sheep with the same words; The Australian Wine Importers' Tm., 41 C. D. 278; 6 R. P. C. 311. A pig in outline, and H. B. & Co., not too near shaded pointer dog, and STANCH; Haines, Batchelor & Co.'s Tm., 5 R. P. C. 669. A tobacco pipe and dart, not too near a tobacco pipe alone; Lambert's Tm., 5 R. P. C. 542; 6 R. P. C. 344; 61 L. T. 138. A charging buffalo, too near a bull's head, both being placed in silver rings on similar yellow wrappers; Farrow's Tm., 7 R. P. C. 260; 63 L. T. 233. A mark having as its sole essential particular a lion bearing a sheaf, too near a mark having as an essential particular a lion with a crown; Murphy's Tm., 7 R. P. C. 163. An elephant in a border with lettering round it, an infringement of a somewhat different elephant alone; Upper Assam Tea Co. v. Herbert & Co., 7 R. P. C. 183. A label bearing a winged cross surrounded by two circles in its upper third, not an infringement of a similar label, being a lighthouse similarly surrounded and placed; Baker v. Rawson, 45 C. D. 519; 8 R. P. C. 89. A label with two red medals and a balloon, an infringement of a similar label with two red medals only, both labels being used for polish known in India, from the latter label, as red metal polish; Wilkinson v. Griffith, 8 R. P. C. 370.

Contrasted Words.

WHITE ROSE, too near ROSALINE; White Rose Tm., 30 C. D. 505. CONDI-SANITAS and SANITANT infringements of SANITAS; Sanitas Co. v. Condy, 4 R. P. C. 195 and 530; 56 L. T. 621. BOYD'S UNRIVALLED HARNESS COMPOSITION, in a label with the Arms of the City of Dublin, not an infringement of PROPERT'S IMPROVED HARNESS COMPOSITION in a label, with a fox's head, the labels being similarly got up; Beddow v. Boyd, 4 R. P. C. 310. APOLLINIS an infringement of APOLLINARIS; Apollinaris Co. v. Herrfeldt, 4 R. P. C. 478. STEINBERG, an infringement of STEINWAY, the words being used with devices showing a general similarity; Steinway v. Henshaw, 5 R. P. C. 77. EMOLLIO too near EMOLLINE; Grossmith's Tm., 6 R. P. C. 180; 60 L. T. 612. SWIFT'S SPECIFIC

occurring in a trade-mark not calculated to deceive, merely because the words were descriptive of the opponent's drug; Swift Specific Co.'s Tm., 6 R. P. C. 352. Оомоо, not too near EMU; Burgoyne's Tm., 6 R. P. C. 229; 61 L. T. 39. Kококо, too near the common word. Coco; Jackson Co.'s Tm., 6 R. P. C. 80. DEMOTIC, an infringement of DEMON; Slazenger v. Feltham, 6 R. P. C. 531. DUNN'S FRUIT SALT BAKING POWDER, too near ENO'S FRUIT SALT; Eno v. Dunn, 41 C. D. 439; 15 App. Cas. 252; 7 R. P. C. 311; subsequently held to be an infringement, 10 R. P. C. 261. EL DEVINO, an infringement of EL DESTINO; Pinto v. Trott, 8 R. P. C. 173. Label with EL DESTINACION, an infringement of a similar label with EL DESTINO; Pinto v. Badman, 8 R. P. C. 181. Label with LONDON PICKLES, an infringement of similar label with LONDON PICKLE Co.; Hammond v. Malcolm, Brunker & Co., 9 R. P. C. 301.

III. Deceptive Marks.

It is provided by sect. 73 that

marks.

"It shall not be lawful to register as part of, or in Sect. 73. combination with a trade-mark any words the exclusive Deceptive use of which would, by reason of their being calculated to deceive or otherwise (g), be deemed disentitled to protection in a court of justice, or any scandalous design."

This is taken from sect. 6 of the Act of 1875, except that in the last line "justice" is substituted for "equity," and the word "exclusive" which qualified "use," both in the old Act and in the Act of 1883, was removed, upon the suggestion of Lord Herschell's Committee, by the Act of 1888. The Committee say: "Words might be offered for "Exclusive registration in conjunction with a trade-mark for which use." the applicant did not claim, and of which he would not be entitled to the exclusive use, but the use of which might

(g) See p. 217, below.

K.

P

The section extends be

yond the old

rule of estoppel by misrepresentation.

Case.

"nevertheless be calculated to deceive, and so be disentitled to the protection of a court of justice."

The restriction of the section would not seem to be carried any further by sect. 86, which authorizes the comptroller to refuse to register a trade-mark of which the use would, in his opinion, be contrary to law or morality.

The provisions of the section were, no doubt, intended to embody the old rule of the Court of Chancery, which refused protection to the owner of a deceptive trademark(); and it was held, by Jessel, M.R., that their operation was confined to cases where the marks were in themselves inherently deceptive (i); but the Courts have held that the restriction is of wider scope than the old The Fruit Salt rule, or than this construction would suggest (k). The leading case in point is Eno v. Dunn (1), in which the House of Lords (Lord Halsbury and Lord Morris dissenting) overruled the judgment of the Court of Appeal (Lindley and Fry, L.JJ., Cotton, L.J., dissenting), and restored that of Kay, J. The question in that case was whether the words fruit salt occurring in a mark consisting of the words Dunn's Fruit Salt Trade-Mark Baking Powder, and in a mark consisting of a distinctive label, quite different in character from the device used by the opponent, Eno, and bearing the words Dunn's Fruit Salt Baking Powder, were calculated to deceive, having regard to the well-known use of the words as the name of Eno's Fruit Salt. Eno, in the first instance, based his opposition to Dunn's application to register his marks partially upon his title as the owner of the mark "Fruit Salt," registered as

(h) See Chap. XV., p. 336; and Lord Macnaghten's judgment in Eno v. Dunn, infra.

(i) Horsburgh's Application, 53 L. J. Ch. 237 n. (1878), (Valvoleum).

(k) See the judgment of Cotton, L.J., in which the majority of the law lords concurred, in Eno v.

Dunn, 41 C. D. p. 448.

(7) 15 App. Cas. 252; 7 R. P. C. 311; Dunn's Tm. (1889), subsequently an injunction was granted to restrain Dunn & Co. using the words Fruit Salt; Eno v. Dunn, 10 R. P. C. 261 (1893), Kekewich, J.

new marks to

"a proprietary medicine for human use," and also as a "dry preparation for making a non-intoxicating beverage"; but finding that he could not prove user of that mark before 1875, and the words were consequently not capable of registration, he was driven to consent to its removal from the register, and to rely wholly upon the alleged deceptiveness of the marks propounded by Dunn. The marks were normally used for different goods. Dunn's preparation was a baking powder, and Eno's an aperient effervescing powder; but evidence was given that, in a very few instances, Eno's salt had been used as a baking powder, although it was shown to be very unsuitable for the purpose. The majority of the law lords held that Dunn's marks were deceptive, and the application to register was dismissed. Lord Herschell and Lord Macnaghten based Doubtful their judgments upon the discretion conferred on the be rejected. comptroller-apart from the sections considered in this chapter-to refuse marks from which it is not clear that deception might not result. Lord Herschell said: "I Lord Herthink it is enough to say that I am not satisfied that there schell's judgwould be no reasonable danger of the public being so deceived. The case was argued on behalf of the respondent, as if he had an absolute right to have any trademark registered which was not proved to fall within the terms of either the 72nd or 73rd section of the Act. I do not so read the statute. Those sections prohibit the registration of a trade-mark in certain specified cases; but there is no duty cast upon the comptroller of registering every other trade-mark that may be applied for. On the contrary, whilst he is in certain cases prohibited from registering, a discretion whether to register or not appears to me to be in all cases fairly conferred." And Lord Lord Macnaghten's Macnaghten said of the marks: "They are calculated, judgment. and I think designed, to create a confusion in the minds of those persons to whom Mr. Dunn's advertisements are addressed, and to lead the ordinary run of such persons to suppose that his baking powder is in some way or other

ment.

Lord Watson's judgment.

Mark contain

ing name of the opponent's goods

"connected with Mr. Eno's preparation"; and he held, therefore, that the marks ought to be rejected, for the "comptroller ought to reject words which involve a misleading allusion or a suggestion of that which is not strictly true, as well as words which contain a gross and palpable falsehood."

Lord Watson, on the other hand, treated the case as one falling within the 73rd section. "These prohibitory clauses," he said, referring to sects. 73 and 72 (2), “cast upon the applicant the duty of satisfying the comptroller, or the Court, that the trade-mark which he proposes to register does not come within their scope. In an inquiry like the present, (the applicant) does not hold the same position which he would have occupied if he had been defending himself against an action for infringement. There, the onus of showing that his trade-mark was calculated to mislead rests, not on him, but upon the party alleging infringement; here, he is in petitorio, and must justify the registration of his trade-mark by showing affirmatively that it is not calculated to deceive. It appears to me to be a necessary consequence that, in dubio, his application ought to be disallowed." And upon the question of fact, he said: "There would be a supposed connection in the minds of many persons, who would naturally assume that the baking powder had been manufactured with the appellant's fruit salt, and purchase it in that belief; so that a batch of badly made baking powder might seriously injure the credit of the effervescing powder" (l).

But a mark is not calculated to deceive merely because it contains an ordinary description of an article of commerce which is occasionally used to describe a rival trader's rily deceptive. goods (m). To hold otherwise would certainly be, as Fry, L.J., said, in The Fruit Salt Case, to allow the objector "to enclose and appropriate as private property

not necessa

(1) See above, p. 64, "the Comptroller's discretion."

(m) See Dexter's Application,

(1893) 2 Ch. 262; 10 R. P. C. 269, Wright, J., (Star Tobacco), above, p. 203.