Cheseborough Manufaoturing Co. V. Kudhoos

Present,: Fisher C.J. and Drieberg J. 

CHESEBOROUGH MANUFACTURING CO. v. KUDHOOS.

96-D. C. Colombo, 1,402.

    Trade mark-Application to expunge-Resemblance between the two marks-Calculated to deceive-Passing-off action-Ordinance No. 14 of 1888, s. 28 (1).

 In an application to expunge a trade mark from the register the applicant must prove that the two marks so resemble each other as to deceive purchasers of ordinary caution.

Such a proceeding is in the nature of an action for infringement, and the applicant is not entitled to rely on additional matters which are connected with the trade or goods, and relevant in an action for passing off.

APPEAL from an order directing the appellant's trade mark to be expunged from the register on the ground that it resembles the respondent's mark so clearly that it is calculated to deceive.   The respondent applied to the Court under section 28 (1) of Ordinance No. 14 of 1888.

Garvin, for appellant.-The decision of the District Judge is based on the alleged similarity of the get-up. The get-up is immaterial. It is only the mark as a whole that should be looked at. Occasional points of similarity should not be made a ground for refusal to register (Lever Bros. v. Bedingfield1[1   16 R. P. C. 3.]).

The probability of deception must be substantiated2[2   27 Hals. 716.]. The buyers in this case are educated persons and a comparison of the marks shows that there is no likelihood of confusion (Welsbach Incandescent Gas Light Company v. New Sunlight Incandescent Ltd.3[3   17 R. P. C. 401.]). It is no ground for refusal that the mark may be dishonestly used, and the presumption is in favour of honest user. There is no monopoly in common features (Payten Ltd. v. Titus Ward4[4 17 R. P. C. 58.]).

The application should date to the date of disclaimer.

Counsel cited the following authorities :-In re Bass Ratcliff v. Gretton Ltd.5[5 19 R. P. C. 544.]; The Society of Motor Manufacturers v. Motor Traders Insurance Company, Ltd.6[6 (1925) 1 Ch. 675.]; Bond & Sons v. Bagrto Hutton & Company, Ltd.7[7 (1916) 2 A.C. 382.]

Hayley, K. C. (with N. K. Choksy), for applicant, respondent.- It is clear from the resemblances in the marks, as well as in their mode of user in actual trade, that there was an intention to deceive by the use of the contested label.

 If  an intention to deceive is proved, it is presumed that the deception has been successful, both in an action for passing off as
Manu-     well as in an action for infringment of a trade mark.

(Proctor v. Bayly & Son1[1 6 R. P. C. at 538.] ; Lambert & Butler Ltd. v. Goodbody2[2 19 R. P. C. at 381.]; In re Cheseburgh Manufacturing Company, Ltd.3[3 19 R. P. C. 342.])
The Court must see the marks as they will appear in actual use. The colour also is a material factor in this connection. (Kerly, pp. 243, 252, 280, 281.)

Counsel cited the following authorities :-Re Christiansens Trade Mark4[4 3 R. P. C. 54.]; Pinto v. Badmon 5[5 8 R. P. C. 18 1 at 191.]; In re Turney & Sons' Trade Mark.6[6 11 R. P. C. 37.]

October 17, 1928.   Fisher C.J.-

This is an appeal from an order directing the appellant's trade mark to be expunged from the register on the ground that it resembles the respondent's mark so closely that it is calculated to deceive.

The respondent applied to the Court under section 28 (1) of Ordinance No. 14 of 1888 (Legislative Enactments, Vol. I., p. 976), which provides that " the court may on the application of any person aggrieved .... by any entry made without sufficient cause in any such register make such order for .... expung­ing or varying the entry as the court thinks fit."

Under a similarly worded English Enactment (section 90 of the Patents, Designs, and Trade Marks Act, 1883) it was held that if in proceedings to expunge a mark an applicant makes out a case which would have justified the registering authority in refusing to register on the

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