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28 3[No.12] 28th April 1977 [1977] R.P.C .

I N T H E H I G H C O U R T OFJ U S TI C E C H A N C ER Y D I V I S I O NBefore: M R . JUS TICE GRAHAM

21st, 22nd, 23rd April and 1st May, 1975TEXTRON INCORPORATED AND TEXTRON LIMITEDV.

5 HENRY C. S T E PH E N S L I M I T E D A ND B L I C K O F F I C E E Q U I P M E N T L I M I T E D *Trade mark Infringement Stapling machines and staples WhetherTITCH an infringement of BOST1TCH Whether likely future condu ct ofplaintiffs and defendants relevant Action dismissed.Trade Marks Act 1938,section4.

10 The plaintiffs were the registered proprietors of the trade mark BOST1TCH ,registered inclasses6and39for stapling machines orstaplers andstaples for usetherewith. The defendants marketed a small stapler and staples under the trademark TITCH Over the preceding five years the defendants had sold about tentimes as many staplers as the plaintiffs, the defendants selling through retail15 stationers while the plaintiffs' sales were almost entirely direct sales to bigcommercial users. Theplaintiffs stated that they were contemplating going into theretail trade. The plaintiffs adduced no evidence of any actual confusion, nor anyevidence from those involved in the trade as to thelikelihood of confusion if theplaintiffs' anddefendants' goods w ere stocked andsold alongside each other.

20 Held, 1) That the court ought to consider the question of possible confusionon the assumption that the plaintiffs would go into the retail trade , this beingjustified by their registration; but that, this being aninfringement action, the courtwas only concerned with what the defendants haddone and were doing, and notwith what they mightdo inthe future;25 2) That in theabsenceof anyevidence ofconfusion or likely confusion, it couldnot be said that the word TITCH as used by the defendants as a trade mark sonearly resembled theplaintiffs' mark BOST 1TCH as to be calculated to deceive,and therefore that there wasno infringement.

Saville Perfumery Ltd. v. Ju ne Perfect Ltd . (1941) 58R.P.C. 147 and (1941)5830 R.P.C. 174,appliedAdditional case referredto inthe judgm ent:de Cordova v. Vick Chemical Co. (1951) 68 R.P .C. 103.

*Also reported [1975] F.S.R. 356.

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8Graham J. Textron Inc. and Another v. [ 977]R.P.CH. C. Stephens Ltd. and AnotherAdditional cases cited in argument:Bale ChurchLtd.v.Sutton,Parsons Sutton(1934)5 R.P.C. 129.ElectroluxLtd.v.ElectrixLtd.(1954)7 R.P.C. 23.General ElectricC o.v.Consolidated Electrodynamics Corporation[1963] R.P.C. 1.LeverBros.Ltd.v.Sunniwhite Products(1949) 66 R.P.C. 84.Parkington'sApplication(1946) 63 R.P.C. 171.RavenheadBrickCo.v.Ruabon BrickCo.(1937) 54 R.P.C. 341.Rosedale ProductsLtd.'s App lication[1968] F.S.R. 93.StylePatternsLtd.v.K-TelInternational (U.K.)Ltd.[1974] F.S.R. 499.

This was an action for infringement of trade mark brought by Textron Incor-porated and Textron Limited against Henry C. Stephens Limited and Blick OfficeEquipment Limited. The facts of the case appear from the following judgment.John Burrell, Q.C.andD. J. Micklethwait,instructed byFrere, Cholmley Co.,appeared on behalf of the plaintiffs, Robin Jacob, instructed byCameron, Kemm,Nordon Co.,appeared on behalf of the defendants. 15Graham J.This is a straightforward case of alleged infringement of trade markuncom plicated 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 thedefendants are both subsidiaries of the Royal Sovereign Pencil Company Limited,of Drayton Park, London. The plaintiffs are the registered proprietors of the trade 20mark 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 defendantsmarket a small stapler under the name TITCH, their actual stapler and the packagein which it is sold being exhibit P.7.Fortunately, counsel for the parties have very sensibly made a number of con- 25cessions 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 bedecided has clearly emerged from the start.It will be useful, first of all, to mention and get out of the way a number of thematters both of law and fact which have been agreed: 30(1) The relevant figures for the plaintiffs' staplers are to be found on page 72of the correspondence and for the defendants' staplers on page 73. Thus it isseen that the quantities of staplers sold by the plaintiffs during the years1969 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 35inclusive sold some 248,000 staplers or an average of approximately 50,000per annum for the last5years.(2) The word TITC H 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 opera te are different in that the plaintiffs' 40sales are, with one exception mentioned hereafter, almost entirely direct salesto big commercial users and are effected by the activities of commercial



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285[No. 2] 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 stationerytrade. Their goods appear in the shops of retail stationers and are sold by themto the public. The exception, in the case of the plaintiffs, is the City of5 Newcastle, where an unusual position arose as a result of what may bedescribed as a historical accident, and where there are in fact two retailoutlets 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, inter10 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 theirmachines is illustrated in their catalogue, exhibit P.I. The only stapler of thedefendants 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 what15 the defendants have done. This is obviously an important point.(6) The matter is governed by section 4 of the Trade Marks Act 1938, andwhether a mark which is, as here, admittedly being used as a trade m ark is aninfringement of a registered trade mark or not depends upon whether suchalleged infringing mark is identical with the registered mark or so closely20 resembles it as to be calculated to deceive.(7) In deciding whether there is infringement or not, attention must be directedto the defendants' mark itself and not to any added matter used with itwhich might be relevant if passing-off were being considered. So here, theonly comparison which can properly be made is between TITCH and25 BOSTITCH.(8) The question is for the court itself to decide and is not to be surrendered tothe 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 notlikely in practice.30 I am satisfied that BOSTITCH is a well-known trade mark. In fact, owing toprevious litigation in these courts, it is perhaps better known in legal circles thanother marks for the same products and to that extent the courts' knowledgeof the mark may be a slightly false guide as to its notoriety. It is derived from acontraction of the full name of the original proprietors of the marks, The Boston35 Wire Stitcher Company. Its pronunciation is straightforward as it is spelt, and itseems 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 similarapparatus, it clearly conveys the idea of stitching or stitches. No evidence to thecontrary was given by the plaintiffs.40 The defendants' mark, as their evidence established (see Ellis, transcript pages33 and 34), was chosen by them because they wanted a word meaning sm all fortheir new, small stapler. The evidence shows that there are a number of such smallstaplers on the market made by other manufacturers and many of them are calledby 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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286Graham J. Textron Inc. and Another v. [1977] R.P.C .H. C. Stephens Ltd. and Anothert'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 soin the third volume of supplement to that dictionary. It is well recognised asmeaning 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 5conveys to me the idea of something small.

The meanings conveyed by the two words BOSTITCH, and TITCH, being asI have stated above, it seems to me that prima facie confusion is unlikely and there-for 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 10which the authorities have established as being relevant when such a comparison isto be made. There are many such authorities, well summarised, for example, inKerly on Trade Marks, 10th Edition, page 455 onwards, and a number of whichwere cited to me. When reading these authorities it is important to bear in mindthe somewhat different considerations which apply when the comparison is being 15made in the three possible types of case, namely, registration with or withoutopposition, infringement, and passing-off. In the first, one is concerned not onlywith the protection of the opponent, if present, but also of the general public andother owners of any similar marks; in infringement proceedings one is concerned forpractical purposes only with the two marks themselves; whilst in passing-off one 20is concerned with the defendant's mark in the surrounding circumstances in whichit is used and with the question whether by such use there is a false representationthat the defendant's goods are those of theplaintiff.

Here I am concerned only with infringement and for that purpose I cannot quoteany words which are clearer and m ore to the point than those of Sir Wilfrid Greene, 25M.R., inSaville P erfumery 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 respondentsso nearly resemble the appellants' registered mark as to be likely to deceiveor cause confusion?' I use the language of section 4(1) of the Trade Marks Act 301938, which all counsel agreed merely embodies the pre-existing law. It ispossible that the words 'or cause confusion' have in some measure altered thelaw. I do not pause to examine this question, since my conclusion would be thesame if those words were omitted from the definition of infringement. Thelearned judge answered this question adversely to the appellants by an ocular 35comparison between the two marks. But the problem is not to be resolved byso simple a method. It is true that the ultimate question relates to the re-semblance of one mark to the other, but before it can be answered certainrelevant matters must be considered. The statute law relating to infringementof trade marks is based on the same fundamental idea as the law relating to 40passing-off. But it differs from tha t law in two particu lars, namely, (1) it isconcerned only with one method of passing-off, namely, the use of a trademark, and (2) the statutory protection is absolute in the sense that once a markis shown to offend, the user of it cannot escape by showing that by somethingoutside the actual mark itself he has distinguished his goods from those of 45the registered proprietor. Accordingly, in considering the question of infringe-ment the courts have held, and it is now expressly provided by the Trade M arks



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Act 1938, section 4, that infringement takes place not merely by exactimitation, but by the use of a mark so nearly resembling the registered markas to be likely to deceive. The questions therefore arise: First, is there aresemblance, and, second, is the resemblance so close as to be likely to cause5 deception? In answering these questions, ocular comparison is, of course, animportant matter to be taken into consideration; in some cases it may be con-clusive one way or the other. But if the court were to confine itself to thistest the protection afforded by the law of trade marks would in many casesprove illusory. It would be still more illusory if, as Mr. Lloyd-Jacob contended,10 no witness could be listened to who was not prepa red to say that when hesaw the mark complained of he had in his mind the actual registered mark andmade a comparison between the two. Propositions of this kind, if accepted,would, as it appears to me, divorce the law of trade marks from businessrealities. In the case of certain goods, traders, and perhaps the public15 too, may be expected to receive so strong an impression of the actua lmark as to lead to the conclusion that nothing short of a degree of resemblanceapparent to the eye will cause the necessary likelihood of deception. On theother 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 a20 very large num ber of marks used in the trade in which they are interested donot, in practice, and indeed cannot be expected to, carry in their heads thedetails of any particular mark, while the class of customer among the publicwhich buys the goods does not interest itself in such details. In such casesthe mark comes to be remembered by some feature in it which strikes the eye25 and fixes itself in the recollection. Such a feature is referred to sometimes asthe distinguishing feature, sometimes as the essential feature, of the mark. Ido not pause to examine these appellations, since the idea conveyed is freefrom ambiguity. In deciding whether or not a feature is of this class, not onlyocular examination, but the evidence of what happens in practice in the par-30 ticular trade is admissible. In the present case the evidence leaves me in nodoubt as to the word JUNE being the distinguishing or essential feature of theappellants' mark. It is by this word that traders and members of the publicwho 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.

35 Now the questions of resemblance and the likelihood of deception are to beconsidered by reference not only to the whole mark, but also to its dis-tinguishing or essential features, if any. If authority be wanted for this proposi-tion, it is to be found in the decision of this court inBale and Church Ltd. v.Sutton Parsons Sutton and Astrah Products (1934) 51 R.P.C. 129 where at40 page 141 Rom er, L.J., as he then was, quotes with approval what counsel onboth sides agreed was a correct statement of the test to be applied. The quo-tation was from page 445 of the late Sir Duncan Kerly's work on trade markswhere he says: 'Infringement is the use by the defendant for trade purposesupon or in connection with goods of the kind for which the plaintiff's right45 to exclusive use exists, not being the goods of theplaintiff, of a mark identicalwith the plaintiff's mark or comprising some of its essential features, orcolourably resembling it so as to be calculated to cause goods to be taken byordinary purchasers for the goods of the plaintiff'. Applying this test andconsidering the evidence and the appearance of the two marks, I have come50 to the clear conclusion that the word JUN E as used by the respondents asa trade mark so nearly resembles the appellants' mark as to be calculated to



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88Graham J. Textron Inc. and Another v. [1977] R.P.C .H. C. Stephens Ltd. and Another

deceive and that infringement has taken place for which the appellants areentitled to the appropriate remedies .This passage was expressly approved by the House of Lords in the same case,starting a t 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 5Cordovav.VickChemicalCo.(1951) 68 R.P.C. 103.Now in the present case it is true that, except in Newcastle, the plaintiffs do notsell their goods retail but by means of travellers visiting big consumers. They saythat they are contemplating going into the retail trade and, for instance, theirRegal 15 is the sort of small stapler they might sell, and they urge me that I should, 10as a matter of law, asume that they will do so and should consider what is likelyto happen when they do. At one time it was also contended that I ought to considernot only what the defendants are actually doing now and have done in the pastbut 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 judgm ent, it would be quite wrong if I did. 15I am concerned, in an infringement case, in contrast perhaps with a registrationcase, with what the defendants are doing and not with what they might do. Nonconstat 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 markif they entered the retail trade in a big way and used it on small staplers. Such 20user would be quite justified by their registration which is not in any way limitedto any particular market. I accept, therefore, that I ought to consider the questionof possible confusion on this assumption, and it is I think the furthest the plaintiffscan 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 25is a fair inference, as the defendants suggested, that there must have existedopportunities 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 haveproduced no evidence whatsoever from, for example, wholesalers or retailers asto what they thought would happen if the plaintiffs' and defendants' goods were 30stocked and sold alongside each other in warehouses and retail shops. If theevidence could have been obtained, it would have been easy to show that, forexample, retailers feared that there would be confusion among their staff andcustomers if the goods of the plaintiffs and defendants were stocked and soldalongside each other under their respective marks. In the absence of such evidence, 35and 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 quitewrong to hold that there is infringement on the basis that confusion is likely toresult. I do not consider that it would be right to come to any such conclusion onthe arguments and material at present beforeme. 40

Jacob. There is one other m atter, my Lord, so far as the costs of the actionare concerned. I ask that your Lordship should include the costs of the transcriptof the evidence, which turned out to be so useful in the end. My friend wouldusually pay for his share.Graham J.It was used by the plaintiffs, I m ust admit. 45



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Jacob.Andby the defendants.Graham J.Yes; as well as by the defendants. I think that you ought to dividethe costs of the transcript; I think that must be right.Jacob.BecauseI won, they will in fact be costs in the action.

5 Graham J.I think tha t 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 copybeing provided for the judge. I think that is a sensible order, and the more thatpeople can agree that sort of order the better, because I am sure that having atranscript prepared saves a great deal of time in court, because things go on very10 much more quickly. In the end it pays foritself,I think.

Action dismissed with costs. Counterclaimdismissedwith costs. J D. D.

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