ROWLAND v. MITCHELL. In re ROWLAND'S TRADE-MARK. [1895 R. 1776.] Trade-mark-Registration-Removal from Register-Proper Subject-matter— “Distinctive Device"-Portrait of Manufacturer-Patents, Designs, and Trade Marks Act, 1888 (51 & 52 Vict. c. 50), s. 10, sub-s. 1 (c). The portrait of the manufacturer of goods is a "distinctive device" within the meaning of s. 10, sub-s. 1 (c), of the Patents, Designs, and Trade Marks Act, 1888, and may properly be registered as a trade-mark to be used by him in connection with his goods. In re Anderson's Trade-mark, (1884) 26 Ch. D. 409, explained. APPEAL against the judgment of Romer J. at the trial of the action, granting an injunction perpetually restraining the defendant, his servants, &c., from (in effect) passing off his goods as and for the goods of the plaintiff, and at the same time dismissing with costs a motion by the defendant to rectify the register of trade-marks by removing therefrom the plaintiff's trade-mark No. 155,638, class 42 (confectionery). The plaintiff had also claimed an injunction to restrain the defendant from infringing or imitating the trade-mark; but the learned judge held that there had been no infringement or imitation, and declined to grant an injunction under this head. The plaintiff was a manufacturer of and a wholesale dealer in some cough lozenges called "Army and Navy Paregoric Tablets," in connection with which he used the trade-mark. The trade-mark was registered on April 14, 1891. It consisted of the plaintiff's own portrait inclosed in an oval line. Just inside the upper portion of the line, and so arranged as to correspond with its shape, were the words "The New Conqueror," and similarly arranged within the lower portion of the line were the words "Never known to fail." But the following statement and disclaimer appeared on the register: "The essential particular of my trade-mark is my portrait, and I disclaim any right to the exclusive use of the added matter." The ground of the motion to expunge was, that the portrait C. A. 1896 Dec. 2. C. A. 1896 ROWLAND v. MITCHELL. In re ROWLAND'S of an individual was not a "distinctive device" within the meaning of s. 10, sub-s. 1 (c), of the Patents, Designs, and Trade Marks Act, 1888, and that it could not, therefore, be the proper subject-matter of a trade-mark. In dealing with this point Romer J. said: "The only ground TRADE-MARK. upon which the defendant's motion to expunge the plaintiff's trade-mark can be based is, that the trade-mark is not a 'distinctive device.' It is said that the photograph of the owner of a trade-mark is not distinctive, and is therefore not good subject-matter of a trade-mark. Reference was made to In re Anderson's Trade-mark (1), which, it was said, decided that a portrait cannot be good subject-matter of a trade-mark. In my opinion that case decided nothing of the kind. The chief part of the trade-mark there was a portrait of Baron Liebig with certain words added with reference to Liebig's Extract of Meat. It was held that the substance to which the trade-mark was intended to be attached was well known in the market as Liebig's Extract of Meat, and that the term 'Liebig' or 'Baron Liebig' was publici juris, and, that being so, what In re Anderson's Trade-mark (1) decided was, that, inasmuch as Baron Liebig's name applied to that substance was common to the world, no person could claim as a trade-mark that name, or a photograph of Baron Liebig, which was another method of describing the goods to which the trade-mark was to be attached. That was the ground of the decision in In re Anderson's Trademark (1), and it in no wise applies to the present case. The plaintiff's name is not publici juris. The substance to which his trade-mark is applied is not known in the market in the same way. I can see no reason why the photograph of a person who invents a trade-mark should not be itself distinctive; and in the case before me I think the photograph is distinctive. Of course, if the intention of the plaintiff was, that, by registering his portrait as a trade-mark he should prevent any one else from using as a trade-mark for similar goods any portrait whatsoever, I should have to reconsider what I have said. That could not be his intention so far as the mere trade-mark is concerned. The photograph of another person would not, in my opinion, (1) 26 Ch. D. 409. C. A. 1896 be an infringement of the trade-mark, if the photograph was substantially different from that of the plaintiff. It follows that the motion to expunge fails, and must be dismissed ROWLAND with costs." The defendant appealed. The present report is confined to the appeal from the refusal of the motion to expunge the trade-mark. Oswald, Q.C., and R. Edmondson, for the defendant. The portrait of the manufacturer of goods is not a proper subjectmatter for a trade-mark under s. 10 (1) of the Patents, Designs, and Trade Marks Act, 1888. It is not a "distinctive device within the meaning of that section: In re Anderson's Trademark. (2) A “distinctive device" must mean something which distinguishes between the goods of the trader who uses it and the goods in the same class of any other trader. It must be something which the public can readily distinguish. Photographic portraits of different human faces are much alike, and the public would have great difficulty in distinguishing between them. Indeed, it may be doubted whether a portrait is a "device" at all. According to Johnson's Dictionary, a “device” is "a contrivance or invention." Eve, Q.C., and J. M. Gover, for the plaintiff, were not called upon. LORD RUSSELL of KILLOWEN C.J. The defendant raises three points. He says (1.) that this portrait is not a distinctive "device"; (2.) that the plaintiff is not entitled to relief by reason of his acquiescence in what has been done by the defendant; and (3.) that the plaintiff has been guilty of such misconduct in the use of the trade-mark as to disentitle him to the relief which he asks from the Court. (1.) It is said that this trade-mark is not a "distinctive (1) By s. 10, "(1.) For s. 64 of the principal Act” (i.e., the Patents, Designs, and Trade Marks Act, 1883) "the following section shall be substituted, namely 64. (1.) For the purposes of this Act, a trade-mark must consist of or "(c.) A distinctive device, mark, v. MITCHELL. In re ROWLAND'S TRADE-MARK. -- C. A. 1896 ROWLAND device" within sub-s. (c) of s. 10 of the Act. I think that it is. I will not attempt to improve upon the way in which Romer J. has dealt with this point. [His Lordship read the MITCHELL, passage quoted above from the judgment of Romer J., and continued :-] V. In re ROWLAND'S TRADE-MARK. Lord Russell of By "distinctive device" it is meant that the device must be something which shall be capable of distinguishing the parKillowen C.J. ticular goods in relation to which it is to be used from other goods of a like character belonging to other people. In that view it is difficult to conceive that anything could well be more distinctive than the portrait of the man who professes to manufacture the particular article. I come, therefore, to the conclusion that the learned judge was right in holding this portrait to be a proper subject for a trade-mark within s. 10 of the Act of 1888, and his judgment must be affirmed. [His Lordship then dealt with the other two points, as to which he expressed his concurrence with Romer J., and said that the appeal must be dismissed.] LINDLEY L.J. I agree on all the points. Mr. Oswald's first point would be a very important one if he could maintain it, namely, that a photograph of a human being cannot be a "distinctive device" within clause (c) of s. 10 of the Act of 1888. But we must be cautious before we assent to such a proposition as that. Why cannot the portrait of a human face be a "distinctive device"? We must be careful not to render this Act useless by cutting down the meaning of its language to the extent to which we are invited by Mr. Oswald. I can understand that he might be right if he had adduced evidence to shew that a portrait like this-a photograph more or less substantially like it-was common in the trade, so that it did not in fact distinguish, and could not be registered as distinguishing, the plaintiff's goods from other similar goods. There might be already on the register a face more or less like this, so that the registrar might properly say, "I cannot register another, because it is very likely to deceive." But, in the absence of any circumstance of that kind, I cannot conceive upon what ground we could justify a decision that a face like this cannot be registered because it is C. A. 1896 ROWLAND v. MITCHELL. In re not, or cannot be, a "distinctive device." Distinctive of what? The object is to distinguish the plaintiff's goods from other people's. Why cannot the plaintiff use this portrait, which has never been used before, to distinguish his goods from other goods of the same class--the goods of one maker from the goods of another maker—when it is registered and used for that purpose? TRADE-MARK. I fail to appreciate the difficulty. I protest against the notion that we are to lay down as a general proposition that the photograph of a human face cannot be registered because it is not within the Act. A. L. SMITH L.J. I agree. Solicitors: C. E. Oscar Walker; C. & E. Woodroffe. ROWLAND'S W. L. C. Will-Construction In re STEPHENSON. DONALDSON v. BAMBER. [1896 S. 1362.] Class-Member · Mistake Gift of Residue to "the Children of the deceased Son (named B.) of my Father's Sister"--Several deceased Sons named B.-Uncertainty. A testator by will gave the residue of his real and personal estate "unto the children of the deceased son (named Bamber) of my father's sister share and share alike." There were three deceased sons all named Bamber of the sister of the testator's father, and this fact was known to the testator:— Held, by the Court of Appeal (reversing the decision of Kekewich J.), that the gift was void for uncertainty. Hare v. Cartridge, (1842) 13 Sim. 165, and Lee v. Pain, (1844) 4 Hare, 201, 249, commented on and distinguished. APPEAL from Kekewich J. Robert Stephenson, who died on April 13, 1896, by his will, dated March 23, 1896, gave all the residue of his real and personal estate "unto the children of the deceased son (named Bamber) of my father's sister share and share alike." The testator's father had only one sister, namely, Rebecca, who married William Bamber, survived her husband, and died in 1861, having had three sons, namely, William Bamber, Rowland C. A. 1896 KEKEWICH J. July 8. C. A. Nov. 26. |