"Trade marks. Motion to rectify.-Names registered as trade marks used before 1875.-Addition of flourishes and scrolls. - Special and distinctive words. J. and J. H. registered several trade marks as used before 1875, some of which consisted of a name printed in ordinary capital type, and the others of a firm name and "London" with certain flourishes and scrolls. On a motion to rectify the Register by expunging these marks.

Held, that names used as trade marks before 1875 were special and distinctive words and entitled to be registered, and that the several trade marks in this case were special and distinctive words used as trade marks before 1875, and the application must be refused with costs.

The firm of J. and J. Hopkinson had for many years carried on business as manufacturers of pianofortes.

On the 14th of December 1881, they applied for and obtained registration, 50 under the Trade Marks Registration Act, 1875, of three trade marks, Nos. 27,234, 27,235, and 27,236 in Class 9 for pianofortes. No. 27,234 consisted of the name of "J. & J. Hopkinson" in ordinary capital type, and was claimed as having been used for 33 years before 13th of August 1875. No 27,235 was as follows :

This mark was claimed as having been used for 24 years before the 13th of August 1875. No 27,236 was as follows :

This mark was claimed as having been used for 13 years before 13th of August 1875.

On the 28th of January 1888, Messrs. Hopkinson applied for and obtained registration, under the Patents, Designs and Trade Marks Act, 1883, of two more 5 trade marks, Nos. 72,185 and 72,186 in Class 9 for pianofortes. No. 72,185 consisted of the name "Hopkinson" in ordinary capital type, and was claimed on having been used for 40 years before the 13th of August 1875. No. 72,186 consisted of the name "Hopkinson, London," and was claimed as having been used for 29 years before the 13th of August 1875.

In use, Nos. 27,235 and 27,236 were printed in black and gold from blocks belonging to Messrs. Hopkinson, and affixed to the fall of the pianos. Nos. 27,234, 72,185, and 72,186 were punched from blocks belonging to Messrs. Hopkinson on the interior woodwork of the pianos.

In 1891 Messrs. Hopkinson brought an action for infringement of their 15 marks Nos. 27,255 and 6, against a John Hopkinson, a pianoforte dealer, who had placed the name "J. Hopkinson, London," surmounted by the Royal Arms and surmounted by scroll work, the whole arranged in the form of a horizontal elongated oval, and printed in black and gold on the falls of his pianos. The action was tried in the Queen's Bench Division in January 1892, and a verdict 20 was found and judgment was given in favour of the Plaintiffs. The Defendant gave notice of motion for a new trial.

On the 6th of February 1892, the Defendant gave notice of motion to rectify the Register of Trade Marks by expunging all the Plaintiffs' five registered marks.

Affidavits were filed on both sides and a letter written by the Registrar of Trade Marks was put in evidence, which stated that since the passing of the Act of 1875 down to the present time it had been the practice in the Patent Office to accept for registration surnames or names of persons or firms in ordinary type under the provisions in the successive Acts of Parliament authorizing the 30 registration of any special and distinctive word, or words or combination of figures or letters, used as a trade mark before the passing of the Act of 1875, and it was also proved that a considerable number of such names had been registered as old trade marks.

Moulton, Q. C., and Israel Davis (instructed by Timbrell and Deighton) for the 35 Applicants. Taking the two marks registered in 1888 first, that is to say, the names "Hopkinson" and "Hopkinson, London," printed in ordinary capital type, we do not dispute that on the evidence those words were used as trade marks before 1875, but we say that there never have been and cannot be "special and distinctive words."

It is clear that they are not "printed in some particular 40 and distinctive manner within the earlier part of sec. 10 of the Act of 1875, so that the Respondents must rely on the provisions in favour of old marks. It is not a question of printing, it is the word itself which is claimed. Leonard and Ellis v. Wells and Co., 26 Ch. D. 288; and the result is that the right in the name "Hopkinson," so long as the registration remains, is absolute, and that 45 no person of that name can use it in connection with pianos even if he puts other distinguishing marks with it.

Such an attempt to monopolize a name is contrary to the spirit of the decisions in Burgess v. Burgess, 3 De M. & G. 896, and Turton v. Turton, 42 Ch. D. 128. Those cases show that a man is not to be interfered with in the honest use of his own name. Consequently, before 50 the Act of 1875, although the Respondents used this name as a trade mark, any other Hopkinson could do the same, and that prevents the name from being a special destinctive word. Even if it could be called distinctive, it was certainly not special.

Warmington, Q. C., and Sebastian (instructed by Thairlwall) for the Respondents. We do not say that these names could be registered as new trade marks, as special and distinctive printing would be required, but we say that they were used as trade marks before 1875, and that they are special and distinctive. That question is, in the case of marks used before 1875, a question of evidence (in re Van Duzer, 4 R.P.C. 31, and the evidence here is clear In the Matter of Hopkinson's Trade Marks.

and distinct that the words were and are special and distinctive of the Respondents' pianos. This was so in fact, and that fact will be recognized by the Court. In Richards v. Butcher, 8 R.P.C. 47, Kay, J., said :-" What "does a trade mark mean ?

The essence of a trade mark is that it is some "distinctive thing which points out that the goods are the goods of A. B. How "could you point them out to be the goods of A. B. better than by putting A. B's. "name upon them ?" Ainsworth v. Walmsley, L.R. 1 Eq. 518, and Lord Kingsdown's observations in Leather Cloth Co. v. American Leather Cloth Co., 11 H.L. C. 523, 534 show that these marks were good trade marks before the Act.

Consequently Messrs. Hopkinson had a right of property in them 10 (McAndrew v. Bassett, 4 De G. J. & S.380), and this Court is being asked to limit the provision in the Act for the protection of old trade mark owners, and to say that the Act has taken away their property. If there was a time that any Hopkinson could put "Hopkinson" on pianos that time was gone (McAndrew v. Bassett), but there is nothing to prevent any Hopkinson from using his name in any honest way.

He can even put it on pianos if he distinguishes it from the Respondent's marks. The application is in effect that the practice of the registry for the last 16 years may be reversed, and the Court will be slow to do that unless the practice is clearly wrong. In Re Hudson's Trade Mark, Ch. D. 310, at p. 320-1, per Cotton, L.J., 3 R.P.C. 155.

Moulton, Q.C., in reply. The authorities referred to in support of the proposition, that a name was a good trade mark before 1875, all reserve the rights of other persons bearing the same name, and that is sufficient to prevent the name from being a special and distinctive word.

KEKEWICH, J. - For many years - I am told forty, but before 1875, Messrs. J. and J. Hopkinson, of New Bond Street, or their predecessors in title, manufactured and sold pianos, and used, to distinguish them in the market, the word "Hopkinson." That I understand to be the effect of the evidence.

According to the authorities, which were well established before 1875, if any other person had sold a piano as "Hopkinson," with that name on it and nothing else, he would undoubtedly have been liable to an injunction, and not the less because his own name was Hopkinson.

The Court would have said I apprehend, without the slightest doubt or hesitation, that he might call himself J. Hopkinson, or Hopkinson & Co., or by any other slight addition which would be sufficient to the ordinary buyer to show that he was not Hopkinson of New Bond Street.

But it was then a trade mark-a property-apart from the man's name, something which belonged to him, which gave his pianos a vendible character in the market. Then comes the Act of 1875, and from thenceforward a man cannot interfere with the use of what he calls a trade mark, unless it is registered under the Act.

He can no doubt still avail himself of his old equitable remedy, now of course pursued in the Queen's Bench Division, and if he can prove that there has been a successful endeavour, or what we used to call a threatening and intending to pass off the goods of the Defendant as the goods of the Plaintiff, then he is still entitled to have an Injunction, but not merely on the ground of the property in the trade mark, which existed before the Act.

If the Applicant's view is right, this Act of Parliament stepped in and said that what was the law before the Act should be entirely altered, that what was Messrs. Hopkinsons' right up to the date of the passing of the Act should be taken away, and that they should no longer have that property.

Far be it for me to say that it might not be for the public benefit that there 50 should be such legislation, and that Parliament might not have come to that conclusion; but it has frequently been said-and I have no reluctance to say it again-that one does not presume Parliament to have been intentionally unjust, and therefore that is not the conclusion at which I should arrive without plain words.

Is there any reason why I should arrive at such a conclusion? The 10th section of the Act of 1875 contemplates that from thenceforward the name of an individual or of a firm might be used as a trade mark, but it provides that it should be "printed, impressed, or woven in some particular and distinctive manner; " but that is only as regards "a trade mark for the purposes of the Act."

It does not refer to previous user at all. Then, later on in the same section, it provides that a trade mark may also consist of any special and distinctive word or words, or combination of figures or letters, used as a trade mark before the passing of this Act, and which may be 5 registered as such under the Act.

The first observation is that it must be something quite different from "the name of an individual or firm printed, impressed, or woven in some particular and distinctive manner."

It cannot be said that the name of an individual or firm was intended there, and that only, when those words were used just above, with the addition which I have mentioned. There must have been something else in the contemplation of the Legislature there, and I think the something else is to be found in the phrase "used as a trade mark before the passing of this Act."

What do the words "special and distinctive word or words" mean? Are they really anything more than declaratory of the law as it existed before the passing of the Act ?

That is to say, do they do more than incorporate into the Statutory provisions what had existed before the Act was passed?

In order to protect a trade mark before the Act, you were obliged to find, not only that the words were used as a trade mark, but that they were of such a character as may, I think, be fairly termed special and distinctive; that is to say, you were obliged to prove by evidence, and satisfy the Court, that the words used as a trade mark were known in the market, and I think it is Lord Westbury's phrase gave a vendible character to the articles to which they were attached, made those articles recognised as coming from the particular manufactory, and so gave them a character different from that of every other article in the trade.

Therefore it seems to me that the Legislature here did no more than adopt the language of the cases, reduce it into a compressed form, and really say that what the Court would have held to be a trade mark independently of the Act, shall now be capable of registration as a trade mark under the Act, provided only that it has been used as a trade mark before the passing of the Act. 30 What is the meaning of "special ?"

I think that "special" must be intended to mean that which separates the article to which it is applied from all others of the same class or character; something which points it out as standing alone; which makes the man who sees it or reads it understand that it has a special standing--a special existence that it is not one of the general class, say, of pianos, but that it belongs to a class of a particular character. "Distinctive" is a little different.

There I would not hazard my own definition, because I have one to hand in the judgment which has been cited in Richards v. Butcher, where Mr. Justice Kay says : "The essence of a trade "mark is that it is some distinctive thing which points out that the goods are "the goods of A.B." Here we have "Hopkinson."

It is quite true that there may be, and are, many Hopkinsons, and no one would contend that under the present legislation you could register "Hopkinson" as a trade mark. Nay, more than that, it must have been extremely difficult-at least it would be now for Messrs. Hopkinson to build up the reputation of their pianos, so that they might be known simply by the name of "Hopkinson."

According to what I have been told in this case, it would be now impossible, because there are other Hopkinsons in the trade, and they would not be allowed to do it. There would be competitors which would make it impossible.

I am not now saying what he may or may not do, but what I do now say is, that Messrs. Hopkinson having registered this trade mark, and having proved to my Batisfaction because although the evidence has not been read it has not been disputed that they used this word for many years before 1875, and that their pianos were known by this name in that way, I think they are entitled to retain on the register the trade mark which they have placed there.

Now "Hopkinson's, London" was, Mr. Moulton said, an a fortiori case. am not prepared to follow him fully to that extent, but I think it is equally strong, and one Judgment governs both.

Moulton, Q. C. -Then with regard to the others, your Lordship's decision, I take it, would cover No. 27,234, "J. & J. Hopkinson" in the ordinary type. KEKEWICH, J. - Certainly, if the evidence is sufficient.

Moulton, Q. C. - It is the same. Now as to 27,235 and 27,236, which are the two sued on in the action, they become very important from your Lordship's judgment with regard to the effect of the use of the word "Hopkinson," and "Hopkinson, London," which are not necessarily infringed by the use of "J. Hopkinson," and thus the validity of these may be matters which do not in any way affect my client.

Taking No. 27,235, either it is a trade mark depending on words alone, in which case it is covered by your Lordship's decision, or else it is a combination of words and of a device. If it is a combination of words and of a device, then, although an old mark, it is no more privileged than a new mark, and the question is, would it be good if it was a new mark ?

KEKEWICH, J. - Where is the device ?
Moulton, Q. C. -The scroll.

KEKEWICH, J. - Is the use of a firm's name, assuming it to be a good trade mark, any the less good because they put such a thing round it ?

Moulton, Q. C. -If it is the question of the way in which it is printed, if it is the question of the scroll round it, then in both those cases it stands or falls like a new mark. If it is a mere question of words, if it is a question whether the words only are protected, then any question of infringement must depend on the use of the words.

KEKEWICH, J. -It does not seem to be a question of device.
Moulton, Q. C.-I submit these are devices.

KEKEWICH, J. -I do not at present consider them devices. I am disposed to support this trade mark as "special and distinctive words used as a trade "mark before the passing of the Act."

Moulton, Q. C. -If your Lordship supports it as that if your Lordship holds there is no device there, that it comes under those words, then I will not repeat myself.

KEKEWICH, J. -I look upon that as a mere adventitious circumstance, the same as the little line which I put generally under my own signature-which I sometimes put in and sometimes do not.

Moulton, Q. C. -Then with regard to No. 27,236.

KEKEWICK, J. -That is clearer still, the ellipse.

Moulton, Q. C. -It is merely the case of the use of "J. & J. Hopkinson, London," and the question of the device your Lordship does not consider important.

KEKEWICH, J. -I will make the order in this form, "The Court being of" opinion that these several trade marks are special and distinctive words used "as a trade mark before the passing of the Act of 1875, and were therefore "properly registered, refuses the application with costs." You do not object to my putting it in that way, Mr. Warmington?

Warmington, Q. C. -No, but my friend must not say that there is any Judgment on any other point. That is the whole of your Lordship's Judgment.

KEKEWICH, J. - Yes." Reports of Patent, Design, and Trade Mark Cases, Volume 9, 1892, p. 102-108