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Sects. 81, 82.


for counterfeiting



prescribed manner, appeal to the comptroller, who shall have power to confirm, reverse, or modify the decision, but the decision of the comptroller shall be subject to a further appeal to the Court:

For form of appeal to the comptroller, see Trade Marks Forms, W. The fee payable is 17. (see first

schedule to Trade Marks Rules).

As to appeal to the Court (see Trade Marks Rules, 29).

(13.) So much of the Cutlers' Company's Acts as applies to the summary punishment of persons counterfeiting Sheffield corporate marks, that is to say, the fifth section of the Cutlers' Company's Act of 1814, and the provisions in relation to the recovery and application of the penalty imposed by such last-mentioned section contained in the Cutlers' Company's Act of 1791, shall apply to any mark entered in the Sheffield register.

See App. C. as to the provisions of the Acts here referred to.




Patent Office and Proceedings thereat.

82. (1.) The Treasury may provide for the purposes of this Act an office with all requisite buildings and conveniences, which shall be called, and is in this Act referred to as, the Patent Office.

(2.) Until a new patent office is provided, the offices of the Commissioners of Patents for inventions

and for the registration of designs and trade marks existing at the commencement of this Act shall be the patent office within the meaning of this Act.

(3.) The patent office shall be under the immediate control of an officer, called the comptroller general of patents, designs, and trade marks, who shall act under the superintendence and direction of the Board of Trade.

(4.) Any act or thing directed to be done by or to the comptroller may, in his absence, be done by or to any officer for the time being in that behalf authorised by the Board of Trade.



The offices of the Commissioners of Patents, which is Patent now called the Patent Office, is at 25, Southampton Office. Buildings, Chancery Lane, London, W.C.

An office has been provided in Manchester at 48, Royal Exchange, where the register may be searched for all marks in classes 23-25 (Trade Marks Instructions, 38).

and clerks.

83. (1.) The Board of Trade may at any time Officers after the passing of this Act, and from time to time, subject to the approval of the Treasury, appoint the comptroller-general of patents, designs, and trade marks, and so many examiners and other officers and clerks, with such designations and duties as the Board of Trade think fit, and may from time to time remove any of those officers and clerks.

(2.) The salaries of those officers and clerks shall be appointed by the Board of Trade, with the concurrence of the Treasury, and the same and the other expenses of the execution of this Act shall be paid out of money provided by Parliament.

84. There shall be a seal for the patent office, and Seal of impressions thereof shall be judicially noticed and patent

admitted in evidence.

Letters patent are now sealed with the seal of the Patent Office (sect. 12).




Copies of patents, specifications, disclaimers and other 84-87. documents from the Patent Office, if sealed with the seal of the office and certified by the comptroller, are receivable in evidence without proof or production of the originals (sect. 89).

Trust not to be

entered in registers.

Registers kept under the Act.

Refusal to grant

patent, &c.

85. There shall not be entered in any register kept under this Act, or be receivable by the comptroller, any notice of any trust, expressed, implied, or constructive.

The registers kept under this Act are :-
1. The register of patents (sect. 23).
2. The register of designs (sect. 55).

3. The register of trade marks (sect. 78).

4. The Sheffield register of trade marks (sect. 81).

86. The comptroller may refuse to grant a patent for an invention, or to register a design or trade mark, in certain of which the use would, in his opinion, be contrary to law or morality


Entry of


transmissions in registers.

Letters patent have always contained a clause that the grant is to be void if it be " contrary to law or prejudicial or inconvenient to our subjects in general."

87. Where a person becomes entitled by assignments and ment, transmission, or other operation of law to a patent, or to the copyright in a registered design, or to a registered trade mark, the comproller shall, on request (a), and of proof of title to his satisfaction (B), cause the name of such person to be entered as proprietor of the patent, copyright in the design, or trade mark, in the register of patents, designs, or trade marks, as the case may be. The person for the time being entered in the register of patents, designs, or trade marks, as proprietor of a patent,

(a) For Forms of Request, see
Patents Forms, Form L; Designs
Forms, Form K; Trade Marks
Forms, Form K.

(B) Patents Rules, 65-69; Designs Rules, 22-26; Trade Marks Rules, 34-38.

copyright in a design or trade mark, as the case may Sect. 87. be, shall, subject to any rights appearing from such register to be vested in any other person, have power absolutely to assign, grant licenses as to, or otherwise deal with, the same, and to give effectual receipts for any consideration for such assignment, license, or dealing. Provided that any equities in respect of such patent, design, or trade mark may be enforced in like manner as in respect of any other personal property.

This section deals with (1) the entry of assignments and transmissions in the register, and (2) the effect of such registration.

As to assignments and transmissions of patents (see note to sect. 23); of designs (see note to sect. 52), and of trade marks (see note to sect. 78).

The provisions of this section in regard to the rights of the registered proprietors to assign, grant licenses as to, and otherwise deal with the patent, copyright, and trade mark subject to the conditions specified, are supplemental to the other rights conferred by the Act on such registered proprietor. See as to patents (the form of patent in first schedule to the Act); as to designs (sects. 58, 60), and as to trade marks (sects. 75-77).

The corresponding provisions of the Patent Law Patents. Amendment Act, 1852, were differently worded. By sect. 35 until an assignment was registered "the grantee or grantees of the letters patent shall be deemed and taken to be the sole and exclusive proprietor or proprietors of such letters patent, and of all the licenses and privileges thereby given and granted." Under that

section it was held that an unregistered assignee could not maintain an action for infringement of a patent, even though the objection was not taken in the notice of objections (Chollett v. Hoffman, 7 Ell. & B. 686). Does the same rule hold under the present section? By this section the registered proprietor has power absolutely to (1) assign; (2) grant licenses as to, and (3) otherwise deal with the patent. An action for infringement is not an "assignment' or a "license" and the words "otherwise deal with" evidently, from the subsequent words, mean a "dealing" for which a "consideration" may be given, and do not therefore apply to an action


87, 88.




Inspection of and extracts from registers.

for infringement. Even under the 35th sect. of the
Patent Law Amendment Act, 1852, it was held (in
Hassall v. Wright, L. R. 10 Eq. 509), that the section
did not apply to an action by an unregistered assignee
against the assignor and a subsequent unregistered
licensee to restrain their using the patent, and that a
registration dated back to the date of the assignment.
In regard to designs, the rights given are statutory
rights, and depend altogether on registration. The
registered proprietor alone has the rights of user (sect. 50),
and of suing for penalties (sect. 58), or damages
(sect. 59).

As to trade marks, sect. 77, which requires a mark to be registered as a condition precedent to an action for infringement (except in case of old marks,) does not expressly say that such registration is to be by the person who is bringing the action for infringement, but inasmuch as the section requires the mark to be registered" in pursuance of this Act," and sect. 78 and rule 34 (Trade Marks Rules, which by sect. 101 are part of the Act,) seem to require that all assignments are to be registered, it would follow that the assignee of a mark requires to be registered in order to maintain an action for infringement.

The rule that a transmittee could assign a mark without being registered (Trade Mark Rules, 1875,) is no longer retained.

88. Every register kept under this Act shall at all convenient times be open to the inspection of the public, subject to such regulations as may be prescribed (a); and certified copies (B), sealed with the seal of the patent office, of any entry in such register shall be given to any person requiring the same on payment of the prescribed fee (y).

This section must be read along with the other sections relating to the right of persons to copies of entries on

(a) Patents Rules, 75; Trade Marks Rules, 49; Designs Rules, 33.

(8) Patents Rules, 76; Designs Rules, 33.

(7) Office copies (Patents and

Trade Marks), 4d. for every 100 words (not less than 1s). Designs according to agreement. Certifying, 1s. (See Schedule of Fees.)

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