Lord Tomlin considered how the Registrar of Tade Marks should exercise his discretion as to potentially confusing trade marks: ‘In my opinion, when once the two factors, viz., the previous registration of the Appellants’ mark and the Respondents’ knowledge of the Appellants’ mark have fallen into their right perspective, the case becomes easy of decision and should in my opinion be determined in favour of registration for the following reasons:- (1) While recognising the possibility in certain, perhaps somewhat remote, contingencies of confusion from phonetic similarity between the two words and giving due weight to the possibility of mistake arising from inaccurate or ill-remembered impression on the mind of one or other of the marks, I am of opinion that the possibility of confusion is slender. (2) The choice of the word ‘Abermill’ was honestly made. (3) Five years’ honest concurrent user has been proved. (4) It is the user and not the registration which is liable to cause confusion, and the commercial user has not produced any proof of confusion. This fact cannot be regarded as unimportant even though allowance be made for difficulty of proof; and (5) the Appellants’ trade is small, and for some years has remained more or less stationary. The Respondents, on the other hand, have built up with their trade mark a large and increasing business.
Bearing these matters in mind, the hardship to the Respondents of refusing registration appears to be out of all proportion to any hardship to the Appellants or inconvenience to the public which can possibility result from granting it.’
Judges:
Lord Tomlin
Citations:
(1933) 50 RPC 147
Statutes:
Cited by:
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: 01 May 2022; Ref: scu.258734
