The point of enabling a proprietor to suppress

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the point of enabling a proprietor to suppress competition by use of his trade mark in this way. _ 50 (1951)68 R.P.C. 103 19 [1987] R.P.C. 387 Downloaded from by Makerere University user on 03 September 2019
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299 [No. 9] Chancery Division Jacob J. In saying this, I am of course aware that the United Kingdom Act also has its own "home-grown" (to use Laddie J.'s phrase in Barclays Bank Pic v. RBS Advanta 10 ) provision enabling comparative advertising, namely section 10(6). 5 But it is manifest that one cannot use that provision to construe section 11(2) which comes from the Directive. If there is overlap between the two provisions there is, and no matter. Their origins are different and one should not be surprised by any overlap. 10 Thirdly there is the question of use of the sign for the defendant's goods. I considered the question of comparative advertising first to test the proposition that the sign can only be used as a "pure descriptor". I reject that because it can be used as part of a description when used for the plaintiff's goods. But use of the sign for the defendant's goods is something different. That seems to me to be 15 inconsistent with the mark being used as a description or performing any of the other functions. If a mark is used as a trade mark for the defendant's goods, then it is not used as a description. This conclusion may have important implications where a semi-descriptive mark is validly registered. In particular if the defendant's mark is descriptive to some but has trade mark significance to others, 20 he will not be within the section. Before turning to the facts here, I must return to Wet Wet Wet. Lord McCluskey held that section 11(2) provided a defence. This was because the use of the sign was a reference to the pop group and was an honest use. This is 25 another example of a kind of trade mark use protected by the section, though the use was not by the defendant to denote the provenance of his goods. I am, of course, concerned with the word "Treat" alone. I cannot see even a hint that anyone regarded this alone as a trade mark. Mr. Young says no matter, 30 once it is incorporated into a phrase which has trade mark significance, i.e. "Toffee Treat" that is enough. If I accept that the whole phrase is indeed a trade mark, I think Mr. Young must be right. Section 11(2) does not cover the case where a word, outside the context of die use, is descriptive if, in context, it is part of trade mark use for the defendant's goods. 35 I turn to consider how the word "Treat" is used here I have no evidence from the public in relation to this question. I have some evidence of internal thinking at Robertson's but the most important thing of all must be my own impression from the label and all the surrounding circumstances. Looking at the label I 40 think the average customer would not see 'Treat" used as a trade mark. It is true that it is written as part of a phrase "Toffee Treat" but this is done in a context where the maker's name is plain. It is of course the case that you can have two
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  • Fall '19
  • The Land, Makerere University, SONS LTD, James Robertson, Jacob J

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