Sr 280 at page 284 1941 58 rpc 147 at page 161 the

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[1995] F.S.R. 280 at page 284 " (1941) 58 R.P.C. 147 at page 161. The House of Lords agreed with this. Downloaded from by Makerere University user on 03 September 2019
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294 Jacob J. British Sugar Pic v. [1996] R.P.C. James Robertson & Sons Ltd. of the comparison. In most cases there can be no difficulty. It is either there or not. However it is possible for the sign to be hidden or swamped. No-one but a crossword fanatic, for instance, would sat that "treat" is present in "theatre atmosphere". There is no question of this sort here, however. "Treat" is there on 5 the Robertson products for all to see. Whether it is used as a trade mark is quite another matter. I think, if I am wrong on classification, that the use is within section 10(1). (d) Infringement pursuant to section 10(2)? 10 Because "Treat" is the very mark registered and is clearly used by Robertson's I think the case falls to be considered under section 10(2)(a), the identical mark/similar goods provision. I do not think it falls within section 10(2)(b) because I reject the argument that the sign used is to be regarded as "Robertson's 15 Toffee Treat". That is used too but the first two words are added matter and it does not matter in what capacity "Treat" is used. The questions arising under section 10(2)(a) are: 20 (1) Is the mark used in the course of trade? (2) Are the goods for which it is used similar to those covered by the registration? 25 (3) Is there a likelihood of confusion because of that similarity? The first of these questions causes no difficulty here. The problems arise under the second and third questions. British Sugar seek to elide the questions of confusion and similarity. Their skeleton argument contends that there is "use in 30 relation to a product so similar to a dessert sauce that there exists a likelihood of confusion because the product may or will be used for identical purposes." I do not think it is legitimate to elide the question in this way. The sub-section does not merely ask "will there be confusion?": it asks "is there similarity of goods?", if so, "is there a likelihood of confusion?" The point is important. For if one 35 elides the two questions then a "strong" mark would get protection for a greater range of goods than a "weak" mark. For instance "Kodak" for socks or bicycles might well cause confusion, yet these goods are plainly dissimilar from films or cameras. I think the question of similarity of goods is wholly independent of the particular mark the subject of registration or the defendant's sign. 40 I think there is confirmation for this view in a recital to the Directive. It says: "Whereas the protection afforded by the registered trade mark, the function of which in particular is to guarantee the trade mark as an indication of origin, is 45 absolute in the case of identity between the mark and the sign and goods and services; (This is the precursor to Article 5(l)(a) - the basis of section 10(1) of the 1994 Act) 50 whereas the protection applies also in case of similarity between the mark and the sign and the goods or services" Downloaded from by Makerere University user on 03 September 2019
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  • The Land, Makerere University, SONS LTD, James Robertson, Jacob J

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