( 75 )
Present : Porter and Schneider JJ.
D. C. Colombo, 1,048.
Trade mark—Registration of invented words.
An application to have the words “Tetraphos” and “ Radio -phos ” registered as trade marks in Class 2 in respect of chemicalmanures was allowed, as they were invented words.
“ An invented word is allowed to be registered as a trade marknot as a reward on merit, but because its registration deprives nomember of the community of the rights which he possesses to usothe existing vocabulary as he pleases.”
‘T’HE facts are set out in the following judgment of the DistrictJudge (A. St. V. Jayawardene, Esq.)
These are applications for the registration of two words as trademarks by certain persons carrying on business under the name of Shaw,Wallace & Co., as manufacturers of fertilizers and chemical manures,and their applications are opposed by the respondents “ The EgyptianPhosphate Co., Ltd.,” who are proprietors of a trade mark “ Ephos’’in respect of the same class of goods, .and whose local agent is theColombo Commercial Co. The two words the applicants seek to registerare “Radiophos” and “Tetraphos,” and they are to be used as trademarks in respect of manures which fall under Class 2 in the classificationof goods in the Trade Marks Rules of 1906. They applied in the usualway, and the respondent objected to the registration.on various grounds.The registrar has, therefore, referred the matter to Court under section10 of the Trade Marks Ordinance of 1888.
The two applications were heard together by agreement between theparties on certain issues framed at the trial.
The main issues arising in the case are : First, are the words “ Radio -phos” and “Tetraphos” invented words ? Secondly, if so, do theyhavesuch resemblance to the opponents* trade mark “ Ephos” as to becalculated to deceive ?
Now, under section 2 of “ The Local Trade Marks Ordinance, 1888,” asamended by Ordinance No. 4 of 1890, a trade mark must consist of or
contain at least one of the following essential particulars : (a) ;
(b) ; (c) ; (d) an invented word or invented words ; (e) a
word or words having no reference to the character or quality of thegoods, and not being a geographical name. This section is a reproduc-tion of section 64 of the English Trade Marks Act of 1883 as amendedby the Act of 1888. Therefore, in the first place, the applicants have toprove that the words in question “Radiophos” and “Tetraphos” areinvented words. To take the word “ Radiophos” in respect of whichregistration is claimed in case No. 1,048. Is this an “ invented word ” ?The word consists of two parts “ Radio ” and “ Phos,” Now an inventedword has been variously defined. In re Fabenfabrik en Application1
1 (1894) 1 Ch. 645.

( 76 )
Shaw,Wallace doCo. v. theEgyptianPhosphateCo., Ltd.
known as the “ Somatose ” case, Lindley L.J. said : ” There is nostatutory definition nor description of an4 invented word,* and I cannotmyself see any legitimate grounds for limiting its ordinary meaning.Any word which is in fact new, and not what may be called a colourableimitation of an existing word, is, in my opinion, an * invented word ’within the meaning of the statute under consideration. It is true thatseveral persons may independently hit upon the same word, but a wordalready invented and known would hardly be called an invented word,because somebody afterwards happened to hit upon it himself. Noveltyis, I think, an ingredient in a lawyer’s idea of invention ….It is true that the syllables of which it is compounded are well known,and are even in common use amongst chemists and medical men. Buta new word of more than one syllable may be an invented word, althoughall the syllables composing it are known and are in use.” In the caseknown as the “ Solio” case,2 Lord Macnaghten said: “And now,if a proposed trade mark consists of or contains 1 an invented word orinvented words,’ it is capable of registration. But the word must bereally an invented word. Nothing short of invention will do. On theother hand, nothing more seems to be required. If it is an inventedword, if it is ‘ new and freshly coined* (to adapt an old and familiarquotation) it seems to me no objection that it may be traced to a foreignsource, or that it may contain a covert and skillful allusion to thecharacter or quality of the goods. I do not think that it is necessary’ that it should be wholly meaningless.” In the same case, Lord Sliandalso defined an “invented word” thus: “There must be invention,and not the appearance of invention only. It is not possible to definethe extent of invention required ; but the words, I think, should beclearly and substantially different from any word in ordinary andcommon use. The employment of a word in such use, with a diminutiveor a short and meaningless syllable added to it, or a mere combination oftwo known words, would not be an ‘ invented word,’ and a wordwould not be ‘ invented * which, with some trifling addition or verytrifling variation, still leaves the word one which is well known or in ordi-nary use, and would be understood as intended to convey the meaning ofsuch a word.” Does “ Radiophos” comply with these requirements ofan ” invented word.” It may be stated at once that an “inventedword ” does not become disentitled to registration, because it has somerefer nee to the character or quality of the goods in respect of which itis sought to be registered. This was laid down by the House of Lordsin the “ Solio ” case (supra) just referred to, thus over-ruling the decisionin the “ Somatose ” case on the point (supra). Taking the two parts ofthe word “Radiophos” separately, radio is not an “invented word.’*It is a word that has passed into the English language, and appears to bemuch used by chemists and others. It means having the properties ofor pertaining to radium, and the booklet A 2 and the opponents’ adver-tisements O 1 and O 2 provide examples of its use. In A 2 it is statedthat ” Radio-active properties, closely resembling the induction ofactivity ascribed to radium, have been observed, &c., and again”Radio-activity,” such as is emitted by certain phosphates .and in O 2 the opponents states that his “Ephos” contains acertain proportion of radio-active material, &c., and O 1 contains thestatement that “The Radio-active properties of ‘Ephos’ increase theyield, &c.” So that the term “ Radio” derived from the word radiummust be taken as being well knowii, and one that has become current inthe English language, especially among persons who deal in manures.” Phos ” is a Greek word meaning “ light,” and in the English languageit is found is such words as “ phosphorous,” “ phosphates,” and their2 (189S) A. C. 571 {5S3).
( 77 )
derivatives. This syllable, too, has not been invented by the appli-cants, but seems to be used as a suffix or prefix to describe or indicatethe presence of phosphoric acid or phosphates in any substance orpreparation generally manurial. The applicants themselves haveprovided numerous instances in which it has been so used “ Ammophos”(A3), “Virophos” (A 7a), “Basphos” (A 7e), “ Tonophos ” (A 7g),“ Indiphos ” (), “ Phoslag ” (A 7e), and the opponents1 own trade mark
“ Ephos,” also Phosferine. The applicants, therefore, are attemptingto register as an “ invented word 11 a word consisting of two syllablesneither of which has been invented or freshly coined by them. Nodoubt in some cases the combination of well-known words or syllablesmight produce an invented word as pointed out by Lindley L.J. in the“ Somatose ” case (supra), but such cases would be very rare, and wemust also bear in mind the observation of Lord ShandT in the “ Solio 11case (supra) where he said : “At the same time, I agree with yourLordships and what has been said by my noble and learned friend LordMacnaghten in thinking, especially after the decision to be given in thiscase, that the Comptroller-General will be fully warranted in takingcare that there shall not be admitted under the guise or cover of wordscalled ‘ invented ’ by the applicant, words really in ordinary use, whichmight in a disguised form have reference to the character or quality ofthe goods. There must be invention and not the appearance of inven-tion only,” and that of Joyce J. in Christy v. Tipper1 when declaringthe word “Absorbine” not to be an “invented word.” “Noneof the syllables or parts of which the word is composed was inventedand I see no invention in the combining of them so as to form the whole.”Counsel for the applicants rely on two cases in support of theircontention that “ Radiophos ” is an invented word, one is In re LinotypeGo.’s Trade Mark.* In this case the word “Tachytype” was in ques-tion, and it was sought to be registered as a trade mark for typographicalcomposing, and casting machines. Registration was objected to on theground that it was composed of the word “Tachy” derived from aGreek word meaning “ quick,” and the common English word “type”and was not an invented word. Cozens Hardy J. allowed it to be regis-tered remarking: “ Now it is plain that the word ‘Tachytype1 comes■within the term an ‘ invented word.1 I doubt whether anybody notbeing a scholar, more or less, would have the faintest conception of whatthe word means. The man in the street I am quite certain would boentirely ignorant of any meaning that could be attached to it. I havehad my attention called to certain dictionary words which represent theGreek ‘ Tachus1 as a prefix to certain words. All that I can say is thatthere has not been one single word in that list which I heard of before.That is a confession of ignorance which I frankly make, and if I did nothold that ‘ Tachytype1 is in itself a word falling within the term an ‘ aninvented word1 I should be disregarding the observations of the LawLords in the ‘ Solio1 case (supra).” The considerations which inducedthe Court to allow the word “Tachytype” to be registered have noapplication to the word “ Radiophos,” for what wa3 said of the syllable,“Tachy” by the learned Judge cannot be said of “Radio” or of “phos”as I have attempted to point out above. -In the other case which maybe called the “Parlograph” case,3 the applicant sought to have theword “Parlograph’” registered in respect of sound recording andreproducing machines, the registrar refused to register it, but SargantJ. allowed it to be registered. He said: “ Then comes thequestion whether this bastard word is Or is not an invented word. Itseems to me clearly to be an invented word. It is a combination of1 (1904) 1 Ck. 696, 702.8 (1900) 2 Ch. 238.
3 (1914) 2 Ch, 103.
Shaw,WaUace 4sCo. v. theEgyptianPhosphateCo., Ltd.
( 78 )
Shaw,Wallace &Co. v. theEgyptianPhosphateCo*, Ltd.
two roots from foreign languages—the one * Pari ’ coming from orthrough the French and denoting speech, and the other 1 graph* beinga Greek root denoting writing, and there is no doubt whatever-—I amglad to say there is no doubt—that no such word as this .is to be found inany English dictionary, or has in any way been introduced into thecommon language of the realm. That being so I am clearly of opinionthat, within the decision of the 1 Solio,’ case (supra), this word is an‘ invented word or words.* *’ This case, no doubt, appears at first sight. to be a valuable authority for the applicants, but I think it can be distin-guished. The sellable “ Parlo ” unlike “ Radio ” is not in use in theEnglish language and was, in reality, an invention of the applicantsthere. If “ Parlo*’ like “Radio” had been current in the Englishlanguage, I am sure the decision of the Court would have been different.In “Parlograph” there was at least one syllable which had the merit ofinvention, but of “ Radiophos” the same cannot be said. As Judgeshave held in numerous cases, it is always a question of fact, whether awordisan “ invented word” or not. Taking everything into consider-ation I am of opinion that “ Radiophos ” is not an “ invented word,** andthat the applicant is not entitled to have it registered as a trade mark.As regards the word “Tetraphos ** different considerations apply. It isclearly, in my opinion, an “ invented word.” It was said that tetraphos-phate is a term known to scientists, but no book or dictionary has beenproduced in which the word occurs. It seems to me to stand on the samefooting as “ Tachytype,” “ Parlograph,** and adopting the reasoning ofCozens Hardy J. in the “Tachytype ** case, already referred to, I hold,“Tetraphos ” to be an invented word, and as such the applicants are en-titled to have it registered. Then comes the question: Does it havesuch resemblance to the opponents* registered trake mark “Ephos** asto be calculated to .deceive ? I do not think there is any likelihood ofdeception if this word is allowed to be registered. In considering whetherdeception is likely to result, we must have regard to all the circumstancesof the trade in connection with which the trade mark will be used.Manure is sold wholesale, and not by the tin, packet, or bottle, andaccording to the evidence of the witness called by the opponent, ordersfor manure are received by letter. It is not purchased by the man in thestreet, but by estate owners who, one may assume, are men of intelligenceand would devote some consideration to its purchase, and it must alsobe presumed until the contrary is proved that the applicants will makean honest use of their trade mark. The opponent does not suggestthat the applicants would make a dishonest use of their mark andattempt to pass off their manure as the manure of the opponent. In the** Neola” <^ase 1 in which the proprietors of the trade mark “ Pianola**opposed the registration of the word “Neola.** In respect of piano-players, a musical instrument, on the ground that the word “ Neola”was calculated to deceive Parker J. (afterwards Lord Parker of Wadd-ington) used language very opposite to the present case which I adopt.He said : “ That section (referring to section 72 of the English Act whichcorresponds to section 15 of the Local Ordinance) has been the subjectof judicial decision on many occasions, and I think without going intothe details of the cases, it may be taken the law is as follows : Youmust take the two words. You must judge of thern-^both by their lookand by their-sound. You must consider the goods to which they are ap-plied. You must consider the nature and kind of customer who would belikely to buy those goods. In fact, you must consider all the surround-ing circumstances, and you must further consider what is likely tohappen if each of these trademarks is used in a normal ‘way as a trademark for the goods of the respective owners of the marks. ’ If considering
1 (1906) 23 R. P. C* 774*
( 79 )
all these circumstances you come to the conclusion that there will be a con*fusion—that is to say, not necessarily that onemanwillbeinjuredandtheother will gain illicit benefit, but that there will be a confusion in the mindof the public which will lead to confusion in the goods—then you mayrefuse the registration or rather you mustrefuseregistration in that case… Now the mark which is proposed to be registered and
which the registrar has passed is * Neola,’ and the argument before mehas taken two lines. In the first place it is suggested that the importanceof the trade mark * Pianola* lies in its termination, and that anybodywho takes a word with a similar termination may cause confusion in themind of the public. The second way it is put to me is that the soundsof the words, although the look of the words may be different, are likelyto be so similar that a person asking for a ‘ Pianola’ might have a 1 Neola’passed off on him and vice versd. Of course, one knows that the personwho buy these articles are generally persons of some education (it is notquite the same as somebody going and asking for washing soap in agrocer’s shop,) and some consideration is likely to attend the purchase ofany instrument of the cost of either of these instruments, whether itbe a * Pianola’ or a * Neola.’ Now, my opinion is that having regard tothe nature of the customer the article in question and the price at whichit is likely to be sold, and all the surrounding circumstances no man ofordinary intelligence is like’y to be deceived. Considering, therefore,the conditions under which manure is sold in Ceylon, it is difficult to seehow purchasers could be deceived, unless there is fraudu^nt substitu-tion of one manure for another. The opponent admits that the appli-cants are not likely to supply 4 Tetraphos’ when ‘ Ephos’ is ordered.In fact such a fraudulent use cannot be taken into consideration indeciding whether a mark should be registered or not, for as Lord Bowenremarked in In re London Trade Mark’A trade mark is ca1 ousted
by its resemblance to deceive if in the course of its legitimate use in thetrade,” it is likely to do so. For these reasons I hold that theword ‘Tetraphos’ has no such resemblance to the trade mark word‘Ephos* as to be calculated to deceive. The applicants are there-fore entitled to have it registered. I also hold that the word4 Radiophos’ would not be calculated to deceive if the applicants areotherwise entitled to have it registered as a trade mark. An issue hasbeen raised as to whether the applicants are entitled to have the trademark 4 Ephos’ expunged from the register on the ground that the wordis descriptive of the character and quality of the opponents’ goods. Ihave already referred to this matter incidentally. It is not necessaryto decide the question whether the word 4 Ephos * is descriptive of thecharacter and quality of the opponents’ goods, in view of the decisionof the House of Lords in the 4 Solio ’ case (swpra). The fact that aninvented word baa some reference to the character or quantity of thegoods to which it is to be applied is no ground for refusing to register it.In that case their Lordships held that the words in sub-section (e)’ having no reference to the character or quality of the goods ’ did notqualify the words 4 an invented word or invented words’ in sub-section(d). These remarks apply to a similar objection raised to the woxd’Tetraphos* by the applicants.”
I answer the issues as follows :—
“Radiophos” is not an invented word.
“Radiophos” is slightly descriptive, but not deceptive in
respect of the character and quality of the ‘applicants’ goods,
but registration cannot be refused for that reason.
? (1886) 23 C. D. 109 (119).
Shaw,Wallace <fcGo. v. theEgyptianPhosphateCo., Ltd*
( 80 )
Shaw,WaUace <9Co. v. theEgyptianPhosphateCo., Ltd.
The .word “ Ephos ” is also descriptive very slightly of the
character and quality of the opponents’ goods ; it cannot bestruck off the register for that reason.
“ Tetraphos ” may be slightly descriptive, but is not deceptive
in respect of the character and quality of the applicants’ goods,but the applicants are nevertheless entitled to register it asa trade mark.
“ Tetraphos ” is not a contraction of a word in ordinary use in
the English language.
I refuse the application to register the word “ Radiophos ” as a trademark. I direct that the registration of the word “ Tetraphos ” as atrade mark be proceeded with by the registrar. As each party has •partially succeeded, I make no order as to costs.
Hayhy (with him Garvin), for applicant, appellant in Nos. 10and 11 and for applicant-respondent in No. 10a.
Samarawichreme (with him Navaralnam), for respondent in Nos. 10and 11 and for appellant in No. 10a.
Cur .adv. vult.
June 27, 1923. Porter J.—
The applicants on January 11, 1922, applied to the Registrar-General in terms of section 3 of Ordinance No. 14 of 1888 to havehave the words “Tetraphos” and “Radiophos” registered as trademarks in Class 2 in respect of chemical manures, and on therespondents opposing the said application, the applicants wererequired to make application to the District Court in terms ofsection 10 of the said Ordinance. The applicants duly applied forregistration in the action, No. 1,049 Special, in respect of the word“ Tetraphos,” and in action, No. 1,048 Special, in respect of theword “Radiophos” making the respondents, respondents in thesaid actions. At the hearing of the said applications which wereconsolidated by order of the learned District Judge, the followingissues were framed :—
Is the word “Radiophos” an invented word and registrable
as such ?
Does the word “Radiophos” so nearly resemble the word
“ Ephos ” as to be calculated to deceive ?
Is the word “Radiophos” descriptive or deceptive in respect
of the character and quality of the applicants’ goods, and,if so, were the applicants not entitled to registration ?
Is the word “ Ephos ” descriptive of the character and quality
of the opponents’ goods, and, if so, should the name bestruck ofi the register ?
( 81 )
Is the word ” Tetraphos” an invented word and registrable
as such ?
Does the word “ Tetraphos ” so nearly resemble the word
“ Ephos” as to be calculated to deceive ?
Is the word (< Tetraphos” descriptive or deceptive in respect
of the character and quality of the applicants’ goods,and, if so, were the applicants not entitled to registration ?
Is the word “ Tetraphos” a contraction of a word in ordinary
use in the English language, namely, tetraphosphate and,if so, are the applicants not entitled to registration ?
On November 17, 1922, the learned District Judge deliveredjudgment directing that the registration of the word “ Tetraphos”be proceeded with, and finding that the appellants were not entitledto have the word ” Radiophos ” registered, inasmuch as the samewas not an invented word. The learned District Judge furtherordered that as each party had partially succeeded, there would beno costs of these actions. From this judgment the appellantsappeal.
I agree with the learned District Judge that “ Tetraphos” is aregistrable word, and with this part of his judgment I entirelyagree; but with regard to his finding that “ Radiophos” is notregistrable I find myself, with deference, in some disagreement.It is purely a question of fact. Is it an invented word ? Thelearned District Judge finds as a fact that radio is derived fromthe Latin word “ Radium,” which has now become a well knownEnglish word, and radio an equally well-known adjective derivedfrom the noun “ radium.” I cannot, however, consider that thereis any similarity between the words “ Radiophos” and the word“ Ephos,” nor can I think that the average “ man in the street”could be deceived when demanding “Ephos” if he received “ Radio-phos.” I am of the opinion that “Radiophos” is an inventedword, there is direct evidence that the word was invented by theCalcutta agent of the applicants, and consequently is registrable.I would allow this appeal with costs. The application to strike offthe word “ Ephos” from the register has not been proceeded with,in view of my finding as to “ Radiophos.” I would, therefore allowthe word “ Ephos ” to remain on the register. Decree to be enteredin terms of my brother Schneider’s judgment.
Schneider J.—
By the close of the argument of these three appeals, which areconnected with one another, we were agreed that appeal No. 10 inregard to the application for the registration of the trade mark“ Radiophos” should be allowed with costs in both Courts, whileappeal No. 10a should be dismissed with costs, and appeal No. 11should be allowed with costs.
Porter J.
Shaw,Wallace 4sCo. i*. TheEgyptianPhosphateCo., Ltd.
( 82 )
iShaio,Wallace &Co. v. TheEgyptian,PhosphateCo., Ltd.
As my brother undertook to write the principal judgment, I neednot discuss the facts or the law at length, but I would state verybriefly that we felt that we could not accept the main reasons givenby the learned District Judge for not holding that the word “ Radio-phos ” was an invented word. The decisions of the English Courtsare accepted by our Courts as of the highest authority, for thereason that our legislation is very closely modelled upon the Englishlaw in the matter of trade marks. It appears to me that “ Radio-phos ” is an “ invented word ” within the principles upon whichthe “ Solio ” case1 and the “ Tachytype ” case3 were decided.
From the history of the legislation in England, we know that theclauses—
“ (d) An invented word or invented words ; or“(e) A word or words having no reference to the character orquality of the goods and not being a geographical name.3”
which are to be found in our Ordinances were introduced for thepurpose of obviating the difficulty which had been experienced inconstruing the term “ fancy-word,” and that in the light of the“ Solio” case (supra) a number of words are now rendered registrableas new marks which were considered unregistrable as not comingwithin the term “ fancy-word” or “ invented word or words,” asthose words were interpreted by the Courts, while still under theinfluence of the impression which existed before the decision of the“ Solio’’ case (supra). Thus/* Washerine,”c< Monobrut,” “ Satinine,””Emolliolorum,” “Somatose,” “Absorbine,” “Bioscope,” “Gramo-phone,” “ Hsematogcn,” “ Diabolo,” and “ Solio” (before appeal)were rejected, while “Mazawattee,” “Kynite,” “Savonol,” “Tachy-type,” and “Kodak” were accepted as invented words. Sebastian,in his Law of Trade Marks at pp. 57 and 58, says: “ In one ofthe cases on this subject, Lord Justice Kay said … .an
invented word is allowed to be registered as a trade mark, not as areward on merit, but because its registration deprives no member ofthe community of the rights which he possesses to use the existingvocabulary as he pleases …Again, “ I do not think
that a foreign word is an invented word, simply because it has notbeen current in our language. At the same time, I am not preparedto go so far as to say that a combination of words from foreignlanguages so little known in this country that it would suggest nomeaning except to a few scholars might not be regarded as aninvented word.” There is proof in the cases now in appeal that“ Ephos ” and “ Ammo-phos ” (for manures) have been registeredin Ceylon and “ Virophos” (medicated human food); “ Ammo-phos”“ Ephos,” “ Basphos,” “ Phoslag ” (for fertilizers); “ Tonophos ”(table waters) have been registered in England. I, therefore, see
1 “/» re EaUman’s Photographic Ma’erials Co., Ltd.” (l$9S) A. C. 571.
* “/» re Linotype Co., Ltd” {1900) 2 Ch. 258.
J Section 2 (1) (d) and (e) of the Trade Marks Ordinance, No. 14 of 2888.
( 83 )
no reason why the word “ Radiophos ” should not i>e registrable.Its registration would deprive no member of the community of hisrights to use the existing vocabulary as he pleases.
In appeal No. 10 the applicants for registration of the rejectedword “ Radiophos ” prayed that the registrar be ordered to’ strikethe word “ Ephos ” off the register, if this Court should upholdthe decision of the District Court rejecting the word “ Radio-phos.” This strikes me as a singular application to be made inthat petition of appeal, but this part of the prayer of that petitionneed not be considered in view of our decision that the word“ Radiophos ” is registrable.
I agree with the learned and well-reasoned judgment of theDistrict Judge as regards the registration of the word ” Tetraphos.”
Appeal No. 11, as to the order regarding costs, must be allowedwith costs. The reasons given by the learned District Judge forhis order as to costs fail in that we have decided that the word“ Radiophos ” should be registered. The applicant accordinglysucceeds in both his applications. He is entitled to his costs in theDistrict Court in both actions Nos. 1,048 and 1,049.
I would accordingly direct that the orders be made in all threeappeals as stated above.
Shav’tWallace doCo. v. TheEgyptianPhosphateCo., Ltd*