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Present: Fisher C.J. and Dricberg j.
CHESEBOROUGH MANUFACTURING CO. v. KUDHOOS.
Trade mark—Application to expunge—Resemblance between the twomarks—Calculated to deceive—Passing-off action—OrdinanceNo. 14 of 1888, s. 28 (1).
In an application to expunge a trade mark from the registerthe applicant must prove that the two marks so resemblo eachother as to deceive purchasers of ordinary caution.
Such a proceeding is in the nature of an action for infringement,and the applicant is not entitled to rely on additional matterswhich are connected with the trade or goods, and relevant in anaction for passing off.
PPEAL from an order directing the appellant’s trade mark
to be expunged from the register on the ground thatit resembles the respondents mark so clearly that it is calculatedto deceive. The respondent applied to the Court under section 28(1) of Ordinance No. 14 of 1888.
Garvin, for appellant.—The decision of the District Judge isbased on the alleged similarity of the get-up. The get-up isimmaterial. It is only the mark as a whole that should be lookedat. Occasional points of similarity should not be made a groundfor refusal to register (Lever Bros. v. Bedingfield1).
The probability of deception must be substantiated2. Thebuyers in this case are educated persons and a comparison ofthe marks shows that there is no likelihood of confusion (WelsbachIncandescent Gas Light Company v.. New Sunlight IncandescentLtd.3). It is no ground for refusal that the mark may be dishonestlyused, and the presumption is in favour of honest user. There is nomonopoly in common features (Payten Ltd. v. Titus Ward*).
The application should date to the date of disclaimer.
Counsel cited the following authorities :—In re Bass Ratcliff v.Gretton Ltd.5; The Society of Motor Manufacturers v. Motor TradersInsurance Company, Ltd.*; Bond db Sons v. Bagrto Hutton <kCompany, Ltd.7
Hayley, K.C. (with N. K. Choksy), for applicant, respondent.—It is clear from the resemblances in the marks, as well as in theirmode of user in actual trade, that there was an intention to deceiveby the use of the contested label.
96—D. C. Colombo, 1,402.
’16 R. P. C. 3.
2 27 Hals. 716.
2 17 R. P. C. 401.
1 17 R. P. G. 58.
19 R. P. C. 544.
6 (1925) 1 Ch. 675.
' (1916) 2 A.C. 382.
15J. H. 0167 (11/46)
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OheaeborottghManu-facturing Co.v. Kudhoo*
If an intention to deceive is proved, it is presumed that thedeception has been successful, both in an action for passing off aswell as in an action for infringment of a trade mark.
(Proctor v. Bayly & Son1; Lambert & Butler Ltd. v. Goodbody -;In re Cheseburgh Manufacturing Company, ltd?)
The Court must see the marks as they will appear in actual use.The colour also is a material factor in this connection. (Kerly,pp. 243, 252, 280, 281.)
Counsel cited the following authorities:—Re ChristiansensTrade Mark4; Pinto v. Badmon5; In re Turney <0 Sons’ TradeMark*
October 17, 1928. Fisher C.J.—
This is an appeal from an order directing the appellant’s trademark to be expunged from the register on the ground that itresembles the respondent’s mark so closely that it is calculated todeceive.
The respondent applied to the Court under section 28 (1) ofOrdinance No. 14 of 1888 (Legislative Enactments, Vol. I., p. 976),which provides that the court may on the application of anyperson aggrieved …. by any entry made without sufficientcause in any such register make such order for …. expung-ing or varying the entry as the court thinks fit.”
Under a similarly worded English Enactment (section 90 of thePatents, Designs, and Trade Marks Act, 1883) it was held that ifin proceedings to expunge a mark an applicant makes out a casewhich would have justified the registering authority in refusingto register on the ground that the respondent’s mark so nearlyresembles the applicant’s mark as to be calculatecT to deceive theentry must be taken to have been “ made without sufficient cause.”(See re Trade Mark of La Societe Anon, des Verreries de l’ Etoile.7)
The issue upon which the Court decided this case is as follows :“ Does the respondent’s mark so resemble the applicant’s maik asto be calculated to deceive, and is it an infringement of the appli-cant’s mark ?” The evidence was largely directed to mattersspecially appropriate to a passing-off action, and it is to be gatheredfrom observations of the learned Judge in his judgment that informing an opinion as to the resemblance of the two marks heallowed his mind to be influenced by the similar appearance andget-up of certain bottles which were put in evidence. He says,for instance, respondent’s pomade is sold in bottles like P4 andthere can be no doubt that the applicant’s bottles PI and P4resemble each other very closely. The bottles are of the same size
i 6 R. P. C. at 533.4 3 R. P. C. 54.
= 19 R. P. C. at 3S1.5 8 R.P. C. 18 1 at 191.
» 19 R. P. C. 342.6 11 R. P. C. 37.
7 (1894) 1 Ch. 61.
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and have very similar letters impressed on the bottles. The sizeof the two labels is the same and the background is similar.”Later on he says “ the words on the respondent’s bottles appear tohave been arranged in such a way as to make the effect similar.”But this is not a passing-off action, it is in the nature of an actionfor infringement. The distinction between passing-off action andactions for infringement is pointed out in Kerly on Trade Marks, 5thed., p. 472, in the following words : “ the essential difference is plainenough. In an action for infringement the plaintiff can rely onlyupon the imitation of his registered mark, while in an action forpassing-off he may rely on other things, or on additional thingswhich are connected with his trade or goods.”
We have nothing to do therefore with the get-up, and must lookat the two marks in question as they appear on the register andthen form an opinion as to whether the mark of the appellant soresembles that of the respondent that ordinary purchaserspurchasing with ordinary caution are likely to be misled. (Sebas-tian. 5th ed., p. 146). It is to be noted that this article is not anarticle of necessity, and the persons who purchase it are likely “tobe intelligent- and educated. Neither of the marks in questionhave any predominating distinctive feature. They differ there-fore in that respect from marks which have been the subject-matterof discussion and litigation, such as a diamond shape, a star, or anelephant. For an application such as this to succeed it must- beproved that the label is deceptive in itself. We are in the sameposition as the Registrar would have been had the registration ofthe appellant’s mark been objected to by the respondent. Aspointed out in In re Trade Marks of Bass <ts Co.1 the question is oneof fact, and treating it as a question of fact and comparing theregistered marks with each other, I am of opinion that the appellant’smark does not so resemble the applicant’s mark as to be calculatedto deceive and is not an infringement of the appellant’s mark. Thecase of In re Turney <k Sons’ Mark,2 which was cited to us,does not touch this case. That was an appea against therefusal of the Registrar to register the mark, and there wasevidence before the Court with which the Court was impressedthat if the mark was registered it would be used, and thatthe applicants intended to use it in such a way as to lead toits being mistaken for the mark of those who opposed the regis-tration. The Court declined to allow the register to be used forsuch a purpose and dismissed the appeal. Nor are the cases whichwere cited to us-to support the proposition that when once a CourtIs satisfied that there is an intention to deceive it will readily cometo the conclusion that the intention had been successfully giveneffect to in point in this ease. That proposition is only applicable
1 (1902) 2 Ch. 579.
GheseboraughManu-facturing Co.v. Kudhoos
2 11 R. P. C. 37.
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CkeseboroughManu-facturing Co.v. Kudhoos
to cases of passing-off. When the Registrar has a label submittedto him for registration, the question he has to consider is whether thelabel as submitted to him for registration is likely to be mistakenfor another. As I have pointed out, we are in the same position asthe Registrar and must decide the question on the same materials.
It is not necessary to decide the other point raised by Mr. Garvin,.namely, that the proper date to be assigned to the respondent’sapplication is the date when the disclaimer was made, but there isa decision which seems to be against his contention. See J. Wigfvtt& Sons, Ltd. v. J. Jackson ifc Son, IAd.1
The appeal must be allowed. The order of the learned Judgewill be set aside, and the respondent will pay the costs of theappellant in this court and in the court below.
Drieberg J.—I agree.