The goods specified by the trade mark under attack was ‘all goods in Class 8’. Class 8 read ‘philosophical instruments, scientific instruments and apparatus for useful purposes; instruments and apparatus for teaching’. An application for partial rectification was made on the grounds of non-use. The excision sought was essentially for ‘cinematograph films, talking and silent’. The trade mark owner, a record company, sought to justify the non-user by saying that talkie films had only just become possible and that amounted to special circumstances.
Held: The argument failed and excision was ordered. There was an express excision from the specification of a kind of article (talkies) that did not exist at the time of registration. Where some new variant of an article or service comes into existence after the registration of a trade mark, the issue is whether that new article or service falls within the meaning of the existing specification.
Citations:
(1932) 49 RPC 621
Jurisdiction:
England and Wales
Cited by:
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 13 May 2022; Ref: scu.194800
