LAW REPORTS.

Dominion, Volume 6, Issue 1625, 17 December 1912, Page 11

LAW REPORTS.

SUPREME COURT, (Before his Honour Mt. Justice Sim.). POINTS IN THE PATENT LAW. TRADE BRANDS, TWO INTERESTING CASES, Mr. Justice Sim has delivered judgment in connection with several applications to register trade marks. These cases were recently before the Snprome Court. The Auto-strop Razor. The first case of the series was that in which H.' Hughes, Ltd., on behalf of the Aufco-strop Razor Co., Ltd., of New York, asked for leavo to .proceed with an application to the .Registrar of Patents for registration of the word "auto-strop," as the trade mark for razors, safety razors, and blades. Mr. T. Young appeared in. support of the application, and Mr. H. H. Ostler, of the Crown Law Office, appeased for the Registrar, The name was claimed to be a distinctive mark within the meaning of paragraph te) of Sub-section 1, of Section 61 of the Patents, Designs, and Trade Marks Act, 1911, and as it did not fall within the descriptions •in the four preceding paragraphs of that Subjection, it was necessary to obtain the leave of the Court to proceed with the application. In giving judgment on the matter, his Honour said!— "The provision contained' in paragraph (e) of Sub-section 1 of Section 64, is new in New Zealand, and has been taken from Sub-section 5 of Section 9 df the Englisn Trade, Marks Act, 1905. Tho principles which ought to govern Courts in applying the sub-section have been discussed in a tfumber of cases in England, including several decided by. the. Court of Appeal. •In the case of in ro Crosfield,'- Cozenstfardy, M.R., made the following observations on the subject: 'The duty of the tribunal, is not to declare that the mark ought to be registered, but only to give lilierty to proceed with the application. Such liberty ought to be given when there is a sufficient prima facie case mado out. And whenever'there'has been long continued and extensive user as a trade mark, that circumstance. should, in ordinary cases, suffice to establish a right to proceed. But mere user is not necessarily decisive. The words in the proviso are "may take into consideration," and these words ttiust not be treated as equivalent- to a positive command to grant the application. A' wide- discretion is vested in the tribunal.' In that case it was held that a mere laudatory epithet' could not acquire by user the quality of distinctiveness 60 as 'to.render it capable of registration." J His' Honour then referred to the case of in re Cassella, in which an application was made to register tho word "Dia. mine" for" dyes. It was not an. invented word, but was a known English technical word, indicating that the body to which it was applied had a certain composition, and contained two amine groups. • It was held by. the Court of Appeal not to be a distinctive mark within the meaning of the sub-section, although it had been used by tho applicants as a trade mark for 20 years, and had become extensively -knowu to the trade, in the United Kingdom as indicating the goods .of the applicant.- ■ "The name in the present case,"/continued his Honour, "is not open to the objection'that was fatal to the application in the last-mentioned case. Tho oollocatioh of the two words forming tho name appears to- have originated . with the. applicant, and it cannot bo 6aid to form ,nart of the common stock of the English language. What I have to consider is whether it is' adapted to distinguish tho goods of the applicant from those of-other "manufacturer's "..of razors and. razor blades. In the opinion of Fletcher Moulton, L.J., in Crosfield's case, there may be an acquired distinctiveness in connection with a collocation of words, which, taken separately, might be descriptive words in common use.- It is olaimed that in the present case there is such an acquired.- distinctiveness by reason of user. It- appears from tho affidavit of Mr. Brodrick, the agent in New Zealand for the applicant, that razors, safety razors, and blades' manufactured by the applicant have been imported continuously into New Zealand since June, 1907, .arid that large sales of them havetaken'place.. .These goods. have.been all' ■branded- with the name, 'Auto-Strop I ,'' and ljaSe been sold under- such name as a tradeyniark.. It appears also from, Mt. ; Brodrick's affidavit, and, on' this point; his evidence is corroborated by that of the other deponents, that it has' become the custom of the trade to order the apgoods under.the name 'AutoStrop,' and that no customer expects to be supplied with.the goods of any other manufacturer under that name. It is clear from the evidence that from the . first there has been a boha-fido use of tho name as a trade mark, and that it is now distinctive of the applicant's goods. I think, therefore, that a prima facie case has been made out, and that the application should be allowed to proceed. The effect of granting the application will not ibe to give the applicant an exclusive right to the use of the word 'strop' in connection with razors. Under Section 97 of the Act, which corresponds with Section 44 of tho. English Act, even after registration any trader,may use the word in any bona-fide"description of his goods. I make an order- then declaring that for the purpose of the application to the Registrar the mark 1 is to be 'deemed a distinctive mark within Paragraph (o) of Sub-Section 1 of Section 64 of the Act, and that the Registrar is to proceed with the. appli-' cfttion accordingly. As the applicant had to bring the matter before the Court, and had to give notice to the Registrar of-the application, it was proper for the Eegistrar to be represented by counsel, and his costs ought to be paid i>y the applicant. I fix these costs at £5 55." ' "Brilliant" and "Mils. End" on Crochet Cotton. The other judgments given, by his Honour: were in connection with twomotions by Clark arid Co., Ltd., sewing cotton manufacturers, of Anchor Mills, Paisley, Scotland. Mr. W, H. D. Bell appeared in support of both motions, while Mr. H. B. Ostler, of the Crown Law Office, appeared for the Registrar of Patents. . In tho first motion, the company asked for an order directing the Registrar of Patents to proceed with the application for registration of the word "Brilliant" as a trado mark in respect of crochet cotton, manufactured by the company. The application was riiade upon the grounds that the word "Brilliant" ia a distinctive mark within the provisions of Section 64 of the Patents, Designs, and Trade Marks Act, 1911, and upon further grounds set out in affidavits. The second motion was in respeot of tho words "Mile End," also to be used as a trade mark for crochet cotton.' The application for registration of those words was made on similar grounds to that of tho first one.

In each instance his Honour made an order allowing the applications to prooeed. The applicants were ordered to pay the Registrar's costs. MARGARINE. NOT AN OFFENSIVE TRADE. In the Supreme Court yesterday morning Mr, Justice Sim delivered reserved judgment in an appeal from a magisterial decision. The parties were James Doyle, corporation inspector, appellant, and Robert Hall, margarine manufacturer, respondent. The City Solicitor (Mr. J. O'Shea) appeared for the appellant, while Mr. M. Myers appeared for the respondent. In the original action in the Court below, Hall was charged with carrying on an offensive trade, viz., melting tallow iii Martin Street, Wellington. Tho information was heard on July 26 last before Mr. W. G. Riddoll, S.M. On August 10, his Worship delivered reserved judgment in tho course of which ho said that tho main object of tallow melting works was to produce tallow, bnt the tallow molting by defendant ivm only port of tho procesa of tho manufacture ot,

margarine. The evidence of the majority of the witnesses had shown clearly that uo nuisance had been created. The tal-low-melting trade referred to by the Public Health Act had to bo offensive, in fact, before it could bo termed offensive, and not nieroly auxiliary to another trade authorised by a different statute. The information was dismissed, and the informant (Doyle) was ordered to pay costs amounting to two guineas. It was from this decision that Doyle appealed, on the ground that it was err roneous in law.

His Honour said yesterday that it was pot necessary for the corporation to prove in. fact that the trade was offensive. The fact that the trade was described as offensive under the statute was sufficient. In this particular case, however, the work of tallow-melting was incidental to the manufacture of margarine, and the trade of tallow-melting was not engaged in. On this ground the magistrate's 'decision would be upheld. Accordingly the appeal was dismissed, with five guineas costs.

HAND-MADE WRITING PAPER. THREE HUNDRED BOXES. Three hundred boxes of hand-made writing paper, which it was said were sold and not delivered, formed the subject of a civil claim in the Magistrate's Court some weeks ago, and yesterday the matter waß re-opened in the Supreme Court before.Mr. Justice Sim by way of an appeal from th© magistrate s decision. The appellants were Whitcombe and Tombs, Ltd., of Wellington,... and. the .respondent- was George Lincoln Cole, of Carterton. Mr. T. Neave appeared for Whitcombe and Tombs, while Mr. T. E. Maunsell, of Carterton, appeared for Cole. In the original action in the Court below, G. L. Cole, bookseller, Carterton, claimed .£26 55., as damages for 300 boxes of hand-made writing paper which, it was said, Whitcombe and Tombs, of Wellington, had agreed to forward to the plaintiff, but had not done so. It appeared that Cole visited Whitcombe and Tombs's bulk store in Featherston Street when stock salvaged from the. fire was being sorted and priced. Assistants had been instructed to make no sales before the advertised date of the salvage sale, and the doors were kept closed to the general public. Cole, however, saw one of the Ann's travellers (Bcavis), who showed him the paper in question, and .who made the sale. Whitcombe and Tombs said that Beavis was not authorised, to-make the sale, but the magistrate gave-judgment for Cole for .£ls and costs. It was from this decision' that Whitcombeand Tombs now appealed on the ground that it was erroneous in law.

After hearing argument, his Honour reserved decision.