Model Answer [Element (c)]

Indication of connection

The purpose of trade mark is to indicate a trade connection between the proprietor of the mark and his goods. The expression “so as to indicate” makes it clear that it is sufficient if the mark is so used that it will indeed indicate a single trade origin.

Case: Bass v Nicholson [1932] 49 RPC 88

Nicholson marked barrels of beer with a letter “N” in a triangle in order to indicate a particular type of bear which he sold (quality mark). Bass, who owned a registered trade mark consisting of a triangle, sued for infringement. The evidence showed that customers recognised the N mark as indicating beer sold by Nicholson notwithstanding the original intention of the owner that it to be used primarily as a quality mark. The court held that the mark indicated a particular trade connection and was held to be trade mark. No issue of infringement arose since the N mark was used as indication of origin rather than the triangle so as to negate the element of confusion by customers.    

  

Connection in the course of trade

The required connection between the mark and its owner must be one ‘in the course of trade’. The question of whether a mark functions as a trade mark is a question of facts and there can be no trade in goods which are given away free.

Case: “Hospital World” TM [1967] RPC 595.

In this case, free distribution of applicant’s journal which was published as a vehicle for the advertisement of applicant’s products (hospital and medical apparatus) was held not use as trade mark in relation to printed publication, and that “trade” means the trade in which the applicant is engaged.

Case: Aristoc v Rysta [1943] 60 RPC 45.

The House of Lords decided that a mark placed on stockings to indicate that they had been repaired by the owner of the mark was not a trade mark. A trade connection requires that there be an “association with the goods in the course of their production and preparation for the market”.  

Case: “Revenue” TM [1979] RPC 27.

The UK Registrar held that orders for goods to be manufactured for the trade mark owner and his instructions that they bear his trade mark was sufficient to constitute use of the mark ‘in the course of trade’ although no goods actually existed at the relevant time.  

Case: Unilever (Striped Toothpaste) [1980] FSR 280.

In the tube as sold, the toothpaste was white but on extrusion red stripes were added to it by means of a device in the nozzle. The applicant wished to register a visual representation of toothpaste with red stripes. The UK Registrar held that the mark was not used in the course of trade since it did not come into existence until after the purchaser had taken the goods home at which time trade in them had ceased.