Page images

more than three persons it is to be deemed common to Sects. the trade (Benbow v. Low, 44 L. T. 875).


65. A trade mark must be registered for particular Connection goods or classes of goods.

By the third schedule to the Trade Marks Rules goods for the purposes of trade marks registration are divided into fifty classes.

of trade mark with


If the mark contains on its face an indication of the Indication goods to which it is to be applied, the claim for regis- of goods on tration must be in respect of those goods only (Instruc- mark. tions, 32).

An old trade mark may be registered for part of a class (Ex parte Barrows, W. N. 1877, 119), so, too, may a new mark (In re Braby's Application, 21 Ch. D. 223. Two similar marks may therefore be registered for different goods in same class by different persons (Ibid).

Where any doubt arises as to what class a particular description of goods belongs to, the doubt is to be determined by the comptroller (Trade Marks Rules, 6). See also the note at the head of the third schedule to the Trade Marks Rules.

tion of a

66. When a person claiming to be the proprietor Registraof several trade marks which, while resembling each series of other in the material particulars thereof, yet differ marks. in respect of (a) the statement of the goods for which they are respectively used or proposed to be used, or (b) statements of numbers, or (c) statements of price, or (d) statements of quality, or (e) statements of names of places, seeks to register such trade marks, they may be registered as a series in one registration. A series of trade marks shall be assignable and transmissible only as a whole, but for all other purposes each of the trade marks composing a series shall be deemed and treated as registered separately.

This section is partly new, and permits a series of marks differing only in the matters mentioned to be registered as a series.

The application form must contain a representation of each mark of the series, and be accompanied by two

Sects. copies of the series made in accordance with the pro66-69. visions of Trade Marks Rules, 11 and 13.


be registered in

Where the series is registered for one and the same class, a fee of 5s. is payable on the application: and on registration, a fee of 17. for the first mark of the series, and a further fee of 5s. for every additional representation after the first. Where the series is registered for different classes, separate fees must be paid for each class (Trade Marks Rules, 1st Schedule). The fees are paid by using stamped forms.

As to advertisement of a series of marks, see note to sect. 62.

67. A trade mark may be registered in any marks may colour, and such registration shall (subject to the provisions of this Act) confer on the registered owner the exclusive right to use the same in that or any other colour.

any colour.

Coloured ground

work must be enclosed.

Advertisement of application.


The proprietor of a trade mark has always been at liberty to print the trade mark in any colour (see In re Worthington's Trade Mark, 14 Ch. D. 8).

Ornamental or coloured ground work, such as tartans or checks, cannot be claimed as part of a mark unless such ground work be included within the mark by some border or lines (Trade Marks Instructions, 29).

68. Every application for registration of a trade mark under this part of this Act shall as soon as may be after its receipt be advertised by the comptroller.

The advertisement is to be inserted by the comptroller in the official paper, and if no representation of the mark be advertised, reference is to be made to a place where a specimen or representation may be seen. The applicant will be required to supply a wood block or electrotype for the purposes of the advertisement (Trade Marks Rules, 25-27; Instructions, 21-28).

Two papers are published: (1) the "Official Journal of the Patents Office," and (2) the "Trade Marks Journal."

Opposition 69. (1.) Any person may within two months of to registra- the first advertisement of the application, give notice (a) in duplicate at the patent office of opposition to registration of the trade mark, and the comp

(a) Form J (Trade Marks Forms).

troller shall send one copy of such notice to the Sect. 69. applicant.

(2.) Within two months after receipt of such notice or such further time as the comptroller may allow, the applicant may send to the comptroller a counter statement (a) in duplicate of the grounds on which he relies for his application, and if he does not do so, shall be deemed to have abandoned his application.

(3.) If the applicant sends such counter statement, the comptroller shall furnish a copy thereof to the person who gave notice of opposition, and shall require him to give security in such manner (B), and to such amount as the comptroller may require for such costs as may be awarded in respect of such opposition; and if such security is not given within fourteen days after such requirement was made, or such further time as the comptroller may allow, the opposition shall be deemed to be withdrawn.

(4.) If the person who gave notice of opposition duly gives such security as aforesaid, the comptroller shall inform the applicant thereof in writing, and thereupon the case shall be deemed to stand for the determination of the Court (y).

This section is taken from Rule 16 of the Rules of 1876.

The notice of opposition requires a stamp of 17. It must be accompanied by a duplicate unstamped notice which will be sent to the applicant. The grounds of the opposition are required to be stated. The counterstatement may be in Form X (see Instructions); and the security for costs, if required, is to be by bond. The applicant may object to solvency of security (Instructions, 33, 34).

Where a case stands for the determination of the Manner of Court, the applicant (on being required so to do by the bringing

(a) Form X (Trade Marks Forms and Instructions). (8) Form Y (Trade Marks


(7) Trade Marks Rules, 29.

case before the Court.



- 69, 70.


ment and transmission of

trade mark.


comptroller) is within one month to issue a summons. in the High Court for an order to register the mark notwithstanding the opposition, and give notice of the same to the comptroller at the Patent Office by sending a copy of the summons bearing an endorsement of service signed by the applicant or his solicitor, or an endorsement of acceptance of service signed by the opponent or his solicitor. But the comptroller may require the matter to be decided by proceedings other than by summons.

Where the applicant fails to take the proper proceedings within the time allowed, of which failure the nonreceipt of the said notice by the comptroller is sufficient proof, the application will be deemed to be abandoned (Trade Marks Rules, 29).

The person in whose favour an order is made is to leave an office copy of the order at the Patent Office, when the register will be rectified (Trade Marks Rules, 44).

70. A trade mark, when registered, shall be assigned and transmitted only in connexion with the goodwill of the business concerned in the particular goods or classes of goods for which it has been registered, and shall be determinable with that goodwill.

Connection Apart from statutory enactment a trade mark can only with good be assigned and transmitted in connection with the goodwill of a business (The Leather Cloth Companies Case, 33 L. J. Ch. 199), and such is its intimate relation to the goodwill that a sale of the goodwill simply, transfers the trade marks as well (Shipwright v. Clements, 19 W. R. 599).


The sale of a goodwill need not necessarily be in assigned. writing or by deed. Neither the Act nor the Rules contain any express provision as to the manner in which a goodwill with a trade mark is to be assigned. In the form of request for registration by an assignee (Trade Marks Forms, K) it is stated that "if entitled by assignment, state the particulars thereof, as, e.g., by deed, dated the day of 188, made between so-and-so of the one part. It is extremely doubtful whether this is sufficient to require a deed in order to assign a trade mark. Under the Act of 1875 a deed was required (see Rules, 1876, Rule 23).

[ocr errors]


tion of


When a person becomes entitled to a registered trade Sects. mark by assignment, transmission, or other operation of 70-72. law, he is required in order to have his name entered on the register, to make a request for such entry on Form K (Trade Marks Forms), stating his name, address, and description, and the particulars of the assignment, transmission, or other operation of law by which it has become vested in him, and further to show that it has been assigned or transmitted in connection with the goodwill of the business concerned in the classes of goods for which the trade mark was registered.

In the case of a body corporate the request is to be signed by an agent, and in case of a firm or partnership by a member or an agent (see note to sect. 77).


71. Where each of several persons claims to be Conflicting registered as proprietor of the same trade mark, the claims to comptroller may refuse to register any of them until tion. their rights have been determined according to law, and the comptroller may himself submit or require the claimants to submit their rights to the Court (a).

This section formed part of sect. 5 of the Act of 1875. The Court referred to is the High Court of Justice, sect. 105.

The manner in which conflicting claims are to be submitted to the Court is by special case unless the Court otherwise order. Such special case may be submitted by the comptroller, or the parties may be required to state it. If the parties are required to state it and cannot agree, the comptroller may settle the case on receipt of the prescribed fee of 21. (Trade Marks Rules, 42, 43). For form of request to settle special case, see Form T (Trade Marks Forms). The case is to be filed and proceeded with in the usual way (Trade Marks Rules, 42), as to which, see Rules of Supreme Court, 1883, Ord. XXXIV.

tions on


72. (1.) Except where the Court has decided that Restrictwo or more persons are entitled to be registered as proprietors of the same trade mark, the comptroller tion. shall not register in respect of the same goods or de

(a) By special case (Trade Marks Rules, 43).

« PreviousContinue »