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Sects. scription of goods a trade mark identical with one already on the register with respect to such goods or description of goods.
(2.) The comptroller shall not register with respect to the same goods or description of goods a trade mark so nearly resembling a trade mark already on the register with respect to such goods or description of goods as to be calculated to deceive.
73. It shall not be lawful to register as part of or on registra in combination with a trade mark any words the exclusive use of which would, by reason of their being calculated to deceive or otherwise, be deemed disentitled to protection in a Court of Justice, or any scandalous design.
1. Mark identical
with one registered.
2. Mark resembling
This section formed part of sect. 5 of the Act of 1875. Three classes of marks are here stated to be disentitled to registration:
(1.) Marks identical with those on the register. Subsect. (1) will not prevent the registration of a mark identical with one on the register for a different class of goods or even for other goods of the same class (In re Brady & Co.'s Application, 20 Ch. D. 223).
The Court has not hitherto permitted the same old mark to be registered more than three times (Benbow v. Low, W. N. 1881, p. 97; see also In re Hargreave's Trade Mark, 11 Ch. D. 669).
(2.) Marks resembling those registered.
Resemblance to marks the registration of which has one regis- not been completed is immaterial (In re Dugdale's Trade Mark, 49 L. J. Ch. 303).
The following cases, in which registration was refused, illustrate what is meant by marks calculated to deceive: Allsopp v. Walker, Sebastian on Trade Marks, p. 217, a female hand pointing horizontally was held to resemble a man's hand held upwards. In re Worthington & Co.'s Trade Mark, 14 Ch. D. 8, registration refused of a triangle enclosing a second triangle containing a church, the border between the two triangles having the words "Beccles Brewery" printed on it, inasmuch as a plain triangle was already on the register, and was used coloured red, and if the applicants printed their colour red, a purchaser might be misled. See also remarks of
Lord Blackburn in Johnson v. Orr Ewing, L. R. 7 App. Sects. Cas. 228.
(3.) Marks disentitled to protection at law.
Where there is any misrepresentation in a trade mark, or where the trade itself is fraudulent, the Court will not protect a trade mark (Ford v. Foster, L. R. 7 Ch. 611). False statements as to origin and quality (Pidding v. How, 8 Sim. 477), or as to substances employed in manufacture, disentitle the owner of the trade mark to protection.
See also note to sect. 64, and Trade Marks Instructions, 29-31, for further restrictions on registration. Terms may be imposed by the Court (In re Whiteley's Trade Mark, 43 L. T. 627).
As to costs of comptroller, see In re Orr Ewing's Trade Mark, 28 W. R. 412.
calculated to deceive.
74. (1.) Nothing in this Act shall be construed to Saving for prevent the comptroller entering on the register, in the power to prescribed (a) manner, and subject to the prescribed (a) entry on conditions, as an addition to any trade mark
(a.) In the case of an application for registration marks as of a trade mark used before the thirteenth to trade day of August one thousand eight hundred marks. and seventy-five
Any distinctive device, mark, brand,
(b.) In the case of an application for registration
Any distinctive word or combination of
(2.) The applicant for entry of any such common particular or particulars must, however, disclaim in
(a) See note to sect. 62.
Sects. his application any right to the exclusive use of the 74, 75. of the disclaimer shall be entered
tion equivalent to public use.
same, and a copy
(3.) Any device, mark, brand, heading, label, ticket, letter, word, figure, or combination of letters, words, or figures, which was or were, before the thirteenth day of August one thousand eight hundred and seventy-five, publicly used by more than three persons on the same or a similar description of goods shall, for the purposes of this section, be deemed common to the trade in such goods.
In the Instructions issued in 1878 it was stated— "Terms or symbols common to a trade, such as in the iron trade the words best,' 'best, best,' 'charcoal,' 'coke,' 'plating,' 'scrap,' and representations of a crown or horseshoe; or in the wine and spirit trade, representations of vine-leaves, grape clusters, stars, or diamonds, are not trade marks within the meaning of the Trade Marks Registration Act, 1875 . . . and where such terms or symbols have been used in combination with trade marks before the passing of that Act, they must be disclaimed in the statement on application."
For the future, any distinctive device, mark, brand, &c., common to the trade, may be registered as part of an old mark, and any "distinctive word or combination of words common to the trade, as part of a new mark. In both cases, any right to exclusive user of that part of the mark common to the trade must be disclaimed.
The definition of "common to the trade" in sub-sect. (3) adopts the principle laid down in Benbow v. Low, W. N. 1881, p. 97.
The addition of a common mark to a trade mark is to be made in the original application for registration; but see sect. 92 as to additions made after registration. The disclaimer of the common mark is to be written at foot or back of the Application Form and of each of the additional representations, and to be signed by the applicant or his agent (see Instructions, 19).
Effect of Registration.
75. Registration of a trade mark shall be deemed to be equivalent to public use of the trade mark.
In order to succeed in an action for infringement of a trade mark, it was always necessary to show that there 75-77. had been an actual use of the mark in the market, which was called a public use of the mark (Rodgers v. Nowill, 5 C. B. 109; McAndrew v. Bassett, 33 L. J. (Ch.) 561). Registration renders it unnecessary to prove public use.
76. The registration of a person as proprietor of Right of a trade mark shall be prima facie evidence of his first proright to the exclusive use of the trade mark, and exclusive shall, after the expiration of five years from the date of the registration, be conclusive evidence of his right to the exclusive use of the trade mark, subject to the provisions of this Act.
For five years from the date of registration (ie., of Right of application), the registered proprietor has the right to exclusive exclusive user, but such right may be disputed by any person who claims to have as good or a better title (see Rheinhardt v. Spalding, L. J. Ch. 57).
After five years, the register is conclusive as to the exclusive right of user.
Such right of user, whether during the five years or afterwards, is "subject to the provisions of this Act," e.g., subject to the mark being a trade mark within the meaning of sect. 64, since registration will not prevent a defence on the ground that the mark is not a trade mark entitled to registration, either because originally it did not come within the definition or has become publici juris (Ford v. Foster, L. R. 7 Ch. 611). The mark may be removed after such five years where it ought not to have been registered (In re Palmer's Application, 21 Ch. D. 47). As to other provisions of the Act to which the registration is subject, see sect. 70, as to determination with goodwill; sect. 79, as to payment of fees.
By sect. 87, the registered proprietor has, subject to any Right of rights appearing on the register, power absolutely to assign, assigngrant licenses as to, and otherwise deal with the trade ment, &c. mark. But equities in regard to the mark may be enforced.
77. A person shall not be entitled to institute No proany proceeding to prevent or to recover damages for ceedings the infringement of a trade mark unless, in the case fringement of a trade mark capable of being registered under of unregis this Act, it has been registered in pursuance of this marks.
Sect. 77. Act, or of an enactment repealed by this Act, or, in the case of any other trade mark in use before the thirteenth of August one thousand eight hundred and seventy-five, registration thereof under this part of this Act, or of an enactment repealed by this Act, has been refused. The comptroller may, on request (a), and on payment of the prescribed fee (B), grant a certificate that such registration has been refused.
Remedy for in
By sect. 1 of the Act of 1875, failure to register a trade mark before the time therein mentioned was a bar to any action of infringement. This was altered, as to old marks, by the Amending Act of 1876, which gave an action for infringement in the case of old marks where registration was refused. The present section embodies the same principle. The result is that registration is a condition precedent to an action for damages or injunction in the case of new marks, but as to old marks, a certificate of refusal or registration is required. In default of registration, old marks, therefore, are protected in the same way as if the Acts had not been passed (In re Barrows, L. R. 5 Ch. D. 353).
The section only applies to marks capable of being registered under the Act.
The fee for the certificate of refusal is 11. In case of more than one mark, an additional fee of 10s. is payable for each mark. Such certificate will be prima facie evidence of the refusal to register (sect. 96).
The remedy for infringement of a trade mark is an action for injunction and damages, or criminal proceedings under the Merchandise Marks Act, 1862.
At common law the remedy was an action for deceit, and it was necessary to show an actual intention to deceive. At equity an injunction could be obtained, and consequently recourse was had to equity rather than common law. At first equity refused redress unless actual fraud was shown; but in Millington v. Fox, 3 My. & Cr. 338, and The Leather Cloth Co.'s Case, 33 L. J. Ch. 199, it was finally settled that an actual intention to deceive need not be proved in order to obtain the aid of the Court.
(a) Form L (Trade Marks Forms).
(B) 17. in case of one mark,
10s. for each additional mark. First Schedule Trade Marks Rules.