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Hubert Cecil Booth
(4 Jul 1871 - 14 Jan 1955)
British engineer who patented a vacuum
cleaner (filed 30 Aug 1901, issued as U.K. No. 17,433/1901) and formed
the British Vacuum Cleaner company to market a carpet cleaning service.
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[Getting a patent on a new invention does not, in itself, protect it. When infringed, it is the courts that give protection, as many inventors over the centuries have come to know and rue. Although Herbert Cecil Booth invented the first motorized vaccuum cleaner, it is not his name that now epitomizes it. That distinction goes to Hoover.
Booth's first machine was so large that the pump, powered by an internal combustion engine, travelled on a wagon that stayed (noisily) outside the house, while the home-owner paid for the cleaning service. A long hose ran between the pump outside and the suction nozzle used inside the house. Within only a few years of filing for his patent, Booth was turning to the courts to try to keep the benefits of his idea, for others were then copying it. Here you can read of his efforts to lay claim to the very name—“vacuum cleaner”—without success. In grinding detail, the legal opinion was that the name was only generic, not entitled to protection.
By reading this case, as an example, you
come to realize how much more can be involved after patenting an
invention.]
British Vacuum Cleaner Co.
v.
New Vacuum Cleaner Co.
CHANCERY DIVISION
Parker, J.
1907.
June 5, 6
From The Law Journal Reports (1907)
[p.511] Company — Name —Rival Company— Similarity of Name—Deception—Injunction—Companies Act, 1862 (25 & 26 Vict, c. 89), s. 20.
The principles applicable in the determination of the question whether the name of a company is likely to deceive, having regard to the existence or use of another name, are closely analogous to those applicable in cases of the passing off of goods, when the Court has to determine whether a trade name or description or a description of a particular class of goods is likely to deceive, though it is possible that for certain purposes the application of the principles may vary.
In determining whether words forming part of the names of two companies, and descriptive of the goods in which both deal, have acquired in the mind of the public a secondary or subsidiary meaning as denoting the goods of one of the companies, no great inference can be founded on the fact that there has been a connotation of the goods as being the goods of that company while it had a monopoly at law or in fact.
If a company incorporates into its name words descriptive of the article in which it deals, it cannot claim a monopoly of the use of them, and runs the risk of having the articles similarly described in the trade name of rival traders. It is because no such monopoly can be secured that a descriptive name may be registered.
The plaintiff company was incorporated in 1903 to acquire and work an invention, patented in 1901, for the cleaning of carpets and other articles by suction caused by the creation of a vacuum. The defendant company was incorporated in 1906 to work another and later invention for the same purpose, but differing in material particulars:—Held, on the evidence, that “vacuum cleaner” and “vacuum cleaning process” had not acquired a secondary or subsidiary meaning as denoting the machine or process used by the plaintiff company; that the name of the defendant company was not likely to deceive; and that the word “new” [p.512] sufficiently distinguished the defendant company from the plaintiff company.
Aerators, Lim. v. Toliit (71 L. J. Ch. 727; [1902] 2 Ch. 319) followed.
Dictum of Lord Davey in Cellular Clothing Co. v. Maxton (68 L. J. P.C. 72; [1899] A.C. 326) applied.
Action for an injunction restraining the defendant company from using or carrying on business under its present name, style, or title, or any name, style, or title which included the words “vacuum” and “cleaner” in juxtaposition, or which so nearly resembled the plaintiff company's name as to be calculated to deceive the public or to induce the belief that the business carried on by the defendant company was the same as that carried on by the plaintiff company, or in any way connected therewith.
In 1901 letters patent 17,433 of 1901 were granted to one Booth for the cleaning of carpets and other articles by pipes, the nozzles of which were moved over them, the dust being collected by means of suction caused by a vacuum and being carried back outside the building into a receptacle in the machine. The patent covered only this particular method of cleaning by means of pipes operating by suction through the creation of a vacuum. The terms “Vacuum cleaner “ and “ cleaning” were applied by Booth to his invention. In 1902 Booth sold this patent, together with colonial and foreign patents for the same invention, to a company which was incorporated in February, 1902, for the purpose of working them, under the name of the Vacuum Cleaner Co. In May, 1903, the plaintiff company was formed under its present title to take over the undertaking of the Vacuum Cleaner Co. and acquire all Booth's patents. The intention was that the plaintiff company should be registered under the title of the Vacuum Cleaner Co., but its actual title was adopted instead owing to difficulties raised at Somerset House. The plaintiff company had since been in operation, and had acquired a considerable reputation and a large business. It had been advertised extensively, and all the advertisements referred prominently to the machine as the vacuum cleaner and to the process as the vacuum cleaner process. The plaintiff company had formed various subsidiary companies, in which it was largely interested, to work the invention in foreign countries and particular districts of this country, and “vacuum cleaner” formed part of the name of each of these companies. The subsidiary companies themselves formed local companies to work the invention in still more limited areas, and the name of each local company also included the words “vacuum cleaner.” The subsidiary and local companies worked under licences limited to their particular areas. The machine as used by the plaintiff company was taken from building to building as required.
In October, 1906, the defendant company was incorporated to work a system of vacuum cleaning, for which a patent had been granted in 1904 to one Birtwistle. The defendant company's licence was limited to part of the Metropolis. Birtwistle's invention, like Booth's, was for the cleaning of carpets &c. by pipes operating through suction caused by a vacuum; but it differed from Booth's and, as was claimed, was superior to it, by reason of the fact that the vacuum could be created by means of the steam in an ordinary house boiler, and that the pipes could be affixed on any floor without the necessity of an apparatus outside the building. The following was stated in the judgment of Parker, J., to be the effect of the evidence for the plaintiff company: A good many, possibly as many as 90 per cent, of its customers, and more particularly lady customers, were in the habit of writing to it not as the “ British Vacuum Cleaner Co., Lim.,” but as the “Vacuum Cleaner Co., Lim.,” or as the “Vacuum Cleaner Co.” simply. Since the registration of the plaintiff company, and possibly before, the words “vacuum cleaner “ were associated with the machine made under Booth's patent, and also with the machine which the plaintiff company worked, going from house to house and removing the dust from the furniture. The plaintiff company succeeded in proving some confusion in the minds of the public on three occasions. Once the plaintiff company [p.513] received a request for the payment of a debt from Harrod's Stores which was in fact due, not from the plaintiff, but from the defendant company. On two occasions telephonic messages were received by the plaintiff company or its officers pointing to the fact that the persons who communicated through the telephone did so on the supposition that the plaintiff company was, or was connected with, the defendant company. A witness stated that but for his own special knowledge on the point he would, he thought, be deceived by the name into thinking that the defendant company and the plaintiff company were in some way connected, if not the same company. He also said that if any member of the public asked him to get their rooms cleaned by the new vacuum cleaner he should assume that he meant the plaintiff company's cleaner, and not the defendant company's cleaner. The defendant company opened a shop two doors off one of the plaintiff company's places of business in Highgate; and a witness stated that, having seen the two shops two doors off each other, named respectively the “ British Vacuum Cleaner Co., Lim.,” and the “ New Vacuum Cleaner Co., Lim.,” he supposed that they were not separate companies, but merely that there had been an enlargement of the plaintiff company's premises.
Two servants or employees of the plaintiff company, shortly after the incorporation of the defendant company, deserted the plaintiff company and attached themselves to the defendant company. The defendant company was now giving them not only the wages they had received from the plaintiff company, but a commission besides. There was no evidence that any attempt was made unfairly to induce the servants of the plaintiff company to desert it and throw in their lot with the defendant company, or of any request having been made by the defendant company to any of the servants of the plaintiff company with a view to inducing such servants to join the defendant company either by the offer of better terms or in other ways. The two employees came of their own accord and asked for employment. There was no deception about the matter, and when they gave notice to terminate their engagements with the plaintiff company they explained exactly what they were doing to the manager of the latter.
Buckmaster, K.C., and Colefax, for the plaintiff company.—The plaintiff company has a right to prevent other parties from trading under a name which reproduces the essential features of its own name. The natural inference in the mind of the public must be that the defendant company's business is that of the plaintiff company under an altered name, as the result of a reconstruction or some such proceeding, or that the companies have been amalgamated. The plaintiff company does not wish to prevent the defendant company or any one else from adopting a new form of vacuum cleaner; but any one doing so is bound to take especial care not to use “vacuum cleaner “ in his trade name in any way which can deceive or lead to confusion with the plaintiff company's business, such as the evidence shews to have arisen in the present case. The defendant company's trade name is calculated to deceive, and it will therefore be restrained from using it — North Cheshire and Manchester Brewery Co. v. Manchester Brewery Co. [1898].1 Everything laid down by the House of Lords in that case as to the inference which must be drawn by the public from such a similarity of names applies here. Indeed, the present case is even stronger, for, in view of the defendant company's establishment of a place of business two doors from one of our branches in which to trade under this deceptive name, it is difficult to credit those concerned with innocent motives.
Walter, K.C., and J. H. Gray, for the defendant company.—The plaintiff company, like the plaintiff in Aerators, Lim v. Tollit [1902],2 has taken as its name a word which only describes aptly and rightly a machine for producing a particular result, and which is in common use in the English language; and it cannot, in the words of Farwell, J., in that case, prevent other companies from using as part of their title the one English word [p.514] which aptly describes the article they manufacture and deal in. North Cheshire and Manchester Brewery Co. v. Manchester Brewery Co.1 was decided on the particular facts of the case, and does not lay down any general rule that the mere taking of a similar name by the defendant entitles a plaintiff to relief. It ought to be almost impossible for any one to obtain the exclusive right to the use of a word or term in ordinary use and descriptive only—per Lord Shand in Cellular Clothing Co. v. Maxton [1899]3; see also the speeches of Lord Halsbury and Lord Davey in that case. A claim to the exclusive right to call goods by the name which describes them is absurd— Rugby Portland Cement Co. v. Rugby and Newbold Portable Cement Co. [1891],4 and see Colonial Life Assurance Co. v. Home and Colonial Assurance Co. [1864].5 The word “British” in the plaintiff company's title is a sufficient distinction from that of the defendant company.
[Parker, J., referred to Reddaway v. Banham [1896].6]
That is the only case in which the plaintiff has discharged the onus of proving that such a descriptive term has acquired the secondary meaning that the goods are made by him, and it was rendered easy to do so in that case by the evidence which existed of such identification and of fraudulent intent. But the present plaintiff has failed to discharge the onus, and is not entitled to restrain the defendant from using the word “vacuum.”
Buckmaster, K.C., in reply. — In Aerators, Lim. v. Tollit2 the rival trader was intending to deal in quite different articles from those sold by the plaintiff company in that action. But here the question is not one of trading in articles or passing off goods at all. The business both of the plaintiff and of the defendant company consists not in selling articles, but in house cleansing with their own machines; and the question whether their respective machines can both properly be described in the market as vacuum cleaners is therefore irrelevant, and cases on passing off have no application. The question is whether our trade name is not so well established that if some one else adopts a name colourably resembling it the public will think that they are going to get work done by us when in fact they are not. The evidence shews that this mistake is in fact made by the public in consequence of the defendant company's action in adopting the name “New Vacuum.” It is a question of who is intended to do the work; not of buying goods or getting carpets cleaned by a particular process. Booth invented the word “vacuum” to describe this patented invention. The word “suction” would equally describe the process, and the defendant company should use that; it is not a case of there being only one possible word to use, as in Aerators, Lim. v. Tollit2.
[Parker, J.—Is not the defendant company entitled to use the words “new vacuum” to denote that its invention is a new one? Do not the words suggest that its process is one different from that of the plaintiff company?]
That would not be the inference drawn by the ordinary member of the public, and the evidence shews clearly that the defendant company's object is to obtain the benefit of our goodwill.
[He referred also to Daimler Motor Co. (1904) v. London Daimler Co. [1907]7 and to Accident Insurance Co. v. Accident, Disease, and General Insurance Corporation [1884].8
Parker, J., stated the facts relating to Booth's and Birtwistle's inventions and the formation and objects of the plaintiff and defendant companies. His Lordship observed that Booth's patent was not a master patent, but covered only a specific manner of cleaning by pipes operating by suction by the creation of a vacuum; and that Booth must have known when he applied a generic description to his machinery and process that other persons might devise and bring on the market other means of vacuum cleaning not protected by his patent. He also said that [p.515] for the purposes of the action he must take it that Birtwistle's process was not an infringement of Booth's patent, in view of the differences between the two processes and of the advantages claimed for Birtwistle's invention. He then continued: Now the defendant company was incorporated under the name of the “New Vacuum Cleaner Co.,” and this is in effect an action by the plaintiff company for an injunction to restrain the defendant company from using the name “Vacuum Cleaner” in conjunction, either as part of the name under which it has been registered or as part of any other name; subject, not in terms, according to the statement of claim, but subject, as counsel for the plaintiff company have suggested, to this qualification—namely, in such a way as to lead to the defendant company being taken for the plaintiff company or to lead to the public supposing that the plaintiff company has any connection at all with the defendant company.
The action is founded to some extent, at any rate, upon section 20 of the Companies Act, 1862,9 the effect of that section being to prohibit the registration of a company with a name identical with the name of any company already on the register, or so similar to the name of any company already on the register as to be likely to deceive; and the point I have to decide is whether the use by the defendant company of the title “New Vacuum Cleaner Co.,” having regard to there being a company on the register known as the “British Vacuum Cleaner Co.,” might be likely to deceive. In order to find out whether a name of this sort is likely to deceive, of course it is necessary to consider all the surrounding facts of the case; and I think that it is also necessary to consider the general principles of law applicable to the subject-matter of the dispute. In considering the question whether a name is likely to deceive, having regard to the existence or use of another name, the first question which arises is whether the same principles are applicable as those which are applicable in ordinary cases of passing off, where the question is whether a trade name or a trade description or a description of a particular class of goods is or is not likely to deceive. It has been contended that these principles do in material respects differ, and that I cannot take a decision on the question of simple passing off as an authority on the question whether the defendant company in this case ought to be allowed to use the name under which it has been registered. Now, whether or not there be any distinction between the principles which should govern the Court in these somewhat different matters, it is at any rate, I think, clear from the decision of Mr. Justice Farwell in Aerators, Lim. v. Tollit2 that the principles which govern each case are extremely analogous. What he says is this10: “the principles applied by the House of Lords in Reddaway v. Banham,6 explained as they were in Cellular Clothing Co. v. Maxton,3 to which I had occasion to refer in Chivers & Sons v. Chivers & Co. [1900],11 apply as much to the name of a company under section 20 as to the ‘Camels-hair Belting,’ the ‘Cellular Clothing,’ and the name of ‘Chivers’ in those cases.” Although of course it is possible that for certain purposes those principles may be differently applied, I think that substantially that is a correct statement of the law upon the question. Now with regard to questions such as arose in Reddaway v. Banham,6 and Cellular Clothing Co. v. Maxton,3 and Chivers & Sons v. Chivers & Co.,11 I think a distinction must always be drawn between cases [p.516] where the word in question—the word which it is proposed to restrain the defendant from using — is a word of common ordinary use descriptive of an article, and cases where it more or less partakes of the character of a fancy word, or primarily does not relate to the article but to the person who makes the article. In Reddaway v. Banham6 it was decided that a person might be restrained from using a word or a conjunction of words descriptive of an article if that word or conjunction of words had acquired among the public, or that class of the public likely to deal in the goods in question, a subsidiary or secondary meaning denoting or connoting not only the quality of the article, but its origin of manufacture. The fact that “camel's hair belting” in that case had acquired such a subsidiary or secondary meaning was held to have been established, and an injunction was granted accordingly. One of the main items in the evidence pointing to the conclusion that was ultimately established was a certain letter which shewed on the face of it not only a dishonest intent on the part of the party proposing to use the words “Camel's Hair Belting,” but an admission on his part that such a secondary or subsidiary meaning did in fact exist; and therefore it became very much easier to prove the facts required in order to the granting of an injunction than it otherwise would have been. In Cellular Clothing Co. v. Maxton,3 on the other hand, where the question was with regard to the use of “cellular” as applied to clothing, it was held that the plaintiffs had not sufficiently established that there was a secondary or subsidiary meaning denoting that cellular clothing was clothing manufactured by the plaintiffs in contradistinction to other manufacturers; and there are remarks of the Lords in that case which shew that in their opinion the onus of proving such a subsidiary meaning in the case of words which are commonly and properly used as descriptive words is by no means a light one. I should like to refer to one or two passages in that case as having, in my opinion, a considerable bearing on the question which I have to decide, and in particular to what was said by Lord Shand, quoted by Mr. Justice Farwell in Aerators, Lim. v. Tollit,3 and also to a passage in the judgment or speech of Lord Davey. First, referring to Reddaway v. Banham,6 Lord Shand says12: “Of that case I shall only say, that it no doubt shews it is possible where a descriptive name has been used to prove that so general, I should rather say so universal, has been the use of it as to give it a secondary meaning and so to confer on the person who has so used it a right to its exclusive use or, at all events, to such a use that others employing it must qualify their use by some distinguishing characteristic. But I confess I have always thought, and I still think, that it should be made almost impossible for any one to obtain the exclusive right to the use of a word or term which is in ordinary use in our language and which is descriptive only—and, indeed, were it not for the decision in Reddaway's Case,5 I should say this should be made altogether impossible.” That I quote as illustrating what, at any rate in the opinion of Lord Shand, was the amount of onus resting on the plaintiff in the case of a word which prima facie had a descriptive signification. The passages in the judgment of Lord Davey to which I desire to refer are these13: “there are two observations which must be made: one is that a man who takes upon himself to prove that words, which are merely descriptive or expressive of the quality of the goods, have acquired the secondary sense to which I have referred, assumes a much greater burden—and, indeed, a burden which it is not impossible, but at the same time extremely difficult, to discharge—a much greater burden than that of a man who undertakes to prove the same thing of a word not significant and not descriptive, but what has been compendiously called a ‘fancy’ word. The other observation which occurs to me is this: that where a man produces or invents, if you please, a new article and attaches a descriptive name to it—a name which, as the article has not been produced [p.517] of course, not been used in connection with the article—and secures for himself either the legal monopoly or a monopoly in fact of the sale of that article for a certain time, the evidence of persons who come forward and say that the name in question suggests to their minds and is associated by them with the plaintiffs goods alone is of a very slender character, for the simple reason that the plaintiff was the only maker of the goods during the time that his monopoly lasted, and therefore there was nothing to compare with it, and anybody who wanted the goods had no shop to go to, or no merchant or manufacturer to resort to except the plaintiff. And on this point I adopt what was said in felicitous language by Lord Justice Fry in Siegert v. Findlater [1878].14 That is, my Lords, a matter of express decision in the case of a patent. If a man invents a new article and protects it by a patent, then during the term of the patent he has, of course, a legal monopoly; but when the patent expires all the world may make the article, and if they may make the article they may say that they are making the article, and for that purpose use the name which the patentee has attached to it during the time when he had the legal monopoly of the manufacture. But the same thing in principle must apply where a man has not taken out a patent, as in the present case, but has a virtual monopoly because other manufacturers, although they are entitled to do so, have not in fact commenced to make the article. He brings the article before the world, he gives it a name descriptive of the article: all the world may make the article, and all the world may tell the public what article it is they make, and for that purpose they may prima facie use the name by which the article is known in the market.” I think that, mutatis mutandis, what is said in the last passage I have read in the judgment of Lord Davey applies to this particular case, in which the patentee has given a name to his article and a name to the process by which that article is used, and these names are descriptive, and descriptive generically and not specifically, and some one has subsequently devised a new process which, in ordinary language, would form a species of the same genus.
Bearing therefore this passage in mind, I will now proceed to consider whether there is anything in the name “New Vacuum Cleaner Co., Lim.” which, having regard to what the plaintiff company has proved in this case and the existence on the register of the name British Vacuum Cleaner Co., Lim., is calculated to deceive.
[His Lordship stated the evidence regarding the application of the name “Vacuum Cleaner Co.” simply to the plaintiff company by its customers, and the association of “vacuum cleaner” with its machine, and continued:] But it remains to be considered whether in the mind of the public the expression “vacuum cleaner” or “vacuum cleaning process” had acquired such a secondary or subsidiary meaning as is mentioned in Reddaway v. Banham6 Now, I think that the evidence itself—what there is of it—really points to the fact that the public have understood “vacuum cleaner” and “ vacuum cleaning process” to be a description of a particular kind of cleaner and of a particular process—a cleaner, namely, which operates by means of a nozzle applied to the furniture, and to the suction in the pipes caused by the vacuum created by the machine. As long as the plaintiff company was the only manufacturer that manufactured and dealt in, and went from house to house with, a machine of that sort, no doubt in the mind of the public there would be a connotation of the fact that the machine was the machine of the plaintiff company. But I do not think that primarily the words have ever been in the mind of the public anything else than descriptive words; and if that be so, then it appears to me that the case falls for this purpose within what was said by Lord Davey—namely, that no great inference can be drawn from the fact that during the period when the patentee has had a monopoly, or the manufacturer has had a monopoly, either at law or in fact, there has been a connotation of the article as an article produced by the plaintiff. There is nothing, and there was nothing, as Lord Davey said, for the public to contrast it with, so that it is impossible [p.518] to say that the public understood by those words a machine dealt in or brought round by any one person as distinguished from any other person. I do not think, therefore, that I can hold on the evidence in this case that there is any secondary or subsidiary meaning, such as was proved in Reddaway v. Banham,6 in connection with the words “vacuum cleaner” or “vacuum cleaning process.” [His Lordship then stated the evidence as to confusion in the mind of the public between the two companies, and continued :] Now of course one cannot lay very great stress upon the evidence of a single witness on such a point, and I do not think really that even a multiplication of witnesses in that respect would be of any very great importance; because it is one of those questions on which the Judge who has to decide the case must bring his own mind to bear and must decide for himself. But it is to be observed that Lord Davey said, with regard to what was required to be proved in Cellular Clothing Co. v. Maxton,3 that the evidence of people who came and said that they would be deceived was worth very little, while the plaintiff company had in fact or in law a monopoly of the sale or of the dealing in the goods in question—that it only became really important when the public might possibly consider the words as descriptive of the goods of one manufacturer rather than of another, there being two manufacturers of whom they might think in that connection.
The last point which was proved by the plaintiff company was one to which I do not attach any great importance. One of their witnesses said that, having seen on the two shops two doors apart the names of the two companies, be supposed that they were not separate companies, but that there had been an enlargement of the plaintiff company's premises. I can only say with regard to that evidence that the normal man, seeing the two names near together in the same street over different shops, would in my opinion draw an opposite conclusion, and would think that there were two rival companies. But, at any rate, if there are such people as might be deceived in such a way, that is the only instance which is given. I should think that the mode in which it would be far more likely that deception would take place would be that people casually passing the windows might catch sight of the words “vacuum cleaner” and might enter the one shop instead of the other; but with regard to deception of that sort there is no evidence, and I do not think that even that class of deception would be at all a necessary consequence of the use of the two words.
Finally, we have it urged on behalf of the plaintiff company that the evidence on its behalf is greatly strengthened by the fact that, as is suggested, a fraudulent intent or an intent which, if not fraudulent, was at any rate contrary to fair dealing between the parties, has been shewn on the part of the defendant company in adopting the name “New Vacuum Cleaner Co.” In other words, it is said that the name was adopted with the distinct intention of depriving the plaintiff company of rights which it would otherwise enjoy, and in the enjoyment of which it ought to be protected. [His Lordship stated the evidence regarding the two employees of the plaintiff company who entered the service of the defendant company, and continued :] Now of course it is well known that you cannot prevent the servants of one company going over to and becoming the servants of another company which carries on a rival business. That is a proceeding which, from the point of view of the law, is perfectly fair. And there is, in the same way, nothing to prevent the defendant company from employing persons who have hitherto been employed by the plaintiff company merely because they are rivals in trade. That, again, from the point of view of the law, is perfectly fair. Then it is said that the defendant company has not only done that, but has opened a branch office in the same street in Highgate where the plaintiff company has an office, and two doors off it. There is nothing wrong in a rival company setting up in the same street, and two doors off. It may not be a very tactful thing to do, and it may possibly be a proceeding which is not up to the standard of the highest trade ideals; but at the same time it is [p.519] perfectly legal, and there is nothing which can be objected to in such a course. Finally, it is said that, taking these two things together with the adoption of the trading name “New Vacuum Cleaner Co.,” there was an intention—or that I ought to infer an intention—to do what ought not to be done and take an unfair advantage by the use of this name of the trade which has been got together at considerable expense, and which really belongs to another rival trader. Now here it is, I think, that the principles which are laid down in the cases really have some application. I do not consider, myself, that if a company chooses to incorporate into its own name words descriptive of the article in which it deals it can fairly claim a monopoly of the use of those words in the trade name. It seems to me that it runs the risk of having the articles similarly described in the trade name of rival traders. If there were any such monopoly to be gained, as is suggested, it appears to me from the point of view of the public that the sooner the rules and regulations under the Companies Acts are altered in that respect the better. But it is, I think, precisely because no such monopoly can be secured that the name may be registered. For instance, if the inventor of smokeless powder registered himself as the Smokeless Powder Co., it seems to me that he could not fairly object to somebody who subsequently invented a new smokeless powder on a different principle registering himself under a title which also involved the description of the article—namely, smokeless powder. In the same way, in the present case it appears to me that there is nothing in principle to prevent the defendant company from using the words “vacuum cleaner” as part of its name. Having invented a new species of vacuum cleaner which it desires to bring before the public, it proposes to use a name containing a description of that article, and to distinguish it from all other articles of the same genus by the term “new.” It seems to me that its intention and desire to adopt the words “vacuum cleaner” is amply accounted for by the fact that it is descriptive, and that it is an advantage to a trader to shew in his trade name the nature of the article in which he deals. I cannot therefore draw from the feet that the defendant company has used the words “vacuum cleaner” any inference against its bona fides in the matter. I agree that in using the words “vacuum cleaner” a distinction should be drawn; and on the question whether it has been drawn it seems to me, at any rate, a reasonable supposition on the part of the person responsible for the choice of the name that, as the object was to distinguish what was new from what had been on the market for some years, it would be enough to call the new invention the “New Vacuum Cleaner.”
I have come therefore to the conclusion that the evidence is not sufficient to enable me to say that there was any scheme or design to take unfair advantage of the plaintiff company by the adoption of this name, so that I am thrown back simply and solely on the question of fact whether it is or is not likely in the circumstances to deceive. Now I have come to the conclusion that it is not, and I think that members of the public, when they allude to vacuum cleaners and vacuum cleaning, prima facie mean cleaning and cleaners of a particular sort, not of a particular manufacturer. That being the case, when a new vacuum cleaner or a new vacuum cleaning company is brought to their notice, the inference that they would be likely to draw would not be the inference that the company is the same, but, on the contrary, the inference that it is different from the one which they have already heard of. It seems to me, therefore, that there is no reason to suppose that deception will occur. [His Lordship then referred to the formation and titles of the subsidiary and local companies, and observed that there appeared to be no reason, except the limitation of the licences to particular areas, why they should not compete with the plaintiff company. He then continued:] The plaintiff company has, I think, by the registration of these companies under these names without objection, really admitted the fact that a company the name of which involves the words “ vacuum cleaner” in conjunction [p.520] will not necessarily be confused in any way with the plaintiff company. It really points to the fact that even in the plaintiff company's own opinion “ vacuum cleaner” is not identified with it, but is identified with a particular process of cleaning and a particular class of machine. That being so, it is difficult to see, even apart from the conclusions to which I have come, how the company which has allowed these registrations in so many instances can now say that deception will necessarily occur because in a particular case the words “vacuum cleaner” are part of a company's name.
Solicitors — Hasties, for plaintiff company; John B. & F. Purchase, for defendant company.
(2) 71, L. J. Ch. 727; [1902] 2 Ch. 319.
(3) 68 L. J. P.C. 72, 77; [1899] A.C. 326, 340.
(4) 9 Rep. Pat. Cas. 46.
(5) 33 L. J. Ch. 741.
(6) 65 L. J. Q.B. 381; [1896] A.C. 199.
(7) Times newspaper, April 16, 1907.
(8) 54 L. J. Ch. 104.
(9) Companies Act, 1862, s. 20: “No company shall be registered under a name identical with that by which a subsisting company is already registered, or so nearly resembling the same as to be calculated to deceive, except in a case where such subsisting company is in the course of being dissolved and testifies its consent in such manner as the registrar requires; and if any company, through inadvertence or otherwise, is, without such consent as aforesaid, registered by a name identical with that by which a subsisting company is registered, or so nearly resembling the same as to be calculated to deceive, such first-mentioned company may, with the sanction of the registrar, change its name. …”
(10) 71 L. J. Ch , at p. 729; [1902] 2 Ch., at p. 324.
(11) 17 Rep. Pat. Cas. 420.
(12) 68 L. J. P.C., at p. 77; [1899J A.C.. at p. 340.
(13) 68 L. J. P.C., at p. 79; [1899] A.C, at p. 343.
(14) 47 L. J. Ch. 233, 234; 7 Ch. D. 601, 813.
