IN THE MATTER OF AN APPLICATION BY WILLIAMS'S LD. FOR THE REGISTRATION OF A TRADE MARK

Supplement.] June 6, 1917] THE ILLU9TRATED OFFIOIAL JOURNAL (PATENTS). 197 [Vol XXXIV]. REPORTSOJ' PA'l'BNT,DJJBIGN AND 'l'BA.DE KAlUt CASES. [No ,:' 10.1 In the llfatter of an Application by Williams's Ld. for the Registration of a Trade Mark. IN THE COURT OF APFEAL. Before THE MASTER OF THE ROLLS, LORD JUSTICE WARRINGTON, and ':MR. JUSTICE LAWRENCE. January 17th and 19th and February 6th, 1917. G IN THE MATTER OF AN APPLICATION BY WILLIAMS'S LD. FOR THE REGISTRATION OF A TRADE MARK. Trade Mark.-Oppositions to Application to register" Okocaroons."-New word. -Invented word.-" Adapted to distinguish."-New name/or new article.-Appeal to Ooun from Registrar's decision that Registration proceed dismissea.-AppeaZ by 10 Opponents to tke Oourt of Appeal allowed.-Trade Marks Act 1905, S. 3. On an Application to register a Trade Mark consisting oj the word 0 H 00 AROON S Jor all articles in Glass 42, tke Applicants contended that their sweetmeat sold under tkat name was composed, of similar ingredients as the Ohocolate Macaroons of the The words" Opponents to registration, but differed in taste and appearance. 15 "~Ohocolate Macaroons" were in common use at the date oj the Application to register. The application was opposed, the grounds of Opposition being that, the' word "Uhocaroons " would cause inconvenience and embarrassment in the conJectione'fytraae, as (he word would be confusedwitk GhocolateMacaroons and be mistaken therefor, ana further, that it· d·id not fulfil the requiremeni« oj Section 9 oj the 20 Trade Marks Act 1905~ The word" Ohoearoons "did not resemble any oj the Opponents' Trade Marks nor uae there similarity between the labels of the Applicants' and those oj the Opponents. The Applicant8 alleged that the word, " Ohocaroons " was a newly invented word, antlj also a word having no direct reference to .the character or quality oj the goods. The Registrar of Trade Marks held, that the 25 word " Ohocaroons '~, uas, prima facie, entitled to regist'fation 'as a newly inventetl word, or as a word kavi,ng no direct reference to the character or quality of the goods, and that it· was not likely to be confused with " Chocolate Macaroons ",. and he' directed that the Registration of the mark should,proceed. The Opponents appealed to' the Court from this decision; and it was held that the word." Chocaroons" was an· J Q Supplement. ] 198 THE ILLUSTRATED OFFICIAL JOURNAL (PATENTS). [June 6, 1917 BBPOMS OJ' PATENT, DESIGN AND TRADE MARX: CASES [Vol. XXXIV]. In the Matter of an Application by Williams's Ld. for the Registration oj a Trade Mark. invented word, and that the registration of it would not lead to confusion ; and that, on the facts, there was nothing to show an intention to use the word otherwise than for the purpose of indicating the source from which the goods emanated, and the appeal was dismissed with costs. The Opponents appealed from this decision. to the Court of Appeal. 5 Held, that" Chocaroons " were new sweetmeats and not a particular kind of the dase of" Chocolate Macaroons," and there was no evidence that to the .public the word indicated any association of the Applicants with the name ; that the Applicants' own evidence showed the purpose for which the name was coined and the mode in which it had been used ; and that ·on that evidence the decision of the Court below. mus: be 10 reversed, but, having regard to an objection that the appeal was out of time; without costs in the Court of Appeal. Application of La Societe Ie Ferment (29 R.P.C. 497) ~istinguished. This was an appeal by Oadbury Brothers Ld. and Rowntree & Co. Ld. from a -decision of $ve J. affirming that of the Registrar of Trade Marks directing that the 15 .registration of a Trade Mark should be proceeded with. On the 14th of September 1915 Williarns's Ld., manufacturing confectioners, carrying on business at Bootle, Lancashire, made an Application for the registration as a Trade Mark, under No. 369,247, of the word" CHOCAROONS " in respect of all goods included in Class 42. . 20 On the 6th of November 1915, Oadbury Brothers Ld ... of Bournville, Birmingham, manufacturers of confectionery, and Rowntree & 00. Ld., of the Cocoa Works, Wiggington Road, York, manufacturers, gave notice of Opposition to the Application, the grounds of their opposition being that the word " Chocaroons " was a word likely to cause inconvenience and embarrassment in the confectionery trade 25 in view of the fact that the words" Chocolate Macaroons" were in common use in the trade, and that the proposed mark was so much like those words as to be liable to be confused therewith and mistaken therefor; also that the Applicants' mark -did not comply with the requirements of Section 9 of the Trade Marks Act 1905. The Applicants by their Counter-statement stated that the words 30 " Chocolate Macaroons" when used by or in connection with goods in Class 42 did not denote exclusively, to either the trade or the public, goods of the Opponents' manufacture or trade, that the Trade Mark " Chocaroons " did not resemble any 'Trade Mark of the Opponents, and that the word was not liable to deceive or be mistaken for " Chocolate Macaroons "; that the word " Chocaroons " did comply 35 with the requirements of Section 9 of the Trade Marks Act 1905, and that the .Applicants had used it. The labels of the first Opponents, put in evidence, consisted of the two words " Chocolate Macaroons" in written or printed type in the same line or two lines preceded, or partially surrounded, by the word "Cadbury's," and followed in some 40 instances by the words, " Registered Trade Mark' Cadbury.' " Statutory Declarations were filed in support of the .Opposition and 'of the Application respectively. For the names of the Declarants and the effect of their -evidence see ante pp. 2 and 3. Of the objections to registration relied on in the Court below only one was relied 45 upon in the Court of Appeal, viz., that the word" Chocaroons " was not a Trade ~pplement.] June 6, 1917J THE ILLUSTRATED OFFIOIAL JOURNAL (PATENTS). 199 REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [Vol. XXXIV]. In the Motte: of an Application by Williams's Ld. for the Reqisiroiion. of a Trade Mark. lVlark, as it was not used or proposed to be used to indicate goods of the Applicants, but was the name of a new article which the Applicants had placed on the market, but which others were at liberty to make and sell, and that they were endeavouring to obtain a monopoly of the name. 5 The appeal came on to be heard as an interlocutory appeal on the 6th of February 1917. Walter K.C. and L. B. Sebastian (instructed by Timbrell and Deighton) appeared for the Appellants; Oolefax K.C. and L. Moritz (instructed by Aird, Hood and 00., agents for J. R. Watkins, of Liverpool) appeared for the Respondents; and J. 10 Austen-Cartmell (instructed by the Solicitor to the Board of Trade) appeared for the Comptroller-General as Registrar of Trade Marks. Walter K.C. and S (...truncated)