, the word is not contrary to the Act. [RIGBY, L.J.-The Applicants themselves started the idea that it would be mistaken for "Pearl."] The sole difficulty is caused by our having 50 applied for "Pearl." It was a separate application. The reason for it was that we thought someone else might take "Pearl" after we had established our use of "Pirle." In this case there was extensive use before application. The word was not chosen because of its resemblance to "Pearl." It was an error in judgment to apply for the latter word. It ought not to affect the result. The 55 In the Matter of Edward Ripley and Son's Application for a objection that it sounds like "Pearl" is not a valid objection. It sounds like a word one cannot get, not because that word belongs to someone else, but because it is not an invented word. "Pearl" has, in fact, never been used in the trade. "Pirle" might, perhaps, be objectionable in the cotton trade; but the last letter 5 from the Bradford Chamber of Commerce shows that it is not objectionable in Class 34. The word does not refer to character or quality. [RIGBY, L.J.—I doubt whether any application for "Pearl" could succeed. It seems to me commendatory.] It may be so in some classes. It will not be so recognized in our trade. [RIGBY, L.J.-" Ripley's Pirle Finish" would be 10 taken to be commendatory.] It is the name of our finish. [RIGBY, L.J.-Do you say there was no discretion to reject?] The Court has a discretion. Trilby" was allowed to be registered, and that was in some commendatory. The question is whether the registration would lead to public inconvenience. [LINDLEY, M.R.-The difficulty is about the monopoly.] 15" Pearl" would have to be brought under sub-section (1) (e), because it is not invented; but ours is an invented word. The word has nothing to do with colour. It is said that the rejection of " Pearl" is conclusive against us, but we might apply again even for that word. Some words, identical in sound with ordinary words, are already registered. Registration cannot be obtained in 20 some countries abroad, unless the word is registered here. 66 measure The Attorney-General (Sir R. Webster, Q.C.) and Ingle Joyce, for the Comptroller, were not called on. LINDLEY, M.R.-We do not see our way to accede to this application. We cannot do it unless we are prepared to lay down a proposition that 25 I do not think any Court should. We cannot say that a man may register, in any class of goods, a word which sounds exactly like a word that could not be registered. The reason is obvious; it would be putting a monopoly upon the public, which would be utterly unjustifiable. That is the short reason. I think the learned judge was quite right, and that the application must be 30 dismissed, with costs. RIGBY, L.J.-I agree. VAUGHAN WILLIAMS, L.J.-I agree. 35 IN THE HIGH COURT OF JUSTICE.-QUEEN'S BENCH DIVISION. Before MR. JUSTICE RIDLEY (without a Jury).-March 5th and 24th, 1898. ROCKLIFFE v. PRIESTMAN AND CO. Patent.-Action for infringement.-Anticipation.-Utility.-Subject-matter. -Exercise of inventive faculty. R., the grantee of a patent for improvements in securing cleats on bulb angles, Z-frames, plain angle-irons, and the like, brought an action, for infringe40 thereof, against P. and Co. At the trial, P. and Co. contended:-(1) That the patent was anticipated by what they had themselves done prior to the date |