A Trade-Mark Must Not Be Similar to a Trade-Mark previously Registered for the same Class of Merchandise
When a pictorial or symbolic device has been registered, registration is refused to any other mark, for the same class of merchandise, composed of words describing the pictorial or symbolic device already registered. Or, vice versa, if the wording has been registered first, a symbol with the same meaning will be denied registration. For example:—
A trade-mark consisting of the conventional representation of a fox, unaccompanied by lettering, would not be a valid trade-mark if the word "Fox" had already been registered for the same class of merchandise. In either case the goods would be called the "Fox" brand.
The practice is to refuse registration of a mark in cases where, although there may be no literal similarity, there is a similarity in ideas.
"Edelweiss-Maltine" was refused registration on the ground that it conflicted with "Maltine", a trade-mark already registered for goods of the same description.
"Certosa" was refused registration as a trade-mark for flour on account of its similarity to the word "Ceresota" already registered.
The Patent Office has held that in an interference between two trade-marks, one consisting of the pictorial representation of a bouquet of flowers, and the other consisting of the word "Bouquet", applied to the same class of goods, that the marks were identical in meaning.
"Nassac" having been registered as a trade-mark, the word "Nayassett" was refused registration on the ground of similarity. Thereupon, the owner of the "Nayassett" mark obtained the consent of the owners of "Nassac" to the registration of "Nayassett". This did not alter the case, in the opinion of the Commissioner of Patents, who held that the law was mandatory, and was not affected by agreement among the owners of conflicting marks.
In the case of McLean Co. v Adams Co. (136 Official Gazette, 440) it was held that there was no conflict between "Victoria" and "Victor", a mark already registered for the same class of merchandise. A picture of Queen Victoria's head was shown on a medallion, associated with the word "Victoria". The "Victor" trade-mark consisted of the words "The Victor" with a device showing a knight on horseback. As the similarity between the marks was obviously slight and superficial, and was outweighed by the dissimilar features, it was held that the "Victoria" trade-mark was entitled to registration.
It was held that there was no conflict between two trade-marks for stove polish, one consisting of the word "Raven" with the representation of a raven sitting on a limb of a tree, and the other consisting of the word "Crow" associated with a picture of a crow, also perched on a limb, but in a different position.
In case of conflicting marks the test of similarity is whether the marks are sufficiently alike in sound or in appearance, or in intention, to mislead the purchaser.