Re Svenska Aktiebolaget Gasaccumulator's Application
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE DIPLOCK,THE MASTER OF THE ROLLS,LORD JUSTICE UPJOHN |
| Judgment Date | 22 February 1962 |
| Judgment citation (vLex) | [1962] EWCA Civ J0222-2 |
| Court | Court of Appeal |
| Date | 22 February 1962 |
[1962] EWCA Civ J0222-2
In The Supreme Court of Judicature
Court of Appeal
From Mr. Justice Pennycuick.
The Master of The Rolls
(Lord Evershed)
Lord Justice Upjohn and
Lord Justice Diplock
The Rt. Hon. SIR LIONEL HEALD, Q. C. and MR STEPHEN GRATWICK (instructed by Messrs Arthur Taylor & Co,) appeared on behalf of the Appellants.
P. J. STUART BEVAN (instructed by the Solicitor, Board of Trade) appeared on behalf of the Registrar of Trade Marks,
IHE MASTER OF THE ROLLS: The Judgment I am about to read is the Judgment of Lord Justice Upjohn and myself.
This appeal by a Swedish Company known as svenska Aktiebolaget Gasaccumulator has raised a difficult and novel question of the construction of certain sections of the Trade Marks Act 1938, more particularly of the language of paragraph (e) of Section 34 (1) of that Act.
The Swedish Company has for many years carried on a large business in the United Kingdom and other countries of the world in relation to a wide class of goods, including signaling and navigational equipment of all kinds and other categories of apparatus; and in relation to such goods has used in these countries or has been the registered proprietor of the trade mark "Aga". The English Company, known as Aga Heat Limited, has also for many years carried on the business of the manufacture and sale of heating and cooking apparatus of various kinds in relation to which it was, since 1933, the registered proprietor of the same word or trade mark "Aga". The two corporations, as we understand, are quite distinct but have in fact collaborated together in protecting the rights attached to their respective marks. In the years 1953, 1955 and 1957 the Swedish Company applied for registration of the mark "Aga" in relation to certain other classes of goods. It then appeared that there was or might be some overlapping between the last mentioned classes of goods and the goods in respect of which the English Company was the registered proprietor of the mark "Aga" and the Swedish Company was, therefore, unable to obtain from the Registrar registration of the mark sought under its applications.
In these circumstances the two Corporations entered into an agreement on the 24th March, 1958. By that agreement the English Company undertook forthwith to apply (under Section 34(1) of the Act) for cancellation of its mark but, in return, the Swedish Company undertook certain important compensating obligations. The first was that the two Companies should jointly apply(as they did) tinder Section 28 of the Act for the English Company to be registered as registered user of the mark in relation to the classes of goods in respect of which the English Company had been the registered proprietor of the mark: and thereupon the Swedish Company became duly registered as proprietor of the mark upon its three applications above mentioned, the numbers of which it is convenient to record, namely, 715,859, 749,075 and 765,915. The other compensating obligations undertaken by the Swedish Company, which are directly relevant to the present appeal, included (1) a covenant not to cancel or abandon the registrations indicated by the three numbers above stated without the prior approval of the English Company, (2) in the event of any such cancellation or abandonment, to collaborate with the English Company in an application for that Company again to be registered as proprietor of the mark in relation to the goods in respect of and (3) not to give any license or consent for the use in any relevant territories of the mark: "Aga:" to any person or corporation in relation to classes of goods manufactured and sold by the English Company under the mark as registered user. There were certain other obligations of a similar kind designed for the protection of the English Company's trade which we do not find it necessary to relate, save that (by Clause 8 of the deed) it was provided that the two Companies should make formal application under Section 34(1) (c) for the entry of a memorandum upon the trade marks register concerning the existence of the agreement in respect of each of the three registrations numbered above.
In pursuance of the last mentioned obligation the Swedish Company (as the registered proprietor of the mark) with the tacit, approval and support of the English Company Applied on the 29th September, 1958, upon form TM No. 24 for registration of the following memorandum in respect of each of the three marks, namely: "This registration is subject to the terras of an agreement dated 24th March, 1958, made between Svenska AktiebolagetGasaccumulator of the one part and Aga Heat Limited of the other part".
The Registrar of Trade Marks, upon the application coming before him, declined so to register the memorandum on the ground (briefly stated) that it was contrary to long established practice in his office to put on the register notes or memoranda of agreements between the registered proprietor of the mark and some third party which did not contain any obligation to the Registrar himself or in respect of which other members of the public had no right or interest. From this decision the Swedish Company appealed to Mr. Justice Pennycuick. That learned Judge upheld the Registrar's decision but upon a ground different from that stated in such decision: for it was the view of Mr. Justice Pennycuick that Section 34 could not properly be construed as extending to any matters other than those specified in Section 1 (or, we assume, in Section 3) of the Act, which matters the Registrar was bound there under to register. Prom that Judgment the Swedish Company has appealed to this Court and before us Mr. Beven has appeared on behalf of the Registrar to assist the Court, in this Court Mr. Bevan has indeed sought to support Mr. Justice Pennycuick's decision on the ground which formed its basis rather than on the ground (i. e. of established practice) stated by the Registrar: for it appears clear that the point now arising is novel and cannot fairly be said to have been the subject of any practice.
It is necessary at this stage to refer to the relevant sections. Sections 1(1), 3 and 34 must, I think, be set out in full. Section l(l); "There shall continue to be kept at the Patent Office for the purposes of this Act the record called the register of trade marks. Where in shall be entered all registered trade marks with the names, addresses and descriptions of their proprietors, notifications of assignments and transmissions, the names, addresses and descriptions of all registered users, disclaimers conditions, limitations, and such other matters relating to registered trade marks as may be prescribed". Section 3:"A trade mark must be registered in respect of particular goods or classes of goods, and any question arising as to the class within which any goods fall shall be determined by the Registrar, whose decision shall be final". Section 34: "(1) The Registrar may, on request made in the prescribed manner by the registered proprietor, - (a) correct any error in the name, address or description of the registered proprietor of a trade mark; (b) enter any change in the name, address or description of the person who is registered as proprietor of a trade mark; (c) cancel the entry of a trade mark on the register; (d) strike out any goods or classes of goods from those in respect of which a trade mark is registered; or (e) enter a disclaimer or memorandum relating to a trade mark which does not in any way extend the rights given by the existing registration of the trade mark. (2) The Registrar may, on request made in the prescribed manner by a registered user of a trade mark, correct any error, or enter any change, in the name, address or description of the registered user. (3) Any decision of the Registrar under this section shall be subject to appeal to the Board of Trade, or to the Court, at the option of the appellant". Other sections of the Act were mentioned and relied upon in the course of the argument and to these, therefore, it is proper that we should allude, but we do not find it necessary to set them out fully. Thus, Section 4 of the Act formulates the rights given by registration and includes (subject as therein stated) the exclusive right to the use of the trade mark in relation to the goods specified in the registration without qualification as to the method of use. By Section 24 the registered proprietor is given express power ("subject to any rights appearing from the. register to be vested in any other person) to assign the trade mark, and to give effectual receipts for any consideration for an assignment thereof". Section 32 confers upon any person aggrieved (inter alia) by the non-insertion in or omission from the register of any entry, as the right my any erroneous or defective entry, the right to apply to the Registrarfor rectification of the register. By Section 64 it is provided that no notice of any trust, whether express, implied or constructive, shall be entered on the register. Finally, by Section 40 power is conferred upon the Board of Trade to make rules for regulating practice under the Act, etc., such rules, while in force, to be of the same effect as though they were contained in the Act. By virtue of this last mentioned section, Rule 85 of the present rules was promulgated with the heading "Applications for alteration of the rules by correction, change, cancellation or striking out goods or for entry of disclaimer,...
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