[1929] EACA 60

## ORIGINAL CIVIL.

## Before THOMAS, J.

IN THE MATTER of an application for Registration of a Trade Mark, No. 24 of 1929, by the Firestone Tire and Rubber Co. of Ohio, U. S. A.,

## and

IN THE MATTER of the Registration of Trade Marks Ordinance, Chapter 89 Revised Edition of the Laws of Kenya, section 7, subsection $5$ .

## C. C. $134/1929$ (Msa.).

The Registration of Trade Marks Ordinance (Cap. 89), section 7 -essentials of a registrable Trade Mark.

$Held$ :—That in a young Colony like Kenya the same rigid rules as to user can hardly be insisted upon as in older, more firmly established and more highly organised communities.

Atkinson for applicant.

Dr. Keatinge as Registrar of Trade Marks.

JUDGMENT.—This is an application by the Firestone Tire and Rubber Company of Ohio in the United States of America for an order that a mark, viz: the word "Gum-Dipped", may be deemed by the Court to be a distinctive mark under section 7, subsection 5 of the Registration of Trade Marks Ordinance, Chapter 89, Laws of Kenya.

It would seem that an application was made originally to the Registrar of Trade Marks for the registration of the word as a trade mark, and he being of the opinion that it did not come within the requirements of section 7 and no order of the Court having been obtained under subsection 5 refused the application. Hence this application to the Court.

Mr. Atkinson for the applicant has admitted that the word "Gum-dipped" is a word other than such as fall within the descriptions in sections or paragraphs (1), (2), (3), (4) of section 7, and that therefore an order of the Court is necessary. He has also admitted that the word has not been registered as a trade mark in England. I mention this last admission for the sole purpose of disposing of the last paragraph of section 7.

The application is therefore based on the following words contained in section 7: "In determining whether a trade mark is so adapted the Court may, in the case of a trade mark in actual use, take into consideration the extent to which such user has rendered such trade mark in fact distinctive for the goods with respect to which it is registered or proposed to be registered."

Several affidavits have been filed in connexion with this application. Of these two are relied upon in connexion with The first is by Mr. Robinson, the Assistant this question. Secretary of the Firestone Tire and Rubber Company, sworn on the 16th July, 1929. It sets out that between the 1st July, 1924, and the 31st March, 1929, 5083 tyres bearing the trade mark "Gum-dipped" have been shipped to Kenya Colony. The value of these tyres is 251,000 dollars. These shipments. were made to J. R. Cox and Company, Twentsche Overzee Handel Maatschappij Enschede (Holland). York Garages, Nairobi, and Nyanza Garages, Nyanza. The second is by Mr. England, manager of the firm of J. R. Cox, Nairobi, sworn on the 27th August, 1929. It sets out that the value of the tyres marked "Gum-dipped." imported by the firm of J. R. Cox and Company since the end of October, 1928, amounted to 433,459 shillings, and the approximate value of the sales of his firm up to the 19th of August amounted to 375,000 shillings. From these figures it would appear that on an average over the five years 1924 to 1929 about one thousand tyres have been shipped annually to this Colony (some of these tyres would be used for Nyasaland); and that between the 31st of March, 1929, and the 19th August, 1929, there had been a considerable increase in the shipments and sales. These facts have not been disputed. It is, however, contended by the Registrar of Trade Marks that in view of the cost of each tyre being about five pounds and four tyres being required for each car (apart from the question of renewals) the user in this Colony is very limited and would not warrant the Court making the order. The question of user has been considered in the case of W. & G. Du Cros Limited, 1912, 1 Ch. D., p. 644. There there was evidence that the applicants had commenced business in 1908 and had acquired some 1,300 motor cabs for public use in and around London. At that comparatively early date in the motor car industry the running about in the streets of London of 1,300 motor cabs must have caused a considerable impression. Yet Eve, J., in his Judgment considered this user insufficient. $He$ said: " Regard must be had to all the circumstances, and I think in the present case, were I to hold that the required distinctiveness here proved had established a prima facie right to a monopoly for all motor vehicles all over the Kingdom. I should be giving to a user restricted in area and by what, after all, is numerically a very insignificant part of the community a force and effect out of all proportion to its merits.

In the last line of his Judgment FARWELL, L. J., may have intended to refer to this finding when he said: "In other respects I think that Eve, J., was quite right in affirming the Registrar ".

The question of user was also considered in Joseph Crosfield & Sons, Ltd., 1910, 1 Ch., p. 118. That was an application to register the word "Perfection" in connexion with a soap. Swinfer-Early, J., in his Judgment said: "Considering the word by itself and apart from any evidence of user by the applicants, it is quite clear that it is wholly unsuitable for the purpose; it is an ordinary English word, expressive of the highest quality, extensively used by the mercantile community to describe and recommend their goods, and when the goods of many manufacturers are of equal quality the word is entirely unsuitable for the purpose of indicating exclusively the goods of one manufacturer, it is not in the least calculated to distinguish the goods to which it is applicable as those made or sold by one person more than another." (p. 124). Later the learned Judge goes on to consider the evidence of user and says: "The result of the evidence is that in some counties of England and Wales 'Perfection' soap to many people indicates Crosfield's 'Perfection' washing soap; to many other persons in the same counties it does not convey any such meaning; and in some. counties it scarcely indicates the applicant's soap to anyone, as it is almost unknown in the county. The applicant's soap is only little known in London. In Scotland and Ireland it does not indicate or distinguish the applicant's soap from that of any other manufacturers to any appreciable extent, if at all. Considering the evidence as a whole I have come to the conclusion that the word 'Perfection' is not a distinctive mark and is not adapted to distinguish the goods of the applicants from the goods of other persons. I have taken into consideration the evidence of user and still am of opinion that the word is not adapted to distinguish the goods of the applicants. In my opinion the word ' Perfection ' is not a distinctive mark within paragraph or subsection 9 of the Act of 1905, notwithstanding the user of the word by the applicants in the past ".

In the former case there was a considerable user of the letters "W. and G." in a limited area; in the latter case there was a considerable user of the word 'Perfection' over an extended area. Yet in neither the one case nor the other was the sanction of the Court obtained.

Now I want to refer to another case. In re Leopold Cassella and Co. Gesellschaft M. B. H. 1910, 2 Ch., p. 240. In his Judgment KENNEDY, J., says: "The respondents rely upon evidence of a widespread and long continued understanding amongst persons engaged in the business of dyeing, or cominercially connected with that trade, of the word 'diamine', as a mark which distinguished the goods of the respondents who have used it for rather more than twenty years, from the goods of the other dye producers, and as not conveying to them anything descriptive of the chemical quality of the article to which it is attached. In fact, the respondent's list or catalogue produced to us shows that the respondents do not use 'diamine' simpliciter in connexion with all the colours, but in some cases oxy diamine, para diamine, and other compounds of diamine. But apart from this, I certainly am of opinion that, as the Master of the Rolls held in Crosfield & Sons' case of a 'new laudatory epithet like diamine' such evidence of user and understanding in a large section of the trade cannot avail to give a registrable character to an epithet which is not in its natural and recognized meaning adapted to distinguish the goods of the trader who seeks to appropriate it as his trade mark under the Act of 1905. And there is, I think, in one respect a stronger case for the Court's refusal to sanction registration where the words which the trader seeks to monopolize is, as here, descriptive of chemical quality applied to goods which do not possess the quality, than where, as in Crosfield & Sons' case, the word which it is sought to register is simply a laudatory substantive or adjective; for its use in the former case may actually deceive."

Turning to the affidavit of Mr. Robinson I find the following: "In adopting the trade mark, the applicant decided that a mark of this nature was particularly adapted to identify a tire manufactured from a fabric made by methods adopted by the applicant which involved certain special processes hereafter referred to. Tires of the applicant's manufacture bearing its trade mark "Gum-Dipped" are not subjected to any process which involves dipping the tire in rubber. The applicant uses a certain process in the manufacture of fabric from which its tires are made, and which primarily consists in manufacturing a special type of fabric, and impregnating the same in such a manner which results in each and every cord or strand consisting of the fabric base becoming insulated by means of a coating of rubber around each strand of every cord consisting of the fabric This process insulates and protects the cords constituting itself. the fabric, and greatly reduces or eliminates external friction in tires manufactured from such fabric, with the result that the life of a tire so manufactured from such fabric treated in this manner is considerably lengthened.

It must be pointed out that fabric of woven construction for the purpose of impregnating in this manner must be specially prepared in order to apply the impregnation process of the applicant, and while the trade mark "Gum-Dipped" may vaguelysuggest a process of impregnating or insulating the fabric base by immersion, it is not ordinarily suggestive or descriptive of a tire made from a fabric so treated. The tire *per se* is not so treated, and to the best of my knowledge and belief the trade mark "Gum-Dipped" does not indicate to the public that the tire itself is dipped in gum, but it rather indicates to the trade, and to the consumer, that the fabric indicates a special process, as indicated above. I furthermore aver that the trade mark "Gum-Dipped" is not the sole nor the most appropriate word

or phrase to use in distinguishing a tire made from fabric so treated, since such phrases as "rubber impregnated," "rubber coated," "rubber covered," "rubber insulated" are ordinarily descriptive phrases as applied to such a fabric. It would be quite unusual for any one in the trade to use such a phrase as "Gum-Dipped" in describing a tire made from a fabric so treated."

From this lengthy explanation I gather that in the United States the word "gum" is used as meaning rubber. In England, however, the word "gum" is generally taken to be a mucilage such as gum-arabic. On my table is a bottle labelled " office gum." I consider that the average Englishman would take the word "gum-dipped" to mean that the tyre had been dipped in some sort of mucilage. I can hardly think that that would be a satisfactory or useful process or would appeal to the ordinary man as beneficial to the tyre.

At one time the inner tubes of bicycles were treated with a solution of sugar and water to reduce the liability to puncture. But if they were punctured repairs were almost impossible on account of the sugar oozing through the aperture. I cannot imagine that the word "sugar-fed" would have proved a commendatory epithet with regard to inner tubes. It would rather have been a caution not to purchase them. If a baker chose to call his cakes and sweets "fly-blown" I can hardly imagine that the public could have cause of complaint in that no fly had ever been near them.

The word "gum-dipped" does not appear to me to be commendatory in England or an English-speaking community. 1 cannot think that the public would have a grievous complaint if in fact the tyre had not been dipped in gum, and I should be surprised to hear that any other member of the trade would be anxious to take so dubious an epithet. Now in the Du Cros case it was considered that there might be other firms entitled and anxious to use the initials W. and G. In the Crosfield case it was considered that others might have an equal claim to their goods being "Perfection". In the Diamine case it was considered that the public might be deceived.

1 do not consider for the reasons I have given above that any of these objections exist in this case.

Now in the three cases that I have mentioned there was evidence of considerable user of the article in question. It has been objected with considerable force that no such extended user has been proved in the present case. One must remember that this Colony is a very young one and the same rigid rules as to user can hardly be insisted upon as in older more firmly established and more highly organized communities. The evidence before me shows that there has been a user for a number of

years and that that user has grown during the past few months. The word has already been allowed to be rgistered in the flourishing Nigeria Colony.

I come to the conclusion that the application should be allowed to proceed to the second stage.

Inasmuch as the application had to be made to the Court there will be no costs of the application.