..Legal..

Progress, 1 October 1907, Page 433

..Legal..

Contributed by H. F. yon Haast, M.A., LL.B

Trade Mark. Registration. Resemblance to Existing Trade Mark. Calculated to Deceive — L,ever Brothers' trade mark for soap is the word "Sunlight." Messrs Newton & Son applied to the Registrar of Trade Marks to register the words •' Rising Sun " as the trade mark for their soap. "The Patents, Designs, and Trade Marks Act 1589," provides that "the Registrar shall not register with respect to the same goods, or description of goods, a trade mark having such resemblance to a trade mark already on the register with respect to such goods or description of goods as to be calculated[to deceive." Held by the^Court of Appeal that the applicant, who seeks to register a trade mark, must justify its registration by showing affirmatively that it is not calculated to deceive, and that, if there is any doubt whether it is so calculated or not. his application is disallowed It does not follow, however, that an injunction would be granted to prevent the use of the words sought to be registered as a trade mark. In the case of an application to register a trade mark the onus of proof that it is not calculated to deceive rests on the applicant. In the case of an action for infringement the onus of prooi that the trade mark alleged to infringe is calculated to deceive rests on the party alleging infringement. Held further that the words " Rising Sun " so resemble "Sunlight" that they are calculated to deceive, as the same symbol may be used to denote each phrase, and therefore the words convey substantially the same idea. The registration of " Rising Sun " was therefore not allowed. — Lever v. Newton, IX. Gazette, L.R., 448.

Trade Mark. Passing off. "Star" Cycles.— The Star Cycle Co., Ltd. had carried on business for many years at the Stai Cycle Works, Birmingham, and the cycles made by them were known as "Star" Cycles. The Company had, as its registered trade mark, the device of a "star" in connection with their cycles. Fiankenburgs carried on business at Birmingham as manufacturers and dealers in cycles and parts, purchasing the component pa^ts of cycles from various manufactuiers and either reselling them or making up and selling the complete cycles, but to members of the trade only. Frankenburgs quite innocently adopted and used for their cycles the name of "Midland Star Cycles," and issued advertisements of these "Midland Star Cycles." The Company sued them for passing off and infringement of the trade mark, claiming to be entitled to the exclusive use of the word "Star," alone or in combination. At the trial it was proved that a number of cycles had been sold by various manufacturers as "The North Star," "White Star," "Silver Star," "Star of the West/ and so on, and that this use of the word ''Star" had never been challenged by the Company, and that no confusion had ever arisen between Ihe Company's Cycles and Frankenburgs. Held by Swinfen Bady, J., that the Company had no exclusive right to the use of the word "Star," that there was no probability of Frankenburg's Cycles being passed off as those of the Company or of the trade being deceived. The action was therefore dismissed t — Reports of Patent, etc. Cases, Vol. 24, p. 4g*