British Colloids, Ltd v Controller of Industrial and Commercial Property

• Jurisdiction: Ireland
• Judgment Date: 01 August 1942
• Date: 01 August 1942
• Court: King's Bench Division (Ireland)

British Colloids v. Controller of Industrial Property

In the Matter of the INDUSTRIAL AND COMMERCIAL PROPERTY (PROTECTION) ACT, 1927, and in the Matter of two Applications Numbered 45/41 and 46/41 for Registration of a Trade Mark in Part B of the Register of Trade Marks

On The Application of BRITISH COLLOIDS, LTD., to THE CONTROLLER OF INDUSTRIAL AND COMMERCIAL PROPERTY

Trade mark - Application for registration - Whether mark capable of distinguishing goods - Refusal of Controller to register in Part B, Classes 3 and 5 under Industrial and Commercial Property (Protection) Act, 1927 (No. 16 of 1927), s. 86, sub.-s. 2.

The applicants brought two applications for the registration of a trade mark in Part B, Classes 3 and 5, of the Registrar of Trade Marks established by the Industrial and Commercial Property (Protection) Act, 1927, in respect of toilet and medicated preparations, consisting of the words "Crookes' Lacto-Calamine."

The Controller, without examining the evidence of user, rejected the two applications for registration on the ground that he was not satisfied that the mark was capable of distinguishing the applicants' goods.

On appeal to the High Court:

Held that the applicants were entitled to a declaration that the mark was not incapable of distinguishing their goods in both Classes and that the Controller be directed to proceed with the applications accordingly.

Summary Summons brought by British Colloids Limited, proprietors of the Crookes' Laboratories, Gorst Road, Park Royal, London, by way of appeal from a decision of the Controller of Industrial and Commercial Property, whereby he refused to accept two applications of the applicants for registration in Part B of the Register of Trade Marks consisting of the words "Crookes' Lacto-Calamine" in Class 3 for toilet preparations containing calamine for the skin (being Application No. 45/41), and in Class 5 for medicated preparations containing calamine for the skin (being Application No. 46/41.)

The special indorsement of their claim on their summary summons claimed:—

"1. That the said decision be reversed and discharged in its entirety.

An order directing the Controller to proceed with the said application, No. 45/41.

3. An order directing the Controller to proceed with the said application, No. 46/41.

4. If necessary, or expedient, a declaration that the said trade mark is not incapable of distinguishing the said goods of the applicant."

An affidavit in support of the claim was made by Mr. A. B. Tomkins, in which he referred to the documents and materials before the Controller.

The grounds of the appeal were that the Controller misdirected himself in law and that his decision was contrary to law and fact.

The judgment of the Controller was as follows:—

The applicants, in their form of application described as manufacturers, applied under s. 86 of the Industrial and Commercial Property (Protection) Act, 1927, on the 24th of March, 1941, for the registration in Part B of the Register of a mark consisting of the words "Crookes' Lacto-Calamine."

Two applications were made, in one, registration was sought in Class 3 in respect of toilet preparations containing calamine for the skin, and, in the other, registration was sought in Class 5 in respect of medicated preparations containing calamine for the skin.

In a declaration lodged in support of the applications it was claimed that the mark had been used in this country on both classes of goods since January, 1939.

Objection was raised to the mark and on the 24th of April, 1941, the applicants were informed that the mark did not appear to be capable of distinguishing the applicants' goods and would appear, therefore, to be incapable of registration. They were informed at the same time that if they desired to argue the matter a hearing would be appointed for the purpose.

The applicants applied for a hearing under Rule 104 of the Industrial Property Rules, 1927, and the hearing was taken on the 25th of November, 1941.

Mr. Tomkins, who appeared on behalf of the applicants, submitted that as the application was for a Part B registration the mark should not be subjected to the same strict tests as would necessarily be applied in the case of a Part A application. He claimed that the present mark was far less objectionable than, say, Milk of Calamine, in which connection he drew my attention to the fact that the words"Milk of Magnesia" had been registered. In reply to my inquiry as to whether the words "Lacto-Calamine" were not generic he reluctantly agreed that that was so, although he claimed the hyphenated word to be invented. He contended that, while in an indirect sense, the words were used as description of the goods, this should not necessarily preclude the mark from being capable of distinguishing his clients' goods. Mr. Tomkins referred me to some decided cases, particularly La Société Le Ferments' Application(1),and F. Hewthorn's & Co's Application(2). He relied upon the former as support for his claim that the hyphenated word "Lacto-Calamine" was an invented word, and that as such it was entitled to registration, while the latter case, he contended, was useful as showing that while part of a mark proposed to be registered might conceivably be held to be descriptive, that in itself was not a bar to registration in Part B. I can at once see a clear distinction between the present case and the former, since the decision to register in that case followed upon the finding that the word in question, "Lacto-Bacilline," was an invented word, whereas, in my view, the word in the present case could not be held to be invented. In the other case it is clear from the judgment that acceptance of the mark "Hewthorn's Gaseous Black Fluid" was allowed only on the applicants agreeing to a limitation to colours.

Mr. Tomkins claimed that his clients were the only traders to use the word "Lacto-Calamine," and he argued at some length that this fact merited special consideration. The evidence submitted by Mr. Tomkins at the hearing included newspaper advertisements and trade show cards, a sample of their goods in a labelled bottle, and some labels, in most of which the word "Crookes'" appeared in a smaller type than the word "Lacto-Calamine." So emphasised is this difference in type size that in many instances at a comparatively short distance the word...