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Present: Lascelles A.C.J. and Van Langenberg AJ.LUKMANJEE v. AKTIEBALAGE.
60—D, C. Colombo, 459.
Trade, mark—Matters to be considered on application for registration—Disclaimer of any right to exclusive use of any part of device mustbe made in application itself.
In considering the question whether a trade mark sought to beregistered has such a resemblance to the opponent’s registeredtrade mark as to be calculated to deceive, the Court must notmerely look at the marks as they stand side by side, but to theappearance they would present in actual use when fairly andhonestly used.
When the essential particulars consist partly of words in theEnglish language, regard may be had to the fact that the articlemay be sold in a market where the purchasers cannot read Englishcharacters. But the most important principle is that the markmust be looked at as a whole, and regard must be had for whathas been termed “ the net impression.”
A person applying for the registration of a trade mark mustdisclaim in the application itself any right to the exclusive use ofany part of his device. A disclaimer cannot be made to the Courtduring the inquiry.
rJ*HE facts appear sufficiently from the judgment.
Morgan de Saram, for appellant.
Hayley (with him Elliott), for respondent.
Cur. adv. vult.
March, 28, 1911. Lascelles A.CJ.—
This is an appeal from the refusal of the District Court of Colomboto direct registration of the applicant’s mark relating to safetymatches. The question involved is whether the mark has suchresemblance to the opponent’s registered trade mark as to becalculated to deceive.
It is admitted that application No. 482 (“ Three Bowls ”) restson the same footing as the application under consideration (481),and that its admission or rejection depends upon the result of this
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appeal. The particulars of the mark which the appellant seeks to Mar.es,1911have registered are as follows :—lasceues
m " A.C.J.
The essentia) particulars of the trade mark are as follows :—(a) The
distinctive device as above set forth ; (ft) the words “ Three Cups ” : Lukinanjeev.
(c) the body colour of the lal>el is yellow. The three cups are printed Altiebalagc
in red on the yellow body colour in the middle of the label. The
words “ Three Cups ” are printed on the upper part of the label, and the
words “ Safety Matches ’* are printed on the lower part of the label* all
in yellow type on black semi-circular bars. The four scrolls are in
yellow, in the four corners of the label, on red ground. On either side
of the label there are three red lines, as in the label indicated. The
whole of the label is enclosed on all four sides in-two bands and a
thin black band, and the outermost band in yellow. The applicant
disclaims any right to the exclusive use of the added matter.
The opponent’s trade mark is represented in the' GovernmentGazette of December 4, 1896.
The applicant’s mark differs from the opponent’s trade mark incertain respects. It bears the words 44 Three Cups” instead of thewords “Three Stars,” and the design of three cups with saucersinstead of three stars. In other respects, including the colour ofthe different parts of the design, the applicant’s mark correspondsexactly with the opponent’s label. The general resemblancebetween the two is very striking. In comparing the applicant’smark, it is important to bear in mind the principles on which suchcomparison should be made. The Court must not merely look atthe marks as they stand side by side, but to the appearance theywould present in actual use when fairly and honestly used. (John-ston v. Orr-Ewing.l) When the essential particulars consist partlyof words in the English language, regard may be had to the factthat the article may be sold in a market where the purchaserscannot read English characters. (Ibid). But the most importantprinciple is that the mark must be looked at as a whole, and regardmust be had for what has been termed “ the net impression.”(The Taendstikker case.2)
Bearing these principles in view, there is no room for doubt thatin spite of some differences in detail the applicant’s mark regardedas a whole is calculated to deceive purchasers into the belief thatthey are buying goods bearing the opponent’s trade mark.
The applicant has repeated the request which he made in theDistrict Court, that he might be allowed to register his mark on thecondition of disclaiming the right to the exclusive use of any partof his device except the three cups, treating the rest of the deviceas common to the trade.
A reference to “ The Trade Marks Ordinance, 1888,” as amendedby subsequent Ordinances, shows that such a disclaimer is not
App. Cases 219,
* 3 n. P. C. 54,
Mur. 2wan lLamCKLLICH
/ uhnaniee v.Aklirbalaye
permissible. Our Ordinance is a reproduction of the Imperial Actof 1883, as amended by the Act of 1888. The conditions underwhich disclaimers are allowed are strictly defined.
The Ordinance allows the addition to the essential particulars of“ any letters, words, or figures, or combination of letters, words, orfigures,” but requires the applicant to state in his application theessential particulars of his trade mark, and to disclaim any right tothe exclusive use of the added matter (section 2). The Ordinancealso, by section 17, allows the addition of any distinctive word orcombination of words, though the same is common to the trade,upon a similar condition as to disclaimer. In both cases theOrdinance requires that the disclaimer must be made in theapplication ; and the English Courts have treated this requirementas imperative. See Kerley on Trade Marks (3rd ed.), p. 218.These provisions obviously do not allow a disclaimer of the naturesuggested.
I think that the decision of the District Judge is right, and thatthe appeal should be dismissed with costs.
Van Langenberg A.J.—
I am of the same opinion.
LUKMANJEE v. AKTIEBALAGE