Arcadian Tobacco Co. Ltd v John Sinclair Ltd (C.A. 5/1932.) [1933] EACJ 1 (1 January 1933)

## COURT OF APPEAL FOR EASTERN AFRICA.

Before Sir Joseph Sheridan, C. J. (Tanganyika), JOHNSON, Ag. C. J. (Zanzibar), and LAW, Ag. C. J. (Uganda).

## THE ARCADIAN TOBACCO CO., LTD. (Appellants) (Original $Applicants)$

## v.

## JOHN SINCLAIR LTD. (Respondents) (Original Opponents). C. A. $5/1932$ .

Registration of Trade Marks Ordinance—Cap. 89, Revised Laws.

Held (3-8-32).—That although the public of Kenya is not likely to be deceived by the registration of a distinctive mark by two different business concerns, such registration connotes an exclusive right which cannot be vested in two entities having conflicting interests.<br>In re Trade Mark of John Dewhurst and Sons, Ltd. (1896), 2 Ch. Div. 137, followed.

Wright for Appellants.

Christie for Respondents.

The appellants applied to the Registrar of Trade Marks for registration of the word "Tatler" under the provisions of paragraph 5 of section 7 of the Trade Marks Ordinance. Respondents filed notice of opposition to the application for registration on the grounds set forth in the notice. Appellants joined issue princippally on the question of user, and filed in the Supreme Court of Kenya at Mombasa a notice of motion that the Registrar of Trade Marks be ordered to proceed with the registration of the word "Tatler" on their behalf The matter came before Dickinson. J., on 24th October, 1931, who ordered that the Registrar<br>should register the word "Tatler" as the distinctive marks of both the applicants (appellants) and opponents (respondents), subject to the condition that the applicants should only import their cigarettes in packets (cartons) of 10, and that the packet be marked clearly on the face thereof with the word "Arcadian" or the name of the applicants, while the respondents should only import their cigarettes in tins of 50, and that the tins should be. marked on the face thereof "Sinclairs" or "John Sinclair Ltd." From that order the present appeal was brought.

Wright.—There was no proof of "honest concurrent user" as contemplated by section 22 of the Trade Marks Ordinance. It is common ground that there was no user by either party until 23rd August, 1930. Compared section 22 with section 42. Lawson v. The Bank of London. 25 L. J. C. P. 188: advertisement is not user. Maxwell v. Hogg, 36 L. J. (Equity) 433 at 436; Kerly on Trade Marks. 230-234; In re Powell's Trade Mark (1893), 2 Ch. Div. 388 at 396.

Christic.-No question of similarity; mark not calculated to deceive. Kerly at 275 "Star Case", In re the Trade Mark of La Societe Anonyme Des Verreries De L'Etoile (1894), 2 Ch. Div. 26: "The Fan Case", Dewhurst (1896), 2 Ch. Div. 137; James Crossley Eno v. William George Dunn, 45 A. C. 252. Meaning of the words "calculated to deceive"; no reasonable danger of public being deceived. Discussed what effect registration or non-registration had'on an article already in existence and general use. In re Royal Worcester Corset Company's Application to Register a Trade Mark (1909), 1 Ch. Div. 459; In re Ehrmann's Applications (1897), 2 Ch. Div. 495 at 501.

Wright replied.

Str JOSEPH SHERIDAN, C. J.—On the 27th August, 1930, the Arcadian Tobacco Co. applied for registration of their mark "Tatler". On the 16th February, 1931, a notice of opposition was lodged by John Sinclair Ltd., of London. In the notice of epposition, John Sinclair Ltd. claimed that they had the exclusive property in the trade mark in respect of which the applicants sought registration. This proprietorship was claimed in pursuance of an assignment from the well-known tobacco manutacturers. Carreras Ltd.

At the hearing of the appeal, the claim as proprietors of the mark in virtue of the assignment was abandoned on its appearing that the Court of Appeal in England, in upholding a judgment of Maugham, J., had directed that the assignment referred to was invalid.

In reading the notice of opposition it would seem to me that the case for the opponents was that the use of the "Tatler" trade mark by the Arcadian Co. was likely to cause their goods to be mistaken for the goods of John Sinclair Ltd., and so calculated to deceive the public. Although an argument might be adduced that once it was shown that John Sinclair Ltd. were not the proprietors of the trade mark the opponents should not be heard, counsel for the applicant did not raise the point, and addressed his arguments as to whether on the opposition of John Sinclair Ltd. as a common informer he, the applicant, had not established that the registration of his mark was not calculated to deceive. The relevant section of the local Trade Marks Ordinance is section 9 (1), which provides: $-$

"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."

Now it is settled law that where an issue that a mark is calculated to deceive is raised, the burden of proving the contrary rests on the applicant. If the applicant succeeds in discharging

this onus, then on the facts of this case he is entitled to have his mark registered: At the time he applied for registration there was no other mark on the local register which could be said to conflict with the mark he proposed to register. Were it not that the opponents contend that the "Tatler" mark has been registered in England in the name of Carreras, where admittedly there has been extensive user of the mark in connexion with the sate of tobacco, it is clear to me that there could be no question as to the registration of the applicant's mark. There was no conflicting mark in the Kenya register at the date of the application for registration, there was a bona fide intention to use the mark, and there was actual user of the mark between the 23rd and 27th August, 1930-the latter being the date of the application for registration. In this case, the opposition relies on user by Carreras, and in so far as England and indeed other countries outside Kenya are concerned—for it has been averred that Carreras mark is known all over the world—it has been urged that the public in those countries may be deceived if the applicant's mark is registered.

So far as I have been able to understand the authorities in considering whether a particular mark should be excluded from registration on the ground that it is calculated to deceive the public, regard should only be had to the market of this country. and foreign markets are wholly irrelevant. This principle is to be found enunciated in the case of Notox Ltd., at page 178 of the R. P. C., Vol. XLVIII, No. 5. Luxinoore, J., in his judgment, $says:$

"I think the true test to apply is that which was laid down by Mr. Justice Tomlin in *Impex Electrical Ltd.* v. Wein. baum, which is reported in 44 Reports of Patent Cases at page 405. I would refer to the passage at page 410, beginning at line 28. What he says is this: 'For the purpose of seeing whether the mark is distinctive-and I think the same considerations apply where you are considering whether the particular mark is calculated to deceive or not-it is to the market of this country alone one has to have regard. For that purpose, foreign markets are wholly irrelevant, unless it be shown by evidence that in fact goods have been sold in this country with a foreign mark on them, and that the mark so used has thereby become identified with the manufacturer of the goods. If a manufacturer having a mark abroad has made goods and imported them in this country with the foreign mark on them, the foreign mark may acquire in this country this characteristic that it is distinctive of the goods of the manufacturer abroad. If that be shown, it is not afterwards open to somebody else to register in this country that mark, either as an importer of the manufacturer or for any other purpose. The reason of that is not that the mark is a foreign mark registered in a foreign

country, but that it is something which has been used in the market of this country in such a way as to be identified with a manufacturer who manufactures in a foreign country.'"

In the present case, at the date of the application for registration, with the exception of the marketing of cigarettes under the contested trade mark by the applicant, there had been no user of the mark in Kenya.

It has been argued that the expression "market of this country" includes any country to which the goods may find their way from Kenya, on the ground that the sale takes place in Kenva. Applied to the present case, the argument is that as the eigarettes in respect of which Carreras are registered in England are known all over the world, the public all over the world are likely to be deceived if the applicant's mark is registered here. I find a difficulty in acceding to this proposition, which does not seem to be borne out by the passage from the judgment I have quoted. Where there has been no intention to deceive—and I cannot find that the applicant in this case had such an intention -my view is that the public in countries other than that in which the mark is registered must seek their remedy under the laws in force in their own country. This view receives support from the judgment of Lord Loreburn in Boord and Son (Incorporated) and Bagots, Hutton and Co., Ltd., 2 A. C. (1916) 382. The judgment, which is short, is to be found at pages 392 and 393 of the report, and reads:-

" My Lords, I think the registrar was right in registering this trade mark. It was not calculated to deceive anyone in the United Kingdom. If it were proved that some use were about to be made here of some trade mark in order to deceive persons elsewhere, a Court in England might restrain a step in a course of deception. But even then I do not see why registration here should be refused of a trade mark otherwise suitable to be registered and proper to be registered. It is the business of a Court, not of the registrar, to prevent the abuse, and the abuse lies, not in legitimate registration, but in dishonestly using the trade mark. It might be different if registration were merely a step in a fraud and nothing more.

"Your Lordships were asked to believe that the Oriental mind has so associated cats with the appellants' goods that the presence of a cat in any posture and in any surroundings on a trade mark would, in Eastern countries, cause goods sold under such a mark to be mistaken for the appellants' goods. I do not believe that the Oriental is so undiscerning, and certainly it is not proved. If it were proved, then it would be the duty of a Court possessing jurisdiction in whatever country a deception was alleged to decide whether it ought to interpose, having regard to the law of the place or places where the wrong, if any, had been committed or was intended. I should think

that such a Court would probably consider, among other things. whether or not a British trader who shared with others the right of using a cat on his trade mark in England could prevent those others from using a cat in some other country merely because that trader had been the first to introduce into that country goods under the familiar cat trade mark. I should need to know the facts of the case, but if there were no dishonestly I do not at present think he could prevent it according to our law.

"In any case, there can be no ground for saying that a trade mark, otherwise appropriate for registration here, should be denied registration because it may be unfairly used somewhere else."

Against this view, we have been pressed, on the authority of In re Dewhurst and Sons' Trade Mark, 2 Ch. (1896) 137, to hold that the public of other countries should be considered. The ratio decidendi in that case was "that if you have got a mark in the register applicable to goods of a golden fan trade mark, you cannot have another mark called a golden fan in any language or in any hieroglyphics. That appears to me to be the real broad ground upon which we should decide this case." These are the words of Lindley, L. J. In that case there was already a trade mark with the device a gold fan on the register, and to have granted the application would have meant the registration of the phonetic equivalent of the first mark in the same class of goods, which would have amounted to a contradiction in that, although the first person had an exclusive right in the mark, another person at a later stage was also given an exclusive right in an identical mark. In the case under consideration, different from the "golden fan" case, there was no mark on the register at the time of the application. As to whether the public of Kenya is likely to be deceived by the registration of the applicant's mark, the evidence does not in my opinion support that view. In considering this question, the date to be taken is, I think, the date on which the application for registration was made and, on that date, that the registration was calculated to deceive does not to my mind appear from the evidence. Finding that the applicant is entitled to registration. I must find that the opponent is not entitled to registration, for to allow registration in his case would be to contravene the principle laid down in the case of Dewhurst, supra; nor do I think, on a point of procedure, that his application for registration should have been considered by the Court. The form of application was not before the Court, and the application was not advertised, so that neither the applicant (Arcadian) nor anyone else had an opportunity of opposing it.

I wish to say that I have carefully read all the authorities to which counsel referred us, and, to put it shortly, my view is that there are two points for consideration in a case of this kind

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in determining whether a trade mark should be registered. The first is whether the mark sought to be registered by reason of its resemblance to a mark already on the local register-whether as judged by the eye or phonetically—is calculated to deceive; the second is whether, irrespective of registration, another person's goods have become known in the local market in association with a mark distinctive of the goods so nearly resembling pictorially or phonetically the applicant's mark as again that the latter is calculated to deceive. In either case, I am of opinion that registration should be refused. In the case of the applicant's mark, its registration on the facts of the case cannot, I think, be said to be calculated to deceive. It is to be said in favour of the application that the Registrar at the time of its presentation accepted it for registration. This I consider to be of some importance. A perusal of many of the authorities submitted for our consideration indicates that the acceptance of a mark for registration by the registrar carries much weight. Section 12 of the local Ordinance; referring to acceptance by the registrar, follows word for word the provisions of section 13 of the Trade Marks Act. 1905.

In conclusion, I would allow the appeal, and direct the Registrar to proceed with the registration of the applicant's trade mark without modification or limitation, and to remove the opponent's mark from the register; the appellant to have the costs of the appeal and costs in the Supreme Court. I would further dismiss the opponent's cross-appeal with costs.

JOHNSON, Ag. C. J.—This is an appeal from a judgment of Dickinson, J., in which he directed the admission to the Register of Trade Marks in Kenya Colony of two trade marks, one the property of the appellants herein and one purporting to be the property of the respondents, at that date claiming to be the owners of a trade mark registered in England.

The appellants' trade mark is registered in India.

There is no question but that the mark in England is distinctive, and as the chief characteristic of both marks consists of the word "Tatler", I think there can be no question but that the appellants' mark must also be held to be distinctive.

The facts are simple, and may be stated shortly as found by the learned Judge who tried the issue between the parties and from the dates and other facts agreed between the parties when before this Court.

Since the hearing before the learned Judge, John Sinclair Ltd. has been removed from the Register in England, and the registered proprietor of the trade mark "Tatler", with its accompanying figure of an eighteenth-century gentleman, now stands in the English Register in the name of Carreras Ltd., of which company John Sinclair Ltd. appears to be a subsidiary. The position of the respondents would now appear to be that of "any person" within section 13 of Cap. 89 of the Revised Laws of Kenva.

The hearing of the appellants' application for registration was properly before Dickinson, J.

For convenience, the two owners of "Tatler" marks may be distinguished as the London Tatler and the Indian Tatler.

They would seem to be engaged in active competition to secure registration in all parts of the world. Dickinson, J., held that this was bona fide competition to increase the trade of each. There is no question but that the public appealed to was an entirely different class of person in each case.

In Kenya, London Tatler appealed to the European taste, while Indian Tatler catered for the African and possibly the Indian, who might wish to patronize his home industry.

In Kenya, London Tatler was represented by one Johnson, and Indian Tatler by the British American Tobacco Company, hereinafter referred to as B. A. T.

In March, 1923, Indian Tatler marketed its Tatler cigarette in India, and has enjoyed large sales there and elsewhere.

On 6th June, 1923, London Tatler registered its trade mark in England, and has had a large sale.

On 21st December, 1923, Indian Tatler registered its mark in India. Both Indian and London Tatler have been registered in various other countries.

On 15th July, 1930, Johnson ordered four cases London Tatler, in order to start a trade in that cigarette in Kenya. $\rm He$ did not take the precaution of filing an application for registration in Kenya of the London Tatler trade mark.

On 23rd August, 1930, B. A. T. received some 25,000 Indian Tatler cigarettes, with instructions to place them on the Kenya market.

On 27th August, 1930, Indian Tatler filed an application for registration of its trade mark in the Kenya Registry, signed by its Secretary, who gave an address in London. It is dated 17th July, 1930, two days after Johnson wrote to London Tatler.

Indian Tatler's application was advertised in the Official Gazette on 2nd September, 1930.

Notice of opposition was filed by Londnon Tatler on 18th February, 1931, and that company sold their first cigarettes in Kenya after that date.

Neither Tatler had imported or sold a cigarette in Kenya prior to 23rd August, 1930.

Apparently London Tatler, in filing notice of opposition, filed an application for registration of its mark, though that application does not appear on the file before us, and at a later date that application was advertised in the Gazette.

Dickinson, J., in the course of his judgment, remarked that, as far as he could see, there was no decided case where two firms have sought to register trade marks which undoubtedly would cause the goods they represent to be known by the same word-in this case, "Tatlers".

We are in a more fortunate position, as two cases have been cited to us which are very nearly upon the point.

In the Matter of an Application by the Havana Commercial Compan y for Registration of a Trade Mark—the Cubanola Case -(1916), 33 R. P. C. p. 399, the Registrar refused registration to a worthy applicant for the registration of a mark in which the word "Cubanola" appeared, on the ground of possible deception to the public, owing to the fact that a very unworthy opponent had established a ridiculously small user of a lying mark which incorporated the same word.

The case differs from this in that the opponent did not himself apply for registration of his mark.

In the "golden fan" case-In re Trade Mark of John Dewhurst and Sons, Ltd., a Court of Appeal case (1896, 2 Ch. p. 137) -registration of words amounting to a verbal description of a mark already on the register, though the words were in the Burmese language and character, which are little known out of Burma, was refused on the ground that their use would be calculated to deceive, and to deceive in England.

The "Cubanola" case is one of a series of cases in which it was held that the use of a word, as distinct from a device, would be calculated to deceive.

The nearest parallel to the present case which has been cited is In the Matter of an Application by Notox Ltd. for a Trade Mark and in the Matter of an Opposition by Inecto Incorporated, 48 R. P. C. p. 168.

Notox Limited applied to register the word "Notox". (Indian Tatler to register "Tatler" as part of its trade mark in Kenya.)

The Notox application was opposed by Inecto, who alleged user by them of the mark in America and abroad. They had also sent out circulars (1,000) four days before the application to register by Notox Limited.

In the appeal before us, London Tatler has a large sale in England, and, I think it is conceded, abroad. It is not proved however that there had been any notification to the public in Kenya that London Tatler sold a cigarette under that name or was about to do so. It was not proved that any member of the Kenva public other than Johnson was aware of the existence of the London Tatler mark, though it was stated that some members of the public might know the mark through advertisement in English papers received in Kenya. In the Notox case there was evidence that four London hairdressers knew of the use in America of the mark, and there was the evidence as to the 1.000 circulars.

Notox Limited proved an intention to use the mark, and some small user prior to the application.

In this case the learned Judge has found intention coupled with some small user prior to the date of the opposition.

The mark of Indian Tatler is distinctive, and would not ordinarily be refused registration. The opponents, London Tatler, have had to rely on user abroad, i.e. in England and "all. over the world". But in none of the cases cited has mere user abroad been held sufficient to bar registration.

I am of opinion that the appellants are entitled to registration of their mark.

It was distinctive, and there has been user in Kenya, though small. The opponents have not brought forward evidence to show that the public in Kenya might be deceived. It is true that, through the action of London Tatler after the date of opposition, the public may be deceived for a short time in Kenya if London Tatler be removed as a mark, but that was a matter for them to consider. The position of the parties at the date of the application for registration is the criterion on which the case must be judged. It is for the Registrar to consider his public, and for the parties to safeguard their interests in each country. In my view the appeal should be allowed, and the appellants' original application be granted, and the mark of London Tatler be disallowed. I have read the order proposed by the learned Chief Justice of Tanganyika Territory, and agree as to the form of the proposed order.

LAW, Ag. C. J.-It is not necessary for me to recite the facts in this case, as they are clearly and sufficiently set out in the judgment of the Acting Chief Justice of Zanzibar. It is not disputed that on the 27th August, 1930, when appellants' application was filed, the Kenya Register was clear of any Tatler mark. The Registrar unconditionally accepted appellants' application and duly advertised it as required by section 12 of the Ordinance (Cap. 89 of the Laws of Kenya). It must be assumed therefore that there was nothing in that mark to render it unlawful for registration by reason of its being "calculated to deceive" or otherwise. An application for registration does not require to be supported by user except where the opposition

thereto also claims user. The appellants undoubtedly had a bona fide intention to use the mark, and actually did use it before the 27th August, 1930.

In effect, on that date, there was nothing on the Kenya Register to conflict with the appellants' mark, and it cannot be doubted that, but for respondents' opposition, it would have been registered in due course. When opposing the registration of appellants' mark, the respondents, at the same time, applied to have their Tatler mark registered. I am not concerned with the respondents' application, but only with their opposition to appellants' application. That opposition was based on a title under assignment from Carreras Limited, which title the Court of Appeal in England has since declared to be bad (see Vol. 149. The Law Times Reports, p. 417, dated the 7th May, 1932). It may be that respondents have other grounds on which to rely to support their title to the mark; it is said by their counsel that they have. Be this as it may, such grounds do not arise for consideration in this case. The respondents opposition has, however, been treated as one by "any person" under section 13 of the Ordinance, and must be considered accordingly. The Kenya Register, generally speaking, is independent of a similar register in any other territory. All such other registers, in my opinion, must be regarded as those of foreign countries. Nor would I except the Register of the United Kingdom from such a description.

The onus of showing that there is no likelihood of deception or confusion arising from the use of appellants' mark lies on the appellants themselves, and if there be any reasonable doubt as to this they cannot be said to have discharged this onus. In considering this question, I would adopt the sense of the language used by Luxmoore, J., in the case of Notox Ltd. (at pages 177 and 178, Vol. 48, 1931, Reports of Patent Cases). I would also apply, as that learned Judge did, the test applied by Tomlin, J., in Impex Electrical Limited v. Weimbaum, at page 410 of Vol. 44, 1927, Reports of Patent Cases, as follows: —

"For the purpose of seeing whether the mark is distinctive-and I think the same considerations apply where you are considering whether the particular mark is calculated to deceive or not-it is to the market of this country alone that one has to have regard. For that purpose, foreign markets are wholly irrelevant, unless it be shown by evidence that in fact goods have been sold in this country with a foreign mark on them, and that the mark so used has thereby become identified with the manufacturer of the goods. If a manufacturer having a mark abroad has made goods and imported them into this country with the foreign mark on them, the foreign mark on them may acquire in this country this characteristic that it is distinctive of the goods of the manufacturer abroad. If that be shown, it is not afterwards open to somebody else

to register in this country that mark, either as an importer of the goods of the manufacturer or for any other purpose. The reason of that is not that the mark is a foreign mark registered in a foreign country, but that it is something which has been used in the market of this country in such a way as to be identified with a manufacturer who manufactures in a foreign country."

It seems to me that the above test is not only invaluable but conclusive. At the date of the appellants' application there was no other Tatler mark on the Kenya Register, nor were respondents' Tatler cigarettes being sold in this country. In fact, the appellants' cigarettes could not then be calculated to deceive with regard to any other cigarettes. It is immaterial, in my view, that respondents should subsequently have introduced their Tatler mark cigarettes into Kenya; they cannot rely on such user. Nor can they be heard to say that a confusion is likely to arise owing to a possible similarity between the two marks, when they themselves would be responsible for any such confusion. In my opinion, regard has to be paid to the condition of affairs on the date of appellants' application. In the circumstances therefore I hold that on the 27th August, 1930, appellants' mark was not calculated to deceive anyone in Kenya. It appears to me that it is only the public of Kenya who require the protection of the Ordinance. If it should so happen that an applicant's mark is wrongly registered, by reason of having appropriated another's mark (which I do not agree for one moment is so in the present case), the aggrieved person has ample remedies under the Ordinance against the party at fault, as, for instance, by a "passingoff" action, or by prosecution under the Penal Code. It is always open to the Court to rectify the Register.

We have been referred to numerous cases, but on close perusal I do not consider that the peculiar circumstances of any of those cases can be said to have any particular application to this case. Prominent amongst those cases are Eno v. Dunn (1890, 15 A. C. 252), In re Havana Commercial Co. (1916, 33) Patent Cases, p. 399); Boord and Son v. Bagots, Hutton and Co. (1916, 2 A. C., p. 382); In re John Dewhurst and Sons (1896. 2 Ch. Dn. p. 137); The "Star" Case (1894, 1 Ch. Dn. p. 61), and Poiret v. Jules Poiret Ltd. and A. F. Nash (1920, 37 Patent Cases, p. $177$ ).

It is not suggested that respondents had concurrent user with appellants. They claim, however, special circumstances (see section 22 of the Ordinance) to entitle them to the registration of their mark, as well as the mark of the appellants. (In my opinion, no such special circumstances exist.

For the foregoing reasons, I would allow the appeal and dismiss the respondents' notice by way of cross-appeal. I would direct the appellants' mark to remain on the register and the respondents' mark to be expunged therefrom. I would award appellants the costs in this appeal and in the Supreme Court.

ORDER.—The order of the Court is that the appeal is allowed and the Registrar is directed to proceed with the registration of the appellants' trade mark without modification or limitation, and to remove the opponents' mark from the Register. The appellant will have the costs of the appeal and costs in the Supreme Court. The opponents' cross-appeal is dismissed with costs.