IN THE MATTER OF AMERICAN SCREW COY.'S APPLICATION NO. 773,098 FOR THE REGISTRATION OF A TRADE MARK

344 No. 14] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [1959.J In the Matter of American Screw Coy.'s Application No. 773,098 for the Registration of a Trade Mark IN THE HIGH COURT OF JUSTICE-CHANCERY DIVISION Before MR. JUSTICE LLOYD-JACOB 9th October, 1959 IN THE MATTER OF AMERICAN SCREW COY.'S ApPLICATION No. REGISTRATION OF A TRADE MARK 773,098 FOR THE 5 Trade Mark-Applications to register" Torq-set" (the" 0" being in the form of a device) in Parts A & B for screws, bolts, rivets, &c.-Applications refused on ground that word had direct reference to the character or quality 01 the goods, was incapable of distinguishing the goods of the Applicants, and that" Torq-set " screw" might be understood to refer to a brand of set-screws-Appeal against 10 refusal to register in Part A dismissed-Application for registration in Part B remitted to Registrar for further consideration-Onus. Trade Marks Act, 1938, Secs. 9, 10, 11. A.S. Coy. applied to register" Torq-set", the" 0 " being in the form of a device, in Parts A and B of the Register for, inter alia screws, bolts, rivets and studs. 15 The Registrar rejected the applications on the grounds that "Torque-set" had a direct reference to the character or quality of the goods, and was not capable of distinguishing the goods of the Applicants, and on the further ground that" Torq" set" screws might be understood to mean a brand of set-screws and so would 20 offend against Sec. 11. The Applicants appealed to the Court. Held by Lloyd-Jacob, J. (1) That as the onus of establishing that the word " Torq-set" had no direct reference to the character ot· quaUty of the goods lay on the Applicants. The Registrar's finding as to the application to register in Part A would not be disturbed. (2) That the mark was not inherently incapable of dlstinguishing the goods vf 25 the Applicant. (3) That the objection under Sec. 11 cvuld be met by amendment vf the classificativn vf the goods. Application under Sec. 10 remitted tv Registmr for further consideration under that section and Sec. 11. 30 Observed "Direct reference" corresponds in effect to aptness for normal description. Observation as to onus on Applicants for registration. 345 [1959.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [No. 14 In the Matter of American Screw Coy.'s Application No. 773,098 for the Registration of a Trade Mark The appeal came on for hearing before Lloyd-Jacob, J., on 9th October, 1959. G. D. Everington (instructed by Bird & Bird), appeared on behalf of the Appellants (Applicants). 5 P. 1. Stuart Bevan (instructed by The Solicitor, Board of Trade), appeared on behalf of the Registrar of Trade Marks. Everington. The mark applied for (treated as TORQUE-SET) has no direct reference to the character or quality of the goods. The meaning of words must be judged fairly and from a common-sense business or trade viewpoint. The 10 fundamental purpose in excluding from registration in Part A of the Register words having direct reference to the goods, is to avoid granting monopolies which will prevent people from using words in their ordinary sense to describe their goods. "Torque-set" alone, or in the expression" Torque-set screw", is meaningless; one cannot set torque, and nobody would refer to (say) a wheel fixed to 15 an axle by a set-screw as "set against torque" ; the Registrar was wrong in so holding; if any such expression was used it would be "set against rotation". In any event the expression would refer to the wheel and axle as a whole. If the expression had any reference to the screw it would only be an indirect reference. This case is different from that of "Lock-nut ". 20 If the mark is not registrable in Part A it is "capable of distinguishing" goods and therefore registrable in Part B. As to the objection under Sec. 11 of the Trade Marks Act, 1938, the Applicants are willing if necessary to exclude from the specification of goods, screws which are not set-screws. 25 Stuart Bevan. The Registrar's decision was right and ought not to be disturbed. " Torq-set" has a direct reference to the character and quality of the goods or if it does not it is misleading. Everington replied. Lloyd-Jacob, J. This appeal is brought against the rejection of an applica30 tion made on the 13th January, 1958, by the American Screw Coy. for registration of the mark" Torq-set " in respect of screws, bolts, rivets and studs and fastening devices (in the nature of studs), all included in Class 6 and all made of common metal. The decision to reject and the grounds of decision are to be found in the document dated the 14th July, 1959, issued by the Registrar after hearing 35 argument in support of the application. In the form in which the mark was applied for, the second letter was shown slightly enlarged above the other letters, with its interior divided along two diameters at right angles, and a hyphen was introduced to separate the terminal three letters. It was conceded that the mark cannot be regarded as an invented 40 word and that, having regard to its possible future use by word of mouth, it falls to be considered as the phonetical equivalent of the two words "torque" and '~ set" used together in that order. Both words are terms of art in relation to the articles of commerce comprised in Class 6, "torque" being the name given to the force (or the moment of a system of forces) which tends to produce rotation 45 or torsion, and "set" meaning to fix against movement. The effective point taken by the Registrar against registration was that the Applicants had not established that the mark applied for had no direct refere.nce to the character or quality of the goods. He postulated, as he was plamly entitled to do, that in use these fastening devices would or might fmd a Im1:})ose 346 No. 14] REPORTS OF PATENT, DESIGN; AND TRADE MARK CASES [1959.] In the Matter of American Screw Coy.'s Application No. 773,098 for the Registration of a Trade MaJ'k in securing one piece of mechanism against rotation, from which he concluded that such positioning would, if correctly described, amount to a setting against torque, with the consequence that a direct and close reference to the character of the goods was inevitable if "Torq-set" were applied to them. Having regard to the definition of the word "torque", which accords with my understanding 5 of its commonly accepted meaning, the suggested synonymity between " rotation" and "torque" is not justified and the suggested correct description must be re-phrased so as to express a setting against rotation which torque might tend to produce. The very fact that in such a definition both parts of the mark applied for find a necessary place sufficiently establishes, in my judgment, the conclusion 10 that the mark applied for is not intrinsically devoid of reference to the character of the goods. The question remains whether such reference is direct. In considering this question, the Registrar or the Court is not in any wa (...truncated)