Or other characteristics of goods or services or set

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or other characteristics of goods or services, or Set per Romer J. in Jellinek's Application (1946) 63 R.P.C. 59 at p. 70, approved by the House of Lords in DAIQUIRI RUM Trade Mark [1969] R.P.C. 600 at page 620. Downloaded from by Makerere University user on 03 September 2019
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298 Jacob J. British Sugar Pic v. [1996] RJ».C. James Robertson & Sons Ltd. (c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts) 5 provided the use is in accordance with honest practices in industrial or commercial matters." The language is virtually the same as that of Article 6 of the Directive and must have the same meaning. There is no recital to the Directive which throws any 10 direct light on the purpose of Article 6. But it is noteworthy that the Directive notes the function of a trade mark is: "in particular to guarantee the trade mark as an indication of origin" 15 No other purpose is mentioned. I think this sole purpose permeates the whole Directive and hence our 1994 Act. If there is doubt as to the meaning of any particular provision, regard should be had to this purpose. I propose so to do in construing section 11(2). 20 The parties began with a dispute of law. It was now Mr. Young's turn to say that a gloss should be put upon the provision. He said it could not apply if the defendant was using the mark in a trade mark sense. You have to have pure descriptive use, he said. He drew my attention to cases under the UK 1905 and 1938 Act, De Cordova v. Vick Chemical Co. xi and Mars GB Ltd. v. Cadbury 25 Ltd. 19 I cannot think these can be of assistance in dealing with a provision whose provenance has nothing whatever to do with the earlier United Kingdom Acts. I propose to approach the problem from first principles. First I think, unlike section 10, one must here look at the whole context of the 30 use. You cannot tell whether the use is descriptive or not from the use of the sign alone. I think so much is implicitly conceded by British Sugar when they concede that their registration could not stop use of a phrase such as "An irresistible toffee spread for a treat on any occasion!" 35 Second I think one must distinguish between a use of the mark by way of an honest comparison and other uses. I see no reason why the provision does not permit a fair comparison between a trade mark owner's goods and those of the defendant. The comparison would have to be honest, but provided it was and was part of a genuine indication of, for instance, quality or price, I think it would 40 be within the provision. Such honest comparative use might well upset the mark's proprietor (proprietors particularly do not like price comparisons, even if they are true) but would in no way affect his mark as an indication of trade origin. Indeed the defendant would be using the proprietor's mark precisely for its proper purpose, namely to refer to his goods. I can see nothing in the stated 45 purpose of the Directive indicating that a trade mark monopoly should extend to
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  • Fall '19
  • The Land, Makerere University, SONS LTD, James Robertson, Jacob J

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