A trade mark must be ‘distinctive’, it must be recognisable by a buyer of goods to which it has been affixed as indicating that they are of the same origin as other goods which bear the mark and whose quality has engendered goodwill. Trade Marks legislation must be understood in its historical context.
To understand the words ‘would be disentitled to protection in a court of justice’ in section 6, the court had to return to the practice of the Court of Chancery before the 1875 Act. Legal recognition of trade marks as a species of incorporeal property was first accorded by the Court of Chancery in the first half of the 19th century, and established that there was no need to prove an intent to deceive, that the right was part of the goodwill of a business, and had no existence outside it, that remedies were discretionary in equity, and the that same mark might properly be used by different traders in different locations.
Where goods would be sold to the general public for consumption, a judge is entitled to form his own opinion on the jury question of the likelihood of deception or confusion by the use of the trade mark.’
The question posed by the section is ‘a hypothetical question which first arises on an original application for registration. It looks to the future use of the matter as a trade mark and embraces any normal and fair use which as registered proprietor the applicant would be entitled to make of it in the ordinary course of trade in respect of goods of the class for which it is registered.’
Judges:
Lord Diplock
Citations:
[1973] RPC 297
Statutes:
Jurisdiction:
England and Wales
Cited by:
Cited – Scandecor Developments AB v Scandecor Marketing AV and Others and One Other Action HL 4-Apr-2001
A business had grown, but the two founders split, and set up separate business. There was no agreement as to the use of the trading names and trade marks. The original law of Trade Marks prohibited bare exclusive licenses, licences excluding the . .
Cited – Cussons (New Zealand) Pty Limited v Unilever Plc and others PC 20-Nov-1997
(New Zealand) The defendants appealed against an interlocutory injunction restraining them from use of a trade mark which was said to be infringing. The mark had not been used and was vulnerable to being removed, and Cussons applied for the removal . .
Cited – Hunt-Wesson Inc v Chocosuise CA 2-Jul-1998
The applicant had sought registration of the ‘Swiss Miss’ mark. Objection was raised on the ground that it was misleading in suggesting any connection with Switzerland.
Held: The appeal succeeded as to some uses, but not in general. The court . .
Cited – Premier Luggage and Bags Ltd v The Premier Company (UK) Ltd and Another CA 26-Mar-2002
The owner of a registered trade mark ‘Premier’ sued for swing tags which carried the defendant’s full name ‘The Premier Company (UK) Ltd.’.
Held: A trade mark use can fall within the scope of the Art 6.1 defence. There there was no passing off . .
Cited – Anheuser-Busch Inc v Budejovicky Bodvar Narodni Podnik; Budejovicky Bodvar Narodni Podnik v Anheuser-Busch CA 7-Feb-2000
The registration of two trade marks (‘Budweiser’) with the identical names was against the Act since it would appear to encourage the very confusion the Act sought to avoid. Nevertheless, where there was genuine honest concurrent use, that use might . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 18 November 2022; Ref: scu.181225
