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Obvious imitation,

Clarke v.
Harcourt.

requested. For form of request, see form L; and for form of certificate, see form I, second schedule, page 259..

(a) When a pattern of an article has been registered, the design will be infringed by an article to all appearance the same, though not actually identical. M'Crea v. Holds. worth, L. R. 6 Ch. 418; and see notes to s. 47.

In the case of Clarke v. Harcourt (W. N. 1881, page 85), the plaintiffs, who were brass founders, had registered, under the Act 5 & 6 Vict. c. 100, s. 1, class 1, a design applicable to the ornamenting of drop-down handles, and they claimed an injunction to restrain the defendants, who were also brass founders, from applying the said design, or any fraudulent imitation thereof, for the purpose of sale, to any articles manufactured by them. The defence was that the plaintiffs' design was not new or original, and that it had no reference to any purpose of ornamentation for which a design could be lawfully registered, and that the defendants had not applied such design, or any imitation thereof, to articles sold by them. Held per Justice Kay, that this was a case of registration of a design for ornament applied to an article, and not a case of utility, and the only question was whether the entire design had been fraudulently imitated in respect of the back-plate, standards, cross-bar, and drop. He felt justified, from the evidence of the witnesses, as well as his own eyesight, in coming to the conclusion that the two designs were entirely different.

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Action for damages.

59. Notwithstanding the remedy given by this Act for the recovery of such penalty as aforesaid, the registered proprietor of any design may (if he elects to do so) bring an action for the recovery of any damages arising from the application of any such design, or of any fraudulent or obvious imitation thereof for the purpose of sale, to any article of manufacture or substance, or from the publication, sale, or exposure for sale by any person of any article or substance to which such design or any fraudulent or obvious imitation thereof shall have been so applied, such person knowing that the proprietor had not given his consent to such application.

See s. 58, and notes.

The questions of novelty and infringement were until the passing of this Act questions for the jury; but it was for the court, looking at the article registered without the aid of a jury, to say whether the registration was sufficient.

Definition of “design,'

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66

Definitions. 60. In and for the purposes of this ActDesign” means any design applicable to any

right." article of manufacture, or to any substance artificial or natural, or partly artificial and partly natural, whether the design is applicable for the pattern, or for the shape or configuration, or for the ornament thereof, or for any two or more of such purposes, and by whatever means it is applicable, whether by printing, painting, embroidering, weaving, sewing, modelling, casting, embossing, engraving, staining, or any other means whatever, manual, mechanical, or chemical, separate or combined, not being a design for a sculpture, or other thing within the protection of the Sculpture Copyright Act of the year 1814. 54 Geo. III., c. 56.

. Copyright” means the exclusive right to apply a design to any article of manufacture or to any

such substance as aforesaid in the class or classes 1 in which the design is registered.

i For classification of articles of manufacture and substances, see third schedule to designs rules, page 255.

Definition of “proprietor.”

61. The author of any new and original design shall be considered the proprietor thereof (a), unless he executed the work on behalf of another person for a good or valuable consideration, in which case such person shall be considered the proprietor, and every person acquiring for a good or valuable consideration a new and original design, or the right to apply the same to any such article or substance as aforesaid, either exclusively of any other person or otherwise, and also every person on whom the property in such design or such right to the application thereof shall devolve, shall be considered the proprietor of the design in the respect in which the same may have been so acquired, and to that extent, but not otherwise.

1 For rules as to the registration of subsequent proprietors, see ss. 22–27.

(a) It is manifest by the above definition that there may be many proprietors of the same design. If the original proprietor did not grant an assignment or a license to use his invention, he would be the sole proprietor, but when he does he immediately becomes not the sole proprietor, but a proprietor, for the grantees become equally proprietors with him. See the remarks on this point by the late Master of the Rolls in the case of Jewitt v. Eckhardt, 8 Ch. D. 409.

PART IV.

TRADE MARKS.

Registration of Trade Marks. 62. (1.) The Comptroller (a) may, on application, Application by or on behalf of any person (6) claiming to be tion. the proprietor of a trade mark, register the trade

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mark (c).

(2.) The application must be made in the form set forth in the first schedule to this Act, or in such other form as may be from time to time prescribed (d), and must be left at, or sent by post to, the Patent Office in the prescribed (e) manner (f).

(3.) The application must be accompanied by the prescribed number of representations (g) of the trade mark, 4 and must state the particular goods or classes of goods (h) in connection with which the applicant desires the trade mark to be registered.5

(4.) The Comptroller may, if he thinks fit, refuse to register a trade mark, but any such refusal shall be subject to appeal to the Board of Trade, who shall, if required, hear the applicant and the Comptroller, and may make an order determining whether, and subject to what conditions (if any) registration is to be permitted.

(5.) The Board of Trade? may, however, if it appears expedient, refer the appeal to the Court ();

I

of firms or bodies

If mark

1875.

Form of

and in that event the Court shall have jurisdiction to hear and determine the appeal and may make

such orders as aforesaid (j). . Application 1 If the application is made by a firm, it may be signed

by one or more members of the firm ; or if by a body corcorporate.

porate, by the secretary or principal officer of the body

corporate. See rule 7, page 266. Agent. The application, or any other communication between

the applicant and the comptroller, may be made by or through an agent, duly authorised to the satisfaction of the comptroller.

If the application is made to register a trade mark used used before before the 13th August, 1875, it must contain a statement

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of time during which, and of the person by whom it has
been used. See rule 10, page 267.

2 The form F, in the first schedule to the Act, has been application. altered and amended by the Trade Marks Rules, and the

form F, in the second schedule to the rules, page 290,

must be used in substitution thereof. See rule 4, page 265. Foreign

If the mark includes words of foreign character, a translation must be given. See rule 15, page 269.

3 For mode of sending notices, see rule 16, page 269. Repre

4 Three representations are required, except in classes sentations. 23 to 25 inclusive, where four are required. They must be

supplied upon paper of the size stipulated in rule 11, page 267, and must be of a durable nature. One must be affixed to the application; the others must be upon separate half sheets. In the case of trade marks exceeding the limits of the foolscap paper of the size mentioned in rule 11, page 267, such marks may be pasted on separate sheets of foolscap, or in such form as the comptroller may think most convenient. In exceptional cases, if the trade

mark cannot conveniently be shown by a representation, & Specimens. ]

specimen or copy of the trade mark can be deposited at the

patent office, and a reference thereto made in the register. Classifica- 5 For the purpose of registration, a classification of goods goods. is given in the third schedule to the trade marks rules.

characters.

Notices.

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