not to be marks to be compared, or in one of them, it appears, from common the judgments just quoted (u), that the proper course is to marks are look at the marks as wholes, and not to disregard the parts disregarded. which are common, although Cairns, L.C., in the OrrEring Case, expressed a different opinion (~). contrasted trade not to be Farrow's Case (y) is a good illustration of Lord Esher's Parts of the rule (z). There both the applicant and the opponent were marks commustard merchants, and both used square boxes covered mon to the with yellow labels printed in black and red, for these boxes disregarded. were common to the trade. The applicant placed upon his labels a picture of a charging buffalo, and the opponent a picture of a bull's head; both pictures were contained within silver rings, and these rings were also common to the trade. Stirling, J., said that the buffalo and the bull's head, as printed in the Trade-Marks Journal, were very different, but when they were placed upon the coloured labels, the applicant's label too closely resembled that of the opponent to be admitted to the register. view; 2. The Marks are to be compared as fairly used in Practice. It is also clear that the comptroller or the Court ought not Marks not to merely to look at the marks as they stand side by side, be merely compared side for, from the nature of the case, they will not be so put by side on a before any customer whom it is sought to deceive by means of either of them. He can only contrast the mark upon the goods offered to him with his recollection of the mark used upon those he is seeking to buy, and allowance must be made for this in estimating the probability of deception. Any other rule would be of no practical use (a). Moreover, variations in details might well be supposed by customers (u) Christiansen's Tm., 3 R. P. C. 54 (1886), above, p. 191; and see Baker v. Rawson, 45 C. D. 519; 8 R. P. C. 89 (1890), North, J. (r) 4 App. Cas. 479 (1879). (y) 7 R. P. C. 260; 63 L. T. K. 233 (1890), Stirling, J. (*) Page 191, above. (a) Seixo v. Provezende, 1 Ch. 192 (1866), Cranworth, L. C.; Wilkinson v. Griffith, 8 R. P. C. 370 (1891), Romer, J. but as seen and remembered in actual use. to have been made by the owners of the trade-mark they are already acquainted with for reasons of their own (b). In comparing the marks, therefore, regard must be had not only to their form as they appear on the register (c), but also to the appearance they would present in actual use when fairly and honestly used; to the nature of the goods upon which they are to be employed; to the character and size of the marks themselves, and to the probability of their becoming partially or wholly blurred or modified as ordinarily stamped or printed, or by ordinary wear and tear (d). For instance, a mark which is used for hardware goods, and is stamped upon them with a die, is not likely to appear so definitely or to be so readily distinguishable from a similar mark as one which is engraved or printed upon a paper label, and so attached to the goods (e). In the former case, too, the mark will necessarily be used in Size of mark. a small size only (e). As regards size, however, even under circumstances in which, from the nature of the goods, large sizes showing the design distinctly can be, and generally are used, since it is open to a registered proprietor to use his mark in any size,-size would not seem to be a material element in the comparison (f). It must not be assumed against the applicant or registered proprietor that he is going to use his mark unfairly, in the sense that he is (b) Johnston v. Orr-Ewing, 7 App. Cas. 219 (1882), Lord Selborne, ante, p. 191. (c) Jessel, M.R., held, in several cases, that the register only should be looked at. Re Jelley, 51 L. J. Ch. N. S. 639 n. (1878); Robinson's Tm., 29 W. R. 31 (1880); Mitchell v. Henry, 15 C. D. 181 (1880); but in the latter case the C. A. dissented from his opinion and overruled his decision; Christiansen's Tm., 3 R. P. C. 54 (1886), Chitty, J. (d) Rosing's Application, 54 L. J. Ch. 975 n. (1878), C. A.; Lyndon's Tm., 32 C. D. 109; 3 R. P. C. 102, (1885), C. A.; Haines, Batchelor & Co.'s Tm., 5 R. P. C. 669 (1888), Chitty, J.; Lambert's Tm., 5 R. P. C. 542; 6 R. P. C. 344; 61 L. T. 138 (1889), C. A. (e) See the two cases last cited, in which, however, the opposition failed; and see Re Jelley, 51 L. J. N. S. 639 n. (1878), Jessel, M.R. (f) Speer's Tm., 4 R. P. C. 521; 55 L. T. SSO (1887), Kay, J. be considered. going to use something different (g), by leaving out or obliterating any parts of the mark, for instance, so as to make it more like that of the opponent (h), for the Court presumes that a trade-mark will be fairly used and without fraud (i). But the comptroller or the Court must consider Alteration of mark as used, any alterations which the applicant lawfully might make, from mark as without altering the essential features of his mark or losing registered, to the protection which would be conferred by registration (k). Thus he may use the mark in any colour, and in Worthington's Case (1) a triangular frame with the picture of a church inside was rejected on the ground that it would, if the whole were coloured red, too nearly resemble Bass' well-known solid red triangle. And if it is shown that the applicant does actually use, or intend to use, his mark so altered as more nearly to resemble that of the opponent, as, for example, in The Taenstikker Case (m), by filling up blanks left in the mark as registered, the mark so altered will, as against the applicant, be treated as the mark to be considered (m). On the other hand, such alteration of the opponent's mark, being something other than the ordinary effects of its lawful user in the registered form, is immaterial as against the applicant (n), for no one can extend the protection given to his registered mark by departing from the registered form. It is, however, no Variation in answer to an objection that the objector uses his mark in the use of the a form different to that in which it appears on the mark. register, if the mark in question so nearly resembles the g) Biegel's Tm., 4 R. P. C. 525; 57 L. T. 247 (1887), Chitty, J. (A) Lyndon's Tm., 32 C. D. 109; 3 R. P. C. 102 (1886), C. A. (Lambert's Tm., 6 R. P. C. 344; 61 L. T. 138 (1889), C. A.; Haines, Batchelor & Co.'s Tm., 5 R. P. C. 669 (1888), Chitty; J.; Kutnow's Tm., 10 R. P. C. 401 (1893), North, J. (Carlsbad salts). opponent's Alteration of the opponent's registered mark in use cannot increase the objection. objector's mark, as it there appears, as to be calculated to deceive (0), for such use is legal, although, so far as the mark used is substantially different from the mark registered, it is not protected. Even if the user were illegal, it could hardly act as an estoppel (p); and if the opponent were using his mark improperly, for instance, in aid of a fraudulent or illegal trade, or if his mark as used by him were calculated to deceive (g), the applicant's proper course would be to remove the mark out of the way by an application to rectify the register under sect. 90. 3. The Essential Particulars are to be specially attended to. Regard must, however, be specially directed to the essential particulars of the marks to be compared, for the remaining matter in any of them might, subsequently to registration, be changed on an application under sect. 92. On this ground, Stirling, J., refused, in Murphy's TradeMark (r), to allow a mark consisting of a lion carrying a sheaf, together with other matter, to be registered, there being already on the register another mark comprising a lion bearing a crown, although each mark had additional matter also, and the general appearances of the two were different, because the lions were the sole essential parUndertaking ticulars of both. The applicants in this case offered an undertaking that they would use their mark only in the form tendered for registration, but this was not deemed sufficient by the proprietors of the opposing mark, and, as as the mark was a new one, the judge refused to accept the offer as an answer to the difficulty raised by the resemblance of the essential particulars. not to vary registered mark in use. (0) Melachrino v. The Melachrino Egyptian Cigarette Co., 4 R. P. C. 215 (1887), Chitty, J.; Hammond v. Malcolm, Brunker & Co., 9 R. P. C. 301 (1892), Chitty, J., both cases of infringement. (p) See James' Tm., 33 C. D. 392; 3 R. P. C. 340 (1886), C. A. (9) See Newman v. Pinto, 4 R. P. C. 508; 57 L. T. 31 (1887), C. A. (r) 7 R. P. C. 163 (1890). 4. All the Circumstances of the Trade to be considered. Further, the Court must have regard to all the circumstances of the trade in which the marks in question are employed, or are to be employed, and in particular to the nature of the market, whether a home or a foreign one; to the number of other trade-marks similar to the contrasted marks already circulating in connection with the same description of goods; to the common marks which are or may be combined with the contrasted marks or either of them; and, generally, to the customs and usages of the trade. It is obvious that marks which are readily distinguishable by Englishmen, or persons who can read English, may so resemble each other as to be calculated to deceive foreigners whose language is not only different to English, but written in different characters and in a different manner (s). For them, if they are ignorant of English, the words upon a mark are only subordinate devices not readily distinguishable from other words occupying corresponding positions in any contrasted mark, and being of about the same length. same kind on And in cases where there are a large number of marks Numerous similar to the mark propounded on the register, the Court marks of the may think that, though the applicant's mark might be the register. fairly distinguishable from the opponent's if there were no other, and perhaps also from each of the others taken. alone, yet the extension of the number of such marks may lead to deception. Thus, in Hargreaves' Case (t), there being four anchor marks already on the register in the same class, Hall, V.-C., refused to allow another anchor mark to be added to them, notwithstanding that the new (3) Johnston v. Orr-Ewing, 7 App. Cas. 219 (1882); Wilkinson v. Griffith, 8 R. P. C. 370 (1891), Romer, J. 11 C. D. 669 (1879); Thewlis and Blakey's Tm., and Hughes and |