Romer J discussed the test to be applied under section 11: ‘[Counsel] submitted to me the following propositions with regard to this section: (1) In all applications for registration of a trade mark the onus is on the applicant to satisfy the Registrar (or the Court) that there is no reasonable probability of confusion. (2) It is not necessary, in order to find that a mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off. It is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt. (3) In considering the probability of deception, all the surrounding circumstances have to be taken into consideration. (4) In applications for registration, the rights of the parties are to be determined as at the date of the application. (5) The onus must be discharged by the applicant in respect of all goods coming within the specification applied for, and not only in respect of those goods on which he is proposing to use it immediately, nor is the onus discharged by proof only that any particular method of user will not give rise to confusion; the test is: What can the applicant do?
I think that these propositions are, in substance well founded, and I would merely add, with regard to the second of them, the following extract from the judgment of the late Farwell J. in [Wm. Bailey (Birmingham) Ltd.’s Application] 52 R.P.C. 136 at page 153: ‘I think that the Court has to be satisfied not merely that there is a possibility of confusion; I think the court must be satisfied that there is a real tangible danger of confusion if the mark which it is sought to register is put on the Register.’
Judges:
Romer J
Citations:
[1946] RPC 59
Statutes:
Cited by:
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 . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 04 May 2022; Ref: scu.258729