261
REPORTS OF PATENT, DESIGN AND TRADE MARK CASES
[1967]
10TH AUGUST, 1967
[No. 10]
BOARD OF TRADE
Before G. W. TOOKEY, Esq., Q.C.
21st February, 1967.
ELECTRICAL PROTECTION COMPANY (PROPRIETARY) LIMITED'S ApPLICATION
5
Trade Mark-Application to register mark with letters " EPC " interwoven with
a device of concentric circles-Visual distinctiveness-Mark containing fancifully
represented letters registrable if sufficiently distinctive-Appeal allowed as to Part B.
An application for the registration of a mark for electrical apparatus, the essential
features being the letters EPC in fanciful typography interwoven with a device of
10 five concentric circles, was rejected by the Registrar on the ground that although
the mark had some degree of visual distinctiveness, following the decided cases,
mere letters or initials were not distinctive within the meaning of section 9(1)(e)
or section 10 of the Trade Marks Act, 1938. On appeal to the Board of Trade:
Held, that the Registrar had taken too rigid a view of the effect of decided cases,
15 which were concerned with marks consisting substantially of initials represented
in an ordinary manner. On a finding of visual distinctiveness it followed that the
mark must be at least capable of distinguishing the applicants' 'goods unless some
other adverse factor had to be considered. The appeal was allowed with respect
to registration in Part B of the register.
20
W.& G. Du eros Ltd's Application (1913) 30 R.P.C. 660 and Ford-Werke
A.G.'s Application (1955) 72 R.P.C. 191 distinguished.
This was an appeal to the Board of Trade from a refusal by Mr. F. J. Ward Dyer,
acting on behalf of the Registrar of Trade Marks, to register a mark which appears
below and was applied for by Electrical Protection Company (Proprietary) Limited
25 under No. 863,,376. The facts of the case appear from the following decision which
was dated 12th August, 1966.
Mr. Ward Dye'r~On the 24th April 1964 Electrical Protection Company
(Proprietary) Limited, of 27, Railway Avenue, Benoni, Transvaal, South Africa,
a private limited liability company incorporated under the laws of South Africa,
30 manufacturers, applied for the registration of a trade mark in Part A of the
Register in class 9 in respect of "Electrical and electronic apparatus and instruments all included in class 9; protection relays, contactors, circuit breakers and
isolators, all being electrical; testing apparatus and instruments for use in industry;
and parts included in class 9 of all the: aforesaid goods."
35
The mark propounded is a composite one, consisting of the letters" EPC ", in
somewhat fanciful typography, through which is interwoven a device of a circle
made up of five thin, concentric lines, or alternatively a device of five more or
less equally spaced concentric circles. A representation of the mark is shown below:
262
[No. 10]
REPORTS OF PATENT, DESIGN AND TRADE MARK CASES
[1967]
Electrical Protection Co. Ltd.'s Application (Registration B.o.T.)
Objection was taken to the mark under the terms of section 9(1)(e) of the Act
on the ground that it was not distinctive. After a hearing, at which the applicant
was represented by Mr. Ellis Evans of Messrs. Edward Evans & Co., the applicant's
authorised agents, the application was refused, and I am now asked, under section
17(4) of the Trade Marks Act, 1938 and rule 35 of the Trade Marks Rules, 1938 5
(as amended), to state in writing the grounds of my decision and the materials
used in arriving at it. These are given as follows:
No evidence that the mark has become, or is, distinctive by reason of use or
other circumstances has been brought to my notice and I have therefore only the
10
prima facie case to consider.
It will not, I think, be disputed that the letters appearing in the mark are
intended to be representations of the letters "EPC". In my view this is not
obscured by the somewhat fanciful form in which they are shown and I think they
will be read as the letters "EPC" by persons seeing the mark for the first time,
whether or not they happen to know that they are the initial letters of the significant 15
part of the applicant's name. Moreover, these letters form by far the most prominent
element in the composite mark and, it seems to me, constitute the feature of the
mark which, in the words of the Master of the Rolls, in Saville Perfumery Ltd.
v. June Perfect Ltd. (1941) 58 R.P.C. 147 at 162, lines 6-7, "strikes the eye and
fixes itself in the recollection". The circle device, or device of circles, I am unable 20
to regard as distinctive in itself in view of the common use by traders. of circles
as borders or outlines within which to display trade mark or other matter, and
because, seen in isolation, I think the impression it would make on a person
seeing it for the first time upon or in relation to goods would be less that of a
trade mark than of a simple decorative pattern without other significance.
25
Looking at the mark as a whole, however, as I am bound to do, I concede that
in its totality it possesses some degree of visual distinctiveness. Nevertheless, the
prominence of the letters, which, though not shown in normal type, are quite
legibly the letters "EPC", seems to me to make it very likely that the mark will
be known in use as an "EPC" mark and that it would be named as such in oral 30
and written references to it in the course of trade. Since it is well established
that mere letters or initials lack inherent distinctiveness (see, for example, the
observations of Lord Parker in W. & G. Du Cros Ltd.'s Application (1913) 30
R.P.C. 660 at 672, lines 22-37) I must hold that the mark as a whole, primarily
characterised as it is in my view by the legibly, if not normally, presented 35
letters "EPC", is not distinctive within the meaning of section 9(1)(e) and so
does not qualify for registration in Part A of the Register.
263
[1967]
REPORTS OF PATENT, DESIGN AND TRADE MARK CASES
[No. 10]
Electrical Protection Co. Ltd.'s Application (Registration B.o.T.)
I have also considered whether the mark could be accepted under the terms of
section 10 of the Act, as one for registration in Part B of the register. If, however,
I am right in holding that the most prominent feature of the mark is a legible
representation of the letters "EPC" and that it would be likely to be known in
5 the course of trade by reference to these letters then it seems to me that because
other traders may legitimately use the letters "EPC" in the course of trade in
relation to goods covered by the present application the mark, as a new and
unused one, does not sufficiently distinguish the applicant's goods from the similar
goods of such other traders to enable me to regard it as inherently "capable of
10 distinguishing" within the meaning of section 10, and thus does not qualify for
registration in Part B of the register. Moreover, other traders in goods covered
by the present application who have not yet used the letters "EPC" in relation
to their own goods may nevertheless and in good faith wish to do so, and, should
be free to do so, and in my view registration of the present mark, even in Part
15 B of the register, would tend to inhibit, or trespass upon, their legitimate freedom
in the matter (see the observations of Lloyd-Jacob, J. in American Screw CO.'s
Application [1959] R.P.C. 344 at 346, lines 37-39).
The application is accordingly refused under the terms of section 17(2) of the
Act because the mark fails to satisfy the requirements of section 9 or section 10
20 of the Act.
The applicants' appeal to the Board of Trade was heard by G. W. Tookey, Esq.,
Q.C. on 8th February 1967. John Burrell, instructed by Edward Evans & Co.
appeared for the applicants.
. Tookey, Q.C.-This is an appeal to the Board of Trade under section 17 of the
25 Act from a decision of Mr. F. J. Ward-Dyer, acting for the Registrar, dated 12th
August 1966, whereby he refused the application on the ground that the mark
applied for failed to satisfy the requirements of section 9 or of section 10 of the Act.
The mark, which was applied for on the 24th April 1964, has been described
by the Registrar as:
30
"a composite one consisting of the letters 'EPC " in somewhat fanciful
typography, through which is interwoven a device of a circle made up of
five thin concentric lines, or alternatively a device of five more or less equally
spaced concentric circles."
A representation of the mark is set out in the Registrar's decision. The mark is
35 sought to be registered in respect of a wide range of electrical goods in class 9.
The Registrar formed the view that, looking at the mark as a whole, he was
bound to concede that in its totality it possessed some degree of visual
distinctiveness. Nevertheless he has refused registration either in Part A or in
Part B of the register substantially on the ground that the mark will be known in
40 use as an "EPC" mark, and named as such in oral and written references to it
in the course of trade, and that since mere letters or initials lack inherent distinctiveness, the mark in not inherently adapted to distinguish or capable of
distinguishing within the meaning of the Act.
Upon the hearing of this appeal, Mr. John Burrell on behalf of the applicants
45 contended that the mark was purely a visual one, and that on the basis of the
Registrar's finding that the mark as a whole possessed some degree of visual
distinctiveness, the application ought to be allowed for registration in Part A or
at least in Part B. He claimed that there was far more in the applicant's device
than in the marks sought unsuccessfully to be registered in the W & G case
264
[No. 10]
REPORTS OF PATENT, DESIGN AND TRADE MARK CASES
[1967]
Electrical Protection Co. Ltd.'s Application (Registration B.o.T.)
(W.& G. Du Cros Ltd.'s Application (1913) 30 R.P.C. 660) or in the F-K case
(Ford-Werke A.G.'s Application (1955) 72 R.P.C. 191), and that nothing was
decided in those cases which would indicate that the applicant's mark in the
present case was unregistrable as a new mark.
Mr. Ward Dyer, who appeared for the Registrar, emphasised the objection to 5
which he considered the mark was open on the basis that, taking into account
oral as well as visual use, it was no more distinctive than the letters EPC and that
registration would deter other persons from using the letters EPC in ordinary
form in connection with a wide range of goods.
Generally the practice on appeal is to regard the question of registrability of a
mark such as the present one as being for the Registrar to deal with in the light
of his experience and the tribunal would not seek to interfere with the decision to
which he has come merely because it might have assessed the mark differently. In
the present case, however, I consider that the Registrar has been deterred from
following up his finding that the mark has in its totality some degree of visual
distinctiveness by too rigid a view of the effect of the decided, cases. The conclusion
that the mark is at least capable of distinguishing is a natural corollary of such
finding unless some other relevant and adverse factor has to be taken into consideration. I can find no such factor. The marks concerned in the W & G and F-K
cases referred to above consisted substantially of initials represented in an ordinary
manner, and it is to be noted that there were only two initials in each case, although
I do not suggest that there is any particular magic about three as compared, to
two. The capability of distinguishing, however, may well be increased as the detail
of the mark increases. I would say that in the present case the mark is primarily
a visual mark and has strong and original characteristics. The circles are an integral
part of the design and the blocked-in elements, although identifiable as representing
the letters EPC, particularly if one is aware of the initials of the applicant's corporate name, are quite fanciful in character, looking more like an arrangement
of bent tubes than any known fount of type. It is for these reasons that I find it
difficult to say that the mark is not at least capable of distinguishing the applicant's
goods even on the assumption that it has to take its place among various uses of
the initials EPC by other persons in the same line of business. I consider that is
the right conclusion, and that it does not conflict with any rule laid down in the
cited cases.
10
15
20
25
30
I therefore decide that the appeal should be allowed and that the Registrar should 35
be directed to proceed with the application for registration in Part B.