Re York Trailer Holdings Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Wilberforce,Lord Fraser of Tullybelton,Lord Russell of Killowen,Lord Lowry,Lord Bridge of Harwich |
| Judgment Date | 19 November 1981 |
| Judgment citation (vLex) | [1981] UKHL J1119-3 |
| Date | 19 November 1981 |
| Court | House of Lords |
[1981] UKHL J1119-3
House of Lords
Lord Wilberforce
Lord Fraser of Tullybelton
Lord Russell of Killowen
Lord Lowry
Lord Bridge of Harwich
My Lords,
This appeal is brought from a decision of Graham J. who allowed an appeal by the respondents from a decision of the Registrar of Trade Marks. The Registrar refused the respondents' application for registration of a trade mark to proceed, unless the applicants agreed to disclaim exclusive rights in the word "York" —which they refused to do. The appeal is brought direct to this House under section 12 of the Administration of Justice Act 1969.
The mark in question consists of the word "YORK" in block capital letters in white with a leaf, similar to a maple leaf, drawn inside the letter O, the whole being on a black rectilinear background. A photographic reproduction of it appears in the appellant's printed case and also in the report in [1981] Fleet Street Reports 33, at page 35. The parent company of the respondents is a Canadian company of York, Ontario; neither the parent company nor the subsidiary has any connection with the English City of York. There are three applications relating to various classes of goods in connection with which the mark is claimed to be used: these can broadly be described as trailers and containers for the transportation of freight; they are no doubt familiar to many frustrated motorists. Nothing turns upon the particular classes of trade marks within which these goods are specified.
The Assistant Registrar, acting for the Registrar of Trade Marks, based his decision essentially upon the ground that it should not be right to allow the respondents to monopolise, for use in connection with their goods, the name of an important city. There was evidence called as to the use of the mark by the respondents; this was shown to have been on a substantial scale and for a long period. It is not now disputed that the word "YORK" used as a trade mark for the relevant goods is distinctive of the proprietor and denotes his goods and those of no-one else—a situation commonly described as one of "100% factual distinctiveness". The question of law upon this appeal is whether such 100% factual distinctiveness entitles the applicant to registration in Part B of the register of trade marks or whether the Registrar has a discretion whether or not, in the interests of the public, to allow or to disallow applications for the mark to proceed. If the Registrar has such a discretion, I do not think that any ground for interfering with his exercise of it has been shown. If, as I think, on the authorities, it is a matter of discretion whether to accept geographical names, "York" would appear to stand somewhere between "Liverpool" and "Tijuana", and there was evidence of its possessing an industrial character such that other traders, in related fields, might want to use it. Graham J., though entitled under section 52 of the Trade Marks Act 1938 to exercise the same discretion as the Registrar, did not do so. So the question of law is the only one for consideration.
The relevant law is contained in section 10 of the Trade Marks Act 1938 which deals with registration in Part B of the register. It is necessary also to have regard to section 9 which deals with registration in Part A. I reproduce the relevant parts of both sections.
Section 9
"(1) In order for a trade mark (other than a certification trade mark) to be registrable in Part A of the register, it must contain …
( a) …
( b) …
( c) …
( d) a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname;
( e) any other distinctive mark, but a name, signature, or word or words, other than such as fall within the descriptions in the foregoing paragraphs ( a), ( b), ( c) and ( d), shall not be registrable under the provisions of this paragraph except upon evidence of its distinctiveness."
(The present case would fall under ( e).]
"(2) For the purposes of this section ' distinctive' means adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.
(3) In determining whether a trade mark is adapted to distinguish as aforesaid the tribunal may have regard to the extent to which—
( a) the trade mark is inherently adapted to distinguish as aforesaid; and
( b) by reason of the use of the trade mark or of any other special circumstances, the trade mark is in fact adapted to distinguish as aforesaid."
Section 10
"(1) In order for a trade mark to be registrable in Part B of the register it must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.
(2) In determining whether a trade mark is capable of distinguishing as aforesaid the tribunal may have regard to the extent to which—
( a) the trade mark is inherently capable of distinguishing as aforesaid; and
( b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguishing as aforesaid."
The critical words, or phrases, in these sections are two. First, while section 9 uses the words "adapted to distinguish", section 10 uses "capable of distinguishing". Secondly, each section make a distinction between "inherently adapted [or capable)" and "adapted [or capable] in fact". The first distinction was introduced by the Trade Marks Act 1919 which (section 1) for the first time divided the register into two parts, A and B, and introduced the word "capable" in relation to part B. The word "adapted" had already been used in the Trade Marks Act 1905 in relation to distinctiveness. The second distinction was introduced by the Trade Marks (Amendment) Act 1937, sections 2 and 3, by amendments incorporated in the consolidating Act of 1938.
Exactly what was the purpose of the first amendment ( i.e. in distinguishing between "adapted" and "capable") is not entirely clear: judicial attempts have been made to clarify it. In Davis v. The Sussex Rubber Co. Ltd. (1927) 44 R.P.C. 412 ("Ustikon") Lord Hanworth M.R., accepting that "capable of distingushing" might indicate a more benevolent test than "adapted to distinguish", said that "capable" might perhaps refer to the future, and his opinion was shared by the other members of the court (Sargant L.J. at page 425, Lawrence L.J. at page 427). A more sophisticated explanation was offered by Lloyd-Jacob J. in the Weldmesh Trade Mark [1965] R.P.C. 590, 594. I do not think that further analysis of the two expressions is necessary on this occasion, because it is not this that is the critical distinction in the present...
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