IN THE MATTER OF AN APPLICATION BY F. W. WAIDE & CO. LD. TO REGISTER A TRADE MARK

8111'Ple~.] 320 THE ILLtJ'STlUTED OFFICIAL JOURNAL (PATENTS). [Sept. 6, 19~6 REPORTS OF PATENT, DESIGN AND TRADE MARK CASES [Vol. XXXIII]. In the Matter of an Application by F. TV. Waide &: Co. Ld. to reqisier a Trade Mark. TN THE BIGII COURT OF JUSTICE.-CHANCERY DIVISION. Before MR. JUSTICE YOUNGER, March 10th, 1916; and Before MR. JUSTICE SARGANT, June 28th, 1916. IN TfiE MATrrER or AN ApPLICATION BY F. W. WAIDE & CO. LD. TO REGISTER A TRADE MARK. Trade Mar k.-A ~~f0qJio~ ".if! . . . regj§,t.~r __ ~~,' 4ri<;1!.C!..~f!'" -.Qpposition by registered -proprietors of "4,!!chovette."-Alleged likelihood of deception and confusion.- 10 Application allowed by Registrar.-Appeal by Opponents.-Discovery of correspondence between Applicants and their aqents in Australia refused.-ApJ)eal refused.-Applicat·ion allouied to proceed. In 1902 P. & Co. Ld. registered " Anchoueite " as a Trade J.vlark in. Glass 42 for fish pastes and potted meats. In 1915 "\V. & Co. Ld. applied to register" Anahola" 15 in Class 42 in respect of substances used as food or as inqredienis in food. P. & Co. Ld. opposed the Application on the ground that" Anchola " so nearly resembled their reqistered mark as to be likely to cause deception and confusion, The Reqisirar held that there was no likelihood of deception or confusion, and allowed the Applicaiion, P. & Co. Ld. appealed to the Court, and asked for discovery of certain correspondence 2() which, as appeared from a ;.Statutory Declaration filed on behalf of W. & Co. Ld., had passed between ~ & Co. Ld. and their agents in A usirali a, and for leave to cr08Sexamine thereon. Held, that this uias not a case in which discovery or croee-examinaiion ought to be allouied ; thai decep tion or confusion was not likely to result from the reqieiraiion ; 25 and that the Registrar had exercised his discretion wisely. The Appeal was dismissed to ith costs. "7 In 1902 Harru Peck &- Co. Ld., hereinafter called the Opponents, were registered in Class 42 under No. 249,343 as proprietors of the Traae'"Mark "Anchovette" Supplement. ] Sept. 6, 1916] THE ILLUSTRATED OFFICIAL JOURNAL (PATENTS). REPORTS OF PATENT, DESIGN AND TRADE MARK CASES 321 [Vol. XXXIII]. In the Matter of an A pplication by F. TV. Wa-ide & Go. Ld. to register a Trade Mark. in respect of fish pastes and similar articles of food. They disclaimed the right to the exclusive use of "Anchov" or "Anchovy." Th~~~!_e the only Company, firm or person having a, registration in Class 42 covermg the syllables "Aneho," and they carried on a large export trade, principally to Australia. 5 In 1914 F. W. Waide & Go. Ld., hereinafter called the Applicants, registered " Anchovade" as their Trade Mark in respect of similar goods, the Mark being intended as a combination of the words "anchovy" and "Waide." This Company also exported large quantities of fish paste to Australia. On the 24th of March 1915 the Opponents wrote to the Applicants objecting to their use of 10 the word" Anchovade," and after some correspondence, the Applicants, without admitting any infringement of the Opponents' Trade Mark, cancelled the registrat.ion. On the 6th of May 1915 th~plicants.applwd,f(}F-troo-registpa,tioR-oL::.Anch.Ql$." in Class 42 in respect of substances used as food or as ingredients infood, On the 15 21st of July 1915 the Opponents gave notice of opposition to the Application on the following grounds : " (1) The alleged Trade Mark to which the above-mentioned Application relates "is not a registrable Trade Mark within the Trade Marks Act 1905. (2) The " Opponents are the proprietors of the Trade Mark " Anchov~tt~" which they 20 "and their predecessors have extensiv.~!y_~n<lcontinuouslyusedfor many years " past in connection with preserved provisions of their manufacture. Their goods " under this brand are very well known, both in this country and abroad, where " they are protected by registration. (3) The alleged Trade Mark" Anchola " has " such a resemblance to the Opponents' Trade Mark" Anchovette " No. 249,343, 25 "registered on the 16th of October 1902, advertised in Trade Marks Journal No. " 1292, page 1433, and registered with respect to the same goods or description of " goods as those for which the Applicants are now applying to register the same, " as to be calculated to deceive. (4) If the Applicants are allowed to register or " use the said alleged Trade Mark, the trade and the public will be deceived and 30 "the Opponents injured. (5) The Opponents have already stopped the registration " of the . .Applicants' Trade Mark' Anchovade ' in respect of the same description " of goods." The Applicants by their Counter-Statement relied on the following grounds in support of their Application:35 " (1) The word' Anchola' is an invented word, and is registrable under Section 9, " sub-section 3, of the Trade Marks Act 1905. (2) The Trade Mark' Anchola ' has "no resemblance to the Opponents' Trade Mark' Anchovette ' as to be calculated " to deceive, and the registration and use of the said mark will not injure the trade "of the Opponents' Company nor will the public be deceived. (3) The word 40 '" Anchovade' was formerly registered by us, but the registration was subse" quently cancelled in order to avoid the expense of litigation. We, at the same " time, reserved to ourselves the right to re-apply for registration should we so "desire. We admit the following allegation in the Notice of Opposition: That " the Opponents are the proprietors of the Trade Mark' Anchovette ' which they 45 "have used 011 a paste made from anchovies." The Application came before the Registrar of Trade Marks on the 27th of January 1916. He decided that the Applicants' Mark was not likely to cause deception or confusion and must be registered, the grounds of his decision being as follows : " The case simply turns on whether the two words resemble one another to such 50 "an extent as to be liable to deceive the trade and public having regard to all the " circumstances of this case. In a case of this kind, wherecomparison is to be made " between two words, it is difficult to get any assistance from reported cases. I .. Supvlem,ent ., 322 THE lLLUSTRATED OFFICIAL JOURNAL (PATENTS). [Sept. 6,1916 REPORTS OF PATENT, DESIGN AND TRADE MARK CASES [Vol. XXXIII]. In the Matter of an Application by F. TV. TVaide & 00. Ld. to reqister a Trade .1llark. " have come to the conclusion that the words looked at as a whole are sufficiently " unlike, and that no reasonable person ought to be so deceived by their resem" blance as to accept the goods of the Applicants for those of the Opponents. I ., ?B not think. that_.~~y_~ne can cl~i.IIl_ the__!?~!!.9.E2.!Y-.Qr tg~ .,EE~fi~'.kl!_<?~g /..which "" t:_~n~~~h~~~a~~Jt~~r~;n~:~X;h~se~~~~~z~t:~:~C:a~I~~ff:~e~~ 5 bot1ilu·s:relllng and in sound. As regards the other evidence, it seems to me " that no point can be raised upon the user of glass bottles of the shape exhibited; " these are apparently com (...truncated)