Trade marks containing the essential particulars are not regis trable if they contain any matter which would by reason of its being calculated to deceive or otherwise be disentitled to pro tection in a court of justice or would be contrary to law or morality, or any scandalous design (sec. 1).
Old marks are registrable, i.e., any special or distinctive word or words, letter, numeral or combination of letters or numerals, used by the applicant or his predecessors in business before Aug. 14, 1875 (sec. 9). In the case of new marks, but not of old marks, a trade mark is not registrable except by order of the court in respect of any goods or description of goods which is identical with a mark already on the register with respect to such goods or description of goods, or so nearly resembles such registered mark as to be calculated to deceive (sec. 19). The expression "calcu lated to deceive" has been considered by the courts in very many cases. It is not merely or chiefly the retailer or dealer who has to be kept in view when the question of the likelihood of deception is under consideration. The courts have regard also, and mainly, to the ultimate purchaser whom the trade mark may reach, and careless or unwary persons are considered as well as those who are careful and intelligent. The judge's eye is the ultimate test as to the degree of resemblance that is calculated to deceive, although expert evidence on the point is admissible. The following words have been held to give rise to a probability of deception and con fusion. "Oxot" with "Oxo" (meat extract : Oxo, Ltd. v. King, 34 R.P.C. 135) ; "Nuvol" with "Nujol" (heating or lubricating oils: In re McDowell's Application, 1926, 43 R.P.C. 313) ; "An zora" with "Onsoria" (hair cream : Lewis v. Vine and Vine's Per fumery Co., 31 R.P.C. 12) ; "Peps" with "Pan-Pep" (cough pastilles : In re United Chemists Association's Trade Mark, 1923, R.P.C. 219) ; "Anchola" with "Anchovette" (fish pastes and potted meats: In re Waide and Co.'s Application, 33 R.P.C. 320) ; "Limit" and "Summit" (shirts and collars : In re Smith [Thomas A.], Ltd.'s Application, 3o R.P.C. 363) ; "Lavnoma" with "Lavona" or "Lovona" (toilet preparations : Tokalon, Ltd. v. Davidson and Co., 32 R.P.C. 133).
although the latter part of it was a Sinhalese term meaning "estate," and there were estates in Ceylon (In re Dens/iam's Trade Mark, 1895, 2 Ch. 276), having names ending with "wattee" from which tea came; and in a leading case on the construction of the clauses under consideration (Eastman Co.'s Trade Mark, 1898, A.C. 571), the word "solio" was held to be registrable as a trade mark for photographic printing paper under both clauses, although it was objected that "solio" was equivalent to "sunio." "Savonol" for soap (J. C. and J. Field, Ltd. v. Wagel Syndicate, Ltd., 190o, 17 R.P.C. 266), "tachytype" for typographical and composing machines (In re Linotype Co.'s Application, 1900, 17 R.P.C. 38o), have been held to be invented words. But the following have been held not invented : "uneeda" ( = you need a), In re National Biscuit Co. (19o2 ; 1 Ch. 783) ; "absorbine" for an absorbent preparation (Christy and Co. v. Tipper and Son, 1905, 21 R.P.C. 97, 775); "bioscope" (Warwick Trading Co. v Urban, 1904, 21 R.P.C. 240) ; "cyclostyle" (Re Gestetner's Trade Mark, 1907, 2 Ch. 478) ; and cf. In re Kodak and Trade Marks, 1903, 20 R.P.C. 337; "lactobacilline" for a lactic ferment (In re La Societe Le Ferment's Application [1912], 81 L.J., Ch. Identical marks (except old marks) may not be registered in respect of the same goods, or goods of the same description, for two different persons (sec. 19) ; and where several applicants make rival claims to identical marks the registrar may refuse to register until their rights have been determined by the court or settled by agreement in manner approved by the registrar, or, on appeal, by the Board of Trade (sec. 20). In the case of honest concurrent user or of other special circumstances making it proper so to do, the court (or registrar : act of 1919, sec. 12, sched. 2), may permit the registration of the same mark or of nearly identical marks for the same goods by more than one owner, subject to such conditions or limitations, if any, as to mode or place of use or otherwise as the court (or registrar) may think it right to impose (sec. 21).