476
REPORTS OF PATENT, DESIGN,
[Aug. 3, 1898.
Hodgson and Simpson v. Kynoch, Ld.
wrappers above mentioned in their present forms with the lions' heads upon them,
or so as to induce the belief that any of such soaps were manufactured by the
Plaintiffs. Then, though no actual case of a purchaser being misled into buying
the Defendants' instead of the Plaintiffs' soap has been proved before me, I
think if the Plaintiffs insist upon more than nominal damages and ask for an
inquiry as to damages, I must grant such an inquiry, reserving the costs of it.
Then as the Plaintiffs have substantially succeeded in the action, their costs
must be paid by the Defendants.
The Plaintiffs asked for a separate injunction, restraining the Defendants from
infringing the Plaintiffs' Trade Marks. But I cannot __ se~ that what the
Defendants have been doing amounts to an infringement of any Trade Mark of
the Plaintiffs which has been used by them on their soap as a Trade Mark.
The word . , Lion," for example, has never been used as a Trade Mark by the
Plaintiffs, so far as appears by the evidence, and certainly that word is not used
by the Defendants on their soap, wrappers, or boxes. I do not, however, think
that the costs of the action have been materially increased by the special claim
as to the Trade Marks, so as to require any special order with reference thereto.
Neville, Q.C.-May we have, instead of an inquiry as to damages, an account
of profits?
ROMER, J.-N0 certainly not. I think it would be most unjust in this case:
Do you ask for the inquiry as to damages?
Neville, Q.C.- Yes.
Walte1"'.-Would your Lordship stay the injunction for a short time-I do
not suppose there will be any question of appeal-that I do not know-in order
to enable us to obey your Lordship's order?
ROMER, J.-I think that seems reasonable, Of course, the inquiry as to
damages, if taken, will continue until such time as you stop your wrappers.
I think you ought to have a month to do this.
1
5
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IN THE HOUSE OF LORDS.
Present: THE LORD CHANCELLOR, LORD HERSCHELL, LORD MACNAGH'fEN, 30
LORD MORRIS, and LORD SHAND.
Ju~e
24th and 28th, and July 15th, 1898.
IN THE MATTER OF AN ApPLICATION OF THE EASTMAN PHOTOGRAP'HIO
MATERIALS COMPANY, LD., FOR A TRADE MARK.
Trade Mar~.-A?lJlication to register <Solio " in respect of 1}hotog1"a1Jh1~c 35
paper. - I!egts~1"atzon refused by Comptroller. - Practice in Patent Office
as to devices and words relatinq to the sun. - Appeal to House of Lords
Vol. XV., No. 19.]
AND TRADE MARK CASES.
477
In the Matter of an Application of The Eastman Photographic
Materials Company, Ld., for a Trade Mark.
allowed. -s-Lnuented word.- Word having no reference to the character or
quality of the goods.-Patents, lbc.Act, 1888, Sect/ion 10. -
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The Applicants applied to register the word " Solio" in Class 89 for photog'l'aphic paper. The Comptroller-General refused to register the word, on. the
ground that it was the practice of the Patent Office to refuse any device of
the sun, or any word indicating the sun, in connection with photographic
materials, as having some reference to the quality or character of the goods.
The Applicants appealed from the decision of the Comptroller, and the appeal
'was referred to the Court. 'Held, by Kekewich, J", (1) that unless there was a
manifest error, it ioas not convenient to reverse the practice of the Patent
Office; and (2) that the word" Solio" would be understood to refer to the sun,
and that, as applied to photographic paper, it was not a word having no
reference to the character or quality of the goods. The Applicants appealed to
the Court of Appeal, who held that" Solio " toas an invented word. But that
as applied to photographic paper it had some reference to the character or
quality of the goods, and therefore could not be registered. The appeal was
dismissed, with costs.
The Applicants appealed to the Hou.~e of Lords.
Held, by the House of Lords :-(1) That an invented word may be reqietered,
although it has reference to the character or q1tality of the guods. Sub-sections
(d) and (e) of Section 10 of the Act of 1888 are to be construed as distinct and
alternative. The" Somatose" case (In re Farbenfabriken vormals Fried,
Bayer, and Co.'s Application, 11 R.P.C. 84 disapproved. (~) That U Solio"
was an invented .uord, (8) That it was .also a word having no reference to
the character or 1uality of the goods in question. (4) That there i3 no iurisdiction to order the Comptroller to pay costs.
By the LORD CHANCELL,OR.-The report of the Departmental Uommittee of
1887 mall be referred to in order to ascertain what mischief the Act of 1888
was directed to r~111t8dy. By Lord HERSCHELL.-The decisions before the
Act of 1888 afford no assistance in the construction of sub-sections (d) and
(e) of the Act of 1888. The quantum of invention in an invented word is
immaterial. By Lord MACNAGHTEN.-It is no objection to an invented word
that it may be traced to a foreign source, or that it may contain a covert
allusion to the character or qu'ality of the goods. It need not be wholly
meani1lgless. .
The judg,nents of Kekewich, J., and the Court of Appeal, reversed.
On the 13th of July 1892, The Eastman Photographic Materials C!ompany, Ld.,
applied to register the word" 8olio" as a Trade Mark (No. 165,946 in Class 39)
for photographic printing paper.
40
On the 29th of July 1892, objection was taken by the Comptroller to the
registration applied for, on the ground that the. word "801io" was a word
having reference to the quality of the goods. The Applicants did not ask
for a hearing or dispute the suggested foundation of the objection, and the
application was treated as finally refused. Since that-rejection, " Solanite " had
45 been allowed by the Comptroller to be registered for all the goods in Class 39
(No. 183,255). This mark was standing on the Register in the name of Aliott,
Jones, and 00.
REPORTS OF PATENT, DESIGN,
- 478
In
[Aug.:3, 1898.
an Application of The Eastman Photographic
the Matter of
Materials
Oon~pany, .ia;
for a Trade Mark.
On the 18th of May 1895, The Eastman Photographic Materials Oompany, Ld.,
again applied to the Comptroller-General to register "Solio" in Olass 39 for
photographic paper, prepared.and sold by them for the purpose of printing
from photographic negatives. On the 30th of May 1895, a preliminary objection
was taken by the Comptroller that (1) the mark did not consist of any of the 5
essential particulars required. by the Patents, &c. Act, 1888, Section 10, as a
condition of registration; (2) as stated in connection with the application
No. 165,946, " Solio " had, in the Oomptroller's opinion, reference to the quality
or character of the goods; and (3) it was open to objection, under Section 72 of
the Patents, &c. Act, 1883, in view of " Solanite," No. 183,255.
10
On the 19th of July 1895, the application having been .heard before the
Registrar of Trade Marks, who consented to reconsider the objection to
" Solio "on the ground of its reference to the character or quality of the
goods, registration was .finally refused.
The Applicants appealed to the Board of Trade, who referred the matter to 15
the Court. Notice of motion was given on the Lith of April 1896, asking for
an order directing the registration to be proceeded with. This was served on
Allott, Jones, and 00., as well as on the Comptroller-General, but Allott, Jones,
and 00. did not appear. The objection based upon the Trade Mark" Solanite "
was not raised on behalf of the Comptroller at the hearing.
20
It was stated in an affidavit made by the Registrar of Trade Marks 3.S follows : "(3) It is the practice of the Office to refuse registration, as Trade Marks in
" respect of photographic papers, of words which consist merely of the word
" , Sun,' or its equivalent' Sol,' or of either of those words, with the addition of
" some ordinary termination or affix. (4) It is, I think, common knowledge 25
Uthat the sun's light is an important factor in printing on photographic paper,
'It'and is popularly associated with theprocesses of photography; and I consider
" that, used in connection with photographic paper, the word 'Sol,'any
" compound word consisting principally of the word' Sol,' would generally be •
" taken, and I myself should take it, as having some reference to the character 30
" or quality. of the goods. The word 'Sun' and the device of the sun are in
" use in the trade, as appears from various marks on record at this Office."
Themotion was heard by Mr. Justice Kekewich on the 6th of November lR96,
when he held (Ijthat unless there was a manifest error, it was not convenient
to reverse the practice. of the Patent Office; and (2) that the word "Solio"· 35
would beunderstood to refer to the sunv and that, as applied to photographic
, paper, it was not a word having no referenceto the character or quality of the
.goods." The Applicants appealed to the Court of Appeal, who held that" Solio"
was an invented word, but that as applied to photographic paper it had some
reference to the character or quality of the goods, and therefore could not be 40
registered.] The appeal was dismissed, with costs. The Applicants then appealed
to the House o.f Lords. The appeal now came on for hearing.
Moulton, Q.C., and 1). M. Kerly (instructed by Bird, Moore, and Strode)
appeared for the Appellants; Sir R. Webster, A.G., Sir,R. B. Finlay, S.G., and
Ingle Joyce (instructed by the Solicitor to the Board of Trade) appeared for the 45
Comptroller.
Moulton, Q.C., and D. M. Kerly.--The real issue infhis case-whether
the word" Solio" is registerable or not-has never 'been tried, because the
Courts below held themselves bound by their previous decisions. The
constructionof the 10th section of the Act of 1888 now comes before the House 50.
of Lords for the first time. The Courts have held that sub-section (d) is to be
. Iimited by-reference to sub-section (e). We say these Bub-sections are not only
distinct, but contrasted. The reason for Iimiting the .right to register existing
or
-
-----------------------------..;..~-_.
* 13 R.P.C. 707.
t
14 R.P.O. 4-f1t7.
Vol. XV., No. 19.J
AND TRADE MARl{ CASES.
479
In the Matter of an Application oj The Eastman Photoqraphic
Materials Comparur, Ld., jar a Trade Mark.
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words is obvious, but it has no application in the case of newly-coined words :
that is to say, words never before in use. [Lord HERSCHELL.-You may choose
any known word, provided it has no reference to the character or quality of the
goods; but if you choose a new word, there is no such restriction.] The history
of the case shows that the Act of 1888 was intended to let in words excluded
before, and to make a fresh start. The rule laid down in Van Duzer's case
(4 R.P.C. 31, L.R., 34 Ch.D. 623) had unnecessarily narrowed the area of choice,
and traders had been driven to rely on unregistered Trade Marks. The decisions
of the Courts, beginning with the Satinine case Iri re Meyerstein's Trade Mark
(7 R.P.C. 114, L.R., 43 Ch.D. 604), and especially the Sornatose case (11 R.P.C. 84),
have made the amending- Act abortive. [The LORD CHANCELLOR.-In the
Somaiose case Smith, L.J., said that "Soma.tose" was not an invented word,
because "Somatic" is in the dictionary.] Further, we say "Solio" has no
reference within the meaning of sub-section (e). If it is necessary to justify-it
under that sub-section, the alleged practice of the Office is without warrant
under the Act, and, moreover, is not made out in fact. " Solio" refers to
nothing. It tells nothing. It is wrong arbitrarily to divide a word and reject
it because a fragment taken by itself may have some reference. "Solio" has
nothing to do with photography or even with light. At most it contains some
suggestion of the sun. [Lord HERSCHELL.-I should doubt very much
whether it would occur to the great majority of people that" Solio" suggests
" Sol" or that it had to do with light. If you see" Solio " in connection with
photographic paper the majority of people would not work it ont and say that
it was" Sol." Lord SRAND.-People who know that" Sol" means sun; but
there are thousands of people who do not know that. Lord IIERSCHELL.--I
knew that " Sol" meant sun, but I never dreamt of it in this connection until
I read the judgments.]
Sir R. Webster, A.G., and Sir R. B. Finlau, S.G.-There are two questions
here which are quite distinct. One is, whether or not your Lordships will
decide that an invented word may be a descriptive word, and the other is
whether or not the word" Solio " comes within ·the objections which have been
raised either under clause (d) or clause (e). Before arguing on what is the
meaning of the Act, we desire to call attention to what the practice of the Office
has been. There are thousands of words that are accepted every year, and
thousands that are rejected. It is with regard to the words which come near
the line that the difficulty arises. It may be wrong or may be right to regard
"Bolio" as being a word of description. The question really is whether or not
ordinary people would understand" Solio ". to refer to the sun, and therefore
the word ~'Solio" is something connected with the sun. "Sol" is in the
English dictionary as an English word. There are quotations in which the
word is used. There is the word "Solar," and you have a number of
words in which "Sol" is connected with the sun or intended to convey
the idea of the sun in the English language. We agree that the word
ought not to be considered in connection with the article until you have
ascertained what the word is; but, on the other hand, when a person
applies to register a particular word for a particular article only, it does
then come to he material how it will be regarded in the trade. The
question is whether ordinary people would understand "Solio" to refer to
the sun. The evidence is that pictures of the sun, and marks containing
references to the sun, are commonly used in connection with photographic
businesses. "Solio" is the same as "Sunio". If" Solio" can be registered,
why not "soliograph," and why not heliograph? [Lord MORRI8.-Heliograph is all right; how does soliograph affect heliograph?J The point would
be whether heliograph is or may be descriptive of the goods. [The LORD
C·HANCELLOR.-1Iy difficulty is that I do not see why any 'of these should not
480
REPORTS OF PATENT, DESIGK,
[Aug. 3, 1B98.
In the Matter of an Application of The Eastman Photographic
Materials ,Company, Ld., j01 a Trade Mark.
11
be registered.] [Several Trade Marks, which had been applied for, were then
mentioned to their Lordships, some of them had been registered, and some
refused. Among the latter one comprising a device of the Sun and" Lux est
vita ".] [Lord HERSCHELL.-Why should Lux est vita be refused? ] We say
that an invented word to be capable of registration must not be descriptive.
If the Appellants are right, then any invented word must be accepted, however
descriptive. Take such a word as" Phiteesi." Is that an invented word?
[Lord HERSCHELL.--Probably not, because it is a mere mis-spelling. It
suggests at once the English words. Why is not any word which has never
been used before, and which does not readily convey to most people (not
to one or two) a particular meaning, an invented. word?]
[The LORD
CHANCELLOR.~What do you say" Solio" means?] Paper sensitive to the
sun. [Lord HERSCHELL.·-There is nothing about paper in it, What does it
mean' in the abstract?] "Solio" means connected with the Sun. [Lord
HERSCHELL then read the passage from the report of the Departmental
Committee of 1887, which is set out in the LORD CHANCELLOR'S judgment,
and added: I don't read it in support of the Appellants' contention; but why
is not the distinction between existing English words and invented words
there suggested a sound one? Invented words deprive no one of anything.]
If "Sol" suggests the sun, there would be an objection because other people
might want to use the word "Sol" or its compounds. [Lord HERSCHELL.What harm is there in preventing them if the word is not common property?
There may be something in an invented word -to suggest an idea, but why
not ?J If there is anything to suggest an idea of the goods it is not an
invented word. [Lord SRAND.-That is to import something which is not in
the Act.] The House is asked to overrule a long series of decisions that
descriptive words are not Trade Marks upon which the Registry has acted. The
Satinine and Somatose cases (see above), and the Mazawattee case In re
Densham and Sons Trade Mark,12 R.P.C. 271, L.R. (1895), 2 Ch. 176, were
referred to, and also the Bovril case, 13 R.P.C. 382, L.R. (1896), 2 Ch. 600.
[Lord HERSCHELL.-The Act of 1888 was intended to make a fresh start.] A
word is not invented merely because it has never been used before. [The
LORD CHANCELLOR.-Not if merely compounded so as really to give a statement of quality, and so that it has a meaning. "Cheap-and-good" would not do.
It would be a mere evasion.] Such words as "phonograph," ., photograph,"
and" cordite" are not invented words within the Act, although they were
newly coined. [The LORD CHANCELLOR.-They are known words now, but
why should they not have been appropriated as Trade Marks when they were
first invented? Such a word as "water-proof" would not have done from
the first] [Lord HERSCRELL.-I should not call that an invented word. The
word" Solio " by itself conveys to nobody an idea. When you find it is used
with regard to photographic paper you might spell it out, and you might think
of "Sol" the sun or might not, and if it were used with reference to boots,
you might think it had reference to the sole of the boot, and if it were used in
reference to the earth, you might think it was from" Solum" the soil, but that
would depend upon the idea suggested by the connection in which it was used,
not by the word itself.] The idea suggested may be always very vague until
one knows to what it is applied. [Lord HERSCHELL.-Not necessarily.] No
doubt "Solio" is a border word. Anyone who is acquainted with Latin
would be misled by the termination, and. might not therefore connect it with
" Sol." [Lord MACNAGHTEN.--To appreciate the reference you find in it,
one must know a little Latin.] [The LORD CHANCELLOR.-I should have
doubted whether the fact that a word which was in unfamiliar language
would not prevent the mischief aimed at by the sub-section (e). Take
"Cyanochaitanthropopoion," the name of the hair-dye in Mr. Warren's novel,
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Vol. XV., No. 19.]
AND TRADE MARK CASES.
481
In the Matter of asi Application of The Eastman Photoqraphic
Materials Cornpany, Ld., for a Tirade Mark.
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"Ten Thousand a Year." A. monopoly of that word would not hamper other
traders.]
[Lord HERSCHELL.-Who is hurt if there is a reference to the
sun? You get the idea of a reference by knowing for what goods it is used,
not an idea of the character or quality of the goods for which it is intended
from the word.] 'I'he fact that the descriptiveness would be understood only
by one class of the community does not remove the objection, at any rate when
you are dealing with sub-section (e). That was decided in theSoJnatose case.
[Lord HERSCHELL.-I should have thought Somatose an excellent illustration
of an invented word.] As regards costs, if the appeal is allowed there is no
jurisdiction to order the Comptroller to pay costs. He represents the Crown.
The rule is to give him costs, even when the decision is against his contention.
(In re Rotherham'« 'l~rade ll£ark, L.R., 14 Ch. D. 58;>.)
Moulton, Q.C., in reply.-[The LORD OHANCELLOR.-The House only wishes
to hear you on the last point. Oosts cannot be given against the Orown except
by Statute.] We cannot refer to any Statute upon this matter. The costs paid
to the Oomptroller under the Orders appealed from ought to be returned in
any event.
The LORD CHANCELLO:a.-My Lords, this is an appeal from the ComptrollerGeneral of Patents, Designs, and Trade Marks, who has refused to the
Appellants to perrnit the word" Solio" to be registered as applicable to their
photographic paper. Before dealing with the decision itself, I think it desirable,
from what occurred in the course of the argument, to say something as to what
sources of construction we are entitled to appeal to in order to construe a
Statute. Among the things which have passed into Canons of construction
recorded in Heydon's case, 3 Reports, we are to see what was the law before the
Act was passed, and what was the mischief or defect for which the law had not
provided-what remedy Parliament appointed, and the reason of the remedy.
N ow, the law before the Act now in question was passed was one which had
given rise to considerable litigation, and is contained in Section 64 of the
Patents, Designs, and Trade Marks Act, 1883. Section 64 of that Act provided
that a Trade Mark II1USt consist of or contain at least one of the following
essential particulars-sub-section (c): "A distinctive device, mark, brand,
" heading, label, ticket, or fancy word or words not in common use." That
was the law passed in 1883, and on the 24th of February 1887, a commission was
appointed to enquire into the duties, organization, and arrangements under the
Trade Marks Act so far as related to Trade Marks and Designs.
It appeared by the report of the Commissioners that complaints had been
made as to the working of the Act of 1~83, and in that part of the report
relevant to the present controversy it is stated that "the most difficult question
,,' which has arisen upon the enactment under consideration is to determine what
"may be properly regarded as 'fancy words.' Words are, undoubtedly'! a most
"popular form of Trade Mark,but some limit must obviously be put upon the
"words which an individual may be permitted to register and claim the exclusive
" use of. The expression' fancy wcrds ' is certainly not a happy one, and has
"naturally given rise to considerable differences of opinion as to its meaning."
The report proceeds: "It is manifest that no one ought to be granted the
" exclusive use of a word descripti ve of the quality or character of any goods.
" Such words of description are the property of all mankind, and it would not
" be right to allow any individual to monopolise them and exclude others from
"their use. Again geographical words, which can be regarded as descriptive of
" the place of manufacture or sale of the goods, are open to obvious objections.
" One manufacturer or merchant cannot properly be allowed to prevent all his
" competitors from attaching to their goods the name of the place of their
" manufacture or sale. The mischief would not be the same where the person
"seeking to register was the first 'v ho had manufactured or sold the goods in
482
REPORTS OF PATENT, DESIGN,
[Aug. 3, 1898.
In the Matter of an Application of The Eastman Photographic
Materials Companu, Ld., for a Trade Mark.
" the place the name of which he seeks to appropriate as a Trade Mark. But
" there are objections to giving a monopoly even in that case; and to attempt
" to draw any such distinction would be likely to lead to difficulty and litigation.
"We think, therefore, that geographical names ought only to be permitted
" where they clearly could not be regarded as indicative of the place of manu" facture or sale. We would add upon this point that we think that where any
"English word would be rejected as not entitled to registration, no person
" ought to be permitted to register its translation into any other language. The
"qnestion has been raised whether a word having the same sound as one
" entered on the Register, though differently spelt and with a different meaning,
" should be registered. The question in such a case would seem to be whether
" the resemblance between the old mark and that applied for was such as to be
" calculated to deceive; if it were it ought, of course, to be rejected." My
Lords, I think no more accurate source of information as to what was the evil
or defect which the Act of Parliament now under construction was intended to
remedy could be imagined than the report of that Oommission.
Lord Justice Turner, in Hawkins v. Gathercole (6 De Gex Macnaghten and
Gordon, page 1), and adding his own high authority to that of the Judges in
Siradlino v. 1J;Iorga1~, 1 Plowden, page 204, after enforcing the proposition that
the intention of the Legislature must be regarded, quotes at length the Judg:~l,"®ent in that case :-" 'I'hat the Judges must collect what that intention is by
'" considering the cause and' necessity of making the Act, sometimes by foreign
" circumstances" (thereby meaning extraneous circumstances), "so that they have
" ever been guided by the intent of the Legislature, which they have always
" taken according to the necessity of the matter, and according to that which is
" consonant to reason and good discretion;" and he adds: ,~ We have therefore
" to consider not merely the words of this Act of Parliament, but the intent of
" the Legislature, to be collected from the cause and necessity of the Act being
"made, from a comparison of its several parts, and from foreign (meaning
" extraneous) circumstances so far as they can justly be considered to throw
" light upon the subject."
Lord Blackburn, in The River lVea1" Commissioners v. Adamson (2 R. App.
Cas. 743), says :--" In all cases the object is to see what is the intention
" expressed by the words used. But, from the imperfection of language, it is
"impossible to know what that intention is without inquiring further, and
" seeing what the circumstances were with reference to which the words were
" used, and what was the object, appearing from those circumstances, which
" the person using them had in view."
My Lords, it appears to 111e that to construe th~ St~tute no"\\! in ql1esti()n, it is not
only legitimate, but highly convenient, to refer both to the former 'Act, and to
the ascertained evils to which the former Act had given rise, and to the later
Act which provided the remedy. These three things being compared, I cannot
doubt the conclusion.
N ow, th~,,5~pJec~i()np()inted outby theOo:gl~i<~s!()ner~)'T~sthat a particular
individual could not be permitted to take exclusive possession of any part of
our language; and this objection appears to have been in the mind of the
framers of the earlier Statute when they made the.. l?H-:r~~~.~.=' fancyword " part of
the definition of what might be registered as a Trade Mark, It was the use of
that phrase and its accompanying qualification which gave rise to much litigation, and I am certainly not disposed to hold that cases decided under that Act
canhaye .any bearing upon the construction of that part of. the Act now under
construction, which was obviously intended as an alteration and amendment of
the former Act. The present Act provides, among other things, by Section 10,
that a Trade Mark must consist of or contain at least certain particulars, one
of which is "an invented word or invented words." This word" Solio " is
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Vol. XV., No. 19.J
11~
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~O
oS'
AND TRADE MARK CASES.
483
the Matter oj an Application of The Eastmasi Photographic
Materials Companu, Ld., for a Trade Mark.
claimed to be an invented word; and it has been adjudged not to be an invented
word, and apparently (though I think the association of the two things involves
an incorrect construction of the Statute) because it is a word which has reference
to the character or quality of the goods.
My Lords, I think it is an invented word within the meaning of this Statute.
I know of no such word as "Solio" in any sense which would make it
intelligible here, although it is an Italian word meaning a throne, and although
it is a Latin word in the ~blative case with the same meaning.
Not much reliance, however, is placed upon the word having some meaning
in a foreign tongue; but what is put is that it may have extracted from it some
meaning in relation to the character or quality of the goods, because the letters
S, 0, L may be understood to mean the sun (it is true that Shakespeare
in "Troilus and Cressida " speaks of our planet" Sol,") and that inasmuch as the
goods in question are photographic papers and sunlight is operative in producing
impressions on photographic paper, it comes within the prohibition against
using words which are descriptive of the character or quality of the goods
in respect of which the word is sought to be registered.
My Lords, my answer is that "Solio " is not " Sol," and" Sol" is not" Solio."
It certainly is a very strange thing that you should take three letters out of a
word, and by the somewhat circuitous process that has been adopted here, arrive
at the conclusion that it is not an invented word, and that it does describe the
character and quality of the goods. My Lords, I desire to give my opinion
with reference to the particular word, and not to go behind it. I can quite
understand suggesting other words-compound words, or foreign words-c-as to
which it would be impossible to say that they were invented words, although,
perhaps, never seen before, or that they did not indicate the character or quality
of the goods, although as words of the English tongue they had never been seen
before. Suppose a person were to attempt to register as a single English word
" Cheapandgood " or even, without taking so gross an example, using a word so
slightly differing from an ordinary and recognised word as to be neither an
invented word nor, avoiding the prohibited choice of a word.vindicating
character or quality. The line must be sometimes difficult to draw ; but, to my
mind, the substance of the enactment is intelligible enough, and the Comptroller
has to make up his mind whether in substance there has been an infringement
of the rule. Of course, also, words which are merely misspelt but which are
nevertheless in sound ordinary English words, and the use of which may tend
to deceive, ought not to be permitted.
I am satisfied in this case to say that the word " St)lio " is an invented word,
that it does not indicate the character or quality of the goods, and that the
decision of the Court of Appeal ought to be reversed.
Lord HERSCHELL.-My Lords, the Coruptroller-General of Patents, Designs,
and Trade Marks having refused to register" Solio" as a Trade Mark in
respect of photographic paper, .the Applicants, who are the Appellants at your
Lordships' bar, appealed to the Board of Trade, who referred to the appeal of
the Court. Mr. Justice Kekewich held that the application had been rightly
refused, and his judgment was upheld by the Court of Appeal.
The ground upon which the Court proceeded was that the word " Solio " had
reference to the character or quality of the goods, and was therefore incapable
of registration. The Court of Appeal held itself bound by a previous decision
of the same Court in the case of In re Farbenjabriken Application, L.R., 1,
Chancery 1894, 645, to hold that an invented word could not be registered if it
had any reference to the character or quality of the goods. The question turns
upon the construction of the section which, by Section 10 of the Act of 1888,
is substituted for Section 64 of the Patents, Designs, and Trade Marks Act
of 1883.
. ,
484
REPORTS OF PATENT, DESIGN,
[Aug. 3, 1898.
In the Matter of an Application of The Eastman Photographic
Materials Oompany, is; for a Trade Mark.
The section to be construed provides that a TradeMark" must consist of or
"contain at least one of the following essential particulars." Then follow
seven particulars distinguished by the leters (a) to (e). The last two of these
are as follows :-" (d) An invented word or invented words, or (e) A word or
" words having no reference to the character or quality of the goods and not
" being a geographical name."
Before considering the effect of this legislation, I think it is well to refer to
the fact that these t\VO particulars of which a Trade Mark may consist were
not to be found in the Act of 1883. On the other hand, "fancy word orwords
"not in common use," which were amongst the essential particulars in
Section 64 of the Act of 1883, are not to be found in the substituted section.
It had been held that they did not cover words that were descriptive, and
the section had given rise to much litigation and some divergence of judicial
opinion. I cannot doubt that this was the origin of the legislation by which
the words appearing in the principal Act were omitted, and the. provision
found in the later Act substituted.
In the Farbenjabriken case, Mr. Justice North said he did not see how he
could hold" Somatose" to be an invented word under sub-section Cd), having
regard to the decisions with respect to such words as "Herbalin," "Washerine,"
and ,;, Val vol ine.'
All these decisions had reference to the provisions of
Section 64 of the Act of 1883 with regard to fancy words, In my opinion, none
of the decisions upon that part of the original section have any bearing on t.he
new provisions to be found in the substituted section, the purpose of which
was, I think, to get rid of the expressions which had occasioned much
embarrassment, and of all the distinctions and decisions which had been
founded upon them. Those decisions, so far from affording any guide to the
true interpretation of the particulars designated (d) and (e), are likely to lead to
error if applied to these new provisions.
Addressing myself, then, to the terms of the substituted section, I am unable
to find any justification for qualifying the provision" (d) an invented word
" or words " by the condition that they shall have no reference to the character
or quality of the goods.
By the words which introduce the section, the particulars designated
under the headings (a) to (e) are treated as separate and distinct. " A Trade
" Mark must consist of at least one of the following essential particulars."
What warrant is there, then, for transferring words found in anyone of these
particulars to any other of them? With all deference to the learned Judges
who have thought otheflwise, I can see none. It seems to involve an
interpretation of the language used which is not its natural grammatical
construction. In the Farbenfabrikeri case, Lord Justice A. L. Smith. said:"It is impossible, I think, to hold that the Legislature intended that an
" invented word might be a word having reference to the character or quality
" of the goods, whereas a non-invented word might not. There would be no
" sense in so holding." I am unable to agree with this view, There seems
to me to be the broadest distinction between the two cases. Under (e) any
word in the English language may serve as a Trade Mark; the commonest
word in the language might be employed. In these circumstances it would
obviously have been out of the question to permit a person, by registering
a Trade Mark in respect of a particular class of goods, to obtain a monopoly
of the use of a word having reference to the character or quality of those
goods. The vocabulary of the English language is common property; it belongs
alike to all; and no one ought to be permitted to prevent the other members
of the community from using, for purposes of description, a word which has
reference to the character or quality of the goods.
If, then, the use of every word in the language was to be permitted asa Trade
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55
Vol. XV., No. 19.]
AND TRADE MARK CASES.
485
In the Matter of'an. .Appiication of The Eastman Photoqrapliic
Materials Company, Ld., for a Trade Mark,
Mark, it was surely essential to prevent its use as a. Trade Mark where such use
would deprive the rest of the community of the right which they possessed to
employ that word for the purpose of describing the character or quality of
goods. But with regard to words which are truly invented words-words
;) newly coined, which have never theretofore been used-the case is" as it seems
to me, altogether different; and the reasons which required the insertion of the
condition are altogether wanting. If a man has rightly invented a word to
serve as his Trade Mark, what harm is done, what wrong is inflicted if others
be prevented from employing it, and its use is limited in relation to any class
10 or classes of goods to the inventor? So far, then, from seeing no reason for
a distinction between the particular designated in Cd) and Ce), there seems to me
abundant reasons for not interpolating in Cd) words which the Legislature has
used only in relation to Ce).
In a later part of the judgment, to which I have already referred, Lord
15 Justice A. L. Smith says, that to constitute an invented word within the
meaning of the section it must be a word coined for the first time, "Such a
" word," he says, " is of necessity incapable of having reference to the character
"or quality of goods, because, ex-hypothesi, it is an entirely new, unknown
"word incapable of conveying anything."
With this - subject to a
20 qualification to which I will refer in a moment-I entirely agree. An
invented word has of itself no meaning until one has been attached to it,
But this circnmstance does not seem to me to be any ground for qualifying with
a condition not applied to them the terms" an invented word or words."
In considering the case of an application to register a Trade Mark under
25 Cd), the only question which in my opinion has to he determined is whether the
word sought to be registered is an invented word. In one of the cases
on this su bject, Lord Justice Kay said :-" There is oxtremel y Ii ttle invention
"in the matter." It may be that the word "Satinine," which was there
in question, was objectionable on other grounds; but if the word be an
30 ,,' invented" one, I do not think the quanturn of invention is at all materiaL
An invented word is allowed to be registered as a Trade Mark, not as a reward
of merit, but because its registration deprives no member of the community of
the rights which he possesses to use the existing vocabulary as he pleases.
It may no doubt sometimes be difficult to determine whether a word is an
a5 invented word or not- I do not think the combination of two English words
is an invented word, even although the combination may not have been in
use before, nor do I think that a mere variation of the orthography or
termination of a word would be sufficient to constitute an invented word, if to
the. eye or ear the same idea would be conveyed as by the word in its ordinary
40 form. Again, I do not think that a foreign word is an invented word, simply
because it has not been current in our language. At the same time, I am not
prepared to go so far as to say that a combination of words from foreign
languages so little known in this country, that it would suggest no meaning
except to a few scholars, might not be regarded as an invented word. It is in
45 this respect that I desire to qualify my assent to Lord Justice A. L. Smith:«
proposition that an invented word can never have a meaning.
Corning now to the particular case under discussion, I cannot doubt that the
word ,,' Solio " is an invented word, unless it is to be regarded as the Italian
word solio, which means a throne, in which case it has certainly no reference
50 to the character or quality of photographic paper. If it is not to be so regarded,
it has of itself no meaning. As I have said I think it unimportant, if it be an
invented word, whether it has reference to the character or quality of the goods
or not; but if this were the test of the validity of the word as a -Trade Mark, I
must say that I think there is no such reference. I daresay that it might occur
55 to some minds given to etymology that sol, the Latin word for sun, was a
2u
486
REPORTS OF P.A.TENT, DESIGN,
111
[Aug. 3, 1898.
the Matter oj an Application oj" The Eastman Photographic
lWaterials Companu, Ld., for- a Trade Mark.
component part of it when they found it connected with photographic paper,
'but the same minds would. equally find other root bases for the word if they
found it connected with boots or agricultural implements. It seems to me to
have no reference to the character or quality of the goods in the sense in which
those words must have been used by the Legislature. I think the judgments, 5
appealed from ought to be reversed.
Lord MACNAGHTEN.-My Lords, I am of the same opinion. In 1883, the
Legislature for the first time allowed persons to register as Trade Marks words
not used as Trade Marks before August 1875. The privilege was conferred by
adding to the words" a distinctive device, mark, brand, heading, label, ticket," 10
which were substantially taken from the Act of 1875, the words, " or fancy
" word or words not in common use." To be capable of registration as a new
Trade Mark, it was therefore required by the Act of 1883 that the word proposed to be registered should be a "fancy word," ,,' distinctive," and" not in
"common use." Everybody' knows the trouble which that enactment gave. 15
In trying to construe it the Courts were almost driven to despair, until 'at last
in the Court of A ppeal the learned Judges declared, that to be a fancy word, a
word must be "obviously meaningless," though one of those two learned
Judges seems to have retracted or qualified his opinion before the next case was
called on.
20
For these very troublesome words in the Act of 1883, the Act of 1888 substituted the expression" an invented word or words." It made the substituted
expression a separate, independent, and sufficient condition of registration.
And now, if a proposed Trade Mark consists of or contains an invented word or
invented words, it is capable of registration. But the word must be really an 25
invented word; nothing short of invention will do.
On the other hand,
nothing more seems to be required. If it is an invented word-if it is " new
" and freshly coined" (to adapt an old and familiar quotation), it seems to me
that it is no objection that it may be traced to a foreign source, or that. it may
contain a covert and skilful allusion to the character or quality of the goods' 30
- I do not think that it is necessary that it should be wholly meaningless.
To give an illustration, everybody will remember that in a book of striking
humour and fancy which was in everybody's hands when it was first
published, there is a collection of strange words where" there are" (to use the
language of the author) "two meanings packed up into one word." No one 35
would say that those were not invented words. Stil), they contain a meaninga meaning is wrapped up in them if you can only find it out.
The object of putting a restriction on words capable of being registered as
Trade Marks was, of course, to prevent persons appropriating to themselves
that which ought to be open to all. Th,(jre is a "perpetual struggle" going on, 40
as Lord Justice Fry hasobserved,"to enclose and appropriate as private
"property certain little strips of the great open common of the . English
"language. That," he added, "is a kind of trespass against which I think
"the Courts ought to set their faces." And I think the Legislature has set
its face against it both in the Act of 1883 and in the Act of 1888. There 45
is little danger of the apprehended mischief if invention is required as a
condition of registration. After all, invention is not so very common.
Turning to the present case, I think the word " Solio " may pass for an invented word, and not the less so because it was hit upon by a lucky
accident. I should think so even if I thought that it contained in itself an 50
obscure reference to the great source of light. The goods were intended to be
used for photographic purposes; but speaking for myself, I must confess that,
without explanation from others, better scholars, it may be, or worse, it never
would have occurred to me to connect" Solio " with the Latin word for the sun.
I therefore agree in the motion proposed.
55
Vol. XV., No. 19.J
AND TRADE MARK CASES.
4~7
In the Matter of an Application. of The Eastman Phoioqraphic
Materials CoJnjJany, Ld., for a Trade . W
. ark.
Lord l\fORRIS.-My Lords, I am of opinion that upon the true construction
of Section 10 of the Act of 1888, sub-sections (d) and (e) of Section 10 are
independent of each other, and that no portion 'of sub-section (e) can be introduced into sub-section (d). The two sub-sections represent different heads,
5. which entitle a Trade Mark to be registered. Sub-section Cd) refers to an
inventedword sirnpliciter ; sub-scctlon (e) 'refers to a word or words having no
reference to the character or quality of the goods.
In this case "Solio" is, so far as the English language is concerned, an invented word; indeed, Lord Justice Lindley, in his judgment in the Oourt of
10 Appeal, says, "Nobody ever heard of it before, and in that sense it is an in"vented word r " but he proceeds to hold that it had some reference to the
character or quality of the goods, and consequently could not be registered.
I find no such restriction in sub-section (d) ; the restriction on the use of such
words is in sub-section (e); and I cannot see how a limitation or restriction
15 found Tn sub-section (e) can be introduced into sub-section (d). Therefore,
given an invented word, in my opinion it is capable .of registration. I therefore
concur in the judgment which has been moved.
Lord SHAND.-Thiy Lords, I am of the same opinion. The separation of the
clauses in the section of the Statutes in question by the letters" d " and" e" and
20 the alternative particle " or," satisfy me that the t\VO clauses are independent,
and to be construed as independent provisions, so that the terms of clause (e)
do not control or affect the terms of clause (d). At the same time, I agree with
your Lordships, and particularly with what has been said by my noble and
learn-ed friend Lord MACNAGHTEN, in thinking, especially after the decision to
25 be given in this case, that the Comptroller-General will be fully warranted in
taking care that there shall not be admitted, under the guise or cover of words
called" invented" by the Applicant, words really in ordinary use, which might,
in a disguised form, have reference to the character or quality of the goods.
There rnust be invention, and not the appearance of invention only. It is not
30 possible to define the extent of invention required, but the words I think
should be clearly and substantially different from any word in ordinary and
common use. The employment of a word in such use, with a diminutive or a
short and meaningless syllable added to it, or a mere combination of t\VO known
words, would not be an " invented" word; and a word wouldnot be " invented"
35 which, with some trifling addition or very trifling variation, still leaves the word
onewhich is well-known or in ordinary use, and which would be quite understood as intended to convey the meaning of such a word.
The Order appealed from was accordingly reversed.
The LORD OHANCELLOR.-The Appellants would be entitled to their costs,
40 but there is no power to give costs against the Crown, and therefore we must
simply make no order as to costs.
D. 1Jl. Kerls) asked that the costs paid to the Comptroller by order of the
Courts below should be repaid.
The LORD OHANCELLOR.-Yes, certainly. I suppose you would not doubt
45 that, Mr. Joyce?
Ingle Joyce.-It is rather a difficult matter, The Attorney-General cited
a case to your Lordships where costs were ordered to be paid in the Oourt
below.
The LORD OHANCELLOR.-I am quite aware of that; but I am appealing to you
,50 now whether you think it is consistent with the attitude that the Crown ought
to assume, that, having got the costs by an erroneous judgment which has
been, set aside, you ought to retain those costs.
Inqle Joyce.-I am very sorry that the Attorney-General does not happen
to be here at the moment.
-55 The LORD CHANCELLOR.-He can mention it again. I think I may say
REPORTS OF PATENT, DESIGN,
488
[Aug. 3, 1898.
~-~
.. ~.trl~t"Ch,e·-MatteJ'l
of an Application of The Eastman Photoqraphic
Materials Cornpans], Ld., for a Trade Mark.
for all my colleagues that we are all of opinion that the Crown ought not to
keep that money.
[After an l:nterrval.]
Sir R. lll"ebster, A.G.-vVould your Lordship allow me to mention the
Eastman case with respect to the question of costs?
5
The LORD CHANCELLOR.-Yes.
Sir R. Webster, A.G.-The matter stands in this way :-there is a little
difficulty about it. With regard to the cQ~t~}rl thefirst Co-u.rt, fora great many
years it has been held, and always considered, that' thosewere part of the costs
of getting the registration, and when the Board of Trade has referred the
matter to the Court, the Court has always said, " You could not get registration
" without that ceremony being gone through" ; and in cases where it has been
referred to the Court by the Board of Trade, the Court has ordered the costs to
be paid. With regard to the costs of the appeal, which were ordered to be paid
when the Court decided against the Appellants, as here, and it has turned out
to be wrong, I quite agree it would be wrong they should be made to pay those
costs, and as far as I can-your Lordships know there are difficulties with
regard to the matter, and I do not know that your Lordships have jnrlsdiction
over i t - The LORD CHANCELLOR.-·I did not say we had.
Sir R. Webster, A.G.-No, my Lord; but I should be prepared to do all I
could to see that those costs were returned. But with regard to the costs in
the first Court, that seems to me a more serious question.
The LORD CRANCELLOR.-That is another matter. We did not refer to
those. We meant the costs your Opponents were compelled to pay by a
decision which their Lordships think was wrong. Those we think should be
returned.
Sir R. lVebster, A.G.-If your Lordship pleases. Those are the costs in the
Court of Appeal, not before Mr. Justice Kelceuiich,
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