Re Compagnie Industrielle des P‚troles' Application.; Re Price's Patent Candle Company's Trade Mark
| Jurisdiction | England & Wales |
| Date | 1907 |
| Court | Chancery Division |
Trade Mark - Registration - “Motricine” - Similar Word already on Register - “Same Class or Description of Goods” - “Calculated to deceive” - Onus of Proof - Rectification of Register - “Motorine” - Descriptive Word - Invented Word - “Word having no direct Reference to Character or Quality of Goods” -
In 1901 the opponents registered the word “motorine” as a trade mark for lubricating oil, with a disclaimer of the right to the exclusive use of the word “motor.” Since registration they had sold large quantities of a lubricating oil suitable for, but not confined to, motors under that name. In 1906 the applicants applied to register the word “motricine” as a trade mark for a spirit for motive power purposes derived from petroleum. The opponents opposed the application, and the registrar refused to register the mark. On an application by the applicants that the registrar might be directed to proceed with the registration of their mark, and that the opponents' mark might be expunged from the register:—
Held, that under s. 11 of the Trade Marks Act, 1905, the onus of shewing that the proposed trade mark was not calculated to deceive rested on the applicants; that they had failed to discharge that onus; that that being so the Court would decline to exercise its discretion under s. 21 of the Act of allowing conditional registration; and that the application to register must therefore be refused.
Held, also, that the word “motorine” had “no direct reference to the character or quality of the goods,” and was therefore a good trade mark under s. 9, sub-s. 4 of the Act, and that the application to expunge it from the register must consequently be refused.
MOTION.
This was an application by the Compagnie Industrielle des Pétroles — (1.) that the decision of the Registrar of Trade Marks, whereby he refused registration of their trade marks, consisting of the word “motricine,” might be reversed, and that the registrar might be directed to proceed with their application, notwithstanding the opposition thereto of Price's Patent Candle Company, Limited; and (2.) that the Register of Trade Marks might be rectified by expunging therefrom the trade mark of Price's Patent Candle Company, Limited, consisting of the word “motorine.”
The applicants were a French company, which carried on a large trade in petrol spirit upon the continent of Europe and in other places. On the continent of Europe they sold petrol spirit in large quantities under the name of “motricine,” and in most countries of the continent they had a registered trade mark consisting of that name.
The opponents were the well-known firm of Price's Patent Candle Company, Limited, who in the year 1901 had registered the word “motorine” in class 47 as a trade mark for lubricating oil, with a disclaimer of the right to the exclusive use of the word “motor.” Since the registration of that trade mark the opponents had sold large quantities of a lubricating oil suitable for, but not confined to, motors under their registered name of “motorine.”
In 1904 the applicants applied in England to register the word “motricine” as a trade mark in respect of light mineral oils for driving motor cars and engines. The consent of the opponents was asked for and refused, and as a result the registrar refused to register the proposed trade mark. There matters remained until 1906, when the applicants again applied to register the word “motricine” as a trade mark in classes 47 and 50 as a mark for a spirit for motive power purposes derived from petroleum. That application was again opposed by the opponents, and again the registrar refused to register the mark. The present application was an appeal from that decision.
The evidence shewed that the word “motorine” was known to persons familiar with such things as denoting the particular lubricating oil which bore that name, and which was in fact manufactured by the opponents.
A. J. Walter, K.C., and L. W. Byrne, for the applicants. The applicants' and the opponents' goods are not of the same class or description of goods. “Motricine” is a petrol spirit and “motorine” a lubricating oil. The former cannot be used as a lubricant, for if so used it would dissolve out every trace of a true lubricant. It is true that both “motricine” and “motorine” are used for motors but there is no likelihood of a person confusing the two. Goods are not of the same class merely because they are sold by the same persons. The mere fact that both the goods are included in the same technical class should not operate on the mind of the Court. The ratio decidendi as to the class of goods being different is discussed in In re Australian Wine Importers, Ld.F1 and In re Leiner's Trade Mark.F2 No danger to the public can arise from the registration of “motricine.” Under the
Further, the opponents having disclaimed the right to the exclusive use of the word “motor” as part of their trade mark, there is no such resemblance between the two marks as is calculated to deceive: In re Loftus' Trade Mark.F3 Under s. 21 of the Act of 1905F4 the Court can impose conditions as to the mode of user of a trade mark.
[WARRINGTON J. What do you say are the special circumstances referred to in that section which would make it proper for me to allow the registration of “motricine”?]
The mode of user and the locale of user. The object of the Act of 1905 was to facilitate the registration of trade marks. Sect. 21 qualifies s. 19, and enables the Court to allow registration in a limited manner.
[WARRINGTON J. Are the applicants willing to undertake to sell their petrol in quantities of not less than two gallons in tins of the same form as the tins of the other manufacturer which have been exhibited and to label them “Petroleum Spirit — Highly Inflammable”?]
They are quite prepared to give that undertaking.
Then, as to the second branch of the application, s. 64 of the
Sect. 9, sub-s. 4, of the Act of 1905 has not altered the law as expressed in In re Meyerstein's Trade MarkF8 and Christy v. Tipper.F9 The insertion of the word “direct” in the sub-section was to rule out indirect reference to the character or quality of the goods.
Upjohn, K.C., Cave, K.C., and Sebastian, for the opponents.
[WARRINGTON J. I will not trouble you on the point as to the rectification of the register...
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