GE TRADE MARK
Printed in Scotland by Her Majesty's Stationery Office at HMSO Press, Edinburgh
IN THE HOUSE OF LORDS GE TRADE MARK Trade mark-Rectification-GEC:GE-General Electric-Whether GE rondel mark 10 likely to deceive or cause confusion-Whether likelihood of confusion must be due to blameworthy act of registered proprietor-Licensing of mark-Appeal from Court of Appeal allowed-Rectification refused.
6th September 1973
in the mark MONOGRAM. It was held by the Court of Appeal (a) that the use of the
GE mark was in 1967 likely to lead to the deception or confusion of a substantial pro
portion of the public and (b) that the court had power under section 32 to expunge the
entry of a trade mark if, subsequent to its date of registration, it had become likely to
deceive or cause confusion to a substantial number of members of the public, whether or 5
not this was caused by fault on the part of the registered proprietor. The Court of Appeal
was also of the opinion, although it was unnecessary to decide the point, that the licensing
of the GE mark had not vitiated or "muddied" the mark. On appeal by the registered
proprietors to the House of Lords the main question on the appeal was whether, as a
result of events which had happened since 1907, the entry of the rondel mark had become 10
an "entry wrongly remaining on the register" within the meaning of section 32(1) of the
Trade Marks Act 1938.
Held, allowing the appeal (i) that the legal status under the Act of a registered trade
mark the use of which is likely to cause confusion can be summarised as
follows:(i) The fact that the mark is entered upon the register is prima facie evidence of the 15
validity of the original registration and of the right 0.[ the registered proprietor
to the exclusive use of the mark, subject however to the rights of concurrent user
by any registered proprietor of an identical mark or one nearly resembling it.
(ii) If the mark was likely to cause confusicn at the time when it was first registered
it may be expunged from the register as "entry made in the register without 20
sufficient cause" unless the proprietor of the mark at that time 'would have been
entitled to have it entered on the register by reason of his honest concurrent use
0..( the mark as a trade mark before the original registration of the mark.
(iii) If the likelihood of causing confusion did not exist at the time when the mark was
first registered, but was the result of events occurring between that date and the 25
date of application to expunge it, the mark may not be expunged from the
register as an entry wrongly remaining on the register, unless the likelihood of
causing deception resultedfrom some blameworthy act of the registered proprietor
0.[the mark or of a predecessor in title of his as registered proprietor.
(iv) Where a mark is liable to be expunged under (ii) or (iii) the court has a discretion 30
whether or not to expunge it and as to any conditions or limitations to be imposed
in the event of its being permitted to remain on the register.
(2) That the Court of Appeal was right in holding that the use of the rondeI mark
would in 1967 have resulted in likelihood of confusion among a substantial number of
members of the public, but that this likelihood was not caused by any blameworthy 35
conduct on the part of G.E. Moreover the licensing objections had also not been estab
lished. Rectification would accordingly be refused and the appeal allowed.
Cases referred to in judgments:
Pidding v. How (1837) 8 Sim. 477.
Millington v. Fox (1838) 3 My. & Cr. 338.
Perry v. Truefitt (1842) 6 Beav. 66.
Dent v. Turpin (1861) 2 J. & H. 139.
Southorn v. Reynolds (1865) 12 L.T. 75.
Hodson, Re (1881) 26 So. J. 43.
Jelley, Sons & Jones' Application, Re (1882) 46 L.T. 381.
Batt (J) & Co.'s Trade Mark (1898) 15 R.P.C. 534.
Thorne & Sons Ltd. v. Pimms Ltd. (1909) 26 R.P.C. 221.
Woodwardv. Boulton Macro Ltd. (1915) 32 R.P.C. 173~
House of Lords
Arnold, Q.C.-The Court of Appeal decided the case on an issue which was not a
live one when the evidence closed. Therefore, nothing should be predicated from the
absence of certain evidence, and certainly not the absence of clear evidence of user
GE Trade Mark
by us between the years 1907-1967. No one could have realised before the trial that
this was a point that was going to be the determining factor. The issue of confusion
arising out of similarity between mark and mark is an issue which had been decided
in both the courts below in our favour. It has been held that neither was there similarity
between mark and namein 1907; but the Court of Appeal has held that such similarity 5
did exist in 1967. We submit that such supervening confusion is not proved and in any
event is not a proper ground for rectification. Besides, insofar as there is confusion
it is in truth confusion between two companies with very similar names and that has
not been contributed to by the nature or use of our trade mark; rather that our trade
mark, insofar as it has an influence on the matter, either succeeds or fails to succeed 10
in distinguishing the two companies between whom there must necessarily be an
inherent danger of confusion because of virtually identical names, and that is not, as
a matter of law, confusion within the ambit of the meaning of that term in the Trade
Marks Act. What has happened in this case is something quite unique in the annals
of trade mark law. The Court of Appeal has said: If a person looks at this rondel mark 15
and sees that this is a particular form of depicting the initials "G.E.", then it is likely
that he will conclude that those letters stand for General Electric-and so far that
may be right. Then it is said, when he imagines those words from the initials he will
be led either to identify the goods with the English company because of their name
which is said to be very well known in the trade (although there is practically no 20
evidence of this as to the words "General Electric") or alternatively, he will be led
to a state of confusion as to whether those might be the initials of the American
company or the English company. There is no justification as a matter of law for that,
because there is not in truth a similarity between mark and name. It is a similarity
between name and name. The worst thing that can be said against our mark is that 25
it failed to avoid such confusion as already existed. Moreover, the Court of Appeal
have said: We, the members of the Court of Appeal, believe that we know the English
company under the name General Electric. There is scant evidence that anybody else
thought of them under that name. (They are usually called G.E.C. or General Electric
Company ofWembley). We say that is quite impermissible. Similarity may be judged 30
subjectively by the court; but when reputation enters into the equation, then the
matter must be judged upon the evidence, for judges are not experts in the com
mercial field. In the evidence not one single shopkeeper has been found to say that
one single customer has ever asked for one single article made by or under the English
company under the name "General Electric". 35
Had the trial Judge decided that there was jurisdiction to expunge the mark he
would in any case have exercised his discretion in favour of retaining it on the register.
[Lord Reid: Is there a difference between a discretion which is exercised by a tribunal
which has seen the witnesses, and a discretion which is simply exercised on the paper
evidence 1] On the construction of this statute, if the trial Judge had in fact exercised 40
his discretion (in our favour) then it is submitted that the Court of Appeal could not,
as a matter of law, overturn the exercise of that discretion unless they discerned that
it had been exercised on a wrong principle; but we are not quite in that favourable
position because we did too well before the learned Judge. [Lord Diplock: The exercise
of the discretion was obiter.] On one view; on the other view he gave two alternative 45
grounds for his decision, because he was against us on the law, one being that on the
facts there was not a relevant confusion, the other that he would not exercise his
discretion. [Lord Reid: This is a little double edged. If the first court called upon to
exercise discretion was the Court of Appeal and it did not err in principle, then we
could not upset the Court of Appeal.] An experienced Judge has exercised a dis- 50
cretion very carefully, and an appellate court would be slow to overturn this discretion.
[Lord Simon: Is there any authority on the review of discretion by a further appellate
House of Lords
court when the discretion has for the first time been exercised by an Appeal Court?]
I have found none. On first principles, if a discretion has to be exercised by an appellate
court as a matter of ratiocination from its conclusion of the facts, then one appellate
court is every bit as good to do it as any other appellate court. [Lord Simon: That
5 would be so if the rules concerning review of discretion by an appellate tribunal are
based purely on the fact that the trial court sees the witnesses, but that is not so. It is
the same approach when the material is wholly written.] Yes. In this case the Act
conferred the discretion on the trial Judge exclusively. If he did not exercise a dis
creation, or exercised it on a wrong basis so that it can be overturned, then we submit
10 that it is an ordinary appellate point from there on, one which this House is competent
to deal with.
Turning to the provisions of the Act, section 4(4) contemplates the possibility that
there may be on the register at the same time two similar marks neither of which will
infringe the other. The consequence of our being taken off the register is not at all to
15 prevent us using our mark, but it is to stop us from preventing an infringer usurping
our mark. The English company could not stop somebody else using a mark identical
with ours; both courts below have so held. Where the public advantage lies in taking
us off remains wholly obscure. This will be important in relation to discretion.
Section 7 again contemplates the possibility of two similar marks remaining on the
20 register. Section 8 provides: "No registration of a trade mark shall interfere with
(a) any bona fide use by a person of his own name ..." so taking us off the register
cannot prevent the real confusion, which is the confusion between name and name.
(Counsel referred to section 9). Section 11 is very important; it contains and contains
only a provision about registration that it shall not be lawful to register certain things.
25 [Lord Kilbrandon: What do the words "or otherwise" mean?] If the court's subjective
conclusion was, for a sound reason, that it was disentitled to protection in a court of
law, then it would be covered by this. [Lord Kilbrandon: It does not have much content,
does it?] I know of no case in which anything has been held disentitled to protection
for a reason not expressly stated in the section. [Lord Diplock: It might cover the case
30 where there had been an agreement not to register.] Yes. [Lord Morris of Borth-Y
Gest: The comma is in a curious place, is it not ?] Yes, it would not be a bad idea to
have another comma after "confusion". Section 11 deals plainly with the situation
obtaining at the date of registration, not with a state of things obtaining at any other
time. Section 12(2) permits registration of similar marks in cases of honest concurrent
35 user. Section 12(3) is a further instance of two people going on the register at the same
time for closely similar marks. Section 13 protects-but does not do anything else, it
simply protects-the original registration. What is offended against is "the provisions"
of section 11 and not "the idea behind" section 11 or "the conception entertained by
the author of" section 11 or "the mischief aimed at by" section 11. The only
"pro40 vision" of section 11 is one that it shall not be lawful to register any matter which is
disentitled to be registered by that section. The respondents say that section 13(1)(b)
provides that the trade mark itself, not the registration of it, offends (in the present
tense) against the provision of section 11. They slur over the word "provisions" and
get to a situation in which the trade mark is in a constant state of offence against the
45 sort of idea which is aimed at by section 11 at the time of the legal proceedings.· But
even if that is right, the only consequence under section 13 is that the seven year rule
shall not protect. Supposing in 1910 I had registered for playing cards a swastika
design; at some time during the period 1930-1940 it might well be said that that is a
scandalous design. It would be a remarkable result if at that distance of time, because
50 evil men had used this mark as a symbol of oppression and cruelty, my mark would
have to come off the register, but that would be the inevitable consequence of the
Court of Appeal's construction. [Lord Reid: That construction would mean that you
GE Trade Mark
gain no advantage from being on the register.] That sentiment is reinforced when one
looks at section 46, which provides that the fact of registration shall be prima facie
evidence of the validity of the original registration-but not of the continuing validity
of the registration, which would be surely a most notable omission if section 13 is
capable of being construed in the way suggested. In section 32(1) the ground "wrongly 5
remaining on the register" is one of four grounds; the other three are where the mark
is there contrary to some provision of the Act; yet it is said that "wrongly remaining"
must be something outside the provisions of the Act. Section 15(2) provides that
where a word becomes descriptive in the trade it "shall be deemed for the purposes of
section 32 of this Act to be an entry wrongly remaining on the register". There is a 10
case in which the Act specifically says that an entry wrongly remaining on the register
is forfeit for the purposes of section 32. This suggests that section 32 is merely a
directory section of the Act to give effect to matters which are regulated elsewhere in
the Act rather than a general sort of dispensing power to remove anything which was
thought for some reason (not necessarily connected with the statute) to be objection- 15
able. Section 15 also illustrates a difference of standard between getting on to the
register and being taken off the register. Section] 5(3) is another instance of a mark
being expressly deemed for the purposes of section 32 to be an "entry wrongly
remaining on the register". So here is the further instance of a disqualification imposed by
the Act upon which the phrase "any entry wrongly remaining" in section 32 may bite. 20
Under section 26 any bona fide user at all is sufficient to save the mark. This becomes
important in the light of the significance attached by the Court of Appeal to the extent
of our user in this case. It is almost as if we are being punished here for a degree of
non-user which is not remotely sufficient to be of use under section 26. If it were a
right view that section 13 had any relation to anything other than an initially bad 25
registration, then it could somehow be used to protect the proprietor from the con
sequences of non-use under section 26(1)(b); but there is nothing like that to be found
in the section. Section 27(5) is another provision defining when a mark is "wrongly
remaining"; it leaves it to section 32 to regulate it. The same is true of section 28(10).
If it be true that section 32 itself gives power to expunge a mark, not where it con- 30
travenes a specific provision of the Act, but merely where it offends against the policy
of the Act, then section 33 must be superfluous. Section 37(6) is only a further illus
tration of a case where resemblance between one mark and another is not necessarily
fatal to concurrent registration of both.
From 1892 onwards there was a company in the U.S.A. called General Electric 35
Company and another in England called The General Electric Company Limited.
There sprang up from that circumstance an anxiety on both sides to adopt trading
practices which would avoid confusion between respective names. This has been
quite misappreciated in the Court of Appeal, who supposed that the mutual arrange
ments were adopted for the purpose of avoiding confusion between marks. In fact, in 40
overseas territories the arrangement was that they should add to their company names
a territorial appellation like U.S.A. or Great Britain and that they should use their
respective marks; the very mark which is now said to be confusing. This was so in a
number of countries which were English speaking, where of course mental transition
from "G.E." to "General Electric" would be just as difficult as it would be in the U.K. 45
[Lord Reid: If you are perfectly entitled to go on using this thing in any way you like
even if you are expunged, then I cannot myself see how expunging it from the register
does anything to protect the public.] That is the central point of discretion. The only
instance of actual confusion in relation to the mark was one man in relation to a
blanket, a man who had not read the packaging material. The public survey question- 50
naire put out by the respondents suggests the answers they wished to obtain. [Lord
Simon: Is there no way of getting questionnaires of this sort settled on an order for
directions, as in the case of interrogatories?] I see no reason why not. An analogous
process happens in the variation of a trust settlement with a very large number of
beneficiaries, when the court will direct that a settled form of resolution shall be put
5 to class meetings.
[In relation to section 11 of the Act Lord Kilbrandon observed: This is one of the rare
cases of a misprint in the Public and General Statutes and that comma, as in fact you
can tell from the 1905 Act, has been put in the wrong place. It does not make sense
10 In 1907 they could not have objected to us registering our G.E. mark on the basis
that it was similar to the G.E.C. mark, because the register contained a limitation
that "the registration of this mark shall not interfere with the bona fide use by any
person of his own initials"; "person" includes a company, section 19 of the Interpreta
tion Act 1889. G.E. are our initials. (Counsel reviewed the evidence.) [Lord Reid: Is it
15 sufficient for your purpose if we conclude generally on this evidence that there was a
small, but nevertheless significant import of your goods from a pretty early date down
to 1965 and that probably a good deal of that bore the rondel mark?] Yes. What is
"small" depends on what you are considering. A £100,000 a year is not usually
considered small. There is no valid reason in law for making a comparison between us
20 and the other company. It is not a competition. [Lord Reid: There will be different
categories of people. One will attribute the mark to the American company; another
to the English company; others will know nothing about it. Commonsense tells you
that there will be some people in all these categories. Your evidence does not establish
the sizes of these categories.] Our evidence should not be judged too harshly, because
25 the main point of this case was not thought to be involved at the stage when the
evidence closed; see
General Electric CO.'s Trade Mark [1968
] F.S.R. 517. In fact,
we objected at that stage to the evidence being put in as having no relevance whatsoever
to the proceedings.
The public may be divided into nine classes of person. In each case assume the mark
30 is seen on goods without any associated packaging or promotional material. First, the
man who knows that the rondel mark is our mark; he cannot be confused. Second, the
man who knows both companies, thinks the letters stand for a name, General Electric,
but does not know to which company the mark belongs. If he is confused, the state of
confusion as a matter of causation stems from similarity of names and not from the
35 mark. Section 11 is a section about a trade mark and for the confusion to be relevant
it must be confusion which is caused by the mark. [Lord Simon: That means that you
divorce the mark from its association and I should have thought that the whole essence
of the mark is its association.] You have to look at the causation. When the mark has
made the man think of the words "General Electric" then that causation is spent.
40 There is up to that point no confusion. He has been told to think of the words "General
Electric". That has not confused him, it is when he comes to apply that knowledge to
the facts of the case that he falls into confusion, solely because there are two companies
with identical names. [Lord Reid: The mark speaks true because he thinks it means
General Electric, and it does mean General Electric. If he thought it was General
45 Electric but the name of the company happened to be George Elliot then it would not
have spoken truly.] The most that can be said against the mark is that it has failed to
dispel the inevitable confusion between these two companies, and that is not to make
it deceptive, because it speaks true. [Lord Diplockr It is not just "caused confusion";
it is "caused a particular kind of confusion", namely, the kind of confusion which
50 would have made the mark disentitled to protection, originally in a Court of Equity
GE Trade Mark
(because the first Act was before the Judicature Act), and subsequently in a Court of
Justice.] Quite apart from the nature of the relevant confusion, it is only confusion
under the Act at all if it is caused by the use of the mark. [Lord Reid: So it is, because
the use of this mark is the same as the use of the name, and the latter does cause
confusion.] I do not admit the use of our name causes confusion. The use of the name 5
is a perfectly truthful act. It only causes confusion because somebody chooses to
trade under the same name. It is perfectly fair and legitimate for us to use our own
name. If we were applying for registration for the first time now we would have no
difficulty in getting it. Section 12(2) says: "In case of honest concurrent use . . . the
court or the Registrar may permit the registration of trade marks that are identical 10
or nearly resemble each other...." I say under section 11 that this, being no more than
the use by a man of his own name, the confusion (assuming against myself that the
use of the mark would be likely to cause confusion) certainly would not be such as to
disentitle me to protection in a court of justice. The relevant protection is the pro
tection afforded by the court, formerly the Court of Equity, in the granting of an 15
injunction to protect the use. The question is: Would one be entitled to protection
against a man who applied one's mark to his goods without leave? To bring a mark
within section 11 it is not enough to prove confusion. The hallmark of disqualification
is disentitlement to protection in a Court of Equity. [Lord Reid: A man is entitled to
use his own name, leaving initials aside. But does it follow that if he used his own name 20
and found there was another man of the same name, he would be entitled to pro
tection?] The answer is yes, if he comes with clean hands. "Protection" means the
right to be protected against usurpers; not necessarily the owner's protection, as a
successful defence, if he in turn were sued by somebody. [Lord Diplock: "Disentitled to
protection" means generally disentitled to protection, i.e. against the whole world not 25
merely one particular man.] It has got to be a man's own fault. It is a subjective
disentitlement. It comes in at an earlier stage than discretion. On the authorities there
is a distinction between confusion which is caused and not caused by the use of the
mark without the fault of the proprietor. I now begin to see why that is so. It is
because of this conception of subjective disentitlement. The true position is that unless 30
I come in with unclean hands, guilty of what in equity is called fraud, and that does
not mean common law deceit, I am entitled to protect from a usurper my trade use of
my name. Third, the man who knows both companies, does not know to which
company the mark belongs, and does not happen to think that the letters G.E. stand
for the name General Electric. He cannot be confused. Fourth, the man who knows 35
only our company and thinks that the letters stand for a name, General Electric. He
cannot be confused. Fifth, the same except that he does not think the letters stand for
the name, General Electric. He cannot be confused. Sixth, the man who knows only
the English Company and he thinks that the letters stand for a name, General Electric.
He might be confused by the use of the mark, provided he were to perform the two 40
stages of the thought process. That is a matter of evidence. And even that class is subject
to argument about whether even that would disentitle us to protection in a court of
equity. Seventh, the same as No.6, except that he does not think that the letters
stand for a name, General Electric. He could not be confused. Eighth, the man who
knows neither company but thinks that the letters stand for a name, General Electric. 45
Any confusion in this case would stem not from the use of the mark but from the
similarity of the names. Ninth, the man who knows neither company and does not
think that the letters stand for the name General Electric. He would not be confused.
[Lord Reid: A substantial number of people may fall within your sixth class.] The trial
Judge held there was not. The evidence does not prove it and the onus is on the 50
We sold goods on a substantial scale under the rondel mark starting a great many
House of Lords
years before the present proceedings commenced. [Lord Reid: Apparently, there was
no attempt to stop you either by appealing to your better nature on the gentleman's
agreement or by taking legal proceedings.] Yes. The only two incidents are (i) the
Customs affair of 1961, where they stopped our goods coming in, but even there they
5 did not protest to us; (ii) the affair of Mr. Stocks and the blankets, and there the
correspondence shows plainly that their real anxiety was that we might trade in this
country under our company name.
It is true that the registration of initials has sometimes been refused, but not because
the initials might suggest some name, which is the case made here, but because they
10 might unreasonably block the use by another trader of his own initials. Registrar of
Trade Marks v. W. & G. Du Cros Ltd. (1913) 30 R.P.C. 660.
The public survey evidence adduced by the Respondents is worthless for the same
reasons as in
Coca Cola Co. v. Struthers [1968
] R.P.C. 231:
"It arises from an artificially contrived situation wholly divorced from 'the
course of trade', and the evidence thus sheds little, if any, light on the question
whether when the persons interviewed were actually buying the products of one or
the other of the parties to this case they would confuse one product with the other."
[Lord Morris: Supposing one company registers the trade mark G.E.C. on the 1st
January and another company the mark G.E. Co. on the 1st February, neither having
20 any reputation or user.] That is a section 12 case rather than a section 11 case. Under
section 12(1) the bar is absolute and, since there is by definition no honest concurrent
use, the exception under section 12(2) does not arise. Under section 11 it would be
necessary to consider the likely use of the marks. The only relevant date for section 11
purposes is the date of registration. Therefore, having regard to the known facts at
25 that date, one must project the thing into every reasonable future probability. [Lord
Simon: In section 11 what are the matters covered by the words "or otherwise"?]
I can think of four.
(1) Considerations of comity, e.g. an injunction granted by a foreign court
restraining the use of the mark throughout all the world;
(2) Where the proprietor agreed not to use it;
(3) Where the mark was so outrageous as to be calculated to provoke a breach
of the peace;
(4) (Possibly) where the proprietor derives title from an expropriation without
(Counsel referred to sections 2, 3, 5, 6, 10 of the Trade Marks
Registration Act 1875; sections 62, 64, 65, 70, 73, 75, 90 of the Patents,
Designs and Trade Marks Act 1883.)
Section 90 provides; "the court may
on the application of any person aggrieved . . . by any entry made without
sufficient cause . . . make such order for . . . expunging ... the entry as the
court thinks fit".
40 "Without sufficient cause" must mean without it being justified under the provisions
of this Act. [Lord Reid: It is nothing to do with anything that happened after the
entry was made?] No; and this gave rise to difficulty because there was no provision,
e.g. for removing an entry for non-payment of fees. The phrase "wrongly remaining"
in section 32 of the modern Act was first introduced by section 35 of the Trade Marks
GE Trade Mark
Act 1905; and that was put in as a result of some obiter remarks in Batt's Trade Mark
(1898) 15 R.P.C. 535 at 538, per Lindley L.J.:
"If any entry is at any time on the Register without sufficient cause, however it
got there, it ought, in our opinion, to be treated as covered by the words of the
[Lord Reid: The court had drawn attention to the matter, so the only sensible thing
to do, from the Parliamentary point of view, was to put in a section to clear up the
difficulty.] Yes. This is consistent with the view that the phrase "wrongly remaining"
which appears for the first time in 1905 is satisfied only by a contravention of the
statute. In 1905 non-user (as in Batt) was made a ground for rectification; that is the 10
only reason "wrongly remaining" was put in.
(Counsel referred to sections 3, 9, 15,
19,20,21,22,28,29, 30, 32, 35, 37,41 of the Trade Marks Act, 1905)
. Section 21
envisages a state of affairs which is exactly similar to the old pre-registration equity
situation where different persons, each having the right to sue a third party infringer,
each could not sue the other. Section 41 is the predecessor of the present section 13. 15
The only thing which is protected by that section is the original registration. Therefore,
if there can be an attack on the current validity of the mark through supervening
circumstances, no period of limitation after those supervening circumstances have
supervened is ever going to save the mark from invalidation, which would be remark
able. It would mean that bad initial registrations were safe after seven years, but 20
registrations bad owing to supervening circumstances would be at risk for ever.
There is no power under section 32 of the 1938 Act to remove from the register a
mark properly registered in the first place, unless there has been some contravention of a
provision of the Act. There are no cases supporting the contrary proposition. Thorne v.
Pimms (1909) 26 R.P.C. 221 was essentially a passing off case; and the trade mark 25
there was always potentially misleading; the registration should have been limited to
the use of the label in connection with Thorne's Whisky. So it was wrong ab initio.
[Lord Reid: It is plain that Neville, J. took your opponent's view, but the case can be
justified for other reasons.] [Lord Diplock: Could you tell me this, because I am not so
familiar with the reputation of the Chancery Judges. Where does Neville, J. rank in 30
the hierarchy between Eve, J. and Kekewich, J. 1] I am bound to say: at the Kekewich
end of the scale. But although Neville, J.'s general reputation is not enormously high
he in fact did do quite a lot of trade mark work. Bowden Wire Ltd. v. Bowden Brake
Co. Ltd. (No.1) (1913) 30 R.P.C. 45, 580 is a case really based on a construction of
section 70 of the 1883 Act, equivalent to section 22 of the 1905 Act, and the House of 35
Lords specifically took the view that there had been a contravention of the prohibition
in section 22, see 31 R.P.C. 385. Lacteosote Ltd. v. Alberman (1927) 44 R.P.C. 211 is
plainly based on a contravention of a specific section of the statute, namely, section 22
of the 1905 Act, although there is an obiter passage to the contrary at 325. [Lord Reid:
Do you go so far as to say that if the owner of a mark himself contributes to deception 40
after it has been registered he can still keep the mark and go on with it 1] Yes, but
probably he would be prevented from using the mark either under the criminal law or
under the law of passing-off. Cases supporting our proposition are Imperial Tobacco
Co. Ltd. Trade Marks (1915) 32 R.P.C. 40; Woodward Limited v. Boulton Macro Ltd.
(1915) 32 R.P.C. 173, a case decided later than all those cited against me except 45
Lacteosote (supra) where it was not cited. This was the last case on the subject before
the 1919 Act and it was a clear case very much in point unlike the other cases cited
against me. [Lord Reid: Are you relying on the doctrine that if Parliament passes an
Act after a single Judge has decided upon it his decision is thereby endorsed by
Parliament?] Only if there is sufficient notoriety, and this is such a case. [Lord Reid: I 50
House of Lords
think personally that that doctrine has been much overworked in the past.] Yes, but
here the argument put forward by the Board of Trade was overruled and they must
have had it very much in mind when the 1919Act was being framed. [Lord Reid: If you
get a decision of this House it may be there is something to be said for that, but I
5 demur from this idea that because a single Judge has decided something, and Parlia
ment has used the same words later, then that single Judge's authority becomes not
only equal to that of this House but equal to that of Parliament. That seems to be
going far too far.] (Counsel referred to sections 6 and 9 of the Trade Marks Act, 1919.)
Woodward was approved by the Court of Appeal in the Bali case. Pan Press Limited's
10 Applications (1948) 65 R.P.C. 193; DIEHL Trade Mark  R.P.C. 435.
Turning to section 11, in order to be disqualified owing to likelihood of causing
confusion, the mark must fulfil two cumulative conditions. First, that the use of the
mark would be disentitled to protection; secondly, that that disentitlement is oc
casioned through the likelihood of causing confusion. In one word, guilty confusion
15 is necessary. Even collateral fraud will not necessarily disentitle to protection. Cases
showing the position in equity before the 1875 Act are Dent v. Turpin (1861) 2 J & H
139; Hine v. Lart (1846) 7 L.T. 41; Southorn v. Reynolds (1865) 12 L.T. 75;
v. Walmsley (1866
) L.R. 1. E. 518; Jelley, Son & Jones' Application (1882) 46 L.T. 381;
"If it is a new mark which has never been used before then you cannot adopt
somebody else's mark, but if you have got a case of honest user you are entitled
to rely on it", per Jessell M.R.
(There must however be a measurable use. That was not so in BALI Trade Mark. See
Re Hodson (1881) 26 So.J. 3: "The evidence of user was of so slight a kind as not to
give the applicants a concurrent right to use their trade mark", per Chitty J.); Banks v.
25 Gibson (1865) 34 Beav. 566; Benbow v. Low (1880) 44 L.T. 875; [Lord Reid: Does that
mean that supposing your mark had never been registered before 1967 and you had
come along then for the first time and said "I have been using this mark for twenty
years. I want it registered," it would have been no answer for your opponent to say
"Oh! but it is liable to cause confusion"?] Yes, certainly, unless he could say it was
30 the same as his mark in which case one would look to section 12 instead of section 11.
Under section 11 I would be disqualified by a misdeed of my mark only;
) 7 Ch. App. 611, the phrase "calculated to deceive" in section 6 of the
(now section 11 of the 1938 Act)
emanates from the judgment in this case;
Leather Cloth Co. v. American
Leather Cloth Co. (1865
) 11 H.L. Cas. 523, from whence
35 the words "use" and "protection" in section 11 of the 1938 Act. "The use of an old
mark would not necessarily be disentitled to protection in a court of justice by reason
of its' identity with another mark", per Lord Warrington in Bass, Ratcliff and
Gretton Ltd. v. Nicholson & Son Ltd. (1932) 49 R.P.C. 88. The respondents have never
accused us of misconduct. "Knowledge of the registration of the opponent's mark
40 may be an important factor where the honesty of the user of the mark sought to
be registered is impugned, but when once the honesty of the user has been established
the fact of knowledge loses much of its significance", per Lord Tomlin in
) 50 R.P.C. 147 at 159.
BALI Trade Mark  R.P.C. 472 is relevant both on section 11 and section 32.
45 On section 32 the case never went beyond the Court of Appeal, which decided by a
majority that the Woodward construction was right, and therefore that a mark validly
registered initially could not be taken off the Register on the basis of likelihood of
confusion, under section 32, read in conjunction with section 11, unless there was a
contravention of some other section which rendered the mark removable: 
GE Trade Mark
R.P.C. 426. In the House of Lords both sides presented their case on the footing that
Woodward was right. The mark was removed on the ground that it had offended when
it was originally registered in 1938. What was argued in BALI Trade Mark was that
section 11 was confined to cases where the level of likelihood of deception was sufficient
to sustain a passing-off action. Our argument that to construe section 11 you have to 5
look at the pre-registration law was never put to the House. [Lord Reid: Is not e.g.
Lord Morris against you? On page 490 he says: "From all this I think it follows that,
in 1938, if Berlei had shown that the use of the mark BALI was likely to deceive or
cause confusion they would have shown (quite without any reference to section 12(1))
that the use of the mark BALI was disentitled to protection in a court of justice."] 10
That is not a universal conclusion on the law. It is a conclusion that in that particular
case BALI would have been disentitled. There the use was de minimis, see Hodson's
Application (1881) 26 So.J. 43, and Lord Upjohn at page 495 in BALI: "It may be that
Sir John Romilly went too far in saying that user for a week would be sufficient."
[Lord Reid: Suppose BALI, before the first Registration Act in 1875, had been doing 15
precisely what they were doing in 1938, and somebody else had come along, a cheat,
and had used the word "Bali". Would it have been in the mouth of Bali to say: "But
I am not disentitled to the protection of the court because I am genuinely using this
mark. I have used it for years. It is perfectly genuine."] The answer is no, because the
user was de minimis: one retailer with a small amount of goods over at most three 20
years. But here we have £IOim. worth of user. [Lord Reid: I am not sure that I
remember any case in which we have had to consider what the position is when you
find a new argument brought in, and this House has laid down apparently a perfectly
general rule on an occasion when that argument was not brought up and would have
been no use if it had been brought up. Are we now at liberty to say: "That is all very 25
well, but there is a very material qualification, namely, that you have also got to con
sider whether the facts are such that under the common law you would have been
entitled to protection ?"] The case of Cowley v. Inland Revenue Commissioners 
A.C. 198 is an obvious case where your Lordships later found no difficulty in saying
that those observations were no doubt controlled by the environment. [Lord Reid: I 30
think some people take the view that Lord Simmonds was the progenitor of our
present practice that we can reconsider decisions of this House because what in fact
was done was that they reconsidered Cowley's case.] [Lord Morris: If before 1875 BALI
had used that name for an appreciable time could they have got an injunction against
Berlei?] No, see Benbow v. Low (1880) 44 L.T. 875 and
Banks v. Gibson (1865
) 34 35
Beav. 566. The courts would have said that this was an honest concurrent user.
Neither could stop the other. [Lord Reid: You are entitled to say that if you take the
BALI dicta at their face value, honest concurrent user becomes anomalous to the
conception of the general law because it had no right to be there.] Yes. [Their Lord
ships indicated that they would defer argument on the topic of discretion until the end 40
of the argument on other matters.]
Falconer, Q.C., for the respondents.-Notwithstanding that a mark may originally
have been rightly registered, it may nevertheless be removed on the ground that it
"wrongly remains" on the register and if, subsequently to the date of its original
registration, a mark-for whatever reason-becomes likely to deceive or cause co- 45
fusion, it ceases to be a registrable mark and, therefore, "wrongly remains" on the
register and may be removed therefrom. The American Company want to save their
mark in order to rely on the Defence under section 4(4), because we are suing them.
The appellants enquire where is the public advantage in taking their mark off the
register. There are two answers. First, if their mark is one which is wrongly on the 50
register, it is not a right to which they are entitled anyhow. Second, so far as the public
advantage is concerned, it is that the purity of the register is restored by removing
House of Lords
from it a mark which is deceptive or confusing. The register is divided into Part A and
Part B. Pan Press was a Part B case. That is why there was no discussion of section
13(1). The purpose of section 7 is purely to safeguard the prior rights of a proprietor
who has prior used his own mark. As to this section contemplating concurrent
5 registrations, the section says nothing about the validity of the first registered mark.
It has long been a cornerstone in our trade mark law that a mark must be distinctive,
see section 9(1). See the
Fanfold Ltd.'s Application (1928
) 45 R.P.C. 325. Section 11
was construed in this House in Bass v. Nicholson (1928) 45 R.P.C. 88, 107. There is
no restriction as to the kind of deception or confusion contemplated except that it
10 shall be such as to disentitle it to the court's protection. If one is going to rely on the
use of a mark as barring another entry on the register then it must be under section 11,
not 12(1). The appellants say that if our argument on section 13 is right, and one can
look at the present time, the word "offends" being in the present tense, there would
be a continuing peril to the mark, which is said to be a revolting concept. But that is
15 not a concept that revolted the legislature because a Part B mark is always under
continual periL The kind of protection that section 13 gives to a Part A registration
is that it cannot be said after seven years that the mark should not have gone on the
register because it did not qualify under section 9. It is also directed to the protection
of the title of the first registered proprietor. The original registration may be impeached
20 if the trade mark offends (present tense), i.e. offends against the provisions of section 11
[Lord Reid: What about the case where a mark offended to start with and if you look
at it today without reference to the history it is perfectly all right ?] The original regis
tration would probably still stand after seven years. [Lord Reid: So that the concession
that was made in BALI was quite wrong and they should not have looked at the original
25 date at all, they should have looked at the date of the commencement of proceedings.]
No, in BALI it made no difference what date you took.
[At this point Lord Morris left the case.]
On section 32, so far as an entry made in the register without sufficient cause is
concerned, prima facie that would refer to the time of entry on the register, and by
30 an entry wrongly remaining on the register, that must as a matter of language refer
to something which is wrong now and therefore would include something which has
gone wrong between the time of entry and the present time. The phrase "wrongly
remaining" requires this test to be applied, if this were a new application today would
it succeed? Section 15(1) strongly suggests that without the saving provision
con35 tained therein a registration could become invalid owing to a supervening event.
[Lord Diplock: If the test is: "Could you get on the register today?" what good is the
prescriptive right under section 13?] A Part A mark may have got on to the register
wrongly, e.g. it was descriptive, but in the course of a few years the user has cleared
up that vice. After seven years section 13 protects the mark from an attack that it
40 was originally wrongly registered. Alternatively, a mark which began to offend against
section 11 after the date of registration makes the entry one "wrongly remaining'.
Clause 4(1) of the First Schedule provides that the Board of Trade (but not the court)
shall have jurisdiction to remove a certification trade mark on the ground that it
is no longer to the public advantage that the mark should be registered. That provision
45 was necessary because otherwise under section 32 the court would have jurisdiction.
[Lord Diplock: No! The explanation is probably that you cannot remove a mark under
section 32 unless it infringes some other provision of the Act. When you put in an
express provision for removal by the Board of Trade, as a matter of ordinary prudence
you make it quite clear that this is not covered by the general words of section 32,
50 which it otherwise might be.] My general submission is supported by Thorne v. Pimms
(1909) 26 R.P.C. 221. [Lord Reid: It does seem as if this was a proposition that had
GE Trade Mark
not been fully argued and on which Neville, J. arrived at something of a snap judg
ment.] Bowden Wire Ltd. v. Bowden Brake Co. Ltd. (1913) 30 R.P.C. 580. [Lord Reid:
This is a case where they had done something which the Act did not permit them to do,
not a case where it became deceptive by some means not struck at in the Act]; (1914)
31 R.P.C. 385. [Lord Reid: If a man by his own acts makes his mark deceptive, then 5
he must suffer. But that is a very long way from the present case.] The rule against the
assignment of trade marks is explained by
Pinto v. Badman (1891
) 8 R.P.C. 181. In
Bowden (supra) the real basis for removing the mark was that it had become deceptive.
A further authority is Lacteosote Ltd. v. Alberman (1927) 44 R.P.C. 211. A section 11
position arose afterwards, and there is no doubt that that mark originally was properly 10
registered. Pan Press Publications Ltd.'s Applications 65 R.P.C. 193 at 198: The second
half of that case proceeded on the footing that registration originally was a perfectly
valid one. It cannot be right that if a mark has become deceptive the decision whether
or not it is to remain on the register depends on whether or not the deceptiveness is the
fault of the proprietor. The public interest is dominant that a deceptive mark should 15
not remain on the register. Fault can be relevant to discretion only. Woodward v.
Boulton Macro (1915) 32 R.P.C. 173 is wrongly decided. Woodward is now covered by
section 15 anyway. [Lord Diplock: That is a strong point against you. When Parliament
amended the Act it left the construction as it was.] Woodward was not the only
authority on the point; Thorne v. Pimms (supra) and Bowden (supra) were the other 20
way. [Lord Reid: Have we had any recent pronouncements about the inference to be
drawn, if Parliament passes a new Act and leaves the law alone as it stands, where no
inference was drawn about the last case on the topic being approved by Parliament.]
[Lord Simon: At the end of my time at the Bar I tried that argument three times
running and each time it failed, based on Barras v. Aberdeen Steam Trawling Co. 25
 A.C. 402 at 432-3.] [Lord Reid: I think the law is in a fluid state on that.]
Confusion between mark and mark is a ground for invoking section 11, without
anything more. Relevant confusion may be that which arises because of the similarity
of the mark with a name meaning a name of a person used in the business. It has been
accepted for very many years now that in order to remove a mark under section 11 it 30
is enough to establish that the mark in question is likely to cause confusion or decep
tion by reason of being similar to the opponent's mark, and I say also name. If the
appellant's propositions are accepted, your Lordships would be upsetting a long line
of authority, and what is more, would be upsetting a great deal of the practice that
has gone on for many years. Whatever may have been the position before 1875, today 35
deception is not restricted to something inherent in the mark.
Dunn's Trade Mark
) 6 R.P.C. 148,379,7 R.P.C. 311. Lord Watson there proceeds on the basis that
what is now section 11 strikes at anything which is calculated to deceive the public,
neglecting entirely as irrelevant whether this would be disqualified from protection in
a court of law. [Lord Diplock: There is an express finding of fact by him that it was 40
done with the deliberate purpose of obtaining pecuniary advantage. This was a case
where Mr. Dunn had not used this trade mark before in this country.] The next case
where the idea of deception was widened is Compagnie Industrielle des Petrole's
Application (1907) 24R.P.C. 585: 'Motricine' could not be registered since it was too
like the trade mark 'Motorine' and might deceive the public. [Lord Reid: That is giving 45
a preference to the man who is on the register first.] Yes. That is what the Act does.
Subject to anything that might happen under section 12(2) there is an absolute power
under section 12(1) to refuse the later man. It is very important and a great deal of
jockeying goes on nowadays to make sure that you get your application in before the
other man. See per Warrington, J. at page 590: fradulent intent is irrelevant, the only 50
question is, is the mark calculated to deceive? See per Lord Hanworth in Me Dowell's
Application (1927) 43 R.P.C. 313 at 334. The unanimous decision there was that it was
House of Lords
sufficient to compare the two marks, and if they were sufficiently similar as to be
likely to be confused that was sufficient to disqualify under section 11. [Lord Diplock:
There was no question there of a prior user of the mark "Nuvol". He had never used
it before and it did not matter to him whether he used it or not. This is not a mark the
5 exclusive use of which was entitled to protection. It is only in the honest concurrent
user cases that the question arises.] That approach was that adopted by the majority
of the Court of Appeal in
BALI Trade Mark (1968
) R.P.C. 426 and this House said it
was wrong:  R.P.C. 472. [Lord Diplock: One does not consider the question of
honest concurrent user when one is considering whether a mark already on the
10 register should come off. That is why I do not find the registration cases, where a new
mark is sought to be registered, as being very helpful.] If that is so it is difficult to
understand how section 11 can ever apply to the case of an application for registration
of a new mark which had never been used. "Disentitled to protection" as the law
has now developed, arises automatically out of likelihood of deception. The cases cited
15 by the appellants are all old ones. [Lord Reid: Has there been any case where there was
substantial user so as to make a property in the mark, such mark being subsequently
expunged for a defect for which the proprietor was not responsible?] Yes.
) 62 R.P.C. 65. [Lord Reid: That was a service mark. There was no common
law property in such marks; they could have been protected by an action of passing
20 off only.] The case was considered on the footing that it was a trade mark. [Lord Reid:
In that case the proprietor caused the confusion by his own actions.] It would have
been no different if there had been another person on the register with the mark
"Rysta" for stocking repair.
A case where a mark was taken off the register because of its resemblance to a name
25 was George
Cording Ltd.'s Application (1916
) 33 R.P.C. 325. [Lord Reid: That was
not a case of honest concurrent user.] The case is cited purely for the proposition that
confusion with a name also counts. [Lord Reid: If you are right, then neither G.E.,
General Electric or, for that matter, G.E.C., can be registered by either of you.] In
this country we are General Electric. [Lord Reid: If your name was Smith you could
30 not stop another Smith from America from coming and trading here.] But this is
not a surname, it is a company name. Office Cleaning Services v. Westminster Window
& General Cleaners (1946) 63 R.P.C. 39. [Lord Diplock: Where is the case where a
person or a company has been stopped by an injunction in a passing off action from
trading under its full name with sufficient indication of origin or otherwise so that it
35 is not confusing.] Parker-Knoll Limited v. Knoll International Limited  R.P.C.
265. Further, the evidence is that half the public think that the rondel mark referred,
not merely to General Electric, but to G.E.C. Even on the appellant's version of the
law, they do not have, under modern trading conditions, enough use to give them a
common law property in their mark; and the use from 1965 to 1967 was in the face
40 of our protests about their breach of the understanding, so that would not entitle
them to the protection of the courts. [Lord Simon: A breach of contract would dis
entitle them to protection in a court of equity; what exactly is an "understanding"?]
It was a gentleman's agreement. [Lord Simon: An "understanding" is an agreement
not intended to create legal relations. What effect would it have in a court of equity
45 which follows the law?] [Lord Reid: You would be disentitled to protection, would
you not, if you disregarded a gentleman's agreement?] Certainly in a court of equity.
[Lord Diplock: If it was not intended to create legal relations it is not too difficult.]
In relation to the market for electrical goods, the appellant's use is small enough to
be ignored. [Lord Simon: If there has to be use amounting to a substantial proportion
50 of the market, the question is, what market? In some of the early cases a local market
was envisaged.] That illustrates the difficulty about importing this essentially old
concept into the present day trade mark law. For a long time now everybody has
GE Trade Mark
forgotten all about this and under section 11 you simply look to see if there is a likeli
hood of confusion, yes or no, and that is the end of the matter. BALI Trade Mark
 R.P.C. 472 at 489,492,495. Bass v. Nicholson (1932) 40 R.P.C. 88; that was a
case about an old mark, see the proviso to section 9 of the 1905 Act. After the proviso
to section 9 disappeared in 1937 Bass could have moved under section 32 and section 11 5
of the 1938 Act to have Nicholson's mark removed. [Lord Simon: That is a very
startling conclusion.] [Lord Diplock: The only difference between honest concurrent
user and old marks in 1905 was that you did need the leave of the court in the former.]
The American Company are not entitled to use their name General Electric on their
goods since that would indicate to the public that they were goods of our make. 10
Joseph Rodgers & Sons Ltd. v. W. N.
Rodgers & Co. (1924
) 41 R.P.C. 277. [Lord Reid:
That is a cheat case; of course, if you bring in a young man in order to use his name,
obviously you are going to be stopped.] See at page. 291 :
"A man of the name of Pears is, in my opinion, entitled to carryon the business
of the manufacturer of soap, but he is not entitled to sell his soap as 'Pears' Soap', 15
and he is not entitled so to mark his soap as to lead to the belief that it is 'Pears'
Soap'.... To the second rule, to which I have referred, I think there is no excep
tion at all; that is, that a man is not entitled so to describe his goods as to lead
to the belief that they are the goods of somebody else."
This was cited with approval by Lord Simonds in
Marengo v. Daily Sketch (1948
65 R.P.C. 242 at 251 :
"It does not follow from the fact that a man may carryon his trade in his own
name that he may also mark his goods with that name if the result will be to
deceive the public."
[Lord Reid: How do you let the public know who made the goods if you are not 25
entitled to use your name ?]. They could change their trading name. [Lord Reid: But
you cannot ask an old established company to change its trading name.] [Lord Diplock:
In the Rodgers case the injunction was qualified, "without clearly distinguishing
between his goods and those of the plaintiff's manufacture."] That form of injunction
is in practice a bar to using the name at all. It should be noted that the appellants do 30
not in fact trade under the name General Electric; they trade under "Monogram
Electric Company", and so on. The proposition is also supported by Parker-Knoll
Limited v. Knoll International Ltd.  R.P.C. 265. [Lord Reid: So the appellants
cannot say that the confusion is not caused by the use of the mark, because the use of
the name is as equally obnoxious as the use of the mark, and they have not got that 35
escape route. It does not matter which way they cause the confusion; you have a
remedy in either case. That strengthens your case enormously].
In any event there is confusion between mark and mark. (Counsel referred to the
Section 11 is for the protection of the public: BALI Trade Mark  R.P.C. 472 40
at 495, per Lord Upjohn, at 491 per Lord Morris. Yet if my friend is right, a mark,
deceptive when propounded for registration, would not be disentitled to protection if
it had been used for some time. fn such a case the public interest would really have no
protection at all. [Lord Reid: The statutes allows honest concurrent user, and the
public interest is hurt just as much by honest concurrent user as by dishonest con- 45
current user. So the statute does not put the public interest as requiring such purity
House of Lords
of the register that there must never be two marks which can cause confusion. There
fore it is a matter of degree, weighing one against the other.] Yes, but the public
interest is the dominant consideration. No-one has an automatic right to get on under
5 One must remember that their mark was registered as a blocking device without any
intention of using it. It would be a strange thing if the court's protection were to be
extended to the mark so as to save such a registration. [Lord Reid: Supposing a man
registers a mark as a blocking device and does not use it at all for ten years and then
uses it significantly for the next three or four years, would that not save the mark 1]
In the pre-registration cases relied upon by the appellants there was no need to
preserve the purity of the (non-existent) register. Today the court ought to take into
account the purity of the register.
I abandon the point that there was likelihood of confusion in 1907.
15 I turn to the licensing point. The function of a trade mark is to indicate the origin
of the goods. This is still so, even though the statutory definition of a trade mark in
section 68(1) of the 1938 Act is wider than the definition in section 3 of the 1905 Act,
as is clear from the Aristoc case. Prior to 1938, any licensing of a trade mark, whether
registered or unregistered, invalidated the mark as rendering it deceptive. The Bowden
20 Wire case is one such instance. The legal position today is the same, save for the
exception specifically provided for by section 28 of the 1938 Act, the registered user
section. It is only in the case of "permitted use" that licensing of a trade mark is
recognised by the law of England. In no other case is a licensed use deemed to be use
by the proprietor. A registered usership may be cancelled on the ground that the
25 registered user has used the trade mark otherwise than by way of the permitted use:
section 28(8)(c). The licence granted to Simplex-G.E. to use the G.E. rondel mark in
relation to goods not falling within the specification of goods of the registered mark
amounts to a licence of an unregistered mark. This has vitiated the rondel mark and
rendered it disentitled to the protection of the court so that the registration thereof is an
30 entry wrongly remaining on the register. The whole mark, the common law mark, has
been completely vitiated. I will restrict my argument to the Simplex-G.E. licensing,
and ignore the Monogram licensing. I do not now dispute that there was quality
control in the Simplex case.
This is an important matter to commercial firms. If the judgments below are right,
35 then there is really no point in using the registered user provisions at all. Up to 1938
if the proprietor of a trade mark, registered or not, licensed the use of a trade mark
so that the licensee could use it on goods other than those of the proprietor, he invali
dated his mark. He would not be able to protect his mark even by a passing off action,
the theory being that the mark had become deceptive. [Lord Reid: Have you authority
40 for the proposition that, before 1938, if you allowed somebody else to use your mark
on goods which were not within the registration, that vitiated your registration 1].
Yes. Thornloe v. Hill (1894) 11 R.P.C. 61. [Lord Diplock: The Judge in that case does
not say that it was the grant of the licence which vitiated the mark. He goes straight to
the expiration of the licence and says that by that time "John Forrest" did not mean
45 the plaintiff.] Precisely. That is the effect that licensing has. [Lord Diplock: They had
no reputation.] See also
Pinto v. Badman (1891
) 8 R.P.C. 181 and the
31 R.P.C. 385 and
44 R.P.C. 211 cases. By the time the 1938 Act
came along we had had the growth of international concerns, big companies, and
GE Trade Mark
groups of companies with subsidiaries, and no doubt it seems to have been considered
that there was some need for some relaxation of that strict rule against assignment or
licensing of a trade mark. The framers of the 1938 statute made provision for some
relaxation with regard to assignment and licensing, but they did not lose sight of the
fact that such assignment or licensing as they were proposing to allow might lead 5
to confusion or deception, so the provisions being made were very strictly circum
scribed in that respect. See section 22 of the Act. [Lord Reid: I do not understand
what is meant by assigning an unregistered trade mark. If an unregistered trade mark
is not protected by the law, what is it that you assign?] Presumably, the right to sue
someone else in a passing off action. [Lord Reid: But you have that without any 10
assignment. You always have a right to sue somebody who is passing off his goods as
yours.] Section 28(2) provides that the permitted use of a trade mark shall be deemed
not to be use by a person other than the proprietor for the purposes of section 26 and
for any other purpose under the Act or at common law. That shows that the legislature
appreciated that the use of the mark by the registered user might otherwise destroy 15
the proprietor's common law rights. I am prepared to deal with the unregistered mark
upon the footing that all that was required was some sort of quality control, as is
embodied in the condition imposed by the Registrar. I am proceeding upon the footing
that there was such quality control and that it was effective. [Lord Reid: Your case
would be exactly the same if the licence had been confined to unregistered goods and 20
had said nothing whatever about registration?] That is right. The registered user
provisions of the Act sanction the licensing of registered trade marks but not un
registered marks. [Lord Reid: But there is nothing in the Act which prevents the
licensing of an unregistered trade mark. If "wrongly remaining" means remaining in
contravention of the provisions of the Act, then this is not wrongly remaining.] The 25
common law mark has been destroyed by licensing. It is like the Bowden case (1914)
31 R.P.C. 385 where the first mark, having become deceptive by reason of the assign
ment in gross rendered deceptive the second mark, which was registered for the same
kind of goods: (1914) 31 R.P.C. 385 at 391, 393, 396. [Lord Reid: But he does not say
that assigning the first mark has vitiated the second one. He says that in the circum- 30
stances there would be a confusion, which is quite a different thing. You are trying to
say that the mere fact that you assign the first vitiates the second.] I was going to say
that the Judges below are wrong in holding that the expression "connection in the
course of trade" in the 1938 definition of a trade mark was not wide enough to include
mere quality control of manufacture by another person. [Lord Simon: Do any of the 35
Judges say that? I thought they said financial control plus quality contro1.] That was
Monogram. So far as Simplex is concerned they were basing themselves on quality
contro1. [Lord Simon: Simplex was a 51 %holding.] The courts below are saying that
the common law concept of a trade mark has changed in step with the change in
definition of registered trade marks by the legislature. [Lord Reid: Is that not a reason- 40
able approach? The common law is always capable of development to meet the needs
of the time.] [Lord Diplock: And in this branch of the law, which is commercial law,
the common law normally follows the practice of the merchants. If you look at some
of the earlier cases on trade mark law, for instance, Lord Westbury in Leather Cloth
Co. v. American
Leather Cloth Co. (1865
) 11 H.L.Cas. 523, you find him referring to 45
the development of the common law in relation to using the name of the predecessor
in business as a trade mark as something in which you would follow the development
of the custom.] But the relaxation in 1938 was a narrow one, carefully circumscribed.
There are no provisions for licensing unregistered trade marks, whereas there are
provisions about assignment of unregistered trade marks. If it had been intended that 50
an unregistered trade mark could be in some way licensed, that would have been
provided for. The plain inference from all that is that the legislature intended that
there should be no further relaxation other than what they provided for in the statute.
House of Lords
Burrell followed.-The register which is authorised under the Act exists to record for
the service of the public and for trade mark owners in this country and overseas,
trade marks which clearly and truthfully indicate in this country the trade source from
which the goods emanate. The G.E. rondel has at all times been a non-distinctive
5 mark in this country, because it has never in the course of trade in this country
distinguished the goods of the American Company from the goods of other persons.
The registration is accordingly a defective entry and wrongly remains on the register
because the Act does not contemplate the initial registration and continuance on the
register of non-distinctive marks. That the philosophy of the Act is that marks should
10 be distinctive is shown by sections 9, 10, 14, 22(4), 22(7), 23(10). That forfeiture can
result only from some guilty act of the proprietor is a far-fetched argument when
considered against the background of the Act itself. Section 15 was put in on order
to save from automatic rectification a word which, while descriptive, had not become
generic. It cannot be argued that "disentitled to protection" in section 11 refers to
15 common law rights, because section 2 of the Act says: "Nothing in this Act shall be
deemed to affect rights of action against any person for passing off". [Lord Reid: Why
was it necessary to put that in?] [Arnold Q.C.: Because of
Rosenthal v. Reynolds (1892
9 R.P.C. 189. A man sued in passing off in respect ofa part of his mark which he had
disclaimed in the registration of that mark.] [Lord Reid: If that is right, it reduces
20 section 2 to a very small matter.] The doctrine of honest concurrent user under
section 12(2) is of no avail, for that is concerned with initial registrations only. See the
BALI Trade Mark  R.P.C. 492.
Arnold, Q.C. [Lord Reid: We desire you to deal with the question whether you are
immune from a passing off action if you put your own name on your own goods. It
25 would be very ridiculous if the law were to say that you can put your own name on
your own goods, but you cannot put a mark on your goods which suggests your name.
If, on the other hand, you cannot put on your own name, that is a sound reason for
saying, why should you be able to put on your mark?] The bona fide use of one's own
name is exempted by section 8 of the Act from infringement proceedings under
30 section 4. That is infringement. As to passing off, see the
Parker Knoll case
] R.PoC. 265; a strong case from our point of view because in that
case the name of the Company sought to be protected was not, as here, a
descriptive name. ·In order to get a passing off injunction against a man who is using
his own name, or something which is very close to it (e.g. the name without the word
35 "Limited"), you have got to show a dishonest filching of your goodwill or an infringe
ment of your trade mark, and if you do that then you will get relief, but the relief
will not extend to a total injunction, but only to a qualified injunction, viz. "without
clearly distinguishing their goods from the goods of the plaintiff". [Lord Reid: You
can only use your own name in these circumstances if you add the caution: "Now
40 remember, I am not the other man".] That is precisely what we do. We say "The
General Electric Company U.S.A. is not connected with the English Company of a
similar name. This is the trade mark of the General Electric Company U.S.A." If the
defendent is being dishonest, then he may be totally enjoined. The English Company
have been very careful not to sue us in passing off. But even so "General Electric" is
45 a descriptive name, to which Office Cleaning Services Limited v. Westminster Window
and General Cleaners Limited (1946) 63 R.P.C. 39 applies. Where a trader adopts a
trading name containing words in common use some risk of confusion may be inevit
able, but that risk must be run unless the first trader is allowed an unfair monopoly,
and in such cases the court will accept comparatively small differences as sufficient to
50 avert confusion. [Lord Reid: If you are entitled, acting with scrupulous care, to put
your own name on your goods without being found guilty of passing off, why are you
not entitled to put your own initials in a circle?] I submit that we are. Even assuming
GE Trade Mark
that we are quite wrong about everything else, we say this, that if on the 28th July
1967 we had in fact applied for this rondel mark as a new mark, we having used it to
the extent that we had done, and the respondents were opponents under section 11,
we would have been granted registration.
Falconer, Q.C., replied on the cases.-The Office Cleaning case (1946) 63 R.P.C. 39 5
was a case of a trading name, the name of the business. The law is otherwise where the
name is applied to goods. This is exactly the sort of case where you can get an absolute
injunction, and it falls within the first category of Romer, J.'s two categories in the
Rodgers case (1924) 41 R.P.C. 277. [Lord Reid: But why? If you can call yourself
"Office Cleaning Services", and clean offices, why should you not call yourself "Office 10
Accessories Services" and sell office accessories? It is illogical.] It is the law as estab
lished by cases in this House. [Lord Reid: You say there is this wholly illogical
distinction in the law, that so long as you are offering services you can create a certain
amount of confusion and get away with it, but once you are selling goods you cannot?
It seems very odd.] The appellants do not always distinguish their goods from ours. 15
There is no obligation upon them to do so.
[Their Lordships indicated that they did not wish to hear argument on discretion.]
Lord Reid: I have read the speech of my noble and learned friend, Lord Diplock. I
am in general agreement with it apart from one matter. I agree with the view of Eve J.
in Woodwardv. Boulton Macro Ltd. (1915) 32 R.P.C. 173 that section 11 of the Act 20
has only a limited application. If that is right then I would reach the same conclusion
that this appeal should be allowed but by a shorter and simpler route. As I believe
that I am alone in taking this view I do not think that it would serve any useful
purpose either to set out my reasons for agreeing with Eve J. or to set out the
subsequent steps by which I reach my conclusion. 25
I would allow this appeal.
Lord Diplock: The parties to this appeal are an American company incorporated
in New York State and an English company. They have almost identical names. That
of the American company is "General Electric Company". It has been so since its
incorporation in 1892. That of the English Company is "The General Electric Com- 30
pany Limited". It adopted that name in 1903. Both companies manufacture and sell
a wide variety of electrical machinery and goods including electrical goods for domestic
use. Both have grown and prospered. The name of each is a household word in its own
home market, the United States and the United Kingdom respectively. Both have a
worldwide export trade to other countries where they sell in competition with one 35
another. Given the close similarity of names and the size and renown of both com
panies, it is inevitable that where their goods are sold in competition in the same
market some members of the public who buy goods with no further information
about their origin than that they are the products of a company called "General
Electric Company" or "General Electric" may be confused as to whether they are 40
the product of the American Company or of the English Company. A buyer who has
heard of only one of the companies is likely to think that the goods are the product
of the company which he knows as "General Electric Company" or "General Electric"
even though they are in fact the product of the other company. A buyer who has
heard of both companies may be in doubt as to which of them was the maker, but 45
if it mattered to him would presumably make further inquiries.
House of Lords
As long ago as 1906 the English Company registered as its trade marks for various
classes of electrical goods the initials of its name GEC in block capitals. In the follow
ing year, 1907, the American Company registered as its trade mark for electrical goods
in one of the same classes its initial G.E. in script enclosed in an ornamental circle,
5 which is conveniently referred to as the Rondel Mark. Subsequently, the English
Company registered as a trade mark in respect of the same and other classes of
electrical goods its initials G.E.C. in script. It is in this form that the trade mark has
been mainly used for the last forty years. I will call it the G.E.C. Mark.
It is not contended that the Rondel Mark and the G.E.C. Mark themselves are
10 liable to be mistaken for one another. They are clearly distinguishable and distinctive.
In this connection it is significant that in 1937 the two companies entered into an
agreement that in overseas territories in which they competed, other than their
respective home markets, the English Company would use its name in the form
"The General Electric Company Limited of England" and the American Company
15 would use its name in the form "General Electric Company U.S.A." and that the
English Company would use the G.E.C. Mark only and the American Company the
Rondel Mark only. The purpose of this agreement was to reduce the risk of confusion
between the products of the two companies. The distinctive differences between the
two marks, it seems to have been considered, would help to make their respective
20 products more easily distinguishable.
It has not been contended in your Lordships' House-though it was unsuccessfully
contended below-that in 1907, when the American Company's Rondel Mark was
originally registered, its use as a trade mark on electrical goods made by the American
Company was likely to cause confusion between products of the American Company
25 and products of the English Company. Confusion could only arise if to a buyer who
saw the Rondel Mark not only did the initials G.E. suggest the words "General
Electric" but also the words "General Electric" suggested the English Company.
There is no reason to suppose that at that early stage in the development of the
electrical industry and in the growth of the reputation of the English Company in the
30 United Kingdom, a buyer of electrical goods would be likely to take either of these
mental steps-both of which would be a pre-condition of his being deceived or con
fused as to the origin of the goods. There is no evidence to support any such supposi
tion; and the fact that in 1907 the Registrar entered the Rondel Mark on the register
of trade marks raises the presumption that he, at any rate, did not consider any such
35 confusion to be likely.
My Lords, it follows that there was nothing wrong with the original registration of
the Rondel Mark. At the time when the entry was first put on the register it was not
an "entry made in the register without sufficient cause" within the meaning of section
32(1) of the Trade Marks Act, 1938. The main question in this appeal is whether as
40 a result of events which have occurred since 1907 it had become an "entry wrongly
remaining on the register" within the meaning of that section, on 20th July, 1967, when
the English Company started proceedings to expunge it from the register.
The history of the trading by the American Company in the United Kingdom
between 1907 and 1967 and the use made of the Rondel Mark by it and its associated
45 companies is complicated. It is recounted in the careful judgment of Graham J. to
which the reference may be made for the details. Owing to the way in which the case
has developed in the course of its progress from the Chancery Division through the
Court of Appeal to your Lordships' House, I shall not find it necessary to repeat here
GE Trade Mark
more than a very brief summary of those findings of fact of the learned judge which
are still relevant to the decision of the instant appeal.
The History of the Litigation
The case has had a chameleon-like history. It was started by Notice of Motion
accompanied by Particulars of Objections. The main points there raised were that the 5
American Company had rendered the mark disentitled to protection because of the
way in which they had licensed its use in the United Kingdom by two associate
companies Simplex G.E. Manufacturing Ltd. ("Simplex") and Monogram Electric
Housewares Ltd. ("Monogram"). These associated companies had not used the
Rondel Mark as a trade mark simpliciter, but only in combination with the words 10
SIMPLEX and MONOGRAM respectively. SIMPLEX, however, had also imported
and sold in the United Kingdom some goods manufactured by the American Company
with the Rondel Mark in combination with the words GENERAL ELECTRIC.
Most of the evidence before Graham J. was directed to these grounds of objection,
which may conveniently be referred to as "the licensing objections". Very shortly 15
before the hearing, however, the English Company obtained leave to adduce further
evidence, directed to showing that the use of the Rondel Mark simpliciter upon
electrical goods would be likely to deceive or cause confusion so as to make its continued
registration unlawful under section 11 of the Act. This evidence appears to have been
relied upon mainly in support of the licensing objections. The contention that it 20
constituted in itself a separate ground for expunging the Rondel Mark did not loom
large in the argument before Graham J. and it is not dealt with as such in his judg
ment. In the result he rejected the licensing objections and found as a fact that there
was no sufficient evidence of likelihood of deception or confusion in the way in which
the Rondel Mark was in fact used under the licensing agreements in combination 25
with the words SIMPLEX, MONOGRAM, or GENERAL ELECTRIC. He accord
ingly dismissed the English Company's application to expunge the Rondel Mark from
In the Court of Appeal the argument took a different course. The likelihood that
the use of the Rondel Mark simpliciter would cause deception or confusion at the date 30
of the motion to expunge, which had been a subsidiary contention before Graham J.,
became the sole ground upon which all three members of that court allowed the
appeal. None of them upheld the licensing objections, though only Cross L.J. gave
any detailed reasons for rejecting them. Having reached the conclusion in law that the
Rondel Mark was an entry wrongly remaining on the register and accordingly liable 35
to expunction at the discretion of the court under section 32(1) of the Trade Marks
Act, 1938, the Court of Appeal ordered it to be expunged from the register. This was
contrary to the way in which Graham J. had said that he would have exercised his
discretion if he had considered the mark to be vulnerable in law.
But the chameleon-like character of the case did not end in the Court of Appeal. 40
In that court attention was concentrated upon whether the use of the Rondel Mark
simpliciter would be likely to cause deception or confusion in July, 1967. No attention
was directed to the further question whether the circumstances in which that likelihood
had arisen were such as would make its use as a trade mark or part of a trade mark
"disentitled to protection in a court of justice" within the meaning of section 11 of the 45
Trade Marks Act, 1938. The importance of this question only emerged for the first
time in the argument in your Lordships' House.
My Lords, in the light of the history of these proceedings I cannot refrain from
expressing my regret that an order for pleadings was not made in the initial stages. It
was evident from the particulars of objections served with the notice of motion, even
though these were then confined to the licensing objections, that difficult issues of law
and of fact would be involved. Because of the absence of pleadings the issues were
5 never defined by the parties and, in the result, have not been finally identified until
they emerged in the course of the hearing in your Lordships' House. This has greatly
protracted the hearing and added to the costs. It has deprived your Lordships of the
advantage of the considered opinions of the trial judge and of the Court of Appeal
upon at least one question of law of general importance which is, in my view, crucial
10 to the decision of the appeal. There may be many simple cases of applications to
rectify the register of trade marks where the ordinary procedure by notice of motion
supported by affidavit is adequate and expeditious. It was, however, obvious from the
outset that the issues in the instant case were likely to be complex and that they called
for precise definition. I express the hope that in similar situations in future the power
15 to order delivery of pleadings by the parties will be exercised.
The facts as to the use of the Rondel Mark in the United Kingdom by the American
Company and its associated companies which are, in my view, relevant to the decision
of the instant appeal may now be stated in summary
(1) From about 1900 until 1952 the American Company sold goods of their
manufacture through the exclusive agency of an English company, the British
Thomson-Houston Company Ltd. ("B.T.H."). B.T.H. was also a manufacturing
company. Evidence as to the volume of sales of imported goods under the Rondel
Mark is scanty and inconclusive. Graham J. was of opinion that it was probably
on a small scale.
(2) In 1952 the business association between the American Company and
B.T.H. was terminated in compliance with the Anti-Trust laws of the United
States. Sales of imported products manufactured by the American Company and
bearing the Rondel Mark continued to be effected. Though in volume and value
these sales were small compared with the total sales in the United Kingdom of
goods of the English Company, it is conceded that even between 1952 and 1965
they were substantial in absolute terms and cannot be brought within any
de minimis principle.
(3) Between 1965 and 20th July 1967, there were very substantial sales of
goods bearing the Rondel Mark in combination with SIMPLEX, MONOGRAM
or GENERAL ELECTRIC. These were effected through one or other of the
American Company's associated companies incorporated in England, viz.
Simplex and Monogram, which have already been mentioned, and a third
wholly-owned subsidiary, International General Electric Company of New York
(4) The share capital of both Simplex and Monogram was divided between the
American Company and an English company, Tube Investments Ltd. The
American Company held 51 per cent. of the capital of Simplex and 49 per cent.
of the capital of Monogram, but it maintained quality control over all products
manufactured by either company which were sold under a mark which incor
porated the Rondel Mark.
(5) The use of the Rondel Mark by Monogram in combination with the word
GE Trade Mark
MONOGRAM was licensed by the American Company, but the name of
Mongram was not entered on the register of trade marks as a registered user of
the Rondel Mark.
(6) The use of the Rondel Mark by Simplex in respect of electrical goods of
the class for which it was registered was also licensed by the American Company; 5
and the name of Simplex was entered on the register on 10th March 1966, as a
registered user of the Rondel Mark in respect of that use. By the same licence
agreement the American Company also licensed the use by Simplex of the
Rondel Mark as an unregistered trade mark in respect of goods which did not
fall within the class for which it was registered. Pursuant to this agreement 10
Simplex did in fact use the Rondel Mark upon some electrical goods which were
found by Graham J. to fall outside the class of goods in respect of which it was
(7) Both the English Company and the American Company recognised from
the start that, having regard in particular to the similarity of their names, there 15
was some danger of confusion in the United Kingdom and also in overseas
markets; but so far as the United Kingdom is concerned there has not "ever been
anything more than an understanding between successive directors of the two
companies that it was to their advantage that confusion should be minimised by
each company and that, so far as possible, each should try to do so." The English 20
Company have not established "anything in the way of an enforceable agreement
or estoppel so far as the use of their respective companies' names and trade marks
'(sc. in the United Kingdom)' are concerned."
(8) If the Rondel Mark were used simpliciter on electrical goods on sale in the
United Kingdom for domestic use it is likely that a substantial number of buyers 25
would infer that the initials G.E. in the Rondel Mark stood for "General Elec
tric" and that of those who drew that inference a not insubstantial proportion
would have heard of the English Company but not of the American Company
and would draw the further inference that the goods bearing the mark were
connected in trade with the English Company. 30
The Likelihood of Confusion
The facts which are summarised under (1) to (7) above were found by Graham J.
By the end of the hearing in this House they had ceased to be a matter of controversy
between the parties. The inference of fact summarised in (8) was drawn by the Court
of Appeal relying in part on the evidence of answers to a questionnaire used in a public 35
opinion survey conducted on behalf of the English Company and in part on their own
subjective impressions as to whether they themselves would be likely to be confused
if they were buying for domestic use electrical goods marked with the Rondel Mark
Graham J. had declined to draw this inference. But it is right to say that because 40
of the way in which the case was conducted before him, his mind was directed to the
way in which the Rondel Mark had in fact been used in England, which was never
simpliciter but always in combination with the words SIMPLEX, MONOGRAM or
GENERAL ELECTRIC. He was impressed by the lack of convincing evidence of actual
confusion having occurred and was critical, in my view rightly, of the form of the 45
questions asked in the questionnaire. But the question whether the use of any matter
as a trade mark would be likely to deceive or cause confusion arises in connection
with a prohibition upon registration contained in section 11 of the Act of 1938. It is a
House of Lords
hypothetical question which first arises on an original application for registration.
It looks to the future use of the matter as a trade mark and embraces any normal and
fair use which as registered proprietor the applicant would be entitled to make of it in
the ordinary course of trade in respect of goods of the class for which it is registered.
5 Thus, in the case of the BALI Trade Mark  R.P.C. 472, it was held by this House
that although the current use of the Bali mark sought to be expunged was upon
ready-made corsets which were not in competition for the same market as tailor-made
corsets for which the Berlei mark was currently used, consideration must be given to
the fact that registration of the two marks in respect of the same class of goods would
10 entitle the proprietors of each of them to use their respective marks in the future on
both ready-made and tailor-made corsets which would be in competition for the same
Where the question of the likelihood of deception or confusion arises upon an
application to expunge a registered mark which has already been the subject of
15 substantial use, the absence of evidence of actual confusion having occurred is a
potent factor in determining whether or not the court should exercise its discretion
to expunge the mark from the register. But it does not decide the relevant hypothetical
question which must be answered in the affirmative before any question of discretion
to expunge the mark arises: Would any normal and fair future use of the mark, in the
20 course of trade be likely to cause deception or confusion? If actual confusion in the
past is proved, this is a strong indication that continued confusion is likely; but the
absence of evidence of past confusion may be accounted for by the small extent to
which the mark has been used or by special circumstances affecting its past use which
may not continue to operate to prevent confusion in the future.
25 It has been contended on behalf of the American Company that the Court of Appeal
fell into error in relying on their own common sense in deciding whether the use of
the Rondel Mark simpliciter would be likely to cause confusion. They ought, it is
said, to have limited their consideration to the evidence, which consisted in the main
of the public opinion survey, and to have given no weight to their own subjective
30 impressions as to whether they themselves would have been likely to be confused.
My Lords, where goods are of a kind which are not normally sold to the general
public for consumption or domestic use but are sold in a specialised market consisting
of persons engaged in a particular trade, evidence of persons accustomed to dealing
in that market as to the likelihood of deception or confusion is essential. A judge,
35 though he must use his common sense in assessing the credibility and probative value
of that evidence is not entitled to supplement any deficiency in evidence of this kind
by giving effect to his own subjective view as to whether or not he himself would be
likely to be deceived or confused. In the instant case this would apply to the large
industrial electrical machinery sold under the Rondel Mark. But where goods are sold
40 to the general public for consumption or domestic use, the question whether such
buyers would be likely to be deceived or confused by the use of the trade mark is a
"jury question". By that I mean: that if the issue had now, as formerly, to be tried
by a jury, who as members of the general public would themselves be potential buyers
of the goods, they would be required not only to consider any evidence of other
45 members of the public which had been adduced but also to use their own common
sense and to consider whether they would themselves be likely to be deceived or
The question does not cease to be a "jury question" when the issue is tried by
a judge alone or on appeal by a plurality of judges. The judge's approach to the
GE Trade Mark
question should be the same as that of a jury. He, too, would be a potential buyer
of the goods. He should, of course, be alert to the danger of allowing his own idiosyn
cratic knowledge or temperament to influence his decision, but the whole of his
training in the practice of the law should have accustomed him to this, and this should
provide the safety which in the case of a jury is provided by their number. That in 5
issues of this kind judges are entitled to give effect to their own opinions as to the
likelihood of deception or confusion and, in doing so, are not confined to the evidence
of witnesses called at the trial is well established by decisions of this House itself.
It was also submitted by the American Company that if the source of the confusion
as to the origin of the goods which resulted from the use of the trade mark was due 10
to the similarity of the names of two different manufacturers either of whom might
be associated with the mark in the mind of a potential buyer of the goods, this was
confusion "between name and name", not confusion "between mark and mark";
and that only the latter was relevant "confusion" within the meaning of that ex
pression in section 11 of the Act. I am unable to accept this argument. The essence 15
of a trade mark is the association that it bears in the mind of a potential buyer of the
goods to which it is applied. I can see no reason for differentiating between cases
where the confusion arises because the trade mark is associated with the name of a
manufacturer to which some other manufacturer's name is similar, and causes the
association with a design or with descriptive words and the confusion arises because 20
some other manufacturer uses a similar design or similar descriptive words to indicate
the origin of his goods. In my view, section 11 is wide enough to embrace "confusion"
resulting from any of these kinds of association.
In the instant case all three members of the Court of Appeal were alert to the
danger of relying upon their own idiosyncratic knowledge and temperaments. All 25
gave due weight to the evidence adduced upon the issue at the hearing and to the
criticisms of it by the trial Judge. All were of opinion that they themselves would have
been likely to be confused by the use of the Rondel Mark simpliciter upon electrical
consumer goods if, as had been the fact before the hearing of the appeal, they had
known of the English Company but had not known of the American Company. 30
My Lords, I myself, as a member of the public in the United Kingdom, am idiosyn
cratic in that I have for many years known of both companies. I should not have been
likely to be confused by the use of the Rondel Mark simpliciter upon electrical
consumer goods. Nevertheless, my commonsense convinces me that there would be a
likelihood of confusion among a substantial number of members of the public who 35
did not share my idiosyncratic knowledge. Upon this issue I think the Court of Appeal
The Questions of Construction
Accordingly, I now turn to consider whether, upon the facts summarised under
(1) to (8) above, the entry of the Rondel Mark was "an entry wrongly remaining on 40
the register" on 20th July 1967, within the meaning of section 32(1) of the Act of 1938
That section is as follows:
"32.-(1) Any person aggrieved by the non-insertion in or omission from the
register of any entry, or by any entry made in the register without sufficient cause,
or by any entry wrongly remaining on the register, or by any error or defect in any 45
entry in the register, may apply in the prescribed manner to the court or, at the
option of the applicant and subject to the provisions of section 54 of this Act,
to the Registrar, and the tribunal may make such order for making, expunging
or varying the entry as the tribunal may think fit."
House of Lords
It is clear that the subsection contemplates that an entry which was lawful at the
time it was originally made may, as a result of subsequent events, become one which
"wrongly remains" on the register. As a matter of legislative history the words "or by
any entry wrongly remaining on the register" first appeared in section 35 of the Trade
5 Marks Act, 1905. In section 90 of the Patents, Designs and Trade Marks Act, 1883,
the power to expunge was confined to "any entry made without sufficient cause". But
this had been construed by the Court of Appeal in J. Batt and Co.'s Mark (1898)
15 R.P.C. 534 as empowering the court to expunge the entry of a mark which was
lawful at the time it was originally made but had become unlawful as a result of
subse10 quent events. The alteration in wording in the Act of 1905· thus did no more than to
spell out in express words, and so place beyond doubt, a power which the Court of
Appeal had held as a matter of construction was conferred by the words already
present in the corresponding section of the Act of 1883.
For reasons which I shall develop later I reject the extreme submission of the
15 American Company that section 32 is a mere procedural section prescribing the steps
to be taken to give effectto an express power of removal conferred by other sections
of the Act, such as sections 15(3), 26(1), 27(4), 28(8) and (10), and 29(4), and does
not in itself confer any power to expunge otherwise than pursuant to those sections.
I reject also the extreme submission of the English Company that the words "wrongly
20 remaining on the register" give to the court a discretion to remove from the register
any entry the continued use of which the court considers would be contrary to the
policy of the Act notwithstanding that it does not offend against any specific prohibi
tion, express or implied, contained in the Act. In my opinion, an entry which was
lawful at the time it was originally made can only be expunged under section 35(1) if,
25 at the time of the application, its continued presence on the register is prohibited by
virtue of some other provision of the Act. Such prohibitory provisions are not limited
to those which also themselves confer an express power of removal. They include all
provisions which, upon their true construction, make unlawful the continued presence
of the entry on the register.
The Court of Appeal, having held, as I think rightly, that the use of the Rondel
Mark simpliciter as a trade mark on the 20th July 1967, would have been likely to
cause confusion, were of opinion that its continued presence as an entry on the
register was prohibited by section 11 of the Act of 1938 which is as
follows:"11. It shall not be lawful to register as a trade mark or part of a trade mark
any matter the use of which would, by reason of its being likely to deceive or cause
confusion or otherwise, be disentitled to protection in a court of justice, or would
be contrary to law or morality, or any scandalous design."
They were also of opinion that its continued presence as an entry on the register
was not excluded from that prohibition by section 13 of the Act of 1938, which is as
"13. (1) In all legal proceedings relating to a trade mark registered in Part A
of the register (including applications under section 32 of this Act) the original
registration in Part A of the register of the trade mark shall, after the expiration
of seven years from the date of that registration, be taken to be valid in all
respects, unless-(a) that registration was obtained by fraud,or (b) the trade
mark offends against the provisions of section eleven of this Act."
They held that it fell within exception (b).
GE Trade Mark
The ratio decidendi of the Court of Appeal involves two questions as to the true
construction of section 11. The first is as to the time to which the prohibition expressed
in the words "It shall not be lawful to register" relates. The second is as to whether a
limitation upon the prohibition of the registration of a potentially deceptive or con
fusing trade mark is imposed by the requirement that its use "would ... be disentitled 5
to protection in a court of justice". The words in which the proviso to section 13 is
expressed are of assistance in answering the first question as to the. construction of
section 11, but throw no light upon the answer to the second question.
Neither of these questions can be answered by linguistic analysis alone.
The first depends upon whether, in the context of section 11, the verb "to register" 10
refers only to the act of making an entry on the register or whether it refers also to the
retention of an entry on the register after it has been made. As a matter of ordinary
useage of the English language either is a permissible meaning.
With regard to the second question, as a matter of syntax the dominant phrase in
the relevant description of the disqualified matter is:-matter "the use of which would 15
be disentitled to protection in a court of justice". The words "by reason of its being
likely to deceive or cause confusion or otherwise" constitute a subordinate clause of
which the syntactic function is to restrict the amplitude of the disqualified matter
This it does by reference to the reasons for the disqualified matter's being disentitled
to protection in a court of justice. But the inclusion in the subordinate clause of the 20
words "or otherwise", if they are to be given a literal interpretation, has the conse
quence that the clause is wide enough to embrace any reason for the matter being
disentitled to protection in a court of justice, and the clause thus becomes devoid of any
restrictive effect and therefore performs no function at all. Furthermore, the use of
the subjunctive mood in the dominant phrase gives rise to ambiguity as to the time to 25
which the test of disentitlement to protect relates. Is the critical time at which the
use of the mark would be disentitled to protection before it is entered on the register
or after it has been entered on the register? Finally, whichever is the time to which the
test relates, what meaning is to be ascribed to the words "disentitled to protection in a
court of justice" ? 30
My Lords, the meaning of particular sections in the Act of 1938 can, in my view,
only be ascertained by applying a purposive construction to the Act as a whole, and
construing the actual words used in particular sections (unless it is linguistically
impossible), so as to achieve and not so as to thwart the underlying policy to which
the Act was intended to give effect.
The Legislative History
The Act of 1938 does not purport to be a self-contained code of the whole of the
law relating to trade marks. As its long title discloses, it was an Act to consolidate three
previous Acts of Parliament: the Trade Marks Act, 1905, the Trade Marks Act, 1919,
and the Trade Marks (Amendment) Act, 1937. Recourse must therefore be had to 40
these Acts to ascertain the underlying policy to which it was intended to give effect.
The Act of 1905, however, was itself an Act to consolidate and amend the law relating
to Trade Marks. Sections 11 and 41 of that Act are re-enacted in sections 11 and 13 of
the Act of 1938, the former verbatim and the latter with a minor amendment restricting
its operations to marks in Part A of the register but with no other change of language. 45
Section 11 of the Act of 1905 was, however, itself a re-enactment of section 73 of the
Patents, Designs and Trademarks Act, 1883, with minor amendments, but without
any alteration of any of the words or phrases which fall to be construed in the instant
House of Lords
appeal. Section 41 of the Act of 1905 replaced part of section 76 of the Act of 1883,
but with substantial amendments.
Similarly, to ascertain the purpose of section 13 of the Act of 1938 which reproduces
the language of section 41 of the Act of 1905 which itself amended the law as it stood
10 before that date by replacing part of section 76 of the Act of 1883, one must look to
see what that pre-existing law was, in order to identify the defect in it which the
amendment was intended to rectify. This, too, leads one back to the Act of 1883 and
since section 76 re-enacted verbatim section 6 of the act of 1875, final recourse must
again be had to the Act of 1875.
15 The right of property in a trade mark was recognised at common law before it was
the subject of any enactment. The Act of 1875 did not itself create any right of property
in trade marks. As its title itself indicates and its provisions confirm, it simply provided
for the registration of trade marks and spelled out the consequences of registration and
non-registration upon the proprietary rights of the owner of the trade mark and the
20 remedies available to him for the protection of those proprietary rights. The Act of
1875 must, therefore, be construed in the light of the common law relating to trade
marks in 1875. I use the expression "common law" to include the doctrines of equity
applied in what at that time was the separate court of chancery.
My Lords, it may well be a legitimate criticism of our methods of drafting legislation
25 that in order to ascertain the meaning of an Act of Parliament passed in 1938, it
should be necessary not only to consider its legislative history over the previous
sixty-three years but also to engage in what in other systems of law might be regarded
as antiquarian research, namely the state of the common law as it existed before the
first Act to alter it was passed nearly one hundred years ago. But, in my view, the Act
30 of 1938 which purports to consolidate our existing law becomes intelligible only when
this course, which is a well recognised aid to statutory construction, is adopted.
The Common Law of Trade Marks before 1875
The use by manufacturers of distinctive marks upon goods which they had made is
of very ancient origin, but legal recognition of trade marks as a species of incorporeal
35 property was first accorded by the Court of Chancery in the first half of the nineteenth
century. It may be said to have been established by Lord Cottenham in Millington v.
Fox (1838) 3 My. & Cr. 338. He decided that it was not necessary to establish any
intention to deceive on the part of an infringer against whom an injunction to restrain
his use of a trade mark was sought.
40 The right of property in a trade mark had special characteristics. One, which it
shared with patents and with copyright, was that it was a monopoly, that is to say, it
was a right to restrain other persons from using the mark. But it was an adjunct of the
goodwill of a business and incapable of separate existence dissociated from that
goodwill. To be capable of being the subject-matter of property a trade mark had to be
45 distinctive, that is to say, it had to be recognisable by a purchaser of goods to which
it was affixed as indicating that they were of the same origin as other goods which bore
the same mark and whose quality had engendered goodwill. Property in a trade mark
GE Trade Mark
could therefore only be acquired by public use of it as such by the proprietor and was
lost by disuse. The property was assignable, transmissible and divisible, but only
along with the goodwill of the business in which it was used.
Since the only right of the proprietor of a trade mark was to prevent its use by
other persons the original remedy for the protection of his right was an injunction to 5
restrain infringement. This continued to be the principal remedy, though by the middle
of the nineteenth century damages for infringement were also recoverable, at any rate
where the infringement was intentional and deceitful at common law. The equitable
remedy by injunction was discretionary and the principles as to the way in which the
discretion should be exercised had become settled by the Court of Chancery by the 10
time the Act of 1875 was passed.
A right of property of this character calls for an accommodation between the
conflicting interests of the owner of the monopoly, of the general public as purchasers
of goods to which the trade mark is affixed, and of other traders. This accommodation
had been substantially worked out by the Court of Chancery by 1875.
The interest of the general public requires that they should not be deceived by the
trade mark. It ought not to tell a lie about the goods. Two main kinds of deception had
been the subject of consideration. These were misrepresentation (a) of the character
of the goods to which the trade mark was attached, and (b) as to their origin, i.e. that
they were the product of some other manufacturer.
But the interest of the public in not being deceived about the origin of goods had
and has to be accommodated with the vested right of property of traders in trade marks
which they have honestly adopted and which by public use have attracted a valuable
goodwill. In the early nineteenth century trade was still largely local; marks which
were identical or which closely resembled one another might have been innocently 25
adopted by traders in different localities. In these their respective products were not
sold in competition with one another and accordingly no question of deception of the
public could then arise. With the rapid improvement in communications, however, in
the first half of the nineteenth century markets expanded; products of two traders
who used similar marks upon their goods could thus come to be on sale to the same 30
potential purchasers with the consequent risk of their being misled as to the origin of
the goods. Furthermore, it was accepted that as an adjunct of the goodwill of the
business the right to use a trade mark might be acquired by more than one successor
if the goodwill of the business were divided, as it might be, for instance, where the
business had formerly been carried on in partnership or from more than one manu- 35
factory or shop. To meet this kind of situation the doctrine of honest concurrent user
was evolved. Under this doctrine a trade mark remained entitled to protection in
cases where the use of it had not oringially been deceptive but a risk of deception had
subsequently arisen as a result of events which did not involve any dishonesty or
other wrongful conduct upon the part of the proprietor of the mark. If, however, 40
his own wrongful conduct had played a part in making the use of the mark deceptive,
the Court of Chancery would not grant him an injunction against infringement. This
was but a particular application of the general equitable doctrine that he who seeks
equity must come with clean hands.
In cases of honest concurrent user, neither of the owners of the mark could restrict 45
the other from using it, but as against a usurper who infringed it either owner of the
mark could obtain an injunction. (Dent v. Turpin (1861) 2J & H 139; Southorn v.
Reynolds (1865) 12LT75).
House of Lords
The requirement that a mark must be distinctive in order to qualify as the subject
matter of proprietary rights is another instance of the accommodation between the
conflicting rights of traders. One trader could not pre-empt the use of ordinary words
which were descriptive of his product so as to prevent their use by other traders as an
5 honest description of their own similar products. This doctrine had not, however, been
fully developed by the date of the passing of the Act of 1875.
The principal defects in the law of trade marks as it had developed by 1875 were:
first, that in any action which he brought for infringement of his trade mark the
proprietor had to prove his title to the mark afresh by aducing evidence of his public
10 use of it; and, secondly, that there was no easy way in which a trader who wished to
adopt a particular mark to distinguish his own products could find out whether its use
would infringe proprietary rights in that mark already vested in some other trader by
virtue of his public use of it. The evident purpose of the Act of 1875 was to provide a
practical remedy for these defects without changing the main characteristics of trade
15 marks at common law.
The Registration of Trade Marks Act 1875
The Act of 1875 by section 10 prescribed what a trade mark must consist of in
order to qualify for registration. It was in the following terms:
"For the purposes of this Act: A trade mark consists of one or more of the
following essential particulars; that is to say; a name of an individual or firm
printed, impressed, or woven in some particular or distinctive manner; or a
written signature or copy of a written signature of an individual or firm; or a
distinctive device, mark, heading, label or ticket; and there may be added to any
one or more of the said particulars any letters, words or figures, or combination
of letters, words or figures; also any special and distinctive word or words or
combination of figures or letters used as a trade mark before the passing of this
Act may be registered as such under this Act."
This distinguishes between the essential particulars and permissible additional
matter. These requirements were extended and elaborated in subsequent Acts though
30 the dichotomy between essential and permissible matter was abandoned in the Act of
1905; but even in 1875 the essential characteristics of a registrable mark was that it
should be distinctive.
The Act of 1875, however, did not alter the common law rules that a mark did not
become a "trade mark" until it had been publicly used as such by its proprietor and
35 that such public use was the only means by which title to a trade mark could be
acquired by the first proprietor of it. It did not authorise the registration of a prospec
tive trade mark before it had been actually used as such or after it had ceased to be
The Act provided for the establishment of a register of trade marks and of the
40 names of their proprietors. In order to persuade proprietors of trade marks to enter
them upon the register, the Act supplied both negative and positive inducements.
The negative inducement was contained in the latter part of section 1 itself which
"from and after the 1st July, 1876, a person shall not be entitled to institute
any proceedings to prevent the infringement of any trade mark as defined by this
Act until and unless such trade mark is registered in pursuance of this Act" .
GE Trade Mark
The words I have italicised make it clear that the verb "to register", which is used
here in the passive voice, does not refer only to the act of making an entry in the
register but includes the continuance of the mark upon the register after the original
entry has been made, and contemplates that a trade mark may be removed from the
register. Express power to make rules as to the removal of marks from the register is 5
conferred by section 7.
The positive inducements were contained in sections 2 to 4 of the Act. Section 2
provided for the legal consequences of registration of the mark itself as distinct from
the registration of a person as proprietor of the mark. It read as
follows:"2. A trade mark must be registered as belonging to particular goods, or 10
classes of goods; and when registered shall be assigned and transmitted only in
connection with the goodwill of the business concerned in such particular goods
or classes of goods, and shall be determinable with such goodwill, but subject as
aforesaid registration of a trade mark shall be deemed to be equivalent to public
use of such mark." 15
The first part of this section makes applicable to registered trade marks the common
law rules by which a trade mark could only exist as an adjunct of the goodwill of the
business in which it was used. The second part remedies one of the principal defects
in the existing law by making registration equivalent to public use and thus obviating
the necessity for proving actual public use afresh in every action for infringement.
Section 6 imposed prohibitions upon the registration of certain kinds of marks.
These prohibitions are additional to the requirement that a trade mark should consist
of distinctive matter as prescribed in section 10. The section read as
follows:"6. The registrar shall not, without the special leave of the court, to be given in
the prescribed manner, register in respect of the same goods or classes of goods a 25
trade mark identical with one which is already registered with respect to such
goods or classes of goods, and the registrar shall not register with respect to the
same goods or classes of goods a trade mark so nearly resembling a trade mark
already on the register with respect to such goods or classes of goods as to be
calculated to deceive. It shall not be lawful to register as part of or in combination 30
with a trade mark any words the exclusive use of which would not, by reason of
their being calculated to deceive or otherwise, be deemed entitled to protection
in a court of equity; or any scandalous designs."
The first part of the section deals with the act of making the original entry of a trade
mark on the register. It imposes a prohibition upon the Registrar's acting upon his 35
own initiative but leaves it open to the court to permit the registration of identical
marks notwithstanding the inherent risk of the public's being thereby deceived as to
the origin of the goods. As a matter of judicial policy the court exercised this power
under the Act so as to preserve the doctrine of honest concurrent user. Where honest
concurrent user was established beyond what could be ignored under the de minimis 40
rule (cf. Re Hodson (1881) 26 So. J. 43) the practice was to permit registration of
identical or similar trade marks in respect of the same classes of goods up to the
number of three but to refuse leave to register more than three upon the ground that
the mark would thereby cease to be distinctive. (Re Jelley Son & Jones' Application
(1882) 46 L.T. 381.) 45
The second part of the section introduced by the words: "It shall not be lawful to
register", imposes an absolute prohibition upon the registration of particular matter
otherwise falling within the definition contained in section 10. It is clearly designed to
prevent the proprietor obtaining by registration protection for a mark of such a character
that a court of equity would have exercised its discretion to refuse to grant to its proprietor
5 an injunction to restrain its being infringed by a usurper. Since the mere fact that the
use of a mark involved a risk of deceiving the public was not enough to disentitle it to
protection against infringement by a usurper provided that the risk of deception was
due to honest concurrent user, there was no conflict between the first and the second
parts of the section. The reference to the cause of disentitlement to protection, viz.
10 "by reason of their being calculated to deceive or otherwise", does not restrict the
ambit of the prohibition. The specific reference to deception is probably accounted for
by the fact that up to 1875, misrepresentations as to the character of the goods, as in
Pidding v. How (1837) 8 Sim. 447, or as to their origin, as in Perry v. Truefitt (1842) 6
Beav. 66 were the commonest reasons for the refusal of the Court of Chancery to
15 grant injunctions. The addition of the words "or otherwise" may have been added per
majorem cautelam or possibly to cover the cases of marks to which no title had been
acquired by use or to which title had been lost by disuse as a trade mark.
In the context of section 6, as in the context of section 1, "to register" must, in my
view, refer not only to the act of making an entry on the register but also to permitting
20 the continuance of the entry of a trade mark on the register. It would not be reasonable
to impute to Parliament in 1875 an intention that a mark, which truthfully described
the character of the goods in respect of which it was registered at the time of its first
being entered on the register, should continue to enjoy the protection accorded to
registered trade marks even though the proprietor subsequently deliberately altered
25 the character of the goods so that the registered mark told a lie about them.
It is difficult to conceive of a case where a mark which was not deceptive as to the
character of goods at the time of original registration could become so subsequently
except by some dishonest conduct of the proprietor himself. But deception as to the
origin of the goods, in cases of honest concurrent user of identical or similar marks,
30 could arise at any time during the period of concurrent use without any blameworthy
conduct by any proprietor of the mark. In such cases, each of the proprietors remained
entitled to protection of his mark against infringement by a usurper, though not
against infringement by another bona fide proprietor of an identical or similar mark.
Section 6 did not make the entry or continuance of such a mark upon the register
Sections 3 and 4 of the Act of 1875 provided for the legal consequences of the
registration of a person as proprietor of a trade mark registered under the Act. They
read as follows:
"3. The registration of a person as first proprietor of a trade mark shall be
prima facie evidence of his right to the exclusive use of such trade mark, and
shall, after the expiration of five years from the date of such registration, be
conclusive evidence of his right to the exclusive use of such trade mark, subject
to the provisions of this Act as to its connection with the goodwill of a business."
"4. Every proprietor registered in respect to a trade mark subsequently to the
first registered proprietor shall, as respects his title to that trade mark, stand in
the same position as if his title were a continuation of the title of the first registered
GE Trade Mark
The references in section 3 to "the exclusive use" have to be read as subject to the
rights of other persons to honest concurrent user of the mark with are preserved by
In contrast with sections 2 and 6, sections 3 and 4 deal not with the registration of
the mark itself but with the registration of the name of a person as proprietor of a 5
registered mark and the evidential effect of such registration upon his common law
right to use the mark. It is to be observed that the right to the exclusive use of the mark
was not in this Act treated as a statutory right created by registration of the mark but
as a common law right vested in the proprietor of which his registration as proprietor
The distinction between the registration of the mark itself and the registration of a
person as proprietor of a registered mark is reflected in the provisions for rectification
of the register. These were contained in section 5 of the Act of 1875 which read as
"5. If the name of any person who is not for the time being entitled to the 15
exclusive use of a trade mark in accordance with this Act, or otherwise in
accordance with law, is entered on the register of trade marks as a proprietor of
such trade mark, or if the registrar refuses to enter on the register as proprietor
of a trade mark the name of any person who is for the time being entitled to the
exclusive use of such trade mark in accordance with this Act, or otherwise in 20
accordance with law, or if any mark is registered as a trade mark which is not
authorised to be so registered under this Act, any person aggrieved may apply in
the prescribed manner for an order of the court that the register may be rectified;
and the court may either refuse such application, or it may, if satisfied of the
justice of the case, make an order for the rectification of the register, and may 25
award damages to the party aggrieved.... The court may, in any proceeding
under this section, decide any question as to whether a mark is or is not such a
trade mark as is authorised to be registered under this Act, also any question relating
to the right of any person who is party to such proceeding to have his name
entered on the register of trade marks, or to have the name of some other person 30
removed from such register, also any other question that it may be necessary or
expedient to decide for the rectification of the register. The court may direct an
issue to be tried for the decision of any question of fact which may require to be
decided for the purposes of this section."
The words I have italicised suggest that the conclusiveness which section 3 ascribed 35
to registration after 5 years applied only to applications for removal of a person's
name as proprietor dealt with in the opening words of section 5, and did not prevent
the removal of the mark itself from the register if it had become deceptive as a result
of the blameworthy conduct of its proprietor, so as to come within the prohibition
contained in section 6. 40
The extent of the conclusiveness of registration after five years conferred by section
3 did not, however, fall for consideration by the court in any case decided under the
Act of 1875 or the Act of 1883 which reproduced section 3 verbatim as section 76,
with the sole omission of the word "first" before "proprietor"; and both section 3
and section 5 were replaced by different provisions in the Act of 1905 which must now 45
House of Lords
The Trade Marks Act 1905
With the passing of the Act of 1905 the law of trade marks assumed what is sub
stantially its modern form. The basic change effected by the Act was that registration
of a person as proprietor of a mark became the source of his title to the exclusive right
5 to the use of the mark and not mere evidence of a title acquired at common law by
actual public use of the mark; but this exclusive right was expressly made subject to the
concurrent rights of other registered owners of the same or substantially the same
trade mark. The Act also authorised the registration of marks prior to their actual use,
by introducing a statutory definition of a trade mark as meaning
"a mark used or proposed to be used upon or in connexion with goods for the
purpose of indicating that they are the goods of the proprietor of such trade mark
by virtue of manufacture, selection, certification, dealing with, or offering for sale" .
But it contained provision for removal of a mark from the register for non-user-a
power which under the Act of 1875 had been implicit in the common law meaning of
15 trade mark which involved a requirement that it should be in actual use as such. The
Act also deprived the owner of an unregistered mark not in use before the Act of 1875
of any right to recover damages for its infringement as well as of his right to an
injunction to prevent infringement; but preserved in respect of such a mark any rights
of action at common law for passing-off goods in contradistinction to infringement of
20 a trade mark.
The provisions as to the registration of identical marks and marks so nearly resem
bling one another as to be calculated to deceive, which appeared in the first part of
section 6 of the Act of 1875, were re-enacted in expanded forms in sections 19 to 21 of
the Act of 1905, which gave express statutory recognition to the power of the court to
25 register such marks "in case of honest concurrent user"-a power which the court had
previously exercised by giving effect to the common law doctrine of honest concurrent
user in the exercise of the general discretion conferred upon the court in the first part
of section 6 of the Act of 1875.
The second part of section 6 of the Act of 1875 was re-enacted with immaterial
30 alterations and additions by section 11 of the Act of 1905 which read as
follows:"11. It shall not be lawful to register as a trade mark or part of a trade mark
any matter, the use of which would by reason of its being calculated to deceive
or otherwise be disentitled to protection in a court of justice, or would be contrary
to law or morality, or any scandalous design."
The crucial words: "It shall not be lawful to register" and "the use of which would
by reason of its being calculated to deceive or otherwise be disentitled to protection
in a court of justice" must, in my view, bear the same meaning as the corresponding
words in the Act of 1875. The change of nomenclature from "court of equity" to
"court of justice" was due to the passing of the Judicature Act, 1875.
The basic change effected by the Act of 1905 as to the source of title to a registered
trade mark, however, necessitated changes of substance to section 3 of the Act of 1875.
It was replaced by sections 40 and 41, which, so far as is relevant for present purposes,
"40. In all legal proceedings relating to a registered trade mark (including
applications under section 35 of this Act) the fact that a person is registered as
GE Trade Mark
proprietor of such trade mark shall be prima facie evidence of the validity of the
original registration of such trade mark and of all subsequent assignments and
transmissions of the same."
"41. In all legal proceedings relating to a registered trade mark (including
applications under section thirty-five of this Act) the original registration of such 5
trade mark shall after the expiration of seven years from the date of such original
registration (or seven years from the passing of this Act, whichever shall last
happen) be taken to be valid in all respects unless such original registration was
obtained by fraud, or unless the trade mark offends against the provisions
of section 11 of this Act."
Section 35, which is referred to in section 41, replaced section 5 of the Act of 1875.
It reads as
follows:"35. Subject to the provisions of this Act: (1) The court may, on the application
in the prescribed manner of any person aggrieved by the non-insertion in or
omission from the register of any entry, or by any entry made in the register 15
without sufficient cause, or by any entry wrongly remaining on the register, or by
any error or defect in any entry in the register, make such order for making,
expunging or varying such entry, as it may think fit:
(2) The court may in any proceeding under this section decide any question
that it may be necessary or expedient to decide in connection with the rectification 20
of the register:
(3) In the case of fraud in the registration or transmission of a registered trade
mark, the Registrar may himself apply to the court under the provisions of this
(4) Any order of the court rectifying the register shall direct that notice of the 25
rectification shall be served upon the Registrar in the presecribed manner who
shall upon receipt of such notice rectify the register accordingly."
Section 40, like sections 3 and 4 of the Act of 1875, deals only with the evidential
effect of registration of the mark itself and of a person as proprietor of the mark.
Section 41, on the other hand, reflects the basic change made by the Act of 1905 in 30
making registration the only way whereby a trade mark could become the subject
matter of proprietary rights. After a mark had remained upon the register for seven
years it was no longer open to any court to hold that at the time when it was registered
it was not of such a character as to be a proper subject-matter of proprietary rights,
unless its registration had been obtained by fraud. Section 41 was thus a provision 35
which vested substantive rights in whoever was for the time being validly registered as
proprietor of the mark.
The substantive rights conferred by section 41 are, however, limited to those which
are the consequence of an "original registration" being valid. The insertion of the
adjective "original" before "registration" in the description of what "shall ... be 40
taken to be valid in all respects" affords confirmation that the draftsman of the Act
used the noun "registration" simpliciter and the corresponding verb "to register"
as referring not only to the initial act of making an entry in the register but also to the
continuance of it as an entry in the register. Thus, section 41 did not preclude removal
of a trade mark from the register under any of the express powers of removal con- 45
House of Lords
tained in other sections of the Act, nor did it preclude removal if the trade mark fell
within the second exception laid down in section 41 itself in the words "unless the trade
mark offends against the provisions of section "11 of this Act". The contrast between
this language and the corresponding language of the first exception "unless such
5 original registration was obtained by fraud", and in particular the change of noun from
"original registration" to "trade mark" and the change of tense of the verb from past
to present, is a clear indication that the draftsman assumed that the words in section
11 "It shall not be lawful to register" imposed a prohibition upon a trade mark's
remaining on the register as well as upon its original entry in the register.
10 What section 41 did was to preclude removal of a trade mark from the register after
seven years upon any ground of invalidity, such as lack of distinctiveness, which would
have applied to the original registration. What it did not do, was to preclude removal
of a mark from the register if it had become likely to deceive as a result of blameworthy
conduct by its proprietor since the date of its original registration. A bona fide
15 proprietor whose trade mark had become likely to deceive through no fault of his own
did not need to look to section 41 for his protection. Section 11 itself was sufficient
protection to him whether or not seven years had elasped since the original registration
of the mark.
In Thorne & Sons Ltd. v. Pimms Ltd. (1909) 26 R.P.C. 221, Neville J. construed
20 section 11 as authorising the removal from the register of a mark which had become
deceptive since the date of original registration as a result of the wrongful conduct of
the proprietor. Graham J. is in error in supposing that the mark in question was not
governed by section 41 because it had been registered before the passing of the Act of
1905. Section 41 was made expressly applicable to such marks by section 6 of the Act
25 of 1905.
In Woodward Ltd. v. Boulton Macro Ltd. (1915) 32 R.P.C. 173, Eve J. held that a
mark "Gripe-Water", which had become non-distinctive since its original registration
because through no fault of its proprietor those words had come to be generally used as
descriptive of any remedy for gripes, could not be removed from the register, Even
30 assuming, as I think wrongly, that this non-distinctiveness also resulted in the mark
having become "calculated to deceive" within the meaning of section 11, the actual
decision was justified upon the ground that it was excluded from the operation of
section 11 because the deceptiveness resulted from circumstances over which the
owner of the mark had no control and so was not disentitled to protection in a court of
35 justice. Eve J.s judgment was treated by Wynn-Parry J. in Pan Press Publications Ltd.'s
Applications (1948) 65 R.P.C. 193, as being confined to cases where the subsequent
deceptiveness of a mark resulted from events over which the proprietor of the mark had
no control. Analysis of Eve J.s reasoning, however, shows that his decision was based
upon the more general ground that, irrespective of the cause of any subsequent
40 deceptiveness of a mark, it could not be removed as offending against section 11
because that section only applied to the moment of original registration of the mark.
In this I think that he was wrong.
The particular mischief of allowing a mark to remain upon the register after it has
come into general public use as descriptive of the class of goods in respect of which it
45 was originally registered has since been dealt with by successive amendments first
introduced in section 6 of the Act of 1919 and replaced and added to by Section 15
of the Act of 1938. The right of such marks to remain upon the register is no longer
governed by section 11 of the Act of 1938
(which corresponds to section 11 of the Act
The Trade Marks Act, 1938.
Sections 11, 35, 40 and 41 of the Act of 1905 were re-enacted in the Act of 1938
where they became sections 11, 32, 46 and 13 respectively. The minor differences in
wording do not,in my view, affect their meaning. In section 11, "calculated to deceive"
became "likely to deceive or cause confusion". In saying, in my judgment in 5
BALI Trade Mark case [1968
] R.P.C. 426 in the Court of Appeal, that this involved
a change in the meaning of the section, I was mistaken. I had overlooked the con
struction placed upon the word "calculated" by this House in
) 44 R.P.C. 335 at 341. But this can have no effect upon the reasons based upon
the language of section 13 which I then advanced in support of that view that section 10
11 bears the meaning that I have ascribed to it. They were the same as those I have
again advanced when dealing with the corresponding section 41 of the Act of 1905.
They gain support from the previous legislative history of section 11 itself; and I
adhere to them.
The only substantive alteration in the law effected by the Act of 1938, which is 15
germane to the instant appeal, is the provision in section
"22.-(1) Notwithstanding any rule of law or equity to the contrary, a regis
tered trade mark shall be, and shall be deemed always to have been, assignable and
transmissible either in connection with the goodwill of a business or not.
(2) A registered trade mark shall be, and shall be deemed always to have been 20
assignable and transmissible in respect either of all the goods in respect of which
it is registered, or was registered, as the case may be, or of some (but not all) of
This, however, is relevant to the licensing objections only. It does not affect the main
ground of appeal.
The Present Law on the Main Ground of Appeal
As respects the main ground of appeal, the legal status under the Act of 1938 of a
registered trade mark the use of which is likely to cause confusion can be summarised
follows:(1) The fact that the mark is entered upon the register is prima facie evidence of the 30
validity of the original registration and of the right of the registered proprietor
to the exclusive use of the mark, subject however to the rights of concurrent user
by any registered proprietor of an identical mark or one nearly resembling it.
(2) If the mark was likely to cause confusion at the time when it was first registered
it may be expunged from the register as "entry made in the register without 35
sufficient cause" unless the proprietor of the mark at that time would have been
entitled to have it entered on the register by reason of his honest concurrent use
of the mark as a trade mark before the original registration of the mark.
(3) If the likelihood of causing confusion did not exist at the time when the mark
was first registered, but was the result of events occurring between that date and 40
the date of application to expunge it, the mark may not be expunged from the
register as an entry wrongly remaining on the register, unless the likelihood of
causing deception resulted from some blameworthy act of the registered
proprietor of the mark or of a predecessor in title of his as registered proprietor.
House of Lords
(4) Where a mark is liable to be expunged under (2) or (3) the Court has a discretion
whether or not to expunge it and as to any conditions or limitations to be
imposed in the event of its being permitted to remain on the register.
The question whether the American Company is entitled to succeed on the main
5 ground of appeal thus depends upon whether the likelihood that the use of the Rondel
mark simpliciter upon electrical goods would cause confusion on 20th July 1967,
the date of the application to expunge, resulted from some blameworthy act of the
American Company. Upon the facts, it is only those which I have summarised earlier
under Head (7) which could be suggested as constituting blameworthy conduct on the
10 part of the American Company. On the findings of Graham J., which in my opinion are
amply justified, as to the nature of the understanding between the two companies such
as it was, it seems to me to be impossible to hold there was any such blameworthy
conduct by the American Company as would amount to an equitable ground for
disentitling them to protection for the use of the mark. There is therefore no ground
15 in law for expunging the mark and no question of the exercise of the discretion of the
Court can arise.
On this part of the case it only remains to consider whether the decision of this
House in BALI Trade Marks case  R.P.C. 472 conflicts with the above statement
as to the effect of the relevant sections of the Act of 1938 .When the BALI Trade Marks
20 case reached this House, the argument, by the common consent of the parties, was
confined to the question whether its use had been likely to cause confusion at the time
it was first registered. At that time, the previous actual use of the mark by the Bali
Company had been negligible and it was not suggested that at the date of the original
registration the Bali Company were entitled to registration of the mark because of
25 their previous honest concurrent use of it. It was thus sufficient for the determination
of the appeal in this House that the prohibition in section 11 related to the original
registration of the BALI mark. The question whether it would have applied to the
continuance of the mark upon the register notwithstanding that the original registra
tion had been valid never arose.
30 The argument as to the meaning of the words "disentitled to protection in a Court
of Justice" which has been advanced in the instant appeal was not presented to this
House in the BALI case. What was argued was that the phrase "disentitled to pro
tection in a Court of Justice" imported the requirement that the applicant for ex
punction of the mark in addition to showing that the use of the mark would have been
35 likely to deceive or cause confusion must also show that he would have been entitled
to succeed in a passing-off action brought against the registered proprietor of the mark
sought to be expunged at the date of the original registration. This obviously untenable
argument was unanimously rejected by this House. But the four speeches that were
delivered do not disclose a majority opinion in favour of any alternative meaning of
40 the phrase. In my view, there is nothing in the decision itself or in the speeches which
would require this House to hold that the law is not as I have stated above. There is a
dictum of Lord Wilberforce (at page 501) to the effect that section 11 of the Act of
1938 treats likelihood of confusion as ipso facto disentitling a trade mark to protection.
His reasoning is, however, based entirely on the wording of the section. It did not
45 command the acceptance of the other members of this House; and, with great respect
I think that it was wrong linguistically even if legislative history be left out of account.
So far as it concerns the ground upon which the Court of Appeal ordered the
Rondel mark to be expunged from the register, I would therefore allow this appeal.
The Licensing Objections
It remains to deal with the alternative licensing objections which were rejected both
by Graham J. and by the Court of Appeal, As I understood them, they are based upon
thefacts summarised under Head 6 and may be stated briefly as
follows:(a) The American Company licensed the use by Simplex of the Rondel mark as an 5
unregistered trade mark in respect of electrical goods which fell outside the
class of goods for which it was registered. Since section 22 of the Act of 1938
applies only to registered marks the right to use an unregistered trade mark
remains subject to the common law rule that it is assignable only with the
goodwill of the business in which it is used. The American Company did not 10
assign to Simplex the goodwill of that business, so that the licence to Simplex
to use the trade mark was invalid at common law.
(b) The unregistered trade mark having thereby ceased to be an adjunct of the
goodwill of the business in which it had been used, became incapable of being
the subject of proprietary rights by the American Company and accordingly 15
ceased to exist as a trade mark at common law.
It is not necessary to consider whether or not the proposition contained in (b) is well 20
founded; because I can see no justification for the proposition in (c). There is, in my
view, no logical ground for holding that the right of a proprietor to use a registered
mark in respect of goods for which it is registered can be affected by his losing the
right to use the same mark as an unregistered mark in respect of other goods. Since
he would lose it in any event at common law by disuse, it would follow from this 25
proposition that the owner of a mark registered in respect of a particular class of goods
would lose his right as the proprietor of such mark if he failed to continue to use the
mark as an unregistered mark in respect of any other class of goods for which he was
using it at the time of first registration. This has only to be stated to be rejected.
I would allow the appeal.
Lord Kilbrandon. I have had the advantage of reading the speech prepared by my
noble and learned friend, Lord Diplock. I agree with it; and for the reasons which he 35
gives I would allow the appeal.
McDowell's Application ( 1927 ) 44 R.P.C. 335 , affirming ( 1926 ) 43 R.P.C. 313 .
Pan Press Publications Ltd.'s Applications ( 1948 ) 65 R.P.C. 193 .
BALI Trade Mark  R.P.C. 426 , 472 .
Additional cases referred to in argument: 5 Hine v . Lart ( 1846 ) 7 L.T. 41 .
Banks v . Gibson ( 1865 ) 34 Beav. 566 .
Leather Cloth Co . v. American Leather Cloth Co. ( 1865 ) 11 H.L. Cas. 523 .
Ainsworth v . Walmsley ( 1866 ) L.R. 1 Eq . 518.
Ford v . Foster ( 1872 ) 7 Ch . App. 611 .
10 Benbow v. Low ( 1880 ) 44 L.T. 875 .
Dunn's Trade . Mark ( 1889 ) 6 R.P.C. 148 , 379 ; ( 1890 ) 7 R.P.C. 311 .
Pinto v . Badman ( 1891 ) 8 R.P.C. 181 .
Rosenthal v . Rosenthal ( 1892 ) 9 R.P.C. 189 .
Thorneloe v . Hill ( 1894 ) 11 R.P.C. 61 .
15 Cowley ( Earl) v . Inland Revenue Commissioners  A.C. 198 .
Compagnie Industrielle des Petrole's Application ( 1907 ) 24 R.P.C. 585 .
Bowden Wire Ltd . v. Bowden Brake Co. Ltd. (No.1) ( 1913 ) 30 R.P.C. 45 , 580 ; ( 1914 ) 31 R.P.C. 385 .
Registrar of Trade Marks v . W. & G. Du Cros Ltd. ( 1913 ) 30 R.P.C. 660 .
20 Imperial Tobacco Co . Ltd.'s Trade Mark ( 1915 ) 32 R.P.C. 40 .
Cording (George) Ltd .'s Application ( 1916 ) 33 R.P.C. 325 .
Rodgers (Joseph) & Sons Ltd. v. W. N. Rodgers & Co. ( 1924 ) 41 R.P.C. 277 .
Lacteosote Ltd . v. Alberman ( 1927 ) 44 R.P.C. 211 .
Fanfold Ltd .'s Application ( 1928 ) 45 R.P.C. 325 .
25 . Bass , Ratcliff & Gretton Ltd. v. Nicholson & Son Ltd. ( 1932 ) 49 R.P.C. 88 .
Pirie's Application ( 1933 ) 50 R.P.C. 147 .
Barras v . Aberdeen Steam Trawling Co.  A.C. 402 .
Aristoc Ltd . v. Rysta Ltd. ( 1945 ) 62 R.P.C. 65 .
Office Cleaning Services Ltd. v. Westminster Window & General Cleaners ( 1946 ) 30 63 R.P.C. 39 .
Marengo v . Daily Sketch & Sunday Graphic Ltd . ( 1948 ) 65 R.P.C. 242 .
Parker-Knoll Ltd . v. Knoll International Ltd.  R.P.C. 265 .
General Electric CO.'s Trade Mark  F.S.R. 517 .
Coca Cola Co . v. Struthers  R.P.C. 231 .
35 DIEHL Trade Mark  R.P.C. 435 .
This was an appeal to the House of Lords from a decision of the Court of Appeal (reported at  R.P.C. 339) allowing an appeal from a decision of Graham, J.
(reported at  R.P.C. 418) rejecting an application by the General Electric Company Limited of London for rectification of the register by the removal therefrom 40 of trade mark No. 291,287 (GE) registered by the General Electric Company of New York, United States of America. Representations of this and of other marks discussed in the case are set out in  R.P.C. at page 341.
John Arnold , Q.C. and Robin Jacob, instructed by Slaughter & May, appeared for the appellants (registered proprietors) . Douglas Falconer , Q.C. and John Burrell, 45 instructed by Bristows, Cooke & Carpmael, appeared for the respondents (applicants for rectification) .
To ascertain the meaning of the language used in section 11 of the Act of 1938 one must go back beyond the Act of 1905 to the Act of 1883; but since the Act of 1883 was 5 itself an act to amend and consolidate the law relating to trade marks and section 73 merely reproduced verbatim the language of the second part of section 6 of the Registration of Trade Marks Act, 1875, final recourse must be had to the Act of 1875.