306

REPORTS O} PATENT, DESIGN AND TRADE MARK CASES

[1967] 21sT SEPTEMBER; 1967 [No. 12]

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BOARD OF TRADE
Before G. W. TOOKEY, ESQ., Q.C.
26th April, 1967.
" HEAVENLy" TRADE MARK
5 Trade mark-Registration-HEAVENLY-Whether laudatory-Current meaning as
well as dictionary definition to be considered-Each case to be decided on its own
merits-Registration refused.
An application to register the trade mark HEAVENLY for use for cosmetics was
refused by the Registrar on the grounds that the mark was laudatory and in common
10 use and was therefore not adapted to distinguish the applicant's goods. No evidence
of prolonged or extensive use in. the trade had been produced and it was doubted,
even iiit had, whether the most extensive use would establish the required capacity.
On appeal to the Board of Trade it was contended for the applicants that the word
" heavenly" meant pertaining to the heavens or sky and any general meaning
15 attached to it was unusual and possibly poetic.
Held, dismissing the appeal (1) that the Registrar was entitled to rely Of! his
general knowledge of the use of language, because dictionaries could not
always be up-to-date, and it would be wrong to allow words to be registered as'
trade marks if they were in current use in a way which disqualified them for registra-
20 tion, although such meanings had not found their way into dictionaries. A trade
mark had to be considered in relation to the goods on which it was to be used, and
whether other traders would desire to use the words in connection with their own
goods. In the present case the goods, cosmetics, were such that in relation to them
" heavenly" had a laudatory meaning.
25 J. & P. Coats' Application (1936) 53 R.P.C. 355 distinguished.
This was an appeal to the Board of Trade from a refusal by the Registrar of
Trade Marks to allow application No. 816,765 by Gala of London Limited to
register the trade mark HEAVENLY in respect of all goods in Class 3. The facts of
the case appear from the following decision of the Assistant Comptroller
30 Mr. J. Field dated 1st December 1965.
Mr. Field-c-On 9th February 1961 the company, Gala of London Limited, applied
under No. 816,765 for the registration of a trade mark in respect of all goods
included in class 3. Class 3 consists of bleaching preparations and other substances
for laundry use, cleaning, polishing and scouring abrasive preparations; soaps;
35 perfumery, essential oils, cosmetics, hair lotions; dentrifices, After a hearing before
Dr. Atkinson, Assistant Comptroller, on the 20th January 1965 at which the
applicants were represented by their agent Mr. J. Joseph, the application was refused.
The applicant has now under section 17(4) of the Act required the Registrar to
state in writing the grounds of his decision and the materials used by him in
40 arriving thereat.
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HE'AVENLY Trade Mark (Registration B.o.T.)

Dr. Atkinson has, since the date of the hearing, retired from the public service
and the applicants have stated, through their agent, that a further hearing is not
required.
The mark sought to be registered comprises the single word HEAVENLY. Objec-
tion was taken that the mark did not satisfy the conditions of section 9(1)(a) to (d) 5

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of the Act since the word being laudatory has a direct reference to the character or
quality of the goods and was not distinctive of the applicant's goods.
The applicants subsequently filed evidence of the extent to which the mark had
been used by them, before the date of application. This took the form ofa
declaration by Mr. S. H. Picker, Managing Director of the applicant company, and 10
thirty declarations from various members of the trade concerned, distributed
throughout the United Kingdom.
Mr. Picker declares that, in his belief, use of the mark HEAVENLY by the applicant
'company began in 1949 on or in relation to soaps, talcum powder, toilet water, solid
toilet water, .hand lotions, perfumes and perfumed preparations, the annual turn- 15
over increasing from around £14,000 in 1955 to around £24,000 in 1961. Mr.
Picker also declares that goods bearing the mark have: been sold in a number of
towns throughout Great Britain and Northern Ireland, and have been advertised
in various magazines for women. Samples of the advertisement show the word
HEAVENLY in association with other words namely BALLET, BLAZE and SEQUIN 20
apparently indicating one of a range of goods all shown under the name of Gala.
The thirty declarations to which I have referred were made as a result of a
questionnaire addressed to the traders concerned seeking information as to their
knowledge of two trade marks BALLET and HEAVENLY. All declarations stated they
associated these two marks with the applicant company. The majority of the 25
declarants stated they had known the mark for four years or less before the relevant
date.
At the hearing Mr. Joseph based his argument mainly upon the judgments of the
Court of Appeal in J.& P. Coats' Application (1936) 53 R.P.C. 355 at 374, where
the court allowed an application to register the word SHEEN in respect of sewing 30
cottons. The facts of that case however are significantly different from those under
consideration in the' present application. The word SHEEN although to some extent
descriptive of a property of sewing cotton was found by Slessor, L.J., to be a word
which had not a simple and easy primary meaning and. the evidence of 21 years'
extensive use established that it had in fact acquired a secondary meaning attaching 35
to the applicants goods. Further there was evidence that SHEEN was not a word
used in the trade to describe the particular property concerned.
HEAVENLY however, is not a word descriptive of a particular property of the goods
concerned but is merely laudatory, synonymous with" wonderful" or " perfect ".
It is moreover a word in common use and one which other traders might well 40
wish to use to describe goods of the kind specified concerned as they are generally
with the beautification of women. Accordingly in my view. the word HEAVENLY,
like PERFECTION in Crosfieid's Application (1909) 26 R.P.C. 858 at 862 is not
inherently adapted in any way to distinguish the applicant's goods within the
meaning of section 9(2) of the Act. That being so, the use propounded by the 45
applicants does not assist them in satisfying the conditions of section 9 for registra-
tion in Part A of the register.
The condition for registration in Part B specified in section 10 of. the Act is that
the word must be " capable" of distinguishing the applicant's goods, consideration
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HEAVENLY Trade-Mark (Registration B.o.T.)

being required both of the extent of inherent capacity and of capacity as shown by
use of the mark or other circumstances.
Since the word HEAVENLY is not only laudatory but is in common use it would
seem to possess no inherent capacity to distinguish the applicant's goods from those
5 of others. Further it is doubtful whether evidenceof the most extensive and pro-

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longed use of the mark applied for would, having regard to the nature of the
mark, establish the required capacity. Certainly the evidence filed which shows a
use limited both in volume and time is not sufficient to establish this capacity.
Accordingly the conditions for registration in Part B are not satisfied and the
10 application is refused.

An appeal to the Board of Trade was heard by G. W. Tookey, Esq., Q.C., on

12th .April and his deoision dated 26th April is set out below. J. J. Joseph of
Marks & Clerk appeared for the applicants.
Tookey, Q.C.-This is an appeal to the Board of Trade under section 17 of the
15 Act from a decision dated 1st December 1965 of Mr. J. Field, Assistant Comptroller
acting for the Registrar, whereby he refused the application on the ground that the
mark applied for failed to satisfy the requirements of section 9 or section 10, of
the Act.
The mark, which was applied for on the 9th February 1961, consists of the
20 word HEAVENLY, and registration is sought in respect of all goods included in class
3. This class includes such goods as soaps, perfumery, and cosmetics in which the
applicants are particularly interested. The mark is claimed to have been used by
the applicants for a substantial extent for several years prior to the date of applica-
tion and down to the present time. Evidence filed on behalf of the applicants shows
2S the manner in which and extent to which the mark has been used. The goods
include such products as toilet soaps, 'bath cubes, talc, hand lotion, perfume stick,
liquid perfume and toilet water. These have been advertised as a GALA Perfume
Series, the name GALA being the primary trade mark in the advertisements and on
the goods. The word HEAVENLY has been used to identify a particular 'perfume
30 associated with the applicants' goods, other perfumes for the same series being
called by other names, one of which is BALLET. The word BALLET has already been
registered as a trade mark upon evidence which dealt comprehensively with the two
words BALLET and HEAVENLY without any distinction being drawn between them so
far as the proven facts are concerned. Thus the trade declarants, thirty in number,
35 have all said in answer to questionnaires, subsequently verified by statutory declara-
tions, that they" know the trade marks BALLET and HEAVENLY" and that they
" associate the trademarks BALLET and HEAVENLY with the applicants" 'when used
in.relation to the relevant goods.
The question for determination on this appeal is whether the Registrar was right
40 in rejecting the application in respect of HEAVENLY on the ground that the word is
laudatory and has a direct reference to the character or quality of the goods and is
neither adapted to distinguish nor capable of distinguishing the goods of the appli-
cants, notwithstanding the evidence which has been filed which, so far as it goes,
establishes exactly the same facts in relation to REAVENLY as it does in relation to
45 BALLET.

It is convenient to explain at this point that Mr. Field's written grounds of

.decision followed a hearing taken [by Dr. R. G. Atkinson in January 1965, which
resulted in refusal of the application. Dr. Atkinson having retired from the public
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HEAVENLY Trade Mark (Registration B.o.T.)

service, it fell to the lot of Mr. Field to state the grounds of refusal pursuant to
the applicants' request dated 19th November 1965. The applicants declined the
offer of a further hearing. No great point turns upon these circumstances, but it
is perhaps right to bear them in mind when considering criticisms of the written
decision in relation to the detailed arguments submitted by the applicants. 5

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The part of the decision which has been most criticised by Mr. Joseph, who
appeared on behalf of the applicants, is that which follows upon a reference to the
SHEEN case (J. & P. Coats' Application (1936) 53 R.P.C. 355) and states:-

"HEAVENLY, however, is not a word descriptive of a particular property of

the goods concerned but is merely laudatory, synonymous with ' wonderful' or 10
, perfect '. It is moreover a word in common use and one which other traders
might well wish to use to describe goods of the kind specified concerned as they
are generally with the beautification of women. Accordingly in my view the
word HEAVENLY, like PERFECTION in Crosfield's Application (1909) 26 R.P.C.
858 at 862 is not inherently adapted in any way to distinguish the applicants' 15
goods within the meaning of section 9(2) of the Act."
Mr. Joseph contended that this conclusion was not justified by the evidence, and
that indeed the available evidence refuted the grounds of refusal. He placed
reliance on a declaration which exhibited copies of pages from standard dictionaries
which indicated, he said, that "heavenly" did not mean "wonderful" or 20
" perfect", and was an epithet primarily associated with matters of or pertaining
to the heavens or sky. Any more general meaning, Mr. Joseph contended, was
unusual and perhaps poetic. It is the fact that Webster's International Dictionary
(published in 1961) gives "supremely delightful" as the last of its references to
the meaning of "heavenly" and follows this with a quotation from Wordsworth 25
" One of those heavenly days that cannot die ". That was written over one hundred
years ago. The Shorter Oxford Dictionary (published in 1936) gives two poetic
references, one from Shakespeare and one from Milton. The applicants have also
put in evidence certain references to " heavenly" which are to be found in books of
synonyms. These references range over a 'number of words many of which are 30
related to the heavens and ethereal things. Neither" wonderful" nor" perfect"
is mentioned as a synonym for "heavenly" but such words as "delightful",
" enrapturing" and " glorious" are included.
In his decision the Registrar did not refer expressly to any dictionaries or other
works of reference in support of his observations, but as usual he had of course 35
consulted such a work as Webster's International Dictionary. He did not have
before him the declaration and accompanying exhibits which were put in before me.
These were filed, together with evidence bringing the sales figures up-to-date, pursuant
to leave given by me at a preliminary hearing. As I read his decision, however,
and bearing in mind that section 17(4) required him to state the materials used 40
by him in arriving at his decision, theRegistrar was relying upon his own knowledge
of the way in which the word" heavenly" is used in current speech, and he was not
relying upon any particular reference in standard books. That is indeed the way'
in which Miss Stewart, who appeared before me on behalf of the Registrar, has put
the matter. 45
As I see the position, the Registrar is entitled, as I am, to rely on general
knowledge as regards the use of language. Lord Reid said in the case of Baldwin
& Francis's Application ([1959] R.P.C. 221 at231) : -
" A judge is supposed to know the law, the English language and such facts
as are common knowledge. If he refers to authorities or dictionaries or other 50
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HEAVENLY Trade Mark (Registration B.o.T.)

works dealing with these matters he can safely do so because his general
knowledge enables him to check and appreciate them."
In that particular case (which was a patent case) there were difficulties arising from
the technical nature of the language used in the relevant document. No such difficulty
5 arises in the present case, and in my view is that in judging whether the Registrar
was right in his conclusion I should do the same as he apparently has done and

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rely upon my general knowledge, checked if necessary or desirable by reference to
dictionaries.
In trade mark cases it is particularly necessary that this course should be followed
10 because dictionaries cannot always be up-to-date, and it would be wrong to allow
words to be registered as trade marks if they are in current use in a way which
disqualifies them for registration, although they, or their current meanings, have
not found their way into dictionaries. There is naturally a tendency for new word
trade marks to follow modern trends as regards the use of speech, and for some
15 years past there has been an increasing tendency to choose as trade marks single
words which have some meaning in relation to the goods upon which they are to
be used and which are not wholly fanciful or devoid of descriptive association.
Thus there are two main principles to be applied. Firstly, the qualifications of
a mark proposed for registration must be considered in relation to the goods on
20 which it is used or proposed -to be used. That is emphasised by the words of the
Act. Section 9(2) states that distinctive means " adapted in relation to the goods in
respect of which a trade mark is proposed to be registered to distinguish" etc.
Section 10 uses corresponding language in relation to the requirements for Part B
registration. This principle can be seen to be applied in many decided cases,
25 although it has also been indicated that some words like "good", "best",
" superfine", " perfect", would be unregistrable for any goods, tCrostield's Appli-
cation [1910] 1 Ch. 130 at 141-142, 148; (1909) 26 R.P.C. 855, 858). Secondly,
consideration must be given to the question whether other traders are likely, in
the ordinary course of their business and without improper motive, to desire to
30 use the word upon or in connection with their own goods. I state this principle in
the well-known words of Lord Parker in the W. & G. case Du Cros Ltd.'s Applica-
tion [1913] A.C. 624; (1912) 29 R.P.C. 65). In applying this principle one is bound
to have regard to the kind of language in current use in connection with the rele-
vant goods.
35 Applying these principles to the present case, I consider that it is right to give
weight, as the Registrar has done, to the fact that the relevant goods are concerned
with the beautification of women, and to the kind of language which traders would
legitimately desire to use in describing and advertising such goods. Without the
need of recourse to dictionaries, I take the same VIew as does the Registrar that in
40 relation to the goods concerned the word "heavenly" has a laudatory meaning.
One ordinarily hears persons speaking not only of heavenly days, as Wordsworth
did, but of heavenly colours. "Heavenly" is used quite widely in relation to
matters which appeal to the senses, particularly sight, taste and smell, and is so
used probably more by women than by men. I have no doubt that it is a word
45 which should be left open to traders to use as they please in such connection. Such
use of the word "heavenly" can be regarded as conveying the meaning of
"supremely delightful" which is given in Webster's dictionary and the meaning
of "very delightful" attributed to the word as a colloquialism in the more recent
Penguin English Dictionary published in 1965, to which Miss Stewart drew my
50 attention. Furthermore if one is going to check the meaning of "heavenly" by
reference to dictionaries, then it is worthy of note that the Concise Oxford Dictionary
published in 1951 gives "excellent" as colloquial meaning of "heavenly", and
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HEAT/ENLY Trade Mark (Registration B.o.T.)

Chambers 20th Century Dictionary published in 1965 gives "very excellent" as

an ordinary meaning of that word.
The trade evidence which has been filed by the applicants does not indicate to
me, any more than it did to the Registrar, that any other view should be taken. It
is clear that the applicants' goods are not sold or advertised solely under the name 5

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HEAVENLY. The mark GALA is always there. Nobody has said that a customer
comes into a shop and asks for some HEAVENLY soap or perfume, and in the absence
of any evidence to that effect I am not prepared to assume that requests for the
applicants' goods would take that form. I would expect the name GALA to be used
at any rate as the introductory means of identification. That is how the applicants' 10
goods are advertised. As regards the orders which form one of the exhibits, these
are or appear to have been addressed directly to the applicants and references to
"Talc, Heavenly" and the like serve only to indicate as between the wholesaler
or retailer and the applicants which items from the Gala range of products are
required, just as in the case of other items such as lipstick refills of various shades 15
of colour.
The decision to which the Registrar has come does not conflict in any way with
what was decided in the SHEEN case (J. .& P. Coats' Application (1936) 53 R.P.C.
355). There are several important distinctions as regards the facts. In relation to
machine twist SHEEN was held not to be an ordinary laudatory epithet or indeed 20
a laudatory word at all. It was not in common use in the trade as a descriptive
term. The gloss on mercerised thread was referred to as a lustre and not as a
sheen. Apart from the trade evidence, there was a mass of evidence from members
of the public to the effect that they recognised the word SHEEN as distinguishing
the applicants' goods from those of any other manufacturers or merchants. There 25
is no such evidence in the present case. I consider that it is improbable that there
could be any substantial evidence of that character having regard to the present
day usage of the epithet "heavenly", but it is sufficient to say that there is no
such evidence.
I have already dealt in substance with the arguments advanced on behalf of 30
the applicants against the Registrar's decision. There is, however, one further
point which I should mention. Mr. Joseph said that on the decided
cases laudatory epithets can make good trade marks, and he referred to
registrations in fairly recent times of "CLASSIC" and "VICTOR" notwithstanding
the cases of Sharpe Ltd. v. Solomon Bros. Ltd. (1915) 32 R.P.C. 15 and Massa- 35
chusetts Saw Works' Application (1918) 35 R.P.C. 137 in which the same two
words respectively were refused registration on the ground of lack of distinctiveness.
The answer to this point is that in each instance goods of different classes were
concerned and in three of the four cases the applications proceeded under section
18(1) and were advertised before acceptance. One does not know all the circum- 40
stances relating to those registrations, and in my view it would be quite unprofitable
to investigate the details for the purpose of deciding the present case, which falls
to be decided on its own merits. I am satisfied that the goods in respect of which
the applicants seek registration in the present case are just the kind of goods in
connection with which the word "heavenly" would be likely to be used in a 45
merely laudatory sense by the public and by traders in commending their goods
to the public by advertisement. It is unnecessary to go further and enquire whether
there are any goods in respect of which the word "heavenly" might make a
distinctive trade mark or to discuss more deeply the subtleties between " laudatory"
and " merely laudatory" epithets. 50
For the above reasons I decide that the Registrar's conclusions were right and
that this appeal should be dismissed.