1941 58 rpc 147per sir wilfred greene mr at p 161

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(1941) 58 R.P.C. 147per Sir Wilfred Greene MR at p. 161, applied. (4) For the purpose of trade, the defendant's spread was not a dessert 30 sauce, even though the defendant described that as one of its uses. (5) In any event, the defendant's product would be classified within class 29 of Schedule 4 to the Trade Marks and Service Marks Rules 1986 and so fell outside the qualification 'included within class 30' in the registered 35 specification of goods. GE Trade Mark [1969] R.P.C. 418 at p. 458-459, applied. (6) Accordingly, the defendant did not infringe under section 10(1) since it 40 did not use the trade mark in relation to goods which were identical to those in the registration. (7) The question of similarity of goods in section 10(2) was wholly independent of the particular mark the subject of registration or the 45 defendant's sign. Similarity of goods was a separate issue which must be established before moving on to consider the likelihood of confusion. The class of 'similar goods' in section 10(2) was a narrow one, which approximated to the test of 'goods of the same description' under section 12(1) of the Trade Marks Act 1938. The starting point was that the plaintiff 50 should obtain registration in respect of those classes of goods in which it seeks to protect its trade mark. The relevant factors in considering similarity were a comparison of the use, users and physical nature of the plaintiff's and Downloaded from by Makerere University user on 03 September 2019
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283 [No. 9] Chancery Division defendant's goods, the way in which they were sold and the extent to which they were competitive. The defendant's spread was not similar to the dessert sauces and syrups of the registration. Therefore, there was no infringement 5 under section 10(2). Jellinek's Application (1946) 63 R.P.C. 59, perRomerJ. at p. 70, referred to. 10 (8) Use of a sign as a trade mark could never constitute descriptive use under section 11(2). However, the defendant did not use the words 'Toffee Treat' as a trade mark. Their use was non-infringing descriptive use within section 11(2). 15 Bravado Merchandising Services Ltd. v. Mainstream Publishing (Edinburgh) Ltd. [1996] F.S.R. 205 considered. (9) The word "TREAT" was a sign which was capable of distinguishing the plaintiff's goods, within sections 1(1) and 3(l)(a), since the sign could in 20 fact do the job of distinguishing the goods. (10) However, the word "TREAT" was devoid of any distinctive character under section 3(1 )(b) as it consisted exclusively of a sign to designate the kind, quality and intended purpose of the product under section 3(1 )(c) and 25 probably had become customary in the English language within the meaning of section 3(1 )(d). (11) The plaintiff had not discharged the burden of proving under the proviso to section 47(1) that its mark had subsequently acquired a distinctive 30 character in relation to the goods registered. In the case of descriptive or laudatory words, even recognition of the word as a trade mark by 60% of the public would not prove that it had acquired a distinctive character.
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  • The Land, Makerere University, SONS LTD, James Robertson, Jacob J

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