General Electric Company v The General Electric Company Ltd
| Jurisdiction | UK Non-devolved |
| Judge | Lord Reid,Lord Diplock,Lord Simon of Glaisdale,Lord Kilbrandon |
| Judgment Date | 26 April 1972 |
| Judgment citation (vLex) | [1972] UKHL J0426-1 |
| Date | 26 April 1972 |
| Court | House of Lords |
[1972] UKHL J0426-1
Lord Reid
Lord Diplock
Lord Simon of Glaisdale
Lord Kilbrandon
House of Lords
Upon Report from the Appellate Committee, to whom was referred the Cause General Electric Company against The General Electric Company Limited, that the Committee had heard Counsel as well on Monday the 31st day of January last, as on Tuesday the 1st, Wednesday the 2d, Thursday the 3d, Monday the 7th, Tuesday the 8th, Monday the 14th, Tuesday the 15th, Wednesday the 16th, Thursday the 17th, Monday the 21st, Tuesday the 22d, and Wednesday the 23d, days of February last, upon the Petition and Appeal of General Electric Company, of 1 River Road, Schenectady, State of New York, United States of America, praying, That the matter of the Order set forth in the Schedule thereto, namely, an Order of Her Majesty's Court of Appeal of the 19th of March 1970, might be reviewed before Her Majesty the Queen, in Her Court of Parliament, and that the said Order might be reversed, varied or altered, and that the Petitioners might have the relief prayed for in the Appeal, or such other relief in the premises as to Her Majesty the Queen, in Her Court of Parliament, might seem meet; as also upon the Case of The General Electric Company Limited, 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 Her Majesty the Queen assembled, That the said Order of Her Majesty's Court of Appeal of the 19th day of March 1970 complained of in the said Appeal, be, and the same is hereby, Reversed, and that the Judgment of the Honourable Mr. Justice Graham, of the 27th day of March 1969, thereby Reversed be, and the same is hereby, Restored: And it is further Ordered, That the Respondents 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.
My Lords,
I have read the speech of my noble and learned friend, Lord Diplock. I am in general agreement with it apart from one matter. I agree with the view of Eve J. in Woodward v. Boulton Macro Ltd. 32 R.P.C. 173 that section 11 of the Act has only a limited application. If that is right then I would reach the same conclusion that this appeal should be allowed but by a shorter and simpler route. As I believe that I am alone in taking this view I do not think that it would serve any useful purpose either to set out my reasons for agreeing with Eve J. or to set out the subsequent steps by which I reach my conclusion.
I would allow this appeal.
My Lords,
The parties to this appeal are an American company incorporated in New York State and an English company. They have almost identical names. That of the American company is "General Electric Company". It has been so since its incorporation in 1892. That of the English Company is "The General Electric Company Limited". It adopted that name in 1903. Both companies manufacture and sell a wide variety of electrical machinery and goods including electrical goods for domestic use. Both have grown and prospered. The name of each is a household word in its own home market, the United States and the United Kingdom respectively. Both have a worldwide export trade to other countries where they sell in competition with one another. Given the close similarity of names and the size and renown of both companies, it is inevitable that where their goods are sold in competition in the same market some members of the public who buy goods with no further information about their origin than that they are the products of a company called "General Electric Company" or "General Electric" may be confused as to whether they are the product of the American Company or of the English Company. A buyer who has heard of only one of the companies is likely to think that the goods are the product of the company which he knows as "General Electric Company" or "General Electric" even though they are in fact the product of the other company. A buyer who has heard of both companies may be in doubt as to which of them was the maker, but if it mattered to him would presumably make further inquiries.
As long ago as 1906 the English Company registered as its trade marks for various classes of electrical goods the initials of its name GEC in block capitals. In the following year, 1907, the American Company registered as its trade mark for electrical goods in one of the same classes, its initials G.E. in script enclosed in an ornamental circle, which is conveniently referred to as the Rondel Mark. Subsequently, the English Company registered as a trade mark in respect of the same and other classes of electrical goods its initials G.E.C. in script. It is in this form that the trade mark has been mainly used for the last forty years. I will call it the G.E.C. Mark.
It is not contended that the Rondel Mark and the G.E.C. Mark themselves are liable to be mistaken for one another. They are clearly distinguishable and distinctive. In this connection it is significant that in 1937 the two companies entered into an agreement that in overseas territories in which they competed, other than their respective home markets, the English Company would use its name in the form "The General Electric Company Limited of England" and the American Company would use its name in the form "General Electric Company U.S.A." and that the English Company would use the G.E.C. Mark only and the American Company the Rondel Mark only. The purpose of this agreement was to reduce the risk of confusion between the products of the two companies. The distinctive differences between the two marks, it seems to have been considered, would help to make their respective products more easily distinguishable.
It has not been contended in your Lordships' House—though it was unsuccessfully contended below—that in 1907, when the American Company's Rondel Mark was originally registered, its use as a trade mark on electrical goods made by the American Company was likely to cause confusion between products of the American Company and products of the English Company. Confusion could only arise if to a buyer who saw the Rondel Mark not only did the initials G.E. suggest the words "General Electric" but also the words "General Electric" suggested the English Company. There is no reason to suppose that at that early stage in the development of the electrical industry and in the growth of the reputation of the English Company in the United Kingdom, a buyer of electrical goods would be likely to take either of these mental steps—both of which would be a pre-condition of his being deceived or confused as to the origin of the goods. There is no evidence to support any such supposition; and the fact that in 1907 the Registrar entered the Rondel Mark on the register of trade marks raises the presumption that he, at any rate, did not consider any such confusion to be likely.
My Lords, it follows that there was nothing wrong with the original registration of the Rondel Mark. At the time when the entry was first put on the register it was not an "entry made in the register without sufficient cause" within the meaning of section 32(1) of the Trade Marks Act, 1938. The main question in this appeal is whether, as a result of events which have occurred since 1907, it had become an "entry wrongly remaining on the register" within the meaning of that section on 20th July, 1967, when the English Company started proceedings to expunge it from the register.
The history of the trading by the American Company in the United Kingdom between 1907 and 1967 and the use made of the Rondel Mark by it and its associated companies is complicated. It is recounted in the careful judgment of Graham J. to which the reference may be made for the details. Owing to the way in which the case has developed in the course of its progress from the Chancery Division through the Court of Appeal to your Lordships' House, I shall not find it necessary to repeat here more than a very brief summary of those findings of fact of the learned judge which are still relevant to the decision of the instant appeal.
The History of the Litigation
The case has had a chameleon-like history. It was started by Notice of Motion accompanied by Particulars of Objections. The main points there raised were that the American Company had rendered the mark disentitled to protection because of the way in which they had licensed its use in the United Kingdom by two associated companies Simplex G.E. Manufacturing Ltd. ("Simplex") and Monogram Electric Housewares Ltd. ("Monogram"). These associated companies had not used the Rondel Mark as a trade mark simpliciter, but only in combination with the words SIMPLEX and MONOGRAM respectively. SIMPLEX, however, had also imported and sold in the United Kingdom some goods manufactured by the American Company with the Rondel Mark in combination with the words GENERAL ELECTRIC.
Most of the evidence before Graham J. was directed to these grounds of objection, which may conveniently be referred to as "the licensing objections". Very shortly before the hearing, however, the English Company obtained leave to adduce further evidence, directed to showing that the use of the Rondel Mark simpliciter upon electrical goods would be likely to deceive or cause confusion so as to make its continued registration unlawful under section 11 of...
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