number of common marks were accepted and placed upon it in ignorance of their true character. The committee of experts, to which reference has been made, was instituted to assist the registrar, and, after 1884, the comptroller, in determining what marks were common in the cotton class, and it was the practice of these officers in other cases to consult the representatives of the trade concerned on the subject (c). are common. It is clear that such marks as these which are in common What marks use in the trade must be standards of comparison by which the distinctiveness of a new mark must be tested (d); and some assistance in determining when a mark is to be taken to be in common use, may be obtained from the decisions on other parts of the Act. Thus, sect. 64 (c) of the Act of 1883 (now repealed) allowed fancy words not in common use to be registered, and on this it was held, that use by several firms in the trade in question, and by others in different trades, was common use (e). And sect. 74 (ƒ) provides for the registration, as additions to a trade-mark, in the case of any mark used as a trade-mark before 13th August, 1875, of any distinctive (g) device, mark, brand, heading, label, letter, word, or figure, or combination of letters, words, or figures; and in the case of any mark not so used of any distinctive (g) word or combination of words, though the same be respectively common to the trade in the goods with respect to which the application is made. The section also provides (3) that a mark which was, before the 13th of August, 1875, publicly used by more than three (c) Per Jessel, M.R., in Kuhn's Case, supra. (d) See Bryant & May's Tm., 8 R. P. C. 69; 59 L. J. Ch. 763 (1890), North, J.; the cases cited in note (b); Anderson's Tm., 26 C. D. 409, Chitty, J.; affirmed on appeal, 54 L. J. Ch. 1084 (1884); and Thewlis & Blakey's Tm., 10 R. P. C. 369 (1893), North, J. Ancross rejected because anchors were com mon in the trade. (e) Great Tower Street Teas Co. v. Smith, 6 R. P. C. p. 172 (1889), Tower Tea; and see below, p. 149. (f) See Chap. IX., p. 164, Additions and Disclaimers. (g) This means primâ facie distinctive. Burland v. Broxburn Oil Co., 42 C. D. 274; 6 R. P. C. 482 (1889), Chitty, J., (Washerine). persons on the same or a similar description of goods shall, for the purposes of the section, be deemed common to the trade in such goods (h). In The Washerine Case (i) Chitty, J., held, that marks might be common to the trade within the sect. 74, though not publicly used by more than three persons, as required by sub-sect. (3), and that the words do not mean “in common use in the trade," but "open to the trade," and this interpretation was adopted by Kekewich, J., in The Apollinaris Case (k). In an earlier case the last-named judge said: "Any word which the trade might have used at the date of the registration is, as I construe the Act, common to the trade. I think it means that a word, which might have been used for these particular goods by any other persons at the time is common to the trade" (/). Obviously this construction must be read with some limitation, or no new mark could ever be registered, for every unused mark is open to the trade until it is monopolised by someone, either by registration or by user, as a trade-mark. It is submitted that what is meant is that a mark common to the trade is one known in the trade and not appropriated, and this is consonant with the contexts of the passages cited above, and Chitty, J., gives, as an example, the case of a mark widely used and then abandoned by all but two or three persons in the trade. In The Apollinaris Case the word in question was the name of a mineral water which might have been sold by the proprietors to other traders than the claimants of the mark, although they were, for the time, the sole importers of it. And in The Herbalin Case the word had been extensively used before registration both by the plaintiff and the defendant. They were all cases of descriptive words. In The Stone Ales Case (m) Lindley, L.J., expressed an (h) See below, pp. 172 and 177. The three mark rule. (i) Burland v. Broxburn Oil Co., 42 C. D. 274; 6 R. P. C. 482 (1889). (k) (1891) 2 Ch. p. 209; 8 R. P. C. 137. (1) Humphries v. Taylor Drug Co., 59 L. T. 820 (1888), (Herbalin). (m) Thompson v. Montgomery, 41 C. D. p. 49; 6 R. P. C. 404 (1889). opinion that a mark used by one person in the trade only could not be common to the trade. How far marks which are or have been used by one or more persons in the trade, but which are not commonly used, or common to the trade in the sense just suggested, and are not trade-marks, are to be regarded—in judging whether a mark tendered for registration is distinctive— is unsettled. Where the marks are trade-marks, whether registered or Other trademarks, regisunregistered, it is clear that they are obstacles to the registered or untration of any mark which so closely resembles them as to registered. be calculated to deceive, unless the applicant has an independent trade-mark right in the mark he puts forward (»). This is expressly enacted by sect. 72, in regard to registered trade-marks (o); and it follows, in the case of such unregistered trade-marks as are words, from the prohibition placed by sect. 73 upon the registration of any words, the use of which, by reason of their being calculated to deceive. or otherwise, would be deemed disentitled to protection in a Court of Justice (p). Apart from these sections, however, it is clear that a mark which is calculated to deceive the public by leading them to believe that it is the trademark of some person other than its proprietor cannot be distinctive in accordance with the explanations of the term given in the judgments cited above. In the very extraordinary circumstances of the case of Mouson v. Boehm (q), it was held that a trade-mark which had been registered at a time when a similar and previously acquired unregistered trade-mark for the same goods was in existence might be allowed to remain on the register, on the ground that the later mark had been registered in good faith and in ignorance of the earlier unregistered mark, and had remained unchallenged on the register for two years, during which time it had been extensively used in its (n) Cf. Chap. XV., pp. 325 et seq., Infringement. (0) Chap. X., p. 175. (p) Page 209. (g) 26 C. D. 398 (1884), Chitty, J. The facts are stated below, p. 325. Abandoned trade-mark. Marks used in advertisements. proprietor's business; but the case was treated as exceptional, and the earlier trade-mark was admitted upon the register also. But an abandoned unregistered trade-mark is, as such, no obstacle to the registration of a similar mark (†), that is, unless it has become a common mark in the trade. Besides common marks and trade-marks, there are, however, other marks used by traders in their businesses; for instance, marks employed in advertisements, or in the "get up" of his goods by a single trader. Are these to be taken as standards in estimating the distinctiveness of a new mark? This, it is submitted, depends upon the extent to which they are known and used. On the one hand, it would be absurd to compel a trader to collect and discriminate all the marks used by his fellow-traders, otherwise than as recognized trade-marks, in or in connection with their businesses, on peril of finding that the mark he has selected or invented for registration is bad; and, on the other hand, it would be a great hardship, to take a single example, to compel a rival trader to omit a material part of a well-known advertisement of his trade, because someone had registered it as a trade-mark. If a mark is wellknown in connection with a particular trader, though not used as a trade-mark by him, its use upon the goods of another would be likely to identify them with him rather than with the latter, and it would not, therefore, be distinctive in regard to such goods, in the sense explained above. Thus, in a recent case (s), Kekewich, J., refused to direct the registration, as a trade-mark for wire-bound india-rubber hose, of a device consisting of a sketch of an elaborate knot of the hose, on the ground that it too closely resembled a picture of similar hose printed by the opponents in their price lists, notwithstanding that the device had been employed as an advertisement by the (r) See the last case and Paine & Co. v. Daniells & Sons' Breweries, (1893) 2 Ch. 567; 10 R. P. C. 217, C. A., (John Bull beer). (s) The Sphincter Co.'s Tm., 10 R. P. C. 84 (1893). applicants in their own price lists, and was registered as their copyright design. 2. What Degree of Distinctiveness is required. of distinc The question, what degree of difference from other marks What degree will entitle a mark to be registered, is considered in the tiveness is chapter dealing with restrictions on registration, and, in required. particular, with sect. 72 (t). In addition to what is there said, it may be pointed out that, although a mark offered for registration may be fairly distinguishable from each of several others, yet the existence of these, if they are in use, opposes a cumulative weight of objection to any new mark which has an apparent resemblance to a number of them (tt). distinctive It has never been suggested that a secondary meaning Secondary acquired by user in connection with the applicant's goods, meaning. which would have sufficed to create trade-mark rights in an apparently descriptive mark before the Acts (u), will enable such a mark to be registered under them, unless it was used as a trade-mark before the 13th of August, 1875, and in The Stone Ales Case (x) the mark Stone Ale was removed from the register on the ground that there was no evidence of its separate user as a trade-mark before the date mentioned, although its secondary meaning was not only fully established, but was the basis of the injunction granted against the defendant in the case. Descriptive Marks. According to the construction placed upon the Acts, a Descriptive descriptive mark cannot be distinctive. So that any mark marks. which describes, either directly or by suggestion, the nature of the goods, their quality, or the purpose to which (4) Page 186. (tt) Cf. below, pp. 197, 198. (u) Chap. II., p. 36. () Thompson v. Montgomery, 41 C. D. 35; 6 R. P. C. 404 (1889). |