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hardship (as there certainly would have been had the scale of fees previously existing at the Patent Office been maintained) in requiring an inventor of this class to seek protection under those provisions of the Act and rules which relate to letters patent. For this class of invention four years will in most cases be found a sufficient period of protection; and no doubt it may be found practicable for the Board of Trade, in the administration of the Patent Office, to exercise the power given them under the Act, and reduce the further payments required from the holders of such patents, who desire to prolong their term of protection.
Abolition of The procedure of registration is much improved registration. by the abolition of provisional registration, a pro
tection seldom resorted to, and the simplification of the arrangements for the depositing of drawings and specimens. The term of copyright in a design under the repealed Acts varied according to the class under which it was registered, but henceforth a uniform term of five years from the date of registration has been fixed as the duration of the protection.
The present Act does not provide for the registration of works of sculpture as designs.
The original proprietor of a design differs from proprietor the original proprietor of a patent in that he need not be the inventor. It is sufficient if he acquires the design for a good and valuable consideration (b),
of a design and a
(b) S. 61.
whilst at least one of the applicants for a patent must be the true and first inventor of the subjectmatter of the application.
Unless the design be registered when it is Necessity of published the inventor has no power to prevent tion. other persons using it; for his rights are created by statute, and protection is only given him on condition that the design is registered. When this is done he acquires the copyright of his design, which confers upon him the exclusive right to apply his design to any article of manufacture, or to any substance in the class or classes in which the design has been registered (c).
When the original proprietor of the design Assignees assigns the design, the assignees or licensees be- "proprie come equally proprietors with him (d). These latter, as well as the original proprietor, in their general interest, must take care that each article is marked with the prescribed mark (e), otherwise the copyright in the design shall cease, unless all proper steps to insure the marking of the article have been taken, Marking. Whether the words in italics, which are inserted in the Act as a protection to the proprietor in case of accident, will allow more latitude with regard to the marking, remains to be seen. In the meantime,
(c) S. 60.
(d) Per Sir G. Jessel in Jewitt v. Eckhardt, 8 Ch. D. 404.
(e) S. 51, and notes.
proprietors should remember, that under the former Acts, the provisions as to marking were strictly enforced (f).
The remarks which have been made as to codifiing registra- cation of the law and the simplification of the procedure with regard to patents and designs apply equally in the case of trade marks, especially as far as the rules issued in accordance with s. 101 are concerned. The forms in the second schedule to the Trade Marks Rules will be found materially to assist an applicant in fulfilling the various requirements expected of him before his mark can be registered, as well as the proprietor of a trade mark in the event of legal proceedings or the necessity of amendment. The provisions of the repealed Acts with regard to the registration of Sheffield Marks by the Company of Cutlers in Hallamshire have been amended, and it is expected that a great improvement will result by the harmonising of the methods employed for the registration of applications at Sheffield and London. The law itself is, however, very little altered, the only important change being that the definition of the trade mark is made by the wording of the present Act more extensive by the admission of (a.) a fancy word or words not in common use; (b.) brands;
of trade mark.
(ƒ) Pierce v. Worth, 18 L. T. (N. S. 710.
and (c.) single letters as old trade marks, to registration (a).
It will be observed that in the Act there is no
penalty provided for the fraudulent imitation of a trade mark, or the selling of articles to which the same has been applied without the consent of the proprietor, as is the case with that portion of this Act which treats of designs. This, however, is amply provided for by the Merchandise Marks Act, 1862 (b), which is the only Act relating to trade marks which remains unrepealed. Among other provisions it makes misdemeanors several offences which may be classified as follows: (a.) Forging or counterfeiting any trade mark with intent to defraud; (b.) applying any trade mark to articles not of the manufacture of the person intended to be denoted by such trade mark; (c.) applying any trade mark by means of wrapper or otherwise, with intent to defraud, to articles not of the particular manufacture intended to be denoted by such trade mark (c).
If a patentee endeavours to prolong his term protection by means of a trade mark, he must
Penalty for fraudulent imitation.
sections of the Act re
(a) This is so stated in the memorandum to the Bill. See
s. 64; Ransome v. Graham (exclusive use to combination of letters established), 51 L. J. Ch. 897.
(b) 25 & 26 Vict. c. 83.
(c) The fraudulent use of wrappers is described in s. 3 of the Merchandise Marks Act, 1862 (25 & 26 Vict. c. 88.)
register the word patent or any word importing that he is still in possession of letters patent, or the name of a new substance which he has invented (d). Under the various sections of the Act relating to trade marks explanatory notes have been inserted which, it is hoped, in connection with the index and cross references, will in most cases provide those who wish to register a mark with the required information, and point out to the proprietors of a mark the rights they have acquired, and the duties they must perform to retain those rights, either directly or by pointing out where the same may be obtained. Should this not be the case, reference should be made to Sebastian's Digest of Trade Mark Cases, which contains, in addition to English Cases, among which there are numerous decisions of the late Sir G. Jessel not elsewhere reported, numerous decisions of the American courts.
(d) Thus the word "Linoleum" was held after the expiration of the term of letters patent not to be a proper name for registration. 3 L. T. (N. S.) 448. See also Ralph v. Taylor (the lime-washer), 25 Ch. D. 194. See s. 73.