TRADE MARKS CRITERIA FOR EXERCISE OF REGISTRARS DISCRETION : WHETHER USE OF WORD AS SURNAME PREVENTS REGISTRATION AS NON-DESCRIPTIVE WORD
TRADE MARKS ACT 1905, ss. 16, 47
Mr Clem A. Hack a patent attorney acting on behalf of a principal made application to the Registrar of Trade Marks to register as a trade mark the word 'Derry' in combination with the device of a shamrock.
The application was examined and accepted.
Objection was taken to the use of the shamrock and the applicant amended his application confining it to the word 'Derry'. The application was again examined and gazetted.
Some further steps to enable opposition to be entered upon were taken and the question whether the word 'Derry' was registrable was discussed although the applicant protested against such discussion.
Later the parties intending to oppose notified the Registrar that their clients would withdraw their objections.
Since then the Registrar has intimated that on giving the matter further consideration the examiner had reported that the mark is not a registrable trade mark being apparently the name of a person.
The applicant has raised the question whether the Registrar having accepted the application has now power to raise any objection.
The Registrar cites in support of his position an opinion of the Crown Solicitor in which the Crown Solicitor said that he did not think the Registrar should register any trade mark he knows at any time before actual registration because of facts brought out by opposition or by discovery in his office the applicant is not entitled to.
The Comptroller-General of Customs has referred the matter to me for opinion and asks two questions, viz:
- Can the Registrar after acceptance of an application refuse to complete registration notwithstanding there is no opposition? and
- Is the objection taken by the Registrar a valid one?
As regards question (1), I am of opinion that the answer is yes, but only in exceptional cases. The Trade Marks Act 1905, section 47 clearly indicates an intention that, as a general rule, a trade mark which has been accepted and not opposed is to be
registered. Probably fraud, misrepresentation or mistake would be good grounds for departing from the rule. I agree with the opinion of the Crown Solicitor mentioned by the Registrar but I think that that opinion should be read in connection with the facts of the case in which it was given and cannot be accepted as a general authority to the Registrar to reopen an application after acceptance.
As regards question (2), I am of opinion that the objection of the Registrar is not a valid one. The word 'Derry' is an actual word in the English language and is also a word which is sometimes used as a surname. I do not think that the fact of its being sometimes used as a surname prevents it from being registered as a non-descriptive word under paragraph (e) of section 16 of the Act. The English Act(1) differs from our Act in that it bars a non-descriptive word if the word is, in its ordinary signification, a surname. Probably the word 'Derry' is not in its ordinary signification a surname and could be registered under the English Act, but as the provision in our Act is different the question need not be considered.
I should be inclined to think that the application might reasonably have been rejected in the first instance on the ground that the word 'Derry' (as an unofficial but very common abbreviation of 'Londonderry') is a geographical name used or likely to be understood in a geographical sense-section 16 (e).(2)
[Vol. 7, p. 233]
(1)Trade Marks Act 1905 (Imp.).
(2) The Comptroller-General of Customs sought further advice in this matter on 7 October 1909 as follows:
'With reference to the last paragraph of the within, seeing the application was originally accepted, that the subsequent rejection was based on the ground that the name was a surname, can the Registrar now reject for the reason mentioned in the paragraph’.
Mr Garran on 9 October 1909 [Vol. 7, p. 235] replied:
'No—for the reasons given in answer to question (1) in the opinion’.
* See also Opinion No. 362.