IN THE MATTER OF AN APPLICATION BY WILLIAM BAILEY (BIRMINGHAM) LD. TO REGISTER A TRADE MARK AND IN THE MATTER OF AN OPPOSITION THERETO BY A. C. GILBERT CO.

r36 No. 4.1 REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [Vol. LII. In the Matter of an Application by William Bailey (Birmingham) Ld. to register a l'rade Mark and an Opposition thereto by A. C. Gilbert Co IN THE HIGH OOURT OF JUSTICE-OHANCERY DIVISION. Before MR. JUSTICE FARWELL. January 15th and 16th, 1935. IN; THE MATTER OF AN ApPLICATION BY WILLIAM BAILEY (BIRMINGHAM) LD. TO REGISTER A TRADE MARK 5 and IN THE MATTER OF AN OPPOSITION THEREITO BY A. O. GILBERT 00. Trade Mark--Application to register-Opposdion-Mark whether calculated to deceive-Wrongful user by Applicants of -word "registered "-Applicants held to have discharged the onus lying upon them-Registration allowed- 10 Appeal by Opponents to the Court-Appeal allow'ed-Trade Marks Act, 1919, Section 8. William Bailey (Birmingham) Ld. applied to register the word Erectiko in Class 49 for toys. A. O. Gilbert 00. opposed the application on the ground that the word would conflict with the word Erector, a registered Trade Mark 15owned by the Opponents for constructional toys. The Assistant Oomptroller held that the Appl1:cants had discharged the onus of proving that no reasonable probability of confusion would result from registration of the word Erectiko and he accordingly decided to register it unless an appeal was entered within one month. 20 The Opponents appealed to the OO1),rt. Held, that the Assistant-Oomptroller had proceeded on a wrong basis; that when comparing two words to see whether one would be confused with and mistaken for the other, the words should be compared as a whole and not merely com,pared syllable by syllable, and that regard should be paid to the 25 fact that the word sought to be registered was to be used 1tpon goods similar to those 1tpon which the Opponents' Mark was being ~sed. Held, that confusion would inevitably result if registration were allowed: Vol. LILJ ~, REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [NO.4. In the Matter ot an .Applicatwn by William Bailey (Birmingham) Ld. to register a 'Prade Mark and an Opposition thereto by A. C. Gilbert Co. The Appeal was allowed and the Respondents were ordered to pay the costs including those of the Registrar . .An Order was made directing the Registrar not to proceed. On the 20th of February, 1933, Wm. Bailey (Birmingham) Ld., manufacturers 5 of toys, applied to register the word Erectiko in Class 49 in respect of its application to toys. On the 21st of June, 1933, A. C. Gilbert 00., also makers of toys, and owners of a Trade Mark Erector, registered in Part B of the Register in July, 1920, opposed the Application. LO The Notice of Opposition of the Opponents contained the following allegations :-(1) they and their predecessors in business had since 19'15 extensively For over used .the mark Erector in connexion with their trade in toys. one year they had extensively used the mark Erector-brik in connexion with bricks for building toy models; (2) they were tlhe registered proprietors, of L5 the Trade Mark Erector registered in Part. B of the R,egister in July, 1920; (3) the registered mark Erector was so well known in actual use that Erectiko was calculated to deceive; (4) the use of the word Erectiko would lead to the belief that the goods upon or in connexion witJh which it was used were goods manufactured by or sold by the Opponents; (5) the mark Erectiko 20 so nearly resembled the Opponents' Trade Mark Erector as to be calculated to deceive; (6) the use by the Applicants of the mark Erectiko would lead to confusion and would lead anyone to think that the goods upon or in connexion with which it was used emanated from the Opponents, and the use and registration of the ,said mark Erectiko would enable goods bearing it 25 to be sold as and for the Opponents' goods; (7) the word "registered" or the abbreviation" regd." had been used by the Applicants in connexion with the mark Erectiko when such mark was not in fact registered. The AppUcants by their Counter-statement (1) admitted that the Opponents were the registered proprietors of the Trade Mark Erector, but said that 30 such registration was invalid, and alleged tlhat the word Erector was incapable of distinguishing constructional toys; (2) denied all other allegations in the Notice of Opposition; (3) stated that they had registered the Trade Mark Kliptiko in 1913' and had used it oontinuously since that date as a trade mark for constructional toys; that in 1914 they had started to use a trade mark 35 Erektit and such use had continued to 1918; (4) alleged that they had early in 1933 introduced a new type of constructional toy and had adopted the Trade Mark Erectiko which was coined from their former mark Erektit and their existing mark Kliptiko j the mark Erectiko had been extensively advertised; (5) alleged that the mark applied for wa's not calculated to deceive 40 or to lead to confusion. On the 20th of July, 1934, the Assistant Comptroller (for trade marks), hereinafter referred to as the Assistant Registrar (Mr. A. S. Cox) decided to allow the mark to be registered unless an appeal was entered within one month from tlhe date of his decision. The grounds of the Deci,sion were as follows:45 On the 20th of February, 1933, application was made to register a word Trade Mark" Erectiko" by William Bailey (Birmingham), Ld., 38, Weaman Street, t38 No.4.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [Vol. LII. In the Matter of an Application by William Bailey (Birmingham) Ld. to register a Trade Mark and an Opposition thereto by .A. C. Gilbe1·t Co. Birmingham, 4, who are manufacturers. Registration was sought for" Toys", which are goods falling within Class 49 of the statutory Trade Mark,; classification. The Application was advertised on the 10th May, 1933, in the Trade Marks Journal, and on the 21st June, 1933, Opposition to the registration was entered by The A. C. Gilbert Co. (a Corporation organised and 5 -existing under the laws of Maryland, United States of America) on grounds that may be summarized as follows:That the Opponents and their predecessors, a company of a similar name organized and existing under the laws of the State of Connecticut, haVE; extensively used a word Trade Mark "Erector" in connection with their 10 trade relating to toys such as sets for the construction of engineering models, bridges and so forth. For over a year they have also extensively used, advertised and catalogued the word Trade Mark "Erector-brik" in connection with bricks for building toy models, such as bridges, garages, railway stations and so on. 15 That the former of these Marks is included in Part B of the ,Register under No. 406,445; and that it is so well known in use that " Erectiko " is calculated to deceive, and would lead by its use to the belief that the goods upon or in connection with which it was used were goods manufactured, sold, or dealt in by the Opponents. ;20 That the Mark applied for so nearly resembles the Mark registered to the Oppon (...truncated)