Buckley LJ said: ‘The registration of a trade mark does not confer any right at all of the description there pointed to, but it does confer a right, and the only right is the right to prevent anybody else from using that trade mark for their goods, but it does not give the registered owner of the trade mark any right to use that trade mark if the trade mark would deceive. I conceive that if at the date when application is made to register a trade mark there is no good ground of objection upon the footing that it will be calculated to deceive, and if subsequently by alterations in the character of the business of the two parties respectively the use of the trade mark will be calculated to deceive and a passing-off action were brought by one party against the other, it would be no defence at all on the part of the owner of the registered trade mark to say – ‘Deception or no deception I am entitled to it because that is my registered trade mark’. That could not be advanced for one moment. In other words, the registration of a trade mark does not confer any right to do that which could not have been done irrespective of the trade mark, in the sense of doing any acts which would be competition in business. The only right which it confers is a right to restrain others from using that trade mark.’
Buckley LJ
(1907) 24 RPC 249 (CA)
England and Wales
Cited by:
Cited – Inter Lotto (UK) Limited v Camelot Group Plc ChD 6-Jun-2003
The claimant asserted that the defendant had infringed its goodwill in the name ‘Hot Picks’ the defendant argued that it was licensed to use the mark by the person who applied for its registration as a trade mark, and that the claim in passing off . .
Lists of cited by and citing cases may be incomplete.
Updated: 17 September 2021; Ref: scu.183340
