Lipton, Ltd. V. Rawther Et Al.,

1933 Present: Dalton A.C.J. and Drieberg J.

LIPTON, LTD. v. RAWTHER et al.

31-D. C. (Inty.), Colombo, 1,812.

Trade mark-Application for registration of trade mark in respect of tea- Opposition on the ground that it resembled respondents trade mark- Similarity of device-Calculated to cause deception.

The appellants applied for the registration of a trade mark in respect of tea, consisting of the device of a man-of-war of the cruiser type with the words "ENTERPRISE BRAND" below. The application was opposed by the respondents on the ground that the device sought to be registered so nearly resembled their own registered device as to be calculated to deceive. The respondents' trade mark was registered in respect of the same goods and the essential particulars of the mark were the device of a steamship with the words " STEAMSHIP BRAND ". It was established that the respondents' tea had become known as " ship brand " tea.

Held that the appellants were not entitled to register their trade mark.

APPEAL from a judgment of the District Judge of Colombo. The facts appear from the judgment.

H. E. Garvin (with him Stanislaus Alles), for appellants.

Hayley, K.C. (with him Choksy), for respondents.

June 23, 1933. DALTON A.C.J.-

The appellants, Lipton Limited of Colombo, applied to the Registrar-General for the registration of a trade mark in respect of tea, consisting of the device of a man-of-war with the words ENTERPRISE BRAND below. The application was opposed by the respondents to this appeal, but it was allowed by the Registrar-General. On appeal to the District Court, the learned District Judge held that the device sought to be registered so nearly resembled the registered device of the opposers as to be calculated to deceive within the meaning of section 19 of the Trade Marks Ordinance, and that the application for registration should be refused.

He therefore allowed the appeal. The applicants now appeal from that decision to this Court. The appeal raises no question of law, but depends upon matters of fact.

The respondents to this appeal who are opposing the application are the owners of a registered mark in respect of the same goods, namely, tea, the essential particulars of which are a device of a steamship with the words STEAMSHIP BRAND above and the name ALIPH in smaller letters on the bow of the ship, apparently representing its name. The man-of-war on the applicants' mark is of the cruiser type, being, it is not denied, a representation of H. M. S. Enterprise at present on the East Indies station.

The ground upon which the application for registration is opposed is that the respondents are proprietors of a mark in respect of tea consisting of the device of a ship and the words " Steamship Brand ". The mark sought to be registered has the device of a ship as a very prominent feature, and so nearly resembles the registered mark as to be calculated to deceive.

The evidence before the Registrar-General shows that the respondents have sold their tea since 1926 in Africa, India, Iraq, Malaya, Japan, and parts of Europe, but not in Ceylon. They say, however, they are also finding new markets, and there is nothing to prevent them also selling in Ceylon if it is worth their while. They say their mark has become distinctive of their goods, with the result that tea shipped under the mark has come to be known in the trade as " Ship Brand " tea. This is not denied by the applicants who admit that prior to the date of their application (June 23, 1930) they had sold a very small quantity of tea bearing the mark sought to be registered.

There are the usual allegations on behalf of respondents, denied by the applicants, that the mark sought to be registered so nearly resembles the registered mark as to be calculated to deceive, and further to create confusion between the goods of the applicants and the goods of the respondents. There is no reason

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