DALTON A.C.J.—Lipton, Ltd. v. Rawther.
1933Present: Dalton A.C.J. and Drieberg J.
LIPTON, LTD. v. RAWTHER et al.
31—D. C. (Inty.), Colombo, 1,812.
Trade mark—Application for registration of trade mark in respect of tea—Opposition on the ground that it resembled respondents’ trade mark—Similarity of device—Calculated to cause deception.
The appellants applied for the registration of a trade mark in respectof tea, consisting of the device of a man-of-war of the cruiser type with thewords “ENTERPRISE BRAND” below. The application was opposedby the respondents on the ground that the device sought to be registeredso nearly resembled their own registered device as to be calculated to' deceive. The respondents’ trade mark was registered in respect of thesame goods and the essential particulars of the mark were the deviceof a steamship with the words “ STEAMSHIP BRAND ”. It was estab-lished that the respondents’ tea had become known as “ ship brand ” tea.Held that the appellants were not entitled to register their trade mark.
PPEAL from a judgment of the District Judge of Colombo. Thefacts appear from the judgment.
H. E. Garvin (with him Stanislaus Alles), for appellants.
Hayley, K.C. (with him Choksy), for respondents.
June 23, 1933. Dalton A.C.J.—
The appellants, Lipton Limited of Colombo, applied to the Registrar-General for the registration of a trade mark in respect of tea, consistingof the device of a man-of-war with the- words ENTERPRISE BRANDbelow. The application was opposed by the respondents to this appeal,but it was allowed by the Registrar-General. On appeal to the DistrictCourt, the learned District Judge held that the device sought to beregistered so nearly resembled the registered device of the opposers asto be calculated to deceive within the meaning of section 19 of the TradeMarks Ordinance, and that the application for registration should be refused.35/12
DALTON A.C.J.—Lipton, Ltd. v. Rawther.
He therefore allowed the appeal. The applicants now appeal from thatdecision to this Court. The appeal raises no question of law, but dependsupon matters of fact.
The respondents to this appeal who are opposing the application arethe owners of a registered mark in respect of the same goods, namely, tea,the essential particulars of which are a device of a steamship with thewords STEAMSHIP BRAND above and the name ALEPH in -smallerletters on the bow of the ship, apparently representing its, name. Theman-of-war on the applicants’ mark is of the cruiser type, being, it is notdenied, a representation of H. M. S. Enterprise at present on the EastIndies station.
The ground upon which the application for registration is opposedis that the respondents are proprietors of a mark in respect of tea con-sisting of the device of a ship and' the words “ Steamship Brand ”. Themark sought to be registered has the device of a ship as a very prominentfeature, and so nearly resembles the registered mark as to be calculatedto deceive.
The evidence before the Registrar-General shows that the respondentshave sold their tea since 1926 in Africa, India, Iraq, Malaya, Japan, andparts of Europe, but not in Ceylon. They say, however, they are alsofinding new markets, and there is nothing to prevent them also sellingin Ceylon.if it is worth their while. They say their mark has becomedistinctive of their goods, with the result that tea shipped under themark has come to be known in the trade as “ Ship Brand ” tea. This isnot denied by the applicants who admit that prior to the date of theirapplication (June 23, 1930) they had sold a very small quantity of teabearing the mark sought to be registered.
There are the usual allegations on behalf of respondents, denied by theapplicants, that the mark sought to be registered so nearly resemblesthe registered mark as to be calculated to deceive, and further to createconfusion between the goods of the applicants and the goods of therespondents. There is no reason at all to doubt the circumstances underwhich the manager of the applicants says he acquired the idea of the markhe sought to register and that he had no knowledge at the time of theexistence of the opponents’ registered trade mark, but his statementson these points and as to the quantity of sales of tea bearing the marksought to be registered would, in my opinion, rebut his further allegationthat the applicants’ tea was known and referred to as Enterprise Brandtea. I take it that he means, by that statement, that that knowledgeexisted outside the limits of his own firm. The ship represented in theapplicants’ device is, it is admitted, H. M. S. Enterprise, at presenton this station. The word “ Enterprise ” on the device is her name, butit is probable that this word would not even to-day be so understoodby a large part of the population in this Island, who would furtherhardly be likely to distinguish between such classes of ships as aman-of-war, a tramp steamer, and a passenger steamship. Still lesswould anyone be likely to know the method of propulsion, whether,for example, steam or oil. What would be prominently present to allwould be the fact that a ship was represented. In the course of a yearor two H. M. S. Enterprise may leave the East Indies, and thereafter
DALTON A.CJ.—Ltpton, Ltd. v. Rawther.
very few people would ever connect the word on the mark with theship. There is ground, I think, for the statement that the ship is theportion of the whole device that is most distinctive, and support for theallegation that the mark if allowed to be registered might well come to becalled the ship mark and tea sold with this mark upon it to be knownas the “ Ship Brand ” tea. If that is so, it would have the effect, under thecircumstances, of deceiving the public.
The practical rule to be applied in this connection is not to look at themarks as they stand side by side, since they will never be put before anycustomer purchasing goods in that way. He can only contrast the markon the goods offered him with his recollection of the mark used upon thosehe is seeking to buy, that is a mark as seen and remembered in actualuse and not necessarily in the form as it may appear on the Register.(Kerly, on Trade Marks, 6th ed., p. 276.) The fact that H. M. S. Enterpriseis not a steamship at all has been referred to, but not as having any realbearing on the question before us.
The Registrar, in allowing the application, held that the applicant’sdevice of a man-of-war, and the word Enterprise, was sufficientlydifferent from the respondents’ mark as to entitle the mark to be registered.The District Judge however making use of words of Tomlin J. inHuxley’s Applicationcomes to the conclusion that the two marksjudged by the eye have undoubted characteristics so much in common,that anyone who has seen the one might, when meeting the other,undoubtedly think he was seeing a second time the thing he had seenbefore.
When one places the two marks with which we have to deal side byside, I agree with Mr. Garvin that they have not such marked commoncharacteristics as the two equivalent marks in the case cited by thelearned Judge. But it seems to me that that is as far as he can go. Ido not agree, however, that here a mere glance at the two marks is sufficientto dispel any misapprehension as to the probability that deceptionmay occur owing to the resemblance of the two marks. This was theconclusion come to in Boord & Son v. Bagots, Hutton & Co., Ltd.* Itwas meld there that all that the evidence established was that purchasersbought according to the mark, a cat, and not according to the words,and that they look to the mark for the purpose of seeing what it is theybuy. If they really look to the mark it was held deception was impossible,the only way in which deception could arise being from dishonest tradersdeliberately supplying goods which were not the goods really asked for,simply because the label oh them happened to bear the mark of a cat.It was therefore held that on the evidence there was no reasonableprobability of any such deception.
Numerous cases setting out how the law is to be applied have beencited to us, of which I will refer to two. It is well settled law, saysJoyce J. in Pomril Ltd.’s Application * that where any person has registereda device, for instance the picture of a star, smother person cannot come,and in respect of the same goods register the word “ Star ” nor could hecome and register the words “Star Brand”. In the same way where aperson has on the register the word “Star” or any other word no one else can'41 R. r C. m.* (1916) 8 A. C. 382.3 18 R. P. C. 181.
DALTON A.C.J.—Lipton, Ltd. v. Rawther.
come and put on the register in respect of the same goods a device being arepresentation of a star, if the registration of that device would probablyhave the effect of the word “ Star ” or the name “ Star ” being associatedwith the goods. The application here was to have the device of halfan apple upon the Register for cider with the name Pomril in the centre.The opposers had on the register a mark consisting of the words “ AppleBrand” for the same goods. Joyce J. held that the application mustbe refused, apart from any question of resemblance between the proposeddevice and the registered device, since nothing was more likely thanthat the word “ Apple ”, or “ Apple Brand ” would be associated orwould be attempted to be associated with the applicant’s goods, whichwould lead to deception.
It has been suggested that subsequent cases have not gone as faras this case, but it is referred to in the latest edition of Kerly on TradeMarks as laying down good law, and in that event it seems to me to beof considerable assistance in the case now before us.
The case of In Huxley’s Application', which is referred to in the decisionof the Judge of the Court below, has one or two facts in common withthe case before us. The nature of the mark sought to be registered waspictorial consisting of four pictures each in its frame and having behindthem the general idea of depicting pictorially the passage of oil from thewell to the consumer. The right hand bottom picture represents anon-sailing ship, probably a tank-steamer, or a steamer propelled by oilfuel, proceeding over the surface of the sea. This last picture wasobjected to by the opponents who had on the register in respect of thesame goods a mark consisting of a ship meant to represent a battleship.The opposers also had on the register at least one mark consisting ofthe word “ Ship Brand ”. In addition there was evidence which estab-lished that the opposers’ goods had, in fact, come to be known in differentparts of the world under the title of “ Ship Brand ”.
In dismissing the appeal and affirming the Registrar’s refusal toregister the new mark in respect of the portion objected to, Tomlin J.(now Lord Tomlin) pointed out that the onus was on the applicant tosatisfy the Court, amongst other things, that there is no reasonableprobability of the public being misled in respect of the mark. The ■Court may be satisfied that there is no probability of deception, or itmay be certain that there will be deception, or it may come to the conclu-sion that it is not clear that there will not be deception. If this matteris left in doubt, the Court must refuse the application, since the applicanthas not discharged the onus which is put upon him.
In considering the. evidence before him, Tomlin J. was satisfied thatjudged by the eye the picture of the battleship bore such a resemblanceto the picture of the ship in the right hand comer of applicants’ markthat there was every probability of confusion. I have already statedthat judged by this test alone the pictures of the ships in the markswith which we are dealing have less in common than those in Huxley’scase. But that case was not decided on that point only. The opposers,as the learned Judge points out, were in an unusually strong positionby reason of the fact that their registered marks included the words
i 41 R. P. C. 493.
Thornton v. Emanuel.
“ Ship Brand ”, and by reason of the fact, on the evidence, their goods hadbecome known as “Ship Brand”. The association of the picture of aship, a non-sailing ship of some sort he calls it, with three other pictures,would not in his opinion deprive the former picture pf its own individualsignificance, and under the circumstances set out so long as that picturecontains its own individual significance it necessarily gave rise to theprobability of confusion.
As in that case, so in the case before us the respondents (opposers) seemto me to be in a strong position by reason of the fact that their registeredmark includes the words “ Steamship Brand ” and by reason of thefact that on the evidence their tea has become known as “ Ship Brand ”tea. I have already dealt with the particular.significance of the device'of the ship on applicant’s mark and I am satisfied for the reasons I havegiven that if that mark is allowed to go on the register, confusion betweenthe marks will probably result and deception will follow. The principleunderlying both cases I have cited seems to me to be the same.
The appeal must therefore be dismissed with costs.
Drieberg J.—I agree.Appeal dismissed.
LIPTON, LTD. v. RAWTHER et al