In search of a trade mark. Search practices and bureaucratic poetics

ABSTRACT

Trade marks have been understood as quintessential ‘bureaucratic properties’. This article suggests that the making of trade marks has been historically influenced by bureaucratic practices of search and classification, which in turn were affected by the possibilities and limits of spatial organisation and technological means of access and storage. It shows how the organisation of access and retrieval did not only condition the possibility of conceiving new trade marks, but also served to delineate their intangible proprietary boundaries. Thereby they framed the very meaning of a trade mark. By advancing a historical analysis that is sensitive to shifts, both in actual materiality and in the administrative routines of trade mark law, the article highlights the legal form of trade mark as inherently social and materially shaped. We propose a historical understanding of trade mark law that regards legal practice and bureaucratic routines as being co-constitutive of the very legal object itself.

KEYWORDS:

• Intellectual property
• law in action
• media technology
• trade marks
• legal history

Acknowledgments

An earlier version of this paper was presented at the ‘Alternative Property Practices’ workshop, Oñati (2014) and ISHTIP (2015). Thanks to Fernando Casas Aybar, Anne Bottomley, John Caisley, Bill Gallaguer, David Grossman, Glenn Gundersen, Keith Havelock, Stephanie Loeffler-Reading, Brian March, John Maher, Nathan Moore, Josette Reeves, Amanda Scardamaglia, Ken Sewell, David Sheppard and the three anonymous reviewers.

Disclosure statement

No potential conflict of interest was reported by the authors.

Notes

¹Bently (2008a), pp 3–41.

²See Sherman and Bently (1999), p 198. For an initial attempt to ‘chart how bureaucratic culture affects the operation of the trade mark system’, see Burrell (2008), pp 95–131.

³On the importance of registry for the functioning of law and law’s constitutive relationship to media technology, see Vismann (2008), pp 79–85.

⁴Analyses of the relation between law, media and materiality have been carried out in the patent law context by Pottage and Sherman (2010); on spatial bureaucracy, documentation and classification of patent information, see Kang (2012); on the mundane but crucial practice of trade mark watching, see Bellido (2015).

⁵Although Shaw suggests that the post was not ‘as lowly as we would think from the modern usage of the word clerk’, he says that the job ‘would give a living and allow time for his real interests’ in Shaw (1995), p 62. However, some scholars who met Housman did not draw such a clear-cut distinction between real interests and job occupations. Differently to what Housman’s biographers imply, the activities and spaces of poetic and trade mark work do not seem to have been strictly separated. Housman continued to write poetry during his time at the patent office and also appears to have coached other poets, such as G.K. Chesterton, in the patent office. In a letter to Chesterton’s widow, Rev. Austin Lee, who had been Housman’s colleague at Trinity College (Cambridge), recalled a lunch with him in which ‘among other things I remember his telling me that GK used to come to him for coaching in the days when he (Housman) was at the Patent office and Mr Chesterton was (I think) either there or shortly afterwards at the Slade’.

See Rev. Austin Lee to Mrs Frances Chesterton, 14 January 1938 Add MS 73454, British Library Archives.

⁶Kermode (2007), pp 7–8; Moorby et al. (1976), p 27; Patent Office Centenary (London, HMSO, 1953), p 30.

⁷‘By what must have seemed great fortune, the vacancy was for a job in the Patent Office in London, where his friend Moses Jackson had already been appointed to a well-paid position as Examiner of Electrical Specifications’ in Graves (2009), p 61; see also Woudhuysen (2006).

⁸Housman spent his time ‘scrutinising applications and comparing them with marks already registered’ in Shaw (1995), p 61.

⁹‘Housman always felt a special attachment to University College, for having, as he put it, picked him out of the gutter, – if I may so describe His Majesty's Patent Office’ in Chambers (1939), p 61, 79 and c267; Naiditch (1995), p 29; see also Graves (2009), p 61.

¹⁰See generally Hewish ‘Patent office – Career Records of 38 Staff’ in BLCA (British Library Corporate Archives).

¹¹Hewish (2000), p 89.

¹²For some comments of the rise of patent agents as ‘closed profession’ see Swan (1908), pp 198–200.

¹³See, for instance, William Henry Beck being appointed ‘mechanical assistant’; in Hewish (2000), n 10.

¹⁴Galison (2003).

¹⁵Letter from Housman to Webb, 17 June 1896 in Burnett (ed.) (2007), p 87; see ‘Obituary: Ralph Hare Griffin (1854–1941)’ The Antiquaries Journal, Vol. 22 (1), January 1942, pp 73–75.

¹⁶Although ‘[i]t is true Housman neither looked nor talked like a poet’ in Rothenstein (1932), p 39.

¹⁷See, for instance, Griffin (1925).

¹⁸On this, see more generally, Purdon (2016), p 18, and Kittler (1992), p 104.

¹⁹When Ronald Moorby (1917–2005), who had been the Assistant Registrar of Trade Marks at the UK patent office, summarised the advantages of mechanical searching, he noted that it would constitute a ‘relief to the examiners from the monotony of leafing through and scanning the index slips in the binders and terminal indexes,’ in R.L. Moorby ‘Mechanical Searching in the Trade Marks Branch, 9 January 1963, BT209/1283; National Archives, Kew.

²⁰Liebesny (1972), p 168.

²¹Sebastian (1884), p 41.

²²‘A considerable part of the increase is due to the provision in the new Act for the registration of fancy words, which are largely used in many trades’ in Second Report of the Comptroller General of Patents, Designs and Trade Marks for the Year 1884 (London: HMSO, 1885) p 7; see also Bently (2008b), pp 37–38.

²³Trade Marks Act 1905, section 9; Trade Marks Act 1919 (dividing the register into two parts).

²⁴ Eastman Photographic Materials Company v. Comptroller General of Patents, Designs and Trade Marks (‘Solio’) (1898) H.L. (E.) 571; see also T.B. Browne Ltd (1915), pp 4–7; letter from T.B. Browne to Rowntree ‘Invented Words’ 10 January 1910; Rowntree/R/DP/F/26/2; Borthwick Institute for Archives, University of York.

²⁵Sherman and Bently (1999), p 198. For a collection of essays that examines the processes of producing and negotiating knowledge surrounding bureaucratic practices, see Riles (2006).

²⁶ The Times, 31 December 1875, p 7.

²⁷Bently (2008a), p 29.

²⁸Bently (2008a), p. 29.

²⁹ The Times, 17 January 1876, p 9.

³⁰‘Although a minute classification has its disadvantages in certain cases, we are inclined to believe that it will in the long run tend to secure the property of the ordinary owner of a Trade Mark, and, so far, its adoption in the new scheme is deserving of public approval’; See The Times 17 January 1876, p 9; ‘Registration of Trade Marks’ Engineering, 2 February 1877, 93; Haseltine, Lake & Co (1922), p 51.

³¹Trade Marks (1878) Guide to the classification of goods under the Trade Marks Registration Acts 1875–1877, London; see also ‘Registration of Trade Marks’ Engineering, 7 January 1876, pp 14–15.

³²‘Registration of Trade Marks’ Engineering, 7 January 1876, pp 14–15; for the role of patent classifications, see Kang (2012), pp 551–594 (inventions are mainly classified according to their intrinsic nature or function, which involves an ontological exercise by the patent examiners and classification officers, or sometimes also according to their field of application); Bailey (1946a), pp 463–507 and (1946b), pp 537–575.

³³‘Registration of Trade Marks’ Engineering, 7 January 1876, 14–15; ‘It is commonly said that it was based upon the classification of goods made for the Great Exhibition of 1851’ in memo from the Association of Chambers of Commerce to the Board of Trade, 25 November 1913, BT 209/109 (National Archives, Kew); ‘Registration of Trade Marks’ Engineering, 2 February 1877, p 93 (‘the chief feature of which was a classification [ … ] hurriedly put together from old exhibition catalogues and other like sources’).

³⁴Swan (1908), p 290.

³⁵‘Registration of Trade Marks’ Engineering, 2 February 1877, p 93.

³⁶An American commentator highlighted that ‘[a]ssuming, in any event, that it is desirable to bring our trade-mark classification up to date and more in accord with present-day commerce in trade-marked merchandise, it is obvious that efforts should first be directed to breaking up the classes which now account for such a preponderance of all registrations while combining or transferring those classes which are now largely inactive’ in Carter (1946), p 435.

³⁷Memo from the Association of Chambers of Commerce to the Board of Trade, August 1913, BT 209/109 (National Archives, Kew); see for instance the discussion around the classification of ‘electronic games’ in Informal Meeting between the Institute of Trade Mark Agents and the Trade Marks Registry, ITMA Information, March 1994, p 2.

³⁸‘Still it would be a difficult matter to vary the classification now, as probably such a course would necessitate re-classification of all the thousands of Trade Marks already on the Register and re-definition of the rights under them’ in Haseltine (1922), p 47.

³⁹‘The whole of the existing registered marks, amounting to something like a quarter of a million, would have to be re-classified’ in memo from the Association of Chambers of Commerce to the Board of Trade, 25 November 1913, BT 209/109 (National Archives, Kew).

⁴⁰(from 50 to 34 classes) [‘The new classification of goods, for use in registering trade marks, which was introduced by the Trade Marks Rules, 1938, was evolved by an international committee, upon which the Patent office was represented, in connection with the International Union for the Protection of Industrial Property’] in ‘Fifty-Sixth Report of the Comptroller General of Patents, Designs and Trade Marks’, with Appendices, for the year 1938 (1939), HMSO, p 12.

⁴¹Minutes of Extraordinary General Meeting, Institute of Trade Mark Agents, 16 January 1936, p 2; ITMA Archives.

⁴²Bently and Sherman (2014), p 810.

⁴³‘Notes on the Patent Office: Trade Mark Classification’ TMPDF Monthly Report, February 1961; IP Federation Archives.

⁴⁴‘Mr Cox confessed that when he had first taken charge of the Trade Marks Branch he had been surprised after his experience of the Department's practice in connection with Patents, that so little information with regard to official objections was given to applicants. It would be, however, appreciated that the first consideration of the Trade Marks Branch was speed’ in ‘Practice of the Patent Office with regard to official objections’ Institute of Trade Mark Agents, Minutes 20 June 1935; ITMA Archives.

⁴⁵The Assistant Registrar of Designs and Trade Marks, James Lowry Whittle said that ‘preliminary searches may be made by any of the public, but traders in the country, who have no agents in town, cannot make searches without coming up to London themselves, I doubt if it is desirable to encourage people to come to the office without any fee. You would have people loitering about the office’. Herschell Committee (1888), p 123 (Evidence by J. Lowry Whittle).

⁴⁶Libraries used to be called ‘search rooms’ and were organised by classification. There was a close relation between the ability to manage files within given spatial and physical restraints and the organisation of information contained in legal files. See Kang (2012), p 565.

⁴⁷Ball (1946), pp 384–388, at 384; see also Swanson (2009), pp 519–548.

⁴⁸Ellis (1935); ‘Closing of the Trade Marks Profession’ ITMA Minutes, 11 December 1956, ITMA Archives; see also Waddleton (1981), pp 146–190.

⁴⁹The Assistant Registrar of Designs and Trade Marks, James Lowry Whittle said that ‘I doubt if it is desirable to encourage people to come to the office without any fee. You would have people loitering about the office’ in Herschell Committee (1888), p 122 (Evidence by J. Lowry Whittle).

⁵⁰The trade mark profession in the US faced similar problems; see ‘Annual Report of the Committee on Trademarks and Unfair Competition for 1928–1929’ in The Association of the Bar of the City of New York Yearbook (1929) The Association of the Bar of New York, p 291.

⁵¹‘You should then examine the trade mark registers of a number of likely markets. This is a specialist job’ in Rositter (1992), p 9; Campbell (1979) ‘Trade mark Searching in the United States and Abroad’ in 1979 Trademark Conference: The Lanham Act and Beyond, Bureau of National Affairs, pp 1–47; p 2 (‘Searching and understanding search reports is probably the single most important task performed by the trade mark counsel's office in large corporation’).

⁵²When the ‘guide to the use of the trade marks public search room’ was published, the Institute of Trade Mark Agents noted that the ‘guide was unlikely to be of special interest to the Institute Members, whose staffs were well versed in certain procedures’ see ITMA Minutes 27 September 1966; ITMA Archives.

⁵³It is not a coincidence that trade mark agents often described their expertise as a ‘service’; for a thought-provoking history of servants as ‘search engines,’ see Krajewski (2010), p 6.

⁵⁴ The Times, 17 January 1876, p 9.

⁵⁵Article 4 (1) of the Paris Convention (1883): ‘Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trade mark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.’

⁵⁶‘The first number of an official paper for the advertisement of Trade Marks, entitled the Trade Marks Journal, appeared on the 3^rd May 1876’; see Report of the Commissioners of Patents for Inventions for the Year 1876 (London, HMSO, 1877), p 8.

⁵⁷‘The Trade Marks Journal’ Engineering (5 May 1876), p 368.

⁵⁸‘Considerable skill and practice are necessary to use this search material to advantage’ in Haddan (1938), p 106. See also on the importance of the index for files, Vismann (2006), p 103: ‘A lost file, after all, can only be discovered if there exists a hint that something is missing. In order to detect a gap in a stack of records, it is necessary to combine the real and the symbolic. A retrieval system for files such as index cards or a registration of some kind serves as a reference between the two universes. So even if files are destroyed, the signifier of the destruction still exists and reveals the loss – unless it is destroyed itself. In an administration becoming more and more interlinked, that kind of total elimination seems less and less likely. At least records kept in parallel files point at what is missing.’

⁵⁹See Bellido (2015), pp 130–151; see also Campbell (1979) p 1 (‘[T]rademark searching is an integral and vital part of the law of trade marks’]; Thomson (1945), p 785 (‘Attorneys today and even the courts and the Patent Office know that a new trade mark is adopted only after many weeks of searching [ … ]’).

⁶⁰Moorby (1976), London, HMSO, 1976, p 23.

⁶¹‘We think that indexing of the trade marks is capable of improvement, and that a good subject matter index would be of great value’ in Herschell Committee (1888), p viii. Similarly, the patent agent Alfred Julius Boult suggested that ‘indexes ought to be very much better than they are, I think. There should be at all events, an alphabetical index open to the public which at the present time appears not to be the case. An alphabetical index would very much assist, both as to the subject and as to owners of marks’ Herschell Committee (1888), p 96 (Evidence by Mr Alfred Julius Boult). And the President of the Institute of Patent Agents, John Imray also said that ‘a very good register of trade marks should be kept and published, with proper indexes, as with respect to patents’ in Herschell Committee (1888), p 110 (Evidence by John Imray).

⁶²‘F Newbery (Index Clerk) Special Post’ in Trade Marks Registry – Distribution of Business and Staff January 1892 in Patent Office Copies of Staff Registers, vol 1 and JG Poulton (Abstractor) Trade Marks Registry – Distribution of Business and Staff January 1892 in Patent Office Copies of Staff Registers, vol 1; BLCA (British Library Corporate Archives).

⁶³‘Instructions to Persons who wish to register Trade Marks, 1906, p. 8’; John Harvey & Sons Ltd and Cockburn Smithes & Co; 40913/L/2/5; Bristol Record Office; see also Reginald Haddan (1938), p. 106.

⁶⁴Although the patent office published a separate annual index of the trade mark journal, this index was more relevant for the development of trade mark watching services than for searching the register; see Bellido (2015).

⁶⁵‘Trade Mark Terminals’ in Minutes of Meeting held on 25 July 1928, The London Chamber of Commerce, Patents, Trade Marks and Design Section, p 5; CLC/B/150/MS167 in LMA (London Metropolitan Archives).

⁶⁶Memo by Mr Hawkes, 16 November 1953, in Proposed creation of a centre for searches of anticipation in respect of Trade Marks, BT 209/1133 (National Archives, Kew).

⁶⁷‘It was agreed that a letter should be prepared for despatch to the Comptroller of Patents, asking him to make the official indices available for search by the representatives of firms’ in ‘Trade Mark Terminals’ in Minutes of Meeting held on 14 August 1928, The London Chamber of Commerce, Patents, Trade Marks and Design Section, p 5 CLC/B/150/MS167 in LMA (London Metropolitan Archives); E. M. Bennett ‘The Search Files in the English Patent Office (London, Patent Office, 1948)’ in BT 209/43, National Archives (Kew) [concerning patent search files].

⁶⁸‘UK-Trade Mark Terminals’ in Minutes of Meeting held on 25 July 1928, The London Chamber of Commerce, Patents, Trade Marks and Design Section, p. 5 CLC/B/150/MS167 in LMA (London Metropolitan Archives); the first search location [in the US Patent Office] comprised the classified registered marks that were – as one commentator explains – located ‘in vertical tiers of individually labelled drawers, technically known as shoes’; see Seidel (1959), p 26; see also Dobyns (1997), p 193.

⁶⁹Thomson (1922); E.M. Bennett n 67 ‘Documentation of Search Material in the Patent Office’, in BT 209/43, National Archives (Kew); RLM ‘New Zealand Patent and Trade Mark Office: Public Records’ ITMA Newsletter, No. 121, September 1985, p 1.

⁷⁰For instance, Mr E Johnson asked for better facilities to conduct searches by the public at the Herschell Committee (1888), p 78 (Evidence by Mr E. Johnson); see also RLM ‘New Zealand Patent and Trade Mark Office: Public Records’.

⁷¹‘Trade Marks Registry: Improvements in the Public Search Room’ ITMA Minutes, 20 November 1956, ITMA Archives.

⁷²ITMA Minutes, 13 December 1949; ITMA Archives.

⁷³‘William John Andrew Beeston, WP Thompson & Co, had written on the 17^th April 1973, suggesting that the accuracy of the search room records at the registry could be improved. As a result of misfiling in the search room he had recently given incorrect information to clients on two occasions. It was agreed to reply to Mr Beeston that this particular point had already been covered in the submissions to the Mathys Committee, but nevertheless, it would be placed on the agenda for the next informal meeting with the Registry. ‘Trade Mark Registry’ ITMA Minutes, 12 December 1972; ITMA Archives.

⁷⁴See Newton (1991), p 49; Memos from the Norwegian, Canadian, Spanish, French, German, Australian, Austrian, Danish, Hungarian, Israeli, Swedish and Swiss Patent Offices to Jacques Secretan, Director of BIRPI, 1958 in Proposed creation of a centre for searches of anticipation in respect of Trade Marks, BT 209/1133 (National Archives, Kew).

⁷⁵Parsons (1938), pp 100–105.

⁷⁶ Meyesrestein’s Application (1890) 7 RPC 114 Ch. D ['Satitine’]; Kenrick and Jefferson’s TM (1890) 7 RPC 321 Ch. D [‘Palmilla’]; Talbot’s TM (1894) 63 L.J. Ch. 264 [‘Emolliolorum’ and ‘Molliscorium’]; Meaby and Co. Ltd v Triticine Ltd and Others (1898) 15 RPC 1 Ch.D [‘Tricumina’ and ‘Triticine’]; Christy and Co. v Tipper and Son (1905) 1 Ch. 1 [‘Absorbine’].

⁷⁷ Eastman Photographic Materials Company v. Comptroller General of Patents Designs and Trade Marks (‘Solio’) (1898) H.L.(E.) 571.

⁷⁸Davis (2002), pp 342–367; Moulton (1922), p 52; Ackerman (1930), p 141; Kerly and Underhay (1913), p 171; Boyd Sebastian (1911), p vi.

⁷⁹Richardson and Thomas (2012), pp 93–94.

⁸⁰In this sense, the creative role which trade mark index played parallels Markus Krajewski's observation that index cards, together with expert skill, allow new associations to be formed: ‘ … the index database blazes associative trails that may serve as clarifying creative prompts for different connections and unexpected arguments’ in Krajewski (2011), p 63.

⁸¹For some references to the group, see ‘Therapeutic Research Corporation’ Nature 148, 658 (29 November 1941); Hounshell and Smith (1988), p 448.

⁸²Explorative note concerning the registration of ‘Terce’ (and ‘Terse’). File belonging to A E Warden (responsible for trade mark matters at The Wellcome Foundation until his retirement in 1942); WFA WF/TRC/02/094; Wellcome Library Archives.

⁸³Thomson (1913), p 127.

⁸⁴The President of the Chartered Institute of Patent Attorneys, John Imray, linked the creation of the index with the act of searching when he said that ‘a very good register of trade marks should be kept and published, with proper indexes, as with respect to patents, so that applicants might go and search for themselves and see whether the thing was new or not –whether they could have a good trade mark or not’ (Herschell Committee (1888), p 110 (Evidence by John Imray)).

⁸⁵Withers & Spooners (1912), p 21; Thomson (1913), p 161; T. B. Browne Ltd (1915), p 16.

⁸⁶Gundersen (2000), p 11; for recent cases in which it is possible to see how companies still commission trade mark searches before filing applications, see Starbucks and others v British Sky Broadcasting and others [2012] EWCA 3074 (Ch) before Mr Justice Arnold at para 75.

⁸⁷Quite evocatively, Oscar A. Geier defined this as ‘search as to novelty,’ see Geier (1934), p 96; see also John Harvey & Sons Ltd and Cockburn Smithes & Co (1890) Instructions to Persons who wish to register Trade Marks, p 3, 40913/L/2/4, Bristol Record Office.

⁸⁸Section 95 Trade Marks Rules 1906: ‘The registrar, if requested so to do in writing upon a Form TM No. 28, may cause a search to be made in any class to ascertain any marks are on record at the date of such search which may resemble any mark sent in duplicate to him by the person requesting such search and may cause that person to be informed of the result of such search’ [our emphasis].

⁸⁹Barker (193?) Trade Mark Notes, Geo. Pulman & Sons, p 13 in 4.00.62; The National Brewery Centre.

⁹⁰For instance, the search prescribed by ‘Rule 112 of the Trade Marks Rules, 1920 ceased to extend to the list of unregistered Cotton Marks at Manchester, the object in view being to expedite and economise the work of searching by excluding from consideration the large number of marks in this List which were known to have fallen into disuse’ in Forty-Fourth report of the Comptroller General of Patents, Designs and Trade Marks with appendices for the Year 1926, London, HMSO, 1927, p 8.

⁹¹‘The fee payable by a person making a search amongst the classified representations of trade marks was 1s. for each quarter of an hour’ in John Harvey & Sons Ltd and Cockburn Smithes & Co (1890); see also Haddan (1922), p 224.

⁹²‘Trade Marks Registry: Improvement in the Public Search Room’ TMPDF Monthly Report, 19 February 1957, IP Federation Archives.

⁹³Although copies of the Trade Mark Journal were available at the Museum of Science and Art (Edinburg), the National Library of Ireland (Dublin) and at Free Libraries of many of the principal towns in the UK, trade marks records were only available in London (and Manchester regarding textile trade marks); see ‘Form R. Ren. 3 (trade mark renewal), 1907’ John Harvey & Sons Ltd and Cockburn Smithes & Co; 40913/L/2/4; Bristol Record Office.

⁹⁴Owen (1925), pp 25–26.

⁹⁵‘Trade mark Searching’ Patent and Trademark Review 29, December 1930, p 86.

⁹⁶Thomson (1922).

⁹⁷‘Reports on Searches and Cases for Opinion’ (1910–1944), Marks & Clerk; SCM Archive. For a history of the firm, see Lane (1986); Arapostathis and Gooday (2013), pp 64–68.

⁹⁸Seidel (1959), p 26.

⁹⁹‘Trade Marks Monthly Search (Pending Applications)’ WFA WF/TRC/02/094; Wellcome Library Archives. Similarly, in the US, a commentator suggested that ‘it is quite important to search the pending application file in the Patent Office. These applications have been made public only since November 1949’ in Thomson (1954) ‘Selection of Trade marks from a Legal Point of View’ 44 TMR 784–793, p 787.

¹⁰⁰‘Particulars of new applications in the public search room’ in ITMA Minutes, 9 July 1968; ITMA Archives.

¹⁰¹‘Those who are in frequent intercourse with the Trade Mark officials, and who have numerous and complicated applications constantly under their notice are able to obtain the best results’ in Barker (193?).

¹⁰²‘What's in a Name? Goodwill, Profit, Reputation [ … ] Cases are personally dealt before the Registrar’ in ‘T.B. Browne circular, January 1906’; Rowntree/R/DP/F/20/2; Borthwick Institute for Archives, University of York.

¹⁰³‘[Mr FH Bucke] was well known to Mr Faulkner of the Patent Office, and he had been acquainted with the late Mr EM Griffin, at whose suggestion he first applied to join the Institute.’ in ITMA Minutes 20 November 1947; ITMA Archives.

¹⁰⁴‘Search reveals trade mark Liberty Application 17007 and title establishment Casa Liberty for textiles – class 23’ in letter from Boult, Wade & Tennant to Liberty & Co, 30 June 1949; Acc 1932–272; Liberty & Co.; City of Westminster Archives Centre.

¹⁰⁵Thomson (1913), p 162.

¹⁰⁶

‘A search of the TM register has now been made and has revealed three registrations of SUNRIPE in the name Rowntree & Co, York [ … ] We are a little surprised that the registrations of the word SUNRIPE in respect of fruit juices was accepted, but you will notice that the registration is in part B and that it was effected during the war when conditions at the Patent Office were a little chaotic.’ Letter from WJ Buttimer (TM Department) to Mr A Ryrie (Reckitt & Colman) 24 November 1954 in Box 166; Legal, Trade marks; Unilever archives.

¹⁰⁷Thomson (1913), p 162.

¹⁰⁸‘Do you know anything about the opponents? You will no doubt have the latest publications of whisky trade marks and we wonder if you can give us particulars therefrom of all marks in use containing the word LOCH. Of course we can have a search made through the British Trade mark records [ … ]. Marks & Clerk to D. Johnston & Co (Laphroig) Ltd, 5 August 1966; Allied Distillers; UGD 306/1/34/15/11; University of Glasgow Archives.

¹⁰⁹Stevens, Langner and Parry to Clark & Co. 2 October 1964 [‘Desert’] CJC 86/14; Clarks Archives.

¹¹⁰We should add that were are under the impression that there are (already) quite a number of – Mist – trade marks already on the Register for Whisky. If such is the case you will not have a monopoly of the word – Mist- and in consequence you might not be in a position to prevent the registration of – Dawn Mist. Letter from Marks & Clerk to D. Johnston & Co, 22 January 1946; Allied Distillers; UGD 306/1/34/15/11; University of Glasgow Archives.

¹¹¹Campbell (1979), p 15. Although the evidence is often treated with caution, the remarkable aspect to be noted here is precisely its introduction in trade mark hearings as a way to argue phonetic similarity; see DNET (Trade Mark: Opposition) [1999] UKIntelIP (16 February 1999) at para 5 [‘Compu-Mark search material’]; SEMPRE / SEIMPRE (Trade Mark: Opposition) [1999] UKInterlIP (26 February 1999) [‘Gibbins & Co, trade mark searchers’] at para 30.

¹¹²Minutes of Extraordinary General Meeting, Institute of Trade Mark Agents, 16 January 1936, p. 8; ITMA Archives.

¹¹³ITMA, Minutes 28 September 1965, ITMA Archives.

¹¹⁴See Trade Marks (Amendment) Act 1984.

¹¹⁵Stevens, Langner, Parry & Rollinson to Clark & Co; 4th October 1955 [Trade Mark Search ‘Cignet’, ‘Cygnet’, ‘signet’ and ‘Swan’]; CJC 86/13; Clark Archives.

¹¹⁶Gangjee (2013); Davis (2008).

¹¹⁷Munn & Co (1912), pp 27–31; Thomson (1913), p 123.

¹¹⁸‘The writer has in his possession a complete library of official trade mark registration records from the earliest period to the current date. These records are invaluable and constantly being searched to ascertain particulars of prior registrants for all classes of goods’ in Yate Johnson (1950), p 13.

¹¹⁹Underwood (1913); Moore (1936), pp 14–25 (‘The Best Kind of Trade-Mark’); Parsons (1938), pp 93–99 (‘The Selection of Trade Marks’); VVAA (1955) Trademark Management 1, USTA (‘Choosing the Right Trade mark’).

¹²⁰Gee (1936), p 30 (‘lexical inventiveness’); Parsons (1938), pp 100–105.

¹²¹Rayner & Co., Unbranded (London, 193?) p. 3 in 2000.0159.00; The National Brewery Centre.

¹²²‘What's in a Name? Goodwill, Profit, Reputation [ … ] T. B. Browne invent words capable of registration, and supply suitable pictorial designs’ in ‘T.B. Browne circular, January 1906’, Rowntree/R/DP/F/20/2; Borthwick Institute for Archives, University of York.

¹²³‘Memorandum – 3 July 1908’ Rowntree/R/DP/F/20/1; Borthwick Institute for Archives, University of York.

¹²⁴For an interesting history of foreign trade mark registration by Rowntree, see Da Silva and Casson (2012).

¹²⁵Bennett (1949), pp 203–230.

¹²⁶Even more, some trade mark agencies such as Interbrand and TMOA (Nucleus IP) began offering brand selection advice; interview with Ken Sewell, March 2014; see also ‘Trade Mark Searches’ in Naming (2000), p 71.

¹²⁷‘The Future of Naming’ in Naming (2000), p 106.

¹²⁸‘Trade mark Search Room Problems’ Departments of State, Justice, and Commerce, the Judiciary and related agencies appropriations for fiscal year 1980: hearings before a Subcommittee of the Committee on Appropriations, United States Senate, Ninety-sixth Congress, first session on H.R. 4392 (U.S. Govt. Print. Off., 1979) 1480–1483.

¹²⁹The Council considered a letter dated 12 August 1960 from Mr JG Wallis, which referred to the fact that a great deal of time was wasted by having, when searching, to look through files of expired marks. So were the number of expired marks that it was becoming increasingly difficult to ascertain what marks still remained on the Register. ‘Trade Mark Searches in Schedule III’ in TMA Minutes 27 September 1960; ITMA Archives.

¹³⁰‘Trade Marks Registry: Improvement in the Public Search Room’; TMPDF Monthly Report, 19 February 1957; IP Federation Archives.

¹³¹‘Organisation of Search Records (shelvings and brackets)’; ITMA Minutes, 11 July 1972; ITMA Archives.

¹³²Ball (1946), p 384; Frome and Leibowitz (1957); Redies (1958).

¹³³E. M. Bennett ‘Some observations on a Common Patent Classification’ (London, Patent Office, 1948) in BT 209/43, National Archives (Kew). The sociologist Niklas Luhmann's use of index cards and his Zettelkästen is well-known. He did not only use them as knowledge organising devices, but also noted their ability to enkindle unexpected associations. Digital versions, inspired by Luhmann, are Zettelkasten nach Niklas Luhmann <www.zettelkasten.danielluedecke.de> or Synapsen by Markus Krajewski <www.verzetteln.de/synapsen>. On the arrangement of index cards as proto-computer, see Krajewski (2011).

¹³⁴‘Trade Mark Registry’ ITMA Minutes, 12 December 1972; ITMA Archives.

¹³⁵See, generally Day (2014).

¹³⁶E. M. Bennett ‘Some observations on a Common Patent Classification (London, Patent Office, 1948)’ in BT 209/43, National Archives (Kew).

¹³⁷‘Berne Bureau: Proposed creation of a Centre for searches of Anticipation in respect of Trade Marks’ in BT 209/1133, National Archives (Kew); ‘International Centre for searches of anticipation in respect of trade marks’ Industrial Property Quarterly, January 1957, No 2, pp 56–60.

¹³⁸That these services were going to be provided by private companies was predicted at the Institute of Trade Mark Agents when they noted that ‘it might be preferable for this work to be undertaken by private agencies rather than by government sponsored bodies’, ‘Trade Marks Search Centre’ ITMA Minutes, 12 May 1959; ITMA Archives.

¹³⁹‘International Search Centre for Trade Marks’; ITMA Minutes, 20 November 1956, ITMA Archives; see also Rositter (1987); ‘International Centre for searches of anticipation in respect of trade marks’ Industrial Property Quarterly, October 1958, No 4, pp 59–64; and Bailey (2015).

¹⁴⁰See, for instance, Gevers (1973); ‘Facts about Compu-Mark S.P.R.L. (1980)’ Compu-Mark, September 1980, p 2.

¹⁴¹‘Compu-Mark’ Trademark World, December 1987, p 5; Gevers’ testimony: ‘Defendant Thomson & Thomson Inc.'s Proposed Findings of Fact and Conclusion of Law’, p 6, Corsearch v Thomson & Thomson (91 Civ 6706), p 4, US District Court for the Southern District of New York, NARA Archives.

¹⁴²Compu-Mark arrived in London by acquiring a small firm of patent and trade mark searchers and translators called Woolcott & Company; interview with David Sheppard, December 2013.

¹⁴³Dellinger (1976), pp 142–145.

¹⁴⁴ Trade Mark Journal, 29 November 1972 [‘UK Trade Mark Applications: Trade Mark Computer Services and Applications’]

¹⁴⁵‘The formation of the Association was prompted in particular by the rapid development of sophisticated information retrieval systems [ … ]’ in ‘Patent and Trade mark Searchers’ Association’ CIPA Bulletin, June 1975, p 312.

¹⁴⁶Some members of the Institute of Trade Mark Agents feared that these new companies were offering trade mark legal advice instead of providing trade mark ‘data’.

¹⁴⁷In 1986, the UK patent office launched Pergamon InfoLine, a database that offered a comprehensive range of services to the public such as online word searches; see ‘The Search and Advisory Services; the Patent Office’ Trademark World, December 1986, 5; Oppenheim (1986), pp 185–192; ‘Trade Mark Search Services’ ITMA Newsletter, July/August 1986, p 1.

¹⁴⁸‘Mechanisation of the Trade Marks Registry’ ITMA Minutes, 16 September 1975, ITMA Archives.

¹⁴⁹‘Computerisation: Trade Marks Registry’ ITMA Newsletter, No. 119, June 1985, pp 3–4.

¹⁵⁰As it was anticipated by the Trade Mark Registry, computerisation would ‘reduce the need to access the paper files considerably’ in ‘Trade Mark Office Administration System’ ITMA Newsletter, March 1985, p 6.

¹⁵¹‘These days most trade mark searching is done electronically in various locations around the country.’ ITMA Newsletter, No. 179, February 1991, p 1.

¹⁵²‘Trademark Searches’ Trademark World, April 1987, p 38.

¹⁵³For instance, the trade mark EXXON was computer-born, that is, adopted after searching directories, registers and conducting interviews. However, computer listings was the infrastructure that initially provided multiple combination of words. Similarly, many of the coined trade names by DuPont in the late 1960s were computer created; see Praninskas (1968), pp 13–14.

¹⁵⁴‘Using manual card indexes displayed in the public search room, searchers were traditionally limited to the search of a word or prefix’ in Pinsonneault (1996), p. 286.

¹⁵⁵‘Compu-Mark’ Trademark World, December 1987, p 5.

¹⁵⁶Rositter (1987), pp 51–54.

¹⁵⁷Interview with David Sheppard, January 2014.

¹⁵⁸‘Compu-Mark’ Trademark World, December 1987, p 5. Infixes are parts of words which are floating and can be inserted into another word base, such as ‘absobloominlutely’. They enabled enhanced searches for word units in the middle of pre-existing trade marks.

¹⁵⁹Pinsonneault (1996), p 286.

¹⁶⁰‘Computer Column’ ITMA Newsletter, May 1984, p 6.

¹⁶¹Working Group for the Mechanization of Trade mark Anticipation Searches (1978) ‘Organization of searches at Compu-mark’ pp 16–18; in Proposed creation of a centre for searches of anticipation in respect of Trade Marks, BT 209/1133; National Archives, Kew.

¹⁶²Working Group for the Mechanization of Trade mark Anticipation Searches (1978).

¹⁶³CC Nicholas to Moorby and Ward Dyer, 3 February 1971; BT 209/1283; National Archives, Kew.

¹⁶⁴Radcliffe and Shah (2008), pp 85–89.

¹⁶⁵‘Review of UK Law’ ITMA Newsletter, No. 135, January 1987, p 1.

¹⁶⁶‘A team of system analysts in the Office has now reached the stage of providing … ’ in ‘Word Mark Search System’ ITMA Newsletter, March 1985, p 7.

¹⁶⁷‘Bugs!’ ITMA Newsletter No. 208, January 1994, p 5.

¹⁶⁸‘Review of UK Law’ ITMA Newsletter, No. 135, January 1987, p 1.