283 [No. 12] 28th April 1977 [1977] R.P.C.

IN THE HIGH COURT OF JUSTICECHANCERY DIVISION

Before:

M R . JUSTICE GRAHAM

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21st, 22nd, 23rd April and 1st May, 1975

TEXTRON INCORPORATED AND TEXTRON LIMITED V. HENRY C. STEPHENS LIMITED AND BLICK OFFICE EQUIPMENT LIMITED*

Trade mark Infringement Stapling machines and staples Whether TITCH an infringement of BOST1TCH Whether likely future conduct of plaintiffs and defendants relevant Action dismissed. Trade Marks Act 1938, section 4. The plaintiffs were the registered proprietors of the trade mark BOST1TCH, registered in classes 6 and 39 for stapling machines or staplers and staples for use therewith. The defendants marketed a small stapler and staples under the trade mark TITCH. Over the preceding five years the defendants had sold about ten times as many staplers as the plaintiffs, the defendants selling through retail 15 stationers while the plaintiffs' sales were almost entirely direct sales to big commercial users. The plaintiffs stated that they were contemplating going into the retail trade. The plaintiffs adduced no evidence of any actual confusion, nor any evidence from those involved in the trade as to the likelihood of confusion if the plaintiffs' and defendants' goods were stocked and sold alongside each other. 20 Held, (1) That the court ought to consider the question of possible confusion on the assumption that the plaintiffs would go into the retail trade, this being justified by their registration; but that, this being an infringement action, the court was only concerned with what the defendants had done and were doing, and not with what they might do in the future; (2) That in the absence of any evidence of confusion or likely confusion, it could not be said that the word TITCH as used by the defendants as a trade mark so nearly resembled the plaintiffs' mark BOST1TCH as to be calculated to deceive, and therefore that there was no infringement. 10

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Saville Perfumery Ltd. v. June Perfect Ltd. (1941) 58 R.P.C. 147 and (1941) 58 30 R.P.C. 174, applied. Additional case referred to in the judgment: de Cordova v. Vick Chemical Co. (1951) 68 R.P.C. 103.
* Also reported [1975] F.S.R. 356.

284

Graham, J.

Textron Inc. and Another v. H. C. Stephens Ltd. and Another

[1977] R.P.C

Additional cases cited in argument: Bale& Church Ltd. v. Sutton, Parsons & Sutton (1934) 51 R.P.C. 129. Electrolux Ltd. v. Electrix Ltd. (1954) 71 R.P.C. 23. General Electric Co. v. Consolidated Electrodynamics Corporation [1963] R.P.C. 1. Lever Bros. Ltd. v. Sunniwhite Products (1949) 66 R.P.C. 84. Parkington's Application (1946) 63 R.P.C. 171. Ravenhead Brick Co. v. Ruabon Brick Co. (1937) 54 R.P.C. 341. Rosedale Products Ltd.'s Application [1968] F.S.R. 93. Style Patterns Ltd. v. K-Tel International (U.K.) Ltd. [1974] F.S.R. 499.
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This was an action for infringement of trade mark brought by Textron Incorporated and Textron Limited against Henry C. Stephens Limited and Blick Office Equipment Limited. The facts of the case appear from the following judgment. John Burrell, Q.C. and D. J. Micklethwait, instructed by Frere, Cholmley & Co., appeared on behalf of the plaintiffs, Robin Jacob, instructed by Cameron, Kemm, Nordon & Co., appeared on behalf of the defendants.

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Graham, J.This is a straightforward case of alleged infringement of trade mark uncomplicated by any other issue such as passing-off. The plaintiffs are a U.S. corporation from Providence, Rhode Island, and their U.K. subsidiary, and the defendants are both subsidiaries of the Royal Sovereign Pencil Company Limited, of Drayton Park, London. The plaintiffs are the registered proprietors of the trade 20 mark BOSTITCH, registered in classes 6 and 39 under Nos. 410,208 and 517,736, for stapling machines, or staplers, and staples for use therewith. The defendants market a small stapler under the name TITCH, their actual stapler and the package in which it is sold being exhibit P.7. Fortunately, counsel for the parties have very sensibly made a number of con- 25 cessions to each other, so that the actual issues in the case have been narrowed and simplified. The case has thus lasted only a short time, and the vital issue to be decided has clearly emerged from the start. It will be useful, first of all, to mention and get out of the way a number of the matters both of law and fact which have been agreed: 30 (1) The relevant figures for the plaintiffs' staplers are to be found on page 72 of the correspondence and for the defendants' staplers on page 73. Thus it is seen that the quantities of staplers sold by the plaintiffs during the years 1969 to 1973 inclusive is approximately 28,600 or some 5,700 per annum. The defendants, on the other hand, have during the years 1970 to 1974 35 inclusive sold some 248,000 staplers or an average of approximately 50,000 per annum for the last 5 years. (2) The word TITCH has been used by the defendants as a trade mark; that is, to denote the origin of the goods in themselves. (3) The markets in which the parties operate are different in that the plaintiffs' 40 sales are, with one exception mentioned hereafter, almost entirely direct sales to big commercial users and are effected by the activities of commercial

285 [No. 12] Chancery Division Graham, J.

travellers from a number of depots throughout the country. The defendants, on the other hand, operate in what may be called the normal retail stationery trade. Their goods appear in the shops of retail stationers and are sold by them to the public. The exception, in the case of the plaintiffs, is the City of Newcastle, where an unusual position arose as a result of what may be described as a historical accident, and where there are in fact two retail outlets for the plaintiffs' goods. There is also one other such retail outlet, "Offisales", in Belfast. (4) The range of staplers offered by the plaintiffs is extensive and includes, inter alia, large industrial stapling machines as well as the recently introduced small stapler known as the Regal Model B15, exhibit P.8. The range of their machines is illustrated in their catalogue, exhibit P.I. The only stapler of the defendants with which we are concerned is P.7 already referred to. (5) There is no evidence in the case of any actual confusion as a result of what the defendants have done. This is obviously an important point. (6) The matter is governed by section 4 of the Trade Marks Act 1938, and whether a mark which is, as here, admittedly being used as a trade mark is an infringement of a registered trade mark or not depends upon whether such alleged infringing mark is identical with the registered mark or so closely resembles it as to be calculated to deceive. (7) In deciding whether there is infringement or not, attention must be directed to the defendants' mark itself and not to any added matter used with it which might be relevant if passing-off were being considered. So here, the only comparison which can properly be made is between TITCH and BOSTITCH. (8) The question is for the court itself to decide and is not to be surrendered to the witnesses, but of course in coming to its conclusion the court will pay attention to any evidence relevant to the point that confusion is or is not likely in practice.
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I am satisfied that BOSTITCH is a well-known trade mark. In fact, owing to previous litigation in these courts, it is perhaps better known in legal circles than other marks for the same products and to that extent the courts' knowledge of the mark may be a slightly false guide as to its notoriety. It is derived from a contraction of the full name of the original proprietors of the marks, The Boston 35 Wire Stitcher Company. Its pronunciation is straightforward as it is spelt, and it seems always to be used in practice in full with equal emphasis on its two syllables. To my mind, when used as it is in connection with staplers, staples and similar apparatus, it clearly conveys the idea of stitching or stitches. No evidence to the contrary was given by the plaintiffs. The defendants' mark, as their evidence established (see Ellis, transcript pages 33 and 34), was chosen by them because they wanted a word meaning "small" for their new, small stapler. The evidence shows that there are a number of such small staplers on the market made by other manufacturers and many of them are called by words indicating the small size such as Tot, Mini, Bambi, Cub, Baby, Cadet, 45 Junior and Nipper. (See Cole, transcript page 17). TITCH, whether spelt with two

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286 Graham, J. Textron Inc. and Another v. H. C. Stephens Ltd. and Another [1977] R.P.C.

t's or only one, is a slang word originally derived from the name of the comedian, Little Titch. It does not yet appear in the Oxford Dictionary, but is about to do so in the third volume of supplement to that dictionary. It is well recognised as meaning small and is used adjectivallysee, for example, the small tennis set, exhibit D.3, and the children's storybook called "Tich". As applied to a stapler it 5 conveys to me the idea of something small. The meanings conveyed by the two words BOSTITCH, and TITCH, being as I have stated above, it seems to me that prima facie confusion is unlikely and therefor one ought not to hold that there is infringement. It is, however, desirable, before coming to a final conclusion, that one should have in mind the principles 10 which the authorities have established as being relevant when such a comparison is to be made. There are many such authorities, well summarised, for example, in Kerly on Trade Marks, 10th Edition, page 455 onwards, and a number of which were cited to me. When reading these authorities it is important to bear in mind the somewhat different considerations which apply when the comparison is being 15 made in the three possible types of case, namely, registration with or without opposition, infringement, and passing-off. In the first, one is concerned not only with the protection of the opponent, if present, but also of the general public and other owners of any similar marks; in infringement proceedings one is concerned for practical purposes only with the two marks themselves; whilst in passing-off one 20 is concerned with the defendant's mark in the surrounding circumstances in which it is used and with the question whether by such use there is a false representation that the defendant's goods are those of the plaintiff. Here I am concerned only with infringement and for that purpose I cannot quote any words which are clearer and more to the point than those of Sir Wilfrid Greene, 25 M.R., in Saville Perfumery Ltd. v. June Perfect Ltd. and Another (1941) 58 R.P.C. 147 at 161: "The question therefore is: 'Does the mark JUNE used by the respondents so nearly resemble the appellants' registered mark as to be likely to deceive or cause confusion?' I use the language of section 4(1) of the Trade Marks Act 1938, which all counsel agreed merely embodies the pre-existing law. It is possible that the words 'or cause confusion' have in some measure altered the law. I do not pause to examine this question, since my conclusion would be the same if those words were omitted from the definition of infringement. The learned judge answered this question adversely to the appellants by an ocular comparison between the two marks. But the problem is not to be resolved by so simple a method. It is true that the ultimate question relates to the resemblance of one mark to the other, but before it can be answered certain relevant matters must be considered. The statute law relating to infringement of trade marks is based on the same fundamental idea as the law relating to passing-off. But it differs from that law in two particulars, namely, (1) it is concerned only with one method of passing-off, namely, the use of a trade mark, and (2) the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor. Accordingly, in considering the question of infringement the courts have held, and it is now expressly provided by the Trade Marks

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287 [No. 12] Chancery Division Graham, J.

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Act 1938, section 4, that infringement takes place not merely by exact imitation, but by the use of a mark so nearly resembling the registered mark as to be likely to deceive. The questions therefore arise: First, is there a resemblance, and, second, is the resemblance so close as to be likely to cause deception? In answering these questions, ocular comparison is, of course, an important matter to be taken into consideration; in some cases it may be conclusive one way or the other. But if the court were to confine itself to this test the protection afforded by the law of trade marks would in many cases prove illusory. It would be still more illusory if, as Mr. Lloyd-Jacob contended, no witness could be listened to who was not prepared to say that when he saw the mark complained of he had in his mind the actual registered mark and made a comparison between the two. Propositions of this kind, if accepted, would, as it appears to me, divorce the law of trade marks from business realities. In the case of certain goods, traders, and perhaps the public too, may be expected to receive so strong an impression of the actual mark as to lead to the conclusion that nothing short of a degree of resemblance apparent to the eye will cause the necessary likelihood of deception. On the other hand, many articles do not fall within this category. In the present case, for example, the evidence makes it clear that traders who have to deal with a very large number of marks used in the trade in which they are interested do not, in practice, and indeed cannot be expected to, carry in their heads the details of any particular mark, while the class of customer among the public which buys the goods does not interest itself in such details. In such cases the mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection. Such a feature is referred to sometimes as the distinguishing feature, sometimes as the essential feature, of the mark. I do not pause to examine these appellations, since the idea conveyed is free from ambiguity. In deciding whether or not a feature is of this class, not only ocular examination, but the evidence of what happens in practice in the particular trade is admissible. In the present case the evidence leaves me in no doubt as to the word JUNE being the distinguishing or essential feature of the appellants' mark. It is by this word that traders and members of the public who see the mark on the goods which they purchase describe the appellants' goods, and indeed I should have been surprised if it had been otherwise. Now the questions of resemblance and the likelihood of deception are to be considered by reference not only to the whole mark, but also to its distinguishing or essential features, if any. If authority be wanted for this proposition, it is to be found in the decision of this court in Bale and Church Ltd. v. Sutton Parsons & Sutton and Astrah Products (1934) 51 R.P.C. 129 where at page 141 Romer, L.J., as he then was, quotes with approval what counsel on both sides agreed was a correct statement of the test to be applied. The quotation was from page 445 of the late Sir Duncan Kerly's work on trade marks where he says: 'Infringement is the use by the defendant for trade purposes upon or in connection with goods of the kind for which the plaintiff's right to exclusive use exists, not being the goods of the plaintiff, of a mark identical with the plaintiff's mark or comprising some of its essential features, or colourably resembling it so as to be calculated to cause goods to be taken by ordinary purchasers for the goods of the plaintiff'. Applying this test and considering the evidence and the appearance of the two marks, I have come to the clear conclusion that the word JUNE as used by the respondents as a trade mark so nearly resembles the appellants' mark as to be calculated to

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288

Graham, J.

Textron Inc. and Another v. H. C. Stephens Ltd. and Another

[1977] R.P.C.

deceive and that infringement has taken place for which the appellants are entitled to the appropriate remedies". This passage was expressly approved by the House of Lords in the same case, starting at page 171, and the case has been repeatedly quoted and followed: see, for example, the judgment of the Privy Council delivered by Lord Radcliffe in de 5 Cordova v. Vick Chemical Co. (1951) 68 R.P.C. 103. Now in the present case it is true that, except in Newcastle, the plaintiffs do not sell their goods retail but by means of travellers visiting big consumers. They say that they are contemplating going into the retail trade and, for instance, their Regal 15 is the sort of small stapler they might sell, and they urge me that I should, 10 as a matter of law, asume that they will do so and should consider what is likely to happen when they do. At one time it was also contended that I ought to consider not only what the defendants are actually doing now and have done in the past but also, on what basis I am not clear about, what they might do in the future. The latter I refuse to do because, in my judgment, it would be quite wrong if I did. 15 I am concerned, in an infringement case, in contrast perhaps with a registration case, with what the defendants are doing and not with what they might do. Non constat that they will ever do anything different from what they are doing now. On the other hand, it would be a perfectly fair use by the plaintiffs of their mark if they entered the retail trade in a big way and used it on small staplers. Such 20 user would be quite justified by their registration which is not in any way limited to any particular market. I accept, therefore, that I ought to consider the question of possible confusion on this assumption, and it is I think the furthest the plaintiffs can legitimately ask the court to go in their favour. It is agreed that there has been no confusion whatever to date, though I think it is a fair inference, as the defendants suggested, that there must have existed opportunities for confusion in the hands of users in offices of both the plaintiffs' and the defendants' goods. It is also, to my mind, striking that the plaintiffs have produced no evidence whatsoever from, for example, wholesalers or retailers as to what they thought would happen if the plaintiffs' and defendants' goods were stocked and sold alongside each other in warehouses and retail shops. If the evidence could have been obtained, it would have been easy to show that, for example, retailers feared that there would be confusion among their staff and customers if the goods of the plaintiffs and defendants were stocked and sold alongside each other under their respective marks. In the absence of such evidence, and the onus being on the plaintiffs in an infringement action to establish confusion, it would, in my judgment, even on the assumptions I am asked to make, be quite wrong to hold that there is infringement on the basis that confusion is likely to result. I do not consider that it would be right to come to any such conclusion on the arguments and material at present before me. Jacob.There is one other matter, my Lord, so far as the costs of the action are concerned. I ask that your Lordship should include the costs of the transcript of the evidence, which turned out to be so useful in the end. My friend would usually pay for his share. Graham, J.It was used by the plaintiffs, I must admit. 45 25
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289 [No. 12] Chancery Division Graham, J.

Jacob.And by the defendants. Graham, J.Yes; as well as by the defendants. I think that you ought to divide the costs of the transcript; I think that must be right. Jacob.Because I won, they will in fact be costs in the action. Graham, J.I think that the proper order is the order which is very often agreed, which is that the costs of the transcript should be shared between the parties, a copy being provided for the judge. I think that is a sensible order, and the more that people can agree that sort of order the better, because I am sure that having a transcript prepared saves a great deal of time in court, because things go on very 10 much more quickly. In the end it pays for itself, I think. Action dismissed with costs. Counterclaim dismissed with costs. J. D. D. 5

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