Aristoc Ltd v Rysta Ltd

JurisdictionEngland & Wales
CourtHouse of Lords
JudgeViscount Maugham,Lord Thankerton,Lord Macmillan,Lord Wright,Lord Simonds
Judgment Date08 Dec 1944
Judgment citation (vLex)[1944] UKHL J1208-1

[1944] UKHL J1208-1

House of Lords

Viscount Maugham

Lord Thankerton

Lord Macmillan

Lord Wright

Lord Simonds

Aristoc Limited
and
Rysta Limited, and Another

After hearing Counsel as well on Monday the 26th and Tuesday the 27th, days of June last, as on Monday the 16th, Tuesday the 17th, Wednesday the 18th, Thursday the 19th and Monday the 23d days of October last, upon the Petition and Appeal of Aristoc, Limited, of Langley Mill, Nottinghamshire, praying, That the matter of the Order set forth in the Schedule thereto, namely, an Order of His Majesty's Court of Appeal, of the 9th of March 1943, might be reviewed before His Majesty the King, in His Court of Parliament, and that the said Order might be reversed, varied, or altered, or that the Petitioners might have such other relief in the premises as to His Majesty the King, in His Court of Parliament, might seem meet; as also upon the printed case of Rysta, Limited, and also upon the printed case of The Registrar of Trade Marks (who was by an Order of this House, of the 29th day of February 1944, added as a Respondent to the said Appeal), lodged in answer to the said Appeal; and due consideration had this day of what was offered on either side in this Cause:

It is Ordered and Adjudged, by the Lords Spiritual and Temporal in the Court of Parliament of His Majesty the King assembled, That the said Order of His Majesty's Court of Appeal, of the 9th day of March 1943, complained of in the said Appeal, be, and the same is hereby, Reversed, and that the judgment of the Honourable Mr. Justice Farwell, of the 15th day of May 1942, thereby discharged, be, and the same is hereby, Restored: And it is further Ordered, That the Respondents, Rysta, Limited, do pay, or cause to be paid, to the said Appellants the Costs incurred by them in the Court of Appeal, and also the Costs incurred by them in respect of the said Appeal to this House, the amount of such last-mentioned Costs to be certified by the Clerk of the Parliaments: And it is also further Ordered, That the Cause be, and the same is hereby, remitted back to the Chancery Division of the High Court of Justice, to do therein as shall be just and consistent with this judgment.

1

Viscount Maugham (READ BY LORD THANKERTON)

My Lords,

2

This is an appeal from an Order of the Court of Appeal, England, dated the 9th March, 1943, reversing an Order of Mr. Justice Farwell dated the 15th May, 1942. He had discharged an Order of the Assistant Comptroller acting for the Registrar of Trade Marks dated the 28th July, 1941, and had directed the Registrar not to proceed with the registration of a trade mark consisting of the word "Rysta" propounded by the present Respondents. The ultimate question, therefore, is simply whether the Registrar ought to accept the word "Rysta" for registration as a trade mark under the present Act, namely, the Trade Marks Act, 1938.

3

The application was for a mark consisting of the word "Rysta" alone (a word which according to the evidence is commonly pronounced as if it rhymed with the word "vista") in respect of "stockings which are goods included in class 25 of the classification contained in the Trade Marks Rules, 1938. But the preceding history of the word and the application may not be irrelevant. The Appellants, who opposed the registration, carry on business as manufacturers of, and dealers in, women's stockings. They adopted the invented word "Aristoc" as a trade mark in the year 1923 and have sold silk stockings of their manufacture throughout the United Kingdom to the value of about four million pounds sterling. They are the registered proprietors of some 24 registered trade marks consisting of the word "Aristoc" alone or having that word as the most important and prominent feature.

4

The Respondents have carried on business since 1929. At the date of their application for a trade mark they had neither made nor sold any stockings. They are the owners of an undisclosed process for effecting invisible repairs to ladies' stockings by catching up the broken threads which have caused ladders therein, and this process they have called the "Rysta" process. The word is said to have been devised by two persons whose Christian names were Rydall and Stanley, and it is not suggested that any connection with the word "Aristoc" was intended. The Respondents in general did not deal directly with members of the public. It seems that laundries and retail stores have been accustomed to accept from ladies their stockings which had laddered. These stockings were then on directions of the owners forwarded to the Respondents, who carried out the repairs and returned them to the laundries and retail stores with a printed ticket or label attached in which the word "Rysta" appears in bold type and on which there is letter press indicating that the stockings had been repaired by the Rysta process. The laundries and retail stores then returned the repaired stockings to the owner and accepted payment for the repair work done upon them.

5

On the 10th November, 1938, the Respondents filed their application to register the word "Rysta" as a trade mark in Part A of the Register. The specification of goods in respect of which registration was applied for was stated in the application as "stockings," and re-weaving repairs effected thereto, and the mark was stated to be used by the Respondents, the words in the printed form stating that the mark was "proposed to be used" having been struck out. It is clear that at that date the registration claim was not in respect of a prospective use of the mark, but was in respect of the use they had hitherto made of the word to indicate stockings repaired by the "Rysta" process. At the suggestion of the Registrar or of the Assistant Comptroller acting on his behalf the application was amended by striking out the words "and re-weaving repairs effected thereto", leaving the application as one for goods described simply as stockings. No alteration was made in the statement that the mark sought to be registered was a mark already in use. The registration of the mark was opposed by the Appellants as being calculated to deceive or cause confusion and the objection was also taken that a mark used to indicate repairs to stockings could not be registered. The Respondents put in a counter-statement in which, after stating that they had been engaged since the year 1930 in the business of repairing stockings by the "Rysta" process and that hundreds of thousands of stockings had been repaired by that process annually and that they had circulated in a year no less than four million forms advertising the process, they continued as follows:�

(Para. 3.) "The Applicants intend to offer for sale stockings bearing the brand name 'Rysta' and have applied for registration of the said Mark, which they desire to use to exploit the goodwill built up by them in the said Mark in connection with stockings over the long period of trading by them under the said Mark in connection with their stocking repairing business."

6

It would appear, however, that the Respondents since the original application have formed and expressed by their amended form of application the intention of offering for sale stockings made by them as opposed to stockings of other manufacturers repaired by them. There was no cross-examination or evidence on this question of intention to manufacture, and for the purposes of my judgment I shall accept the view taken by the Court of Appeal that the intention to use the Mark in connection with stockings manufactured or offered for sale by the Respondents has been sufficiently made out.

7

There was no evidence before the Assistant Comptroller as to the mode of pronunciation generally adopted by purchasers or dealers in ladies' stockings of the words "Rysta" and "Ar�stoc", but evidence was filed on the hearing before Mr. Justice Farwell which it would seem established the fact that large numbers of members of the public pronounce the word to rhyme with vista. The evidence also proved that the Appellants' mark "Aristoc" was pronounced by many persons with the emphasis on the middle syllable.

8

A number of points have been argued in the Courts below and before your Lordships. I propose to deal in the main with three questions:�

9

1. Whether the word "Rysta", if used as a trade mark for stockings, so nearly resembles the word "Aristoc" already on the register in respect of the same class of goods as to be likely to deceive or cause confusion within the meaning of Section 12 of the Trade Marks Act, 1938.

10

2. Whether the use by the Respondents of "Rysta" as a trade mark both upon stockings of the Respondents' merchandise concurrently with use by them of the same mark upon stockings which are not their merchandise, but are only repaired by them, is likely to lead to confusion or deception and is therefore unlawful by virtue of the provisions of Section 11 of the Trade Marks Act, 1938, or for other reasons should be rejected by the Registrar.

11

3. The third question is of a more general kind, namely, whether a Mark proposed to be used on or in relation to stockings or other goods for the purpose of indicating, or so as to indicate, the fact that the stockings or the goods had been repaired by the person seeking registration as a trade mark is within the definition of a trade mark contained in section 68 (1) of the Trade Marks Act, 1938, or in other words whether a Mark indicating the mere repair of stockings or, I may add, any other goods is registrable under the provisions of that Act.

12

The Assistant Comptroller decided adversely to the Appellants upon all these questions, and as regards the third question he felt himself bound by a certain ruling of the Comptroller General, which is reported in 45 Reports of Patent Cases, p. vi, to hold that there could be a proper Mark upon cloth sent by manufacturers to...

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1 books & journal articles
  • WHITEWASHING AUSTRALIA'S HISTORY OF STIGMATISING TRADE MARKS AND COMMERCIAL IMAGERY.
    • Australia
    • Melbourne University Law Review Vol. 42 Nbr. 3, August 2019
    • 1 April 2019
    ...Star Milling Co v Metcalf, 240 US 403, 412 (Pitney J for the majority) (1916). For the classic UK statement, see Aristoc Ltd v Rysta Ltd [1945] AC 68, 96 (Lord (18) For an account of the friction between the badge of origin function and the property function in modern trade mark law, see es......

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