Meaning of terms contained in specifications

Jacob J. in British Sugar PLC v James Robertson & Sons Ltd (1996 RPC 280) (the TREAT decision) articulated: Â

“When it comes to construing a word used in a trade mark specification, one is concerned with how the product is, as a practical matter, regarded for the purposes of trade. After all, a trade mark specification is concerned with use in trade.”

Furthermore, in the OFREX case (1963 RPC 169-171), Pennycuick J. furnished the following comments pertaining to the scope of the term “stationery”:

“What is said is that staples do not come within class 39 [refers to the UK classification in force 1876-1938] as an item of stationery…. in order to answer that question, the first step I think is to look at the ordinary meaning of the word “stationery”, which as defined in the Oxford English Dictionary is: “the articles sold by a stationer writing materials, writing table appurtenances, etc”. I feel no doubt that staples are stationery, according to the ordinary meaning of the word.”

Moreover, in the MINERVA case (2000 FSR 734) Jacob J. provided an insightful elucidation concerning printed matter by stating:

“The specification of goods poses difficulties. “Printed matter” as a pure matter of language, I suppose, covers anything upon which there is printing. In a sense, every trade mark for whatever goods could also therefore be registered for printed matter if one reads “printed matter” perfectly literally. Every packet has printed matter on it. “Printed Matter” cannot in my judgment mean merely that the trade mark is printed on something. For example, if there is a registration for “printed matter” but the only use is on labels for, say, soap or bananas, there has not been use for printed matter. On the other hand, the kind of printed forms and other things produced by these proprietors seem to be perfectly well described as “printed matter”. People buy them for what is printed on them. However, there is a very big difference between that sort of printed matter and printed matter of a literary character.”

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