must be disclaimed in the application (q), and if they form part of the opponent's mark also, a disclaimer should be registered in connection with that mark, and the matter disclaimed cannot be, by itself, relied on to support the opposition (r). But the presence of the common elements in both may be an element in creating a general resemblance between the marks looked at as wholes. It seems The opponent that where there is no disclaimer on the register, and no disclaimed application to rectify, the Court will not pay attention to matter or evidence that any part of the opponent's mark is common mark. to the trade ($). cannot rely on words in his name is common to The Star Tobacco Mark Case (t) is an authority to show Where the that the suggestion both by the mark of the applicant and by that of the opponent of a word which is common to the the trade. trade because it is a name or description for the goods in connection with which both marks are used, is not a sufficient reason for refusing the application to register. There the opponents had registered as an old mark a characteristic eight-pointed star, and also, as a new mark, a label with the star, another device and the word star, and they asserted that their goods were frequently sold and ordered as star goods. The applicant's mark consisted of a sea picture within a ring, having a small six-pointed star in the clouds at the top, and a conspicuously drawn anchor in the lower part of the picture, and the words star of hope. The judge found that the device of a star, although not the particular star of the opponent's old mark, was common to the trade, and he allowed the registration. "I think," he said, “that (9) Sect. 74. Chap. IX., p. 164; Meeus' Application, (1891) 1 Ch. 41; 8 R. P. C. 25, Chitty, J., (Key Brand Genera); i.e., unless they are parts of a distinctive label, p. 172. (r) Pirie v. Goodall, (1892) 1 Ch. 35; 9 R. P. C. 17, C. A., (parchment bank paper); Rosenthal v. Reynolds, (1892) 2 Ch. 301; 9 R. P. C. 189, North, J., (W. R. corsets); Watt v. Hanlon, 4 R. P. C. 1 (1886), Porter, M.R., an Irish case, Loftus' (8) Goodall 8 Tm., 42 C. D. 566 (t) Re Dexter's Application, Re Wills' Tm., (1893) 2 Ch. 262; 10 R. P. C. 269, Wright, J. (c) Where the name is said to give a practical monopoly. Polish Case. "the use of the word star and the use of the figure of a star are matters publici juris, and have been publici juris at all material times, except so far as some particular trader may have appropriated a particular phrase in which star is used in some special manner, or may have appropriated a particular design in which the figure of a star has assumed a special form, or has been so combined with other matters as to produce a specific thing different from what may be called the ordinary image of a star." (c) The third ground of reply has been also dealt with in several cases, and it is settled that a trader will not be allowed to acquire or use a mark which will probably lead to his goods being mistaken for those of another, even though this may make it difficult for him to truly describe the place of origin of his goods, or to present them to purchasers in the form in which they expect to receive The Red Medal goods of the class (u). Thus, in Wilkinson v. Griffith (x), an infringement case, Romer, J., in restraining the defendants from using their label, relied upon evidence that the plaintiff's goods were known as red stamp polish from the figures upon his labels, although it was urged on the defendant's behalf that the plaintiff's claim practically involved a claim to a monopoly in red labelled goods. The judge, however, expressly stated that the plaintiff was not entitled to any such monopoly. "I by no means hold, nor do I think, the evidence as a whole can fairly be said to establish," he said, "that any red mark on a label of the defendant would render that label deceptive. I can imagine many red marks, or even red medals, being so used as to prevent deception." But it is for the applicant for registration of the mark which is alleged to be deceptive to make it clear that it is not. (u) Wotherspoon v. Currie, 5 L. R. H. L. 508 (1872), (Glenfield Starch); Montgomery v. Thompson, (1891) A. C. 217; 8 R. P. C. 361, (Stone Ales.) It is to be noted, however, that these were both cases of at tempted frauds. Johnston v. OrrEwing, 7 App. Cas. 219 (1882) H. L., (Two Elephant Yarns). (x) 8 R. P. C. 370 (1891), Romer, J., (Red Stamp Polish). Evidence (y). material to blance. It follows that upon any question with respect to the Evidence registration of a mark which arises under sub-sect. 72 (2) the question it is material for the comptroller or the Court to be fur- of resemnished with evidence of the matters of fact involved in the propositions stated above wherever it is alleged that they tend to increase or diminish the resemblance referred to in the sub-section. evidence as to Besides this evidence, the evidence of persons who are Expert well acquainted with the trade concerned is constantly probability of tendered by the parties to show that in the opinion of deception. such persons, as experts, the alleged resemblance between the contrasted marks is, or is not, calculated to deceive. Judges have often expressed much impatience of evidence of this class (z), and certainly it frequently presents in an eminent degree the characteristic vices of expert testimony. It consists in general of opinions formed after the dispute has arisen; not upon any judicial balance of the opposing contentions, but upon a scrutiny of the subject directed to discover what can be said in favour of one side only. And where the question is as to the degree of a resemblance between two words or designs, or as to whether a difference in particular parts of two contrasted labels is substantial or immaterial, reasons can rarely be found by the witnesses to recommend an opinion to anyone who has not conceived it for himself without their assistance. The judge must in the end act upon his own view upon a comparison of the marks, having regard to the matters of fact referred to above (a); but it is settled that the expert evidence is admissible, and in particular cases it (y) As to the evidence upon applications to register generally, see Chap. IV., pp. 73, 74 and 83. Where the appeal to the Court is by summons the evidence should be completed before the adjournment into Court, per Stirling, J., in Jackson & Co. v. Napper, 35 C. D. p. 166; 4 R. P. C. 45. (2) Re Jelley, 51 L. J. Ch. 639, n., Jessel, M.R. (1878); Pinto v. Badman, 8 R. P. C. 181 (1891) C. A. (a) The question is to be decided partly by the judge's eyesight, and partly by his view of the evidence. Farrow's Tm., 7 R. P. C. 260; 63 L. T. 233 (1890), Stirling, J. Direct evidence of deception. may be of importance, for evidence of what are the surroundings of the marks and the circumstances of the trade concerned may not suffice to enable the Court to judge sufficiently of the influence which a practical acquaintance with such matters would have upon the impression made by the marks on the minds of persons engaged in the trade. Thus, in Mitchell v. Henry, the case of the coloured thread marks woven into the selvages of cloth, Cotton, L.J., considered the probability of deception essentially a question for experts (b). Evidence of ordinary members of the public who are not probability of acquainted with the usages of the trade involved, or even of experts, that they think they would, or would not be deceived by the resemblance of one mark to another, is of little assistance in the determination of questions of alleged deceptive similarity (c). Evidence of actual deception. If one or more cases of actual deception are made out to the satisfaction of the Court, this will, of course, afford very strong evidence that the resemblance of the marks in question is so close as to be calculated to deceive. But the absence of evidence of actual deception is a circumstance which varies greatly in weight according to the nature of the case. It is conceived that it can never be conclusive by itself (d); but where the marks have been circulating side by side in the market where deception is alleged to be probable, the fact that no one appears to have been misled is very material (e), unless the (b) 15 C. D. p. 195 (1880); and see Christiansen's Tm., 3 R. P. C. 54 (1885), Chitty, J., and C. A. (c) See Kutnow's Tm., 10 R. P. C. (d) Edelsten v. Edelsten, 1 D. G. absence of evidence is ex J.; Reddaway Co. v. Bentham Hemp Spinning Co., (1892) 2 Q. B. 639; 9 R. P. C. 503, C. A.; Paine & Co. v. Daniell & Sons' Breweries, (1893) 2 Ch. 567; 10 R. P. C. 71, C. A. (e) Cope v. Evans, 18 L. R. Eq. 138 (1874), Hall, V.-C.; Rodgers v. Rodgers, 31 L. T. 285 (1874), Mellish, L.J.; Estcourt v. The Estcourt Hop Essence Co., L. R. 10 Ch. 276 (1875), C. A.; Lambert's Tm., 5 R. P. C. 556; 61 L. T. 138 plained by the difficulty of procuring witnesses from a distant foreign market (ƒ), or otherwise, satisfactorily. On the other hand, if one or both of the marks is new or nearly new, there can have been no opportunity, or little opportunity, for deception to occur. illustrations. The cases following, of marks held to have, or not to Examples and have, such resemblance to each other as to be calculated to deceive, illustrate the principles referred to above. Many of them have been cited already. Contrasted Devices. A pointer eating out of a pot, too near for registration to a similar dog standing by a pail with STANCH beneath it; Jelley's Application, 51 L. J. Ch. 639, n. A twisted curved horn, with a twig bearing two roses, too near a similar untwisted horn with a cord having two loops in the same place as the roses in the twig; Rosing's Application, 54 L. J. Ch. 975, n. A triangular frame with words upon it and a church inside, too near Bass's solid triangle; Worthington's Tm., 14 C. D. 8; so also a red diamond within a blue diamond; Turney and Sons' Tm., 10 Times L. R. 175. A half-length figure of a milkmaid, with the word Dairy-maid, too near a full length figure of a milkmaid carrying two pails; Anglo-Swiss Condensed Milk Co. v. Metcalf, 31 C. D. 454; 3 R. P. C. 28. A woman's head wearing a helmet with ATHENA beneath, not too near a man's head with WAY beneath; Lyndon's Tm., 32 C. D. 109; 3 R. P. C. 102. A tower in an oval border, with a dog and harp, too near a tower, dog, and harp without any border; Speer's Tm., 4 R. P. C. 521. An oval label containing interlaced triangular frames with a stag's head within them, too near an oval label with three superimposed solid triangles, although the lettering on the marks was conspicuously different; Biegel's Tm., 4 R. P. C. 525; 57 L. T. 247. A sheep suspended by its middle, with words GOLDEN FLEECE, too near a somewhat different the (1888 Rawe at p. North, J.; and Baker v. on, 45 C. D. 519; 8 R. P. C. 107 (1889), North, J.; Talbot's Tm., infra, p. 229. (f) Wilkinson v. Griffith, 9 R. P. C. 370 (1891), Romer, J. |