Re Bausch and Lomb Incorporated

Case No.HCMP 203/1979

Court

High Court CFI

Date05 Jun 1979

Judge—

Case Document

100%Judiciary

HCMP000203/1979

IN THE HIGH COURT	1979 No. 203
	MISCELLANEOUS PROCEEDINGS

IN THE MATTER of Application No. 1426 of 1974 by Bausch and Lomb Incorporated to register the trademark "Soflens" in Class 9

and

IN THE MATTER of the Trade Marks Ordinance Cap. 43

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Coram: Zimmern, J.

Date of Judgment: 5 June 1979

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JUDGMENT

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1. This is an appeal from the decision of the Registrar of Trade Mark dated 20th July 1978 refusing the appellant's application for registration in Part B of the Register in Class 9 under the specification "Contact Lenses and Their Accessories" its trade mark "SOFLENS".

2. The appellant Bausch and Lomb Incorporated is a company incorporated in the State of New York in the United States of America. It is a producer of inter alia Contact Lenses. A contact lens is a visual aid inserted into the eye itself as distinct from a monocle or a pair of spectacles hence the word contact. These visual aids are of two types soft and hard. I do not have to compare them. The appellant first produced and introduced in its home market a soft contact lens (Polymacon) in 1968 and since 1970 has applied the mark "SOFLENS" to its product. Thereafter its product under that trade mark has been introduced into and sold in many countries in the world. It was introduced into and sold in Hong Kong in 1972. For the first three years total sales came to about US$670,000. It was and is being well advertised. The trade mark "SOFLENS" has been registered as a trade mark in many countries in the world including Singapore, Malaysia, New Zealand and Ireland. It was firstly accepted in the United Kingdom then refused by the Registry upon opposition by a third party. That decision is reported in [1976] R.P.C. 694. The learned Registrar followed the English Decision.

3. On appeal the applicant by leave filed a number of affidavits. The Registrar made known to the Court that he would not be represented at the hearing as he was not, and relied then solely on the decision of Mr. W.M. Catley.

4. Shortly his grounds for refusal are

1)	Whilst acknowledging that the U.K. decision does not bind him he says that the policy of the Registry is to follow that of the U.K. Registry so far as is possible in administrating the virtually identical provisions.
2)	In spite of the applicant's user of the Trade Mark in Hong Kong over a period of two years he cannot consider the mark "SOFLENS" which is the phonetic equivalent of the words "soft lens" to be capable of distinguishing the goods of the applicant.
3)	That no details of registration of the marks in other countries having been supplied he does not make any comment or place any reliance on them.
4)	That the specification of goods covered is "contact lenses" and if the mark were used in respect of hard lenses it would be likely to deceive and thus contravene section 12(1) of the Ordinance.

5. As to (1) and (2) above Mr. Liao for the applicant pointed out that there is a material difference between Act and Ordinance vis-a-vis applications for registration in Part B both provided by section 10. The Hong Kong section follows the 1919 Act and not the 1938 Act. The learned editors of 10th Kerley's at p.153 put the difference thus:-

"Under the Act of 1919 which created Part B of the Register bona fide use as a trade mark for two years prior to the date of the application was a condition precedent to registration. If this condition was fulfilled, and the Registrar was satisfied that the mark was capable of distinguishing the goods of the proprietor and was not open to objection under section 11 or 19 of the Act of 1905. He was bound to accept the application. Under section 10 of the 1938 Act, on the other hand, no actual use is required; but there is no positive direction to accept a mark, so that there is a discretion as in the case of Part A applications."

In the present case Mr. Catley accepts that bona fide use of the mark for two years, a condition precedent to registration in Part B, has been fulfilled therefore his refusal can only be by reason that he is not satisfied that the mark is capable of distinguishing the goods of the proprietor leaving aside other sections of the ordinance for the moment. In the Ustickon Case (1927) 44 R.P.C. 412 concerning an application in Part B under the 1919 Act Lord Hanworth at page 422 said:

"I may say in passing that, if it is established that they have been used for two years for the purpose of indicating that they are the goods of the proprietor, it would almost seem to follow that such a mark is capable of distinguishing the goods of the applicant".

Respectfully I think those words aptly apply to the applicant's trade mark. Its product was introduced into Hong Kong in 1972 under that Trade Mark and time and money have been spent in its promotion. The evidence is all one way and it is that the trade mark "SOFLENS" does distinguish and is distinctive of the goods of the applicant. Mr. Catley's refusal then can only be on a priori grounds, a finding that the word is incapable of registration because no amount of user can make it distinctive. Is "SOFLENS", said to be a mispelling of the two words "SOFT LENS" and can only be pronounced "SOF-LENS" such a word mark. I cannot gather from the U.K. decision such a finding. Under the 1938 Act the prescription for determining whether a trade mark is capable of distinguishing the goods of the applicant is provided by section 10(2) as follows:

"In determining whether a trade mark is capable of distinguishing as aforesaid the tribunal may have regard to the extent to which -

	(a)	the trade mark is inherently capable of distinguishing as aforesaid; and
	(b)	by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguishing as aforesaid."

The tribunal is called upon to balance an inherent tendency to unregistrability on the one hand against evidence showing distinctiveness in fact on the other. The learned adjudicator found the word was not inherently capable of distinguishing the applicant's goods and as there was no evidence of use of the mark prior to the relevant date which he could otherwise take into account to justify registration of the mark in Part B the application was refused. It seems to me that Mr. Catley went much further than the U.K. adjudication for he Mr. Catley said:

"In spite of the user of the mark in Hong Kong over the two year period mentioned I still do not consider the mark which is the phonetic equivalent of the words 'soft lens' to be capable of distinguishing the goods of the Applicant".

6. In the Electrix Case ([1960] A.C. 722) Viscount Simond at p.727 cited with approval the doctrine stated in the judgment of the Court of Appeal:

"If a given word is for any reason unregistrable in its proper spelling then, inasmuch as trade marks appeal to the ear as well as to the eye the objection (whatever it may be) to the registration of the properly spelt word applies equally to a word which merely its phonetic equivalent?"

Assuming for the moment that "SOFLENS" is the phonetic equivalent of "SOFT LENS" and I express no opinion as to this, are the words SOFT LENS unregistrable on a priori grounds. The answer I think is no. As I understand the law it is purely laudatory words - "GOOD" "PERFECT" or words description of some common characteristics of the product - "ALLWOOLLEN" "ELECTRICS" which are so unregistrable because by their very nature they are incapable of becoming distinctive. Other words of description are capable of becoming distinctive and this is a matter of fact. As Lawrence L.J. said in the Ustikon Case (supra) at p.428:

	"It must be remembered that the mere fact that a mark is descriptive or partly descriptive is not fatal to registration either under the Act of 1905 or under the Act of 1919. Section 44 of the former Act (our section 34(b)) which is applicable to marks registered in Part B recognises that a trade mark may be descriptive and expressly provides that no registration under the Act shall interfere with the use by any person of any bona fide description of the character or quality of his goods.
	Lord Justice Fletcher Moulton in the Perfection Case 26 R.P.C. at page 857 says, 'The question whether a word is or is not capable of becoming distinctive of the goods of a particular maker is a question of fact and is not determined by its being or not being descriptive.'"

On the evidence before me there is a claim not only of two and more years user but also of acquired distinctiveness and I am unable to say that the mark is not capable of distinguishing the goods of the applicant. I accordingly order that the Registry proceed to registration. I am of course aware and have said that the evidence is all one way at this stage. If upon advertisement or registration the mark is opposed by competitors then the tribunal dealing with matter on the totality of the evidence before it can consider and make a finding of fact whether the mark is capable of distinguishing the goods of the applicant or otherwise.

7. As to (3) it is said that insofar as the specification of goods covered by the application is "contact lenses" and if the mark were used in respect of hard lenses it would be likely to deceive in contravention of section 12(1). This can easily be overcome by limitation of its use to soft contact lenses only and so I order.

8. There is one other matter to which I want to refer and that is (4), the matter of foreign registrations. Mr. Catley said:

"So far as the other registrations of the mark in foreign countries are concerned no details of these were applied and I do not make any comment or place any reliance thereon. The circumstances under which such registrations were obtained and the principles of law applicable are not known to me and cannot influence this decision. The decision of Mr. Moorby reported in (1976) R.P.C. at page 694 is however a decision given on the very Act on which our Trade Marks Ordinance is based and reference to that decision is in my view both appropriate and correct."

There is clear evidence that the trade mark is registered in New Zealand, Singapore, Malaysia. These are all friendly commonwealth countries with whom we trade. The latter two are near enough to be called neighbours. Decisions from their courts are cited in our courts. Ought our Trade Marks Registry just turn a blind eye to the Laws of Trade Marks of such countries. I think not and in this I find support in 10th Kerley's at page 146 para. 8-67.

	"Use of registration abroad
	On an application to register a mark for use in the United Kingdom, it is distinctiveness in the United Kingdom that is in question. Thus extent of registration and use of the mark abroad are of secondary significance, if any.
	1. In Ford-Werke A.G.'s Application, Lloyd-Jacob J. held that in the absence of information as to the conditions obtaining in overseas territories, facts as to user and registration abroad and the association of the applicant with the world-wide activities of the Ford organisation were not circumstances establishing factual adaptability within section 9(3)(b). So far as registration in Part B is concerned, it is submitted that evidence that the mark was distinctive in markets where conditions were proved to be similar might well help to establish the necessary capacity to be distinctive here.
	2. In an application to register a foreign geographical name, the fact that the mark was registered in the geographical area concerned was taken into account as a "special circumstance" under section 9(3): but it did not suffice to make the mark registrable here without evidence of distinctiveness in fact.
	In determining whether a mark limited to use for export is adapted to distinguish, evidence as to use and distinctiveness abroad is admissible and should be taken into consideration."

9. The appeal is allowed with costs.

Representation:

Andrew Liao (Deacons) for Applicant.