IN THE MATTER OF AN APPLICATION FOR THE REGISTRATION OF A TRADE MARK “HAWKEYE”

~8 Ko. 7.J REPORTS OF PATENT, DESIGN, AND TRADE MAR,K CASES. [Vo1.XLIV. In the Matter of an Application for the Registration 0/ a Trade Mark cc Hawkevye." Before MR. OLAUGHTON SCOTT, K.O. IN THE ~MATTER O~ AN ApPLICATION FOR THE REGISTRATION OF A TRADE MARK " HAWKEYE ". Trade Mar'k-Application to register a Mor]: ~n respect of Gramophone 5 N eedles-i-A practically identical Mark already u-pon. the Register in respect of a broad class of goods which included Gramophone Needles-That registration subsequ,entlycan,celled tn respect of Gramophone Needles.~Applijca,tion nevertheless refused on the ground that goods of a like kind to Gramophone N eedles remained in the specification of go-ods~LoJ'iheregisteredMark.-Appeal 10 to the Board of Trade dismissed.-Trade Marks Acts, 1905--1919, Section 19,. Au Application was made on the 16th February, 1926, for the registration of the word "H,awkey,e" in Class 8 in respect of Gramophone Needles, and was refused. Other facts are set out in the "Grounds" of the Decision of the Assietant-Oonuptroller (J.llr. M. F. Lindley), acting for the Registrar, the 1~ material portion of which was ae follows : H The Mark consists of the word 'Hawkeye' and ,at statement ,appears on "the form of Application that the Mark has not hitherto been used by the "Applicants upon or in connection with the above mentioned goods, but is '~ proposed to be so used. 20 " Now iafter the usual search there has been found errtered upon the Registel' a Trade M,a,rkNo. 463585-of which t,he Applicants have had full par"ticulars---.consistidlg of the word 'Hawk-eye' and registered in Class 8 "in respect of the same goods or description of goods as those in respect "of which the present Mark is applied for,na,mely 'All goods included in 25 " 'Class 8 hut not including wireless telegraphic appa,ratus and not including "',any goods of a like kind to wireless telegraphic apparatus.' Since then " the "Mark applied for is identical with the registered Mark No. 4,63585 or, " if attention be paid to the hyphen in the latter Mark, so nearly resembles "it as to he calculated to deceive, this registered Mark was cited by this 30 " Office against the Mark applied for, and objection was made to the acceptance " of the A.pplication under the terms of Section 19 of the Principal Act. te After the issue of the notice of objection to the Applicants, the proprietors "of the registered Mark voluntar ily, a.nd, so far as the Office was aware, "irrespe1ctiively of the present Application for registration, made formal 35 (t £09 REPORTS OF PATENT, DESIGN, AND TRADE MARK OASES. [No.7. In the Mratter of an Application for the R'egistration of a Trade ilfark " Haw'keyc." " application that "Gr.aimophone needles' might !he struck out from the goods "in respect of which their Mark is registered; and" gramophone needles" "were accordingly cancelled from those goods. On the present Applicants " enquiring 'whether this cancellation had removed the objection to their Applic!) "ation for registration, they were informed, in accordance with the usual "practice of this Office in such cruses, that their Appliea.tion could not be "proceeded with, unless the cited registration No. 463585 were further can" celled in respect of 'goods of a like kind to gra:mophone needles.' No such ",cancellation has been made or applied for; and the present Applieation has 10 "therefor'e been refused. "Now Section 19 of the Pr-incipal Act provides that 'except by Order of . " , the Oourt or in the case of trade marks in use before the 13th day of August, 4o' '1875, no trade mark shall be registered in respect of any goods or description " 'of goods, which is identical with one belonging to a different proprietor 15 '" which is already on the Register with respect to such goods or description " 'of goods or so near-ly resembling such trade mark as to be calculated to " , deceive.' "It wi ll be observed that the prohibition against the registration of an 20 "identical or closely resembling mark to a different proprietor is not limited " to the case where the previous 'registr,a,tio[l is in respect of the same goods., but " extends to the ease in which that registration covers the same description of " goods. For~x'3J'Ill:ple, in the Auetralian. Wine Lm.porters' Case (6 R.P.O. 311) it " was held that wine and spirits come within' the same description of goods,' " so that, where a mark had been registered for spirits, a closely similar mark 25 "was not fallowed to be registered subsequently to another proprietor for wines; " in the Kodak Case (15 R.P.C. 105) .a mark which had become, very well known t : for cameras, including cameras especially adapted for use on cycles, was re{, fused registration to a different proprietor for cyeles ; and' in the Gutta" perch-a and Rubber jJlanufacturing Con1pany of Toronto's Case (26 R.P.C. 42.8) 30 "boots and shoes were rna, de partly or wholly of india-rubber were held to be " goods of the same description as other india-rubber goods. " It appea,rs, in short, to have lbeen .t.he intention of the legislature that the " kinds of goods for which an identical or a closely resembling mark maybe c : registered to different proprietors shall riot be, so to speak, coterminous with 35 "'one another, but shall be separated to such an extent as to avoid confusion c: in the 'minds of the purchasing public. " 'I'he problem early arose in the Office as to how effect was to be given to this cc di rect.ion of the legisla,ture in such a case as the present, that is where a t c registration for .a broad class or kind of goods is proposed to be restricted 40 "with a view to allowing a.n application made by a, different proprietor for " an identical or closely rese-mbling rnairk to proceed in respect of certain " specific goods included within the registered class or kind. To register the " latter mark on a simple exclusion of the specific goods in question from the " previous regis.tTla.tion would almost certainly be to ignore the provision of the 45 "Act regardi ng the same description of goods, since goods of the same de"scription as the excluded goods would, it is safe to assume, remain in the " class from which the exclusion had been made, .and would therefore be covered " by the previous registration. To exclude by enumeration all the goods of the 210 No.7.] REPORTS OF PATE,NT, DESIGN, AND TRADE MARK CASES. [V'OL XJ-JIV~ In the J.vl atter of an Applicatiorc for the Eeqietration. of a Trade ill ark c, Haw'ke;ye." " same description as the goods for which the later registr.a,tion is desired would " in general be clearly impossible; and even supposing in any ease it should "be found possible to compile an exhaustive list, the list would be likely v,ery t c shortly to become incomplete through the progress of invention and the de" velopments of industry and commerce, " It was therefore decided that in all such eases the latter application could H riot be a.Ilowed to proceed unless th (...truncated)