« PreviousContinue »
pressed, or woven in some particular and
(b.) A written signature or copy of a written sig-
for registration thereof as a trade mark;
(c.) A distinctive device, mark, brand, heading,
(2.) There may be added to any one or more of
(3.) Provided that any special and distinctive word or words, letter, figure, or combination of letters or figures, or of letters and figures used as a trade mark before the thirteenth day of August, one thousand eight hundred and seventy-five (a), may be registered as a trade mark under this part of this Act.
Changes in This section extends the definition of a trade mark definition. contained in the Trade Marks Act, 1875, so as to include 1. Brands. 2. Fancy word or words not in common use. It also permits a letter or figure used as a trade mark previous to the 13th August, 1875, to be now registered as an old trade mark. But a restriction is introduced in regard to written signatures or copy of written signatures of an individual or firm, which for the future must be the signatures of the individuals or firms applying for registration.
(a.) A name of an individual or firm printed, imof indivi- pressed, or woven in some particular and distinctive
A name by itself could always be used as a trade mark, but such user was subject to the right of all persons of the same name to make a similar use of it, Ainsworth v. Walmsley, L. R. 1 Eq. 518. The disadvantage resulting from this incomplete right of user was removed by the Act of 1875, which allowed a name to be registered under the Act, provided in the words of the sub-sect. it
(a) The date of the Trade Marks Act, 1875.
"printed, impressed, or woven in some particular Sect. 64. and distinctive manner."
The name need not be that of the individual or firm who applies for the trade mark unless the mark comes under class (b), nor of the firm who manufacture the goods to which it is applied.
Many names, even of real persons, would be treated as "fancy words," and therefore coming under class (c), where they will only be entitled to registration if not in
(b.) A written signature or copy of a written signature (b.) Writof the individual or firm applying for registration thereof ten signaas a trade mark.
The words "applying for registration thereof as a trade mark" are new (see In re Maignen's Application, 28 W. R. 759), and though the written signature of another individual or firm can no longer be registered under this class, yet if such signature be impressed or woven in a particular and distinctive manner it will be entitled to registration under class (a.).
This class resembles the first class in that the trade mark consists in a name, but in class (a.) any name may be chosen, and such name is to be printed, impressed, or woven in some distinctive manner, whereas in this class the name must be that of the person or firm applying for registration and is to be written.
tures of applicants.
(c.) A distinctive device, mark, brand, heading, label, (c.) Disticket, or fancy words not in common use.
Two kinds of trade marks are here added to the corresponding part of the definition contained in the Act of 1875, viz., "brands" and "fancy words not in common use."
As to the latter, the words are introduced to meet the difficulty caused by the decision in Ex parte Stephens, 3 Ch. D. 659, where the late M. R. held that a word or distinctive combination of letters, such as "AEILYTON," could not be registered under this class, or indeed under the section.
Such fancy words could only be registered as old trade marks, but now any combination of letters, provided it forms a word, will be entitled to registration if it be not in common use.
tinctive device, &c.
A device practically means the representation of some “Device." object, such as a bell or a lion. It must, however, be "distinctive." A list of devices that in the opinion of the Trades Mark Registry Office are not distinctive, and therefore will not be registered, is contained in the
Sect. 64. “ Instructions" used by the Office, see infra. In the instructions issued in 1878, the list included crests, but it has been held that a crest may be registered, Beard v. Turner, 13 L. T. N. S. 746.
"Fancy word or
in common use.'
Words specially invented.
A foreign word in foreign characters may be a distinctive device, In re Rotheram's Trade Marks, L. R. 14 Ch. D. 585. A mark is a more general term than device.
Brands are now allowed to be registered, such as those used in the tobacco and sugar trades.
Heading implies that the mark is woven or otherwise impressed at the top of a piece of goods.
In Harter v. Souvazoglu, W. N. 1875, pp. 11 and 101, a heading consisting of nine stripes in different colours woven into cotton goods was held to be a good trade mark.
A label is a piece of paper or some other substance affixed to the article itself or to its covering, or to the vessel containing it. It may be made distinctive by its shape or size, but generally the shape or size is only one element of the mark, the distinctive character of the label being due to a distinctive device or mark impressed upon the label.
A ticket differs from a label mainly in the mode in which it is fastened to the article. In the case of a label the label is so attached that every part of it adheres, whereas a ticket is usually attached by a string or wire so as to hang loosely. The "distinctive" character of the ticket must, as in the case of a label, be given to the ticket by something impressed upon it.
Hitherto fancy words have only been allowed to be registered as old marks in use before the passing of the Trade Marks Act, 1875, Ex parte Stephens, L. R. 3 Ch. D. 659. They must not be words in common use, such as "Britannia or "Victoria." The more unusual or ridiculous the word the better.
Different kinds of fancy words have been offered for registration, such as:
1. Specially invented words, e.g., "Lacto Peptine," Carnrick v. Morson, L. J., Notes of Cases, 1877, p. 71; Cocoatina," Schweizer v. Atkins, 16 W. R, 1080. This class may be regarded as best fulfilling the condition that the word must not be in
2. Words taken from other languages, e.g., "Tamar Indien," Grillon v. Guénin, W. N. 1877, p. 14. Such words have sometimes been registered in
class (c.), In re Rotheram's Trade Mark, 14 Ch. D. Sect. 64. 585. A translation of words in other than Roman characters must now accompany the application.
3. Names of places are good trade marks where they Names of denote that the articles are made by a certain places. manufacturer, e.g., "Anatolia," McAndrew v. Basset, 4 De G. J. & S. 380; "Glenfield," Wotherspoon v. Currie, L. R. 5 H. L. 508; and other persons making goods at such place may be restrained from using the name, Seixo v. Provezande, L. R. 1 Ch. 192. As to the right that may be had in a name, see McAndrew v. Basset, supra, and Radde v. Norman, L. R. 14 Eq. 348.
4. Initials do not amount to a "fancy word or words," Initials. but they may be registered as new marks if combined with some other distinctive mark, e.g., "M & C" enclosed in a circle, Moet v. Pickering, 6 Ch. D. 770. They may also, by sub-sect. (3), be registered as old marks. A single letter could not be registered either as an old mark or a new mark (In re Mitchell's Trade Mark, 7 Ch. D. 36), under the Act of 1875, but now it may be under sub-sect. (3).
To any of the above marks may be added letters, words, or figures, or combination of such. A combination of letters may be a valid mark, though indicating quality as well as the name of the maker, Ransome v. Graham, 47 L. T. 218.
In the instructions issued January, 1884, by the Marks that Comptroller, it is stated that the following will not be will not be registered under the Act, and should not appear upon registered. the Representations of Trade Marks forming part of the
The Royal arms, or arms so nearly resembling them
The words "Registered," "Registered Design," "Copyright," "Entered at Stationers' Hall," "To counterfeit this is Forgery," "Patent," " Patented" And that the following will not be registered as marks or as prominent parts of marks unless the marks have been used before the 13th August, 1875 :
Representations of Her Majesty the Queen or of any
Representations of the Royal Crown.
National Arms or Flags.
Prize or Exhibition Medals.
It is also stated that ornamental or coloured ground- Coloured
Sect. 64. work, such as tartans or checks, cannot be claimed as
part of a mark unless such groundwork be included within the mark by some border or lines. See Trade Mark Instructions, 29-31.
The object of this sub-sect. (3) is to continue the right given by the Act of 1875 of registering marks in use previous to the passing of that Act, i.e., previous to 13th August, 1875, but which do not fall within the definition of the Statute. The greater number of trade marks registered under this class have been "words," and " fancy names and words." Inasmuch as the Act now permits fancy names not in common use to be registered, there will not be so great a necessity in the future for this proviso. Still it will permit many marks to be registered which otherwise would not have the protection given by the Act.
"Old" means old as regards the goods on which it was used (In re Jelley's Application, 51 L. J. Ch. 639).
Two conditions it will be observed must be fulfilled to entitle a mark to be registered under this sub-section :— (1.) It must have been used as a trade mark prior to the 13th August, 1875; and (2.) It must be " a special and distinctive word or words, letter, figure, or combination of letters or figures, or of letters and figures." The words "letter" and " 'figure" are new. Seven distinct kinds of marks are here enumerated :—(1) a word; (2) words; (3) a letter (under Act of 1875 it was held a letter could not be registered, In re Mitchell's Trade Mark, 7 Ch. D. 36); (4) a figure; (5) a combination of letters; (6) a combination of figures; and (7), a combination of letters and figures. The mark to be registered must, however, be something more than a mere word, letter, figure, or combination of such. It must be "distinctive," and whilst distinctiveness might be present in a letter, word, or figure, owing to the shape of the writing or printing, yet as a rule some other device must accompany a letter or figure in order to make it distinctive.
Words registered as trade marks under this section must have been used by themselves and not along with other words (In re Palmer's Application, 24 Ch. D. 505).
The user to entitle an old mark to registration must be user in England (In re Munch's Application, W. N. 1883, p. 170).
Under what is known as the "Three Mark Rule," no more than three persons can register the same old mark, on the principle that where a mark is publicly used by