“BULOVA ACCUTRON” TRADE MARK

102 BULOVA AC'CUTRON Trade Mark [1969] R.P.C. IN THE HIGH COURT OF JUSTICE-CHANCERY DIVISION Before MR. JUSTICE STAMP 23m and 24th April, 1968. "BULOVA ACCUTRON" TRADE MARK Trade Mark-Opposition-BuLovA ACCUTRON: ACCURlsT-Composite mark- 5 House name added to invented word-Likelihood of confusion-Registration refused. An application to register ACCUTRON for clocks and watches was refused because of the likelihood of confusion with the opponents' registered trade mark ACCURIST. The applicants then sought to register the combination mark BULOVA ACCUTRON, 10 but their application was refused by the Assistant Registrar who found that the mark so nearly resembled the opponents' mark ACCURIST as to be likely to cause the same deception and confusion which the Court of Appeal held to have been likely when the applicants applied to register the word ACCUTRON simpliciter. On appeal to the High Court: 15 Held, dismissing the appeal, that there was a likelihood of confusion, and that imperfect recollection was a relevant factor in determining the possibility of deception. The addition of the word BULOVA, which was the house name of the applicants and had a significance other than as a trade mark, did not prevent deception. The public was likely to conclude that the components of the composite 20 mark were two separate trade marks, or that the word BULOVA was a house mark. Pianotist Co.'s Application (1906) 23 R.P.C. 774, and William Bailey (Birmingham) Ltd.'s Application (1952) 69 R.P.C. 136 considered. This was an appeal to the High Court from a refusal by the Assistant Registrar dated 9th June 1967 to allow the registration of the trade mark BULOVA ACCUTRON 25 in class 14 on application No. 831,943 by Bulova Watch Company Limited, which application was opposed by Accurist Watches Limited. The application arose as a result of the decision in Acccraox Trade Mark [1966] R.P.C. 152, in which the Court of Appeal, upholding Buckley, J., refused to register the word ACCUTRON. The facts of the present case appear from the following decision of the Assistant 30 Registrar, Mr. R. L. Moorby, dated 29th June 1967 and the judgment. 103 [No.4.] Registrar Mr. Moorby Guy Aldous, O.e., instructed by Haseltine, Lake & Co., appeared for the applicants. John Whitford, O.e., instructed by Wildbore & Gibbons, appeared for the opponents. Mr. Moorby-On 13th March 1962 the Bulova Watch Company Limited (herein5 after referred to as "the applicants ") of Toronto, Canada, applied under No. 831,943 for the registration of the trade mark BULOVA ACCUTRON in class 14 in respect of "Horological and chronometric instruments and apparatus, and parts and fittings for all these goods." The registration of this trade mark has been opposed by Accurist Watches Limited (hereinafter referred to as " the opponents ") of London, 10 on the grounds that the mark applied for so closely resembles the opponents' trade mark ACCURIST which is registered under No. 617,719 in respect of" wrist watches" and under No. 694,786 in script form within an ellips,e border in respect of " pocket watches, watch bracelets and straps, timepieces and alarm clocks," that its registration and use will be contrary to the provisions of sections 11 and 12 of the 15 Act. The opponents are also the registered proprietors under No. 618,911 of the trade mark ACCULARM in respect of " alarm clocks." In their counter-statement the applicants in effect deny that registration of the mark applied for would be contrary to the provisions of sections 11 and 12 of the Act. 20 In earlier proceedings concerning the opposition by the opponents to the applicants' trade mark No. 812,145 comprising the word ACCUTRON, simpliciter, for the same goods as thos·e of the present application, the Assistant Comptroller's decision that the registration of the mark would be contrary to the provisions of section 12 on account of the opponents' trade marks ACCURIST and ACCULARM was 25 upheld on appeal to the High Court and to the Court of Appeal. Buckley, J., in his judgment [1966] R.P.C. 152 agreed with the Assistant Comptroller's conclusion that if the marks were viewed side by side or compared phonetically one after another, there would not be a great probability of confusion between them. He also agreed that by reference to imperfect recollection and taking also into consideration 30 the smallness of the characters in which the marks might be reproduced on the faces of watches, there was a possibility of deception and confusion such as to make it improper to admit the applicants' mark to registration. There was no evidence in the earlier case as to whether or not there had been deception or confusion as the applicants had not used ACCUTRON at all prior to the 35 date of the application, viz. 18th October 1960. The applicants had not used BULOVA ACCUTRON at the date of the application No. 831,943 although, according to the evidence, it has been used subsequently. Mr. W. H. Perkins, a director of the applicants' distributors in the United Kingdom, states in his declaration of 24th August 1965, that sales under the mark between July 1962 and 31st March 1965 40 consisted of 680 watches having an approximate total retail value of £118,110. Very extensive advertising and publicity went on during this period in introducing BULovA ACCUTRON watches to the British market and the amount spent on this was £111,430. It is apparent from the specimen advertisements exhibited to the declaration that the watches sold under the mark are electronically operated and are claimed to give 45 extremely accurate time-keeping. The watches are expensive and the retail prices range from £65 upwards. 104 Mr. Moorby BULOVA ACCUTRON Trade Mark [1969] R.P.C. The claim in the opponents' evidence that ACCURIST has been used since February 1942 in respect of watches and clocks has not been challenged by the applicants. It is common ground that there is no material distinction between the issues which arise under sections 11 and 12 in the present case and I confine myself to applying the test formulated by Evershed, J., in the Smith, Hayden & Co. Ltd.'s Application 5 (1945) 63 R.P.IC. 97 when considering the position under section 12. It suffices, I think, for the present proceedings that I also confine myself to a comparison of the mark applied for with the opponent's mark ACCURIST. All the argument at the hearing centred on these two marks. The test then is, assuming user by the opponents of their mark ACCURIST in a normal and fail manner for any of the goods 10 covered by the registrations of that mark, am I satisfied that there will be no reasonable likelihood of deception or confusion among a substantial number of persons if the applicants also use their mark BULOVA ACCUTRON normally and fairly in respect of any goods covered by their proposed registration ?The onus is on the applicants to satisfy me that this question be answered in the affirmative. The 15 specification of goods prop (...truncated)