Jacobs J considered the trade marks regulation of double registrations: ‘There is no provision of the Trade Marks Act 1938 which prevents the registration of a mark twice for the same goods by the same proprietor. There is no reason in public policy why that should not happen under the old Act, provided of course that the two registrations were held by the same proprietor. That was bound to be the case if the marks were associated.
The … way in which it was said to be implicit under the old Act that two identical marks could not be registered for the same goods was under section 26. The argument was that a man could keep registering the same mark, thereby avoiding the effect of section 26(1)(b) (non-use for five years). Again it does not seem to me that that provision shows anything of the kind. If a man were to keep registering the same mark with no genuine intention of using it then he would lose his mark under section 26(1)(a) or (b). If, on the other hand, a man had registered a mark with a bona fide intention to use it and found himself unable to use it for a number of years so that the mark was removable under section 26(1)(b) but he still had genuine plans to use the mark then I see no reason why he should not apply again, thereby avoiding the effect of section 26(1)(b).
In practice for very many years many people have been applying for registered trade marks which do cover the same goods as earlier marks registered by them, the mark being the same in both cases. They have done this for the sensible reason that they wanted to upgrade a Part B registration to a Part A registration and sometimes simply because they put in marks with wider specifications of goods. No harm to the public interest in any way has resulted from their doing so.’
Judges:
Jacobs J
Citations:
[1995] FSR 280
Statutes:
Jurisdiction:
England and Wales
Cited by:
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 . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 23 November 2022; Ref: scu.258728