Nature of Amendment. refusal may" there shall be inserted the words "except where the refusal is given on a ground mentioned in Section 75 of this Act." In paragraph (a) for the words new and original" there shall be substituted the words new or original" and at the end of the section there shall be inserted the following proviso :— "Provided that such subsequent registration shall not extend the period of copyright in the design beyond that arising from the previous registration." At the end of the section there shall be inserted the following proviso: · Provided that, on application being made, any person in the prescribed form, the comptroller may disclose the result of a search made under Section 7 or 8 of this Act on any particular application for the grant of a patent.' In sub-section (2) after the words " on oath " there shall be inserted the words and discovery and production of documents." 66 In sub-section (5) for the word and " there shall be substituted the word “or." 46 In sub-section (2) after the words "the appeal (5.) Notwithstanding anything in this Act, the expression the Court' shall in reference to proceedings in Scotland for the extension of the term of a patent mean any Lord Ordinary of the Court of Session." BE it enacted by the King's most Excellent Majesty, by and with the advice and consent of the Lords Spiritual and Temporal, and Commons, in this present Parliament assembled, and by the authority of the same, as follows: PART I.-REGISTRATION OF CERTAIN TRADE MARKS NOT REGISTRABLE UNDER PRINCIPAL ACT. 1.—(1.) The register of trade marks (including the Manchester Register) kept under "The Trade Marks Act, 1905 "* (hereinafter referred to as the Principal Act), shall be divided into two parts to be called respectively Part A and Part B. (2.) Part A of the register shall comprise all trade marks entered in the register of trade marks at the commencement of this Act and all trade marks which after the commencement of this Act may be registered under the provisions of the Principal Act. (3.) Part B shall comprise all trade marks registered under this Part of this Act, and all trade marks entered on or removed thereto under this Act. 2.--(1.) Where any mark has for not less than two years been bona fide used in the United Kingdom upon or in connection with any goods (whether for sale in the United Kingdom or exportation abroad), for the purpose of indicating that they are the goods of the proprietor of the mark by virtue of manufacture, selection, certification, dealing with or offering for sale, the person claiming to be the proprietor of the mark may apply in writing to the Registrar in the prescribed manner to have the mark entered as his registered trade mark in Part B of the register in respect of such goods. (2.) The Registrar shall consider every such application for registration of a trade mark in Part B of the register, and if it appears to him, after such search, if any, as he may deem necessary, that the application is inconsistent with the provisions of Section 11 or Section 19 of the Principal Act, or if he is not satisfied that the mark has been so used as aforesaid, or that it is capable of distinguishing the goods of the applicant, he may refuse the application, or may accept it subject to conditions, amendments or modifications as to the goods or classes of goods in respect of which the mark is to be registered, or to such limitations, if any, as to mode or place of user or otherwise as he may think right to impose, and in any other case he shall accept the application. * Vol. XCVIII, page 15. (3.) Every such application shall be accompanied by a statutory declaration verifying the user, including the date of first user, and such date shall be entered on the register. (4.) Any such refusal or conditional acceptance shall be subject to appeal to the Court, and, if the ground for refusal is insufficiency of evidence as to user, such refusal shall be without prejudice to any application for registration of the trade mark under the provisions of the Principal Act. (5.) Every such application shall, if accepted, be advertised in accordance with the provisions of the Principal Act. (6.) A mark may be registered in Part B notwithstanding any registration in Part A by the same proprietor of the same mark or any part or parts thereof. 3. The provisions of the Principal Act, as amended by this Act, with the exception of those set out in the First Schedule to this Act, shall, subject to the provisions of this Part of this Act, apply in respect of trade marks to which this Part of this Act applies as if they were herein re-enacted and in terms made applicable to this Part of this Act. 4. The registration of a person as the proprietor of a trade mark in Part B of the register shall be prima facie evidence that that person has the exclusive right to the use of that trade mark, but, in any action for infringement of a trade mark entered in Part B of the register, no injunction, interdict or other relief shall be granted to the owner of the trade mark in respect of such registration, if the defendant establishes to the satisfaction of the Court that the user of which the plaintiff complains is not calculated to deceive or to lead to the belief that the goods the subject of such user were goods manufactured, selected, certified, dealt with or offered for sale by the proprietor of the trade mark. 5. if any person applies for the registration of a trade. mark under the Principal Act in Part A of the register, the Registrar may, if the applicant is willing, instead of refusing the application, treat it as an application for registration in Part B of the register under this Part of this Act and deal with the application accordingly. PART II.-PROVISIONS FOR THE PREVENTION OF ABUSES OF TRADE MARKS. 6.--(1.) Where in the case of an article or substance manufactured under any patent in force at or granted after the passing of this Act, a word trade mark registered under the Principal Act or Part I of this Act is the name or only practicable name of the article or substance so manufactured, ll rights to the exclusive use of such trade mark, whether nder the common law or by registration (and notwithtanding the provisions of Section 41 of the Principal Act), [CXII] 2 Y shall cease upon the expiration or determination of the patent, and thereafter such word shall not be deemed a distinctive mark, and may be removed by the Court from the register on the application of any person aggrieved. (2.) No word which is the only practicable name or description of any single chemical element or single chemical compound, as distinguished from a mixture, shall be registered as a trade mark, and any such word now or hereafter on the register may, notwithstanding Section 41 of the Principal Act, be removed by the Court from the register on the application of any person aggrieved: Provided that- (a.) The provisions of this sub-section shall not apply where the mark is used to denote only the proprietor's brand or make of such substance, as distinguished from the substance as made by others, and in association with a suitable and practicable name open to the public use; and (b.) In the case of marks registered before the passing of this Act, no application under this section for the removal of the mark from the register shall be entertained until after the expiration of four years from the passing of this Act. (3.) The power to remove a trade mark from the register conferred by this section shall be in addition to and not in derogation of any other powers of the Court in respect of the removal of trade marks from the register. (4.) The provisions contained in Part III of this Act authorising applications for the rectification of the register to be made in the first instance to the Registrar instead of to the Court shall apply to applications under this section. PART III.-GENERAL AMENDMENTS OF PRINCIPAL ACT. 7. In paragraph (5) of Section 9 of the Principal Act (which defines the particulars which registrable trade marks must contain or consist of) for the words "except by order of the Board of Trade or the Court be deemed a distinctive mark," there shall be substituted the words "be registrable under the provisions of this paragraph, except upon evidence of its distinctiveness." 8.-(1.) All appeals from the decisions of the Registrar under Section 14 of the Principal Act shall be made to the Court, and an appeal shall not lie from any such decision to the Board of Trade, and accordingly that section shall have effect, subject to the modifications set forth in the Second Schedule to this Act: Provided that nothing in this sub-section shall affect any appeal which may be pending at the commencement of this Act. (2.) In any appeal from the decision of the Registrar to the Court under the Principal Act or this Act the Court shall have and exercise the same discretionary powers as under the Principal Act or this Act are conferred upon the Registrar. 9.-(1.) Any application for the rectification of the register or the removal of any trade mark from the register in respect of any goods which, under Section 35 or Section 37 of the Principal Act or under Part II of this Act, is to be made to the Court, may, at the option of the applicant, be made in the first instance to the Registrar: Provided that no such application shall be made otherwise than to the Court where an action concerning the trade mark in question is pending. (2.) The Registrar may, at any stage of the proceedings, refer any such application to the Court or he may, after hearing the parties, determine the question between them, subject to appeal to the Court. (3.) In any proceedings for the rectification of the register under this Act or under Section 35 of the Principal Act as amended by this section the Court or the Registrar shall, in addition to the powers conferred by that section as SO amended, have power to direct a trade mark entered in Part A of the register to be removed to Part B of the register. 10. In all proceedings before the Registrar under the Principal Act or this Act the Registrar shall have power to award to any party such costs as he may consider reasonable, and to direct how and by what parties they are to be paid, and any such order may be made a rule of Court. 11. For Section 33 of the Principal Act, the following section shall be substituted :: 33.-(1.) Where a person becomes entitled by assignment, transmission, or other operation of law to a registered trade mark, he shall make application to the Registrar to register his title, and the Registrar shall, on receipt of such application and on proof of title to his satisfaction, register him as the proprietor of the trade mark, and shall cause an entry to be made in the prescribed manner on the register of the assignment, transmission, or other instrument affecting the title. Any decision of the Registrar under this section shall be subject to appeal to the Court. (2.) Except in cases of appeals under this section and applications made under Section 35 of this Act, a document or instrument in respect of which no entry has been made in the register in accordance with the provisions of sub-section (1) aforesaid shall not be admitted in evidence in any Court in proof of the title to a trade mark unless the Court otherwise directs." 12. The amendments specified in the second column of the Second Schedule to this Act, which relate to minor details, shall be made in the provisions of the Principal Act specified in the first column of that Schedule. 2 Y 2 [CXII] |