to the idea of the pictorial representation is determined by the word "Viking" which appears at the top of the trade mark. The trade mark which is sought to be registered has in the forefront the representation of a warrior, which is generally accepted as that of a viking. It may, as suggested by the words "The Sea King" which appear in the trade mark, be the representation of an historical sea-king, but the signification of the words "Sea-King" and viking has, according to dictionaries, become confused, and among ordinary people the words are regarded as synonymous. Whatever distinction there may be between a sea-king and a viking the idea of the applicant's trade mark is built upon the Viking Age, and notwithstanding that the representation of the warrior may be a true representation of a Sea-King, it suggests in the general field of acceptation, the representation of a viking. (Australian Official Journal of Trade Marks, Sept. 30, 1921.)

Brazil

Brazilian Supreme Court Decides Berne Trade Mark Registration Not Effective in Brazil Unless Published.

BY RICHARD P. MOMSEN Member of the Bar of Brazil.

By a recent judgment, the Supreme Court of Brazil has decided that international trade mark registrations made in Berne, according to the Berne International Convention, are not effective in Brazil, unless a full description of such registrations is published in the "Diario Official" (Official Gazette). The court held that publication is an

essential requisite for the validity of a trade mark in Brazil, from which it follows as a necessary consequence that a Berne registration in order to be effective here, must be published in the "Diario Official," in the same way as a Brazilian registration.

The facts of the case involved in this decision are as follows: One José Antonio Martins Junior, a citizen of Portgual, registered his trade mark "Solar" under No. 8840 at the Berne Trade Mark Bureau, a copy of this registration being duly deposited at the "Junta Commercial” (Board of Trade) of Rio de Janeiro. The trade mark, however, was not published in Brazil, in the manner of Brazilian trade marks. Later, on May 11, 1914, the Rio de Janeiro firm of Camillo Mourao & Co. registered a somewhat similar trade mark at the Board of Trade of Rio de Janeiro under No. 9667, whereupon José Antonio Martins Junior brought an action for cancellation, based upon his prior international registration No. 8840. The decision of the lower court, handed down on December 21, 1914, dismissed the action of the plaintiff on the ground that publication was a necessary element for the validity of a trade mark, and that the plaintiff, not having published his trade mark, had no right to claim the guarantees of the law governing the matter. The case was appealed to the Supreme Court which, on November 1, 1916, confirmed the decision of the lower court, on the same grounds, with the additional consideration that the appellee had proved that his trade mark was not so similar as to cause confusion with the trade mark of the appellant. Upon motion for reversal of judgment, the case was again considered by the Supreme Court, and on April 9, 1921, a final decision

was handed down denying the motion, and re-confirming the original decision, on the ground of the plaintiff's having failed to publish his trade mark, the matter of similarity between the two trade marks in question being secondary.

The bearing which this decision has upon the trade mark situation in Brazil is very important. Of the 20,000 international registrations made at Berne, none has been published in Brazil, so that the Supreme Court's decision practically annuls them so far as this country is concerned.

In the matter of the Berne registrations, the America merchant is not vitally interested, because the United States is not a party to the Berne Convention. But as the above decision reflects upon the validity of the registration of trade marks at Havana, under the Buenos Aires Convention of 1910, the matter becomes of vital importance to the American merchant. According to the Buenos Aires Convention, two inter-American trade mark bureaus were provided for, one at Havana, to serve for the northern group and one at Rio de Janeiro, for the southern group. Registrations made at one bureau are transferred to the other, without additional registration, and become effective for the whole group of American republics. The Havana registrations, however, are deposited in Brazil under the same procedure as that of the Berne registration, that is to say, without publication. Insofar as Brazil is concerned, therefore, the decision of the Supreme Court in José Antonio Martins Junior vs. Camillo Mourao & Co., denying the validity of a Berne registration for lack of publication, equally denies the validity of the Havana registrations

which are deposited in Brazil in the

same manner.

Bulgaria

Trade Mark Decision Holds Letter "y" Registrable.

TRIBUNAL OF THE FIRST INSTANCE OF SOFIA.

Decision regarding the Trade Mark “Y” belonging to Fairbanks, Morse & Co., of Chicago.

Appellant: G. Strezoff, Attorney for the Corporation Fairbanks, Morse & Co., of Chicago, Illinois, vs. the decision of the Trade Mark Office of the Ministry of Commerce of Sofia, of June 25, 1920, refusing registration of the trade mark "Y."

The Tribunal of First Instance of Sofia, Civil Chamber, upon the appeal interposed by Mr. Strezoff, Attorney, producing power of attorney from Fairbanks, Morse & Co., of Chicago,

Considering:

That the Trade Mark Office of Sofia has refused through the aforementioned decision, No. 363, of June 25, 1920, to the appellant the registration of its trade mark originally registered in the United States of America and this for the reason that Art. 1 of the Trade Mark Law is thereto opposed; that the text of this paragraph reads: "Any distinctive sign that serves as a means for distinguishing the products of a commercial house or of an industry constitutes, in the sense of the present Law, a mark of manufacture and of commerce"; and §5 of the same article adds: "As such mark there may be employed the combined letters of the alphabet or ciphers under a special form, and that the mark refused, not being a special combination of letters, is simply the letter "Y" of the Roman alphabet;

In view of the fact that this interpretation of Art. 1 is erroneous; that this text is only enunciative, having as purpose only to give a legal definition of the trade mark, sustained by a few examples, it is, in consequence, not a prohibitive disposition, but simply an enumeration;

That, furthermore, this is what is explained by the Regulation that carries out the application of the said law;

In view, in consequence, that it is necessary to search out the basis of the matter, not in Art. 1, as the Office did through error, but rather where there are found, in Art. 12, the twelve cases in which the Office has the right and the ob

ligation to refuse the registration of a trade mark;

In view of the fact that there is no prohibition of the letters of the alphabet, such as for the "Y," and that the interpretation of a prohibitive disposition must be strict and limitative, the same as any exception to a general rule;

In view of the fact that it is not expressly prohibited, it is permitted. Therefore:

The appeal of appellant is receivable;

The decision of the Trade Mark Office, No. 363 of June 25, 1920, is invalid.

The registration of the said mark is ordered.

BEFORE THE REGISTRAR OF

TRADE MARKS.

4th October, 1921. In re: Trade Mark Application No. 253 of 1920.

Mr. Adv. Taylor, with him Mr. Adler for applicants.

Mr. Adv. Davis for opponents.

DECISION.

In this case, Thorneloe & Clarkson, Limited, of Leicester, England, Manufacturers, seek to register in Class 38 in respect of ready-made suits, coats, jackets, waistcoats, trousers, knickers, breeches and over-coats, a trade mark consisting of the words "Beau Brummel" and a figure of a man purporting to be Beau Brummel. The application is opposed by Hepworths, Limited, of

Cape Town, Outfitters and Tailors. The opponents who have 31 places of business in the Union and a number of agencies in several of the smaller towns, are the owners of an unregistered mark, namely Beau Brummel which they have used for more than 16 years throughout the Union in respect of ties. These words are used alone and in conjunction with the design of a gentleman of fashion of the Beau Brummel period. I infer from the evidence and the nature of the goods. that the word-mark is used by means of a tab affixed to the ties, I whilst the device-mark is used on show cards and in catalogues of the company. The opponents are also the proprietors of a registered mark the essential feature of which is the coined word "Beau Mall" which they have used in all the provinces

since 1909 in respect of ready made clothing. Both marks have been extensively advertised in the Press of the Union. In addition to these marks, the opponents are using other marks for other goods covered by class 38. Towards the end of 1919 or the beginning of 1920 the attention of the applicants was drawn to the opponents' mark. The information conveyed to them was inaccurate, but it is impossible to say to what extent, if any their subsequent action was influenced by this information. The opponents The opponents contend that the registration of the applicants' mark will, in view of its similarity to their marks and in view of the circumstances of the trade in this country, lead to confusion, deception and litigation. The applicants on the other hand, deny that any confusion is likely to arise and appear to me to rely mainly on the ground that "ties" and "readymade clothing" constitute "different classes of goods manufactured in different trades and distributed through different channels" and that Beau Brummel and Beau Mall are not confusingly similar. They allege that they have sold readymade clothing in South Africa since 1902. This statement is not corroborated in any way, but the evidence clearly establishes that the applicants adopted their trade mark early in 1919 and that their goods have, through their agents, been sold extensively throughout the Union since that date, that is, 1919. They allege that their mark has been wideley advertised in South Africa but, as far as I can judge, the advertisements in the Union took place after the original notice of opposition lodged in December, 1919. What effect the advertisements in the English Journals circulating in the Union has had on

the public here is difficult to determine. Both sides have lodged affidavits from persons who say that the marks will conflict or will not conflict, as the case may be; but of course, their evidence does not help me, because that is the very question I am called upon to decide, and I cannot therefore accept their statements as evidence on the matter at all. I pause here a moment to consider briefly an argument upon which the applicants seem to place great reliance. They allege that in England there are separate and distinct trades in Class 38 (articles of clothing) and they argue that the use by the opponents of different mark for different goods falling in that class is evidence that the opponents recognize the existence of such distinct trades in the Union. But the opponents, whilst admitting the truth of this allegation, deny the existence of the alleged distinct trades and em- · phasize the fact that the goods to which the marks in question are applied are usually sold in the Union in the same store. Now it is only necessary to apply one's own knowledge to come to the conclusion that, with the exception of foot-wear, male attire coming within class 38 is usually found on sale in the same store. It is true that in large establishments you have a hosiery and underwear section, a hat section, and so forth, but whether this convenient division is or is not the result of similar divisions in England under similar or different conditions, the fact remains that the articles to which the marks in dispute are applied are usually sold in the Union by the same outfitters. This in itself is not fatal to the applicants' case. But once you establish that the outfitters have a mark or marks of their own, its fol

lows that the use by other traders of the same mark or marks might lead to deception or create confusion in the mind of the public. Whether such deception or confusion is likely to arise will depend largely upon the circumstances of each particular case.

Reverting now to the first ground of opposition, Mr. Davis has quoted to me a number of cases where the English courts have held that different goods are of the same description and Mr. Taylor has cited cases in which the same courts have allowed the registration of a similar mark for similar goods. The impression which these cases leave on my mind is that no hard-and fast rule can be laid down in a matter of this kind. Each case must necessarily depend upon its own merits. The Zarna case (31 R. P. C. 24) to which Mr. Davis drew my attention, appears to me, to have some application to the case under consideration. In that case the court held that corsets and bandeaux for hats were goods of a like description under section 19 of the British Act. This section corresponds to section 105 of our Act. The statutory classification of goods is not conclusive on the point at issue. You find there goods of the same description in different classes and goods of different descriptions in the same class. Take Class 42 (substances used as food) I can conceive a case in which the use of the same mark by different persons for different goods in that class would not create confusion in the mind of the public. But I do not think the same mark should, in the absence of Special circumstances, be allowed to be used by different traders in Class 45 (tobacco, whether manufactured or unmanufactured). Now Class, 38 (articles of clothing) is

not as wide as class 42 or as narrow as class 45, so that I am inclined to the view that if a mark is used or registered in respect of certain articles of male attire in Class 38 the Registrar should not, except in cases falling, for example, within the proviso to section 99 or section 107, accept for registration the same mark for other articles of male attire in the same class.

Upon the evidence before me and having regard to the decision in the Zarna case, I come to the conclusion that "ties" and "readymade clothing" are goods of the same description with the meaning of section 105 of the Act. If I had any doubt as to whether confusion or deception is likely to arise on the first ground of opposition, that doubt would, I think, in the circumstances of the case be dispelled by the second ground of opposition. Mr. Taylor Taylor argues very forcibly that the character of Beau Brummel who was a dandy and an intimate friend of George IV is so well known that no person who can read can possibly confuse that name with the meaningless word Beau-Mall. But I think it may be reasonably assumed that to a large portion of the European population of the Union neither Beau Brummel nor Beau-Mall has any meaning at all. They are practically in the position of “invented" words, and the rule is that in such cases a closer scrutiny is required than, for example, in the case of two words which, though similar in sound and appearance, convey distinct images to the mind of the public. Both words begin with the same syllable, and if, as is not improbable, the accent is laid in the case of Beau-Mall on the second syllable, the phonetic resemblance becomes more acute.