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SECT. 73. "Steel Pens" for "Stephens :" Stephens v. Peel, Wood, V.-C., 1867, 16 L. T. N. S. 145.
(xii.) "Schweitzer's Cocoatina or Anti-Dyspeptic Cocoa, Registered," and "Otto Schweitzer, Atkins & Co.'s Cacaotine, Registered:" Schweitzer v. Atkins, Malins, V.-C., 1868, 37 L. J. Ch. 847; 19 L. T. N. S. 6; 16 W. R. 1080.
(xiii.) "Shrewsbury, Marshall, & Co., Patent Thread," and "Schrewsbury, Marchal, Patent Thread:" Marshall v. Ross, James, V.-C., 1869, L. R. 8 Eq. 651; 39 L. J. Ch. 225; 21 L. T. N. S. 260; 17 W. R. 1086.
(xiv.) "Apollinaris Water" and "London Apollinaris Water," although in other respects the labels were not similar: Apollinaris Co. v. Norrish, Bacon, V.-C., 1875, 33 L. T. N. S. 242.
(xv.) A label consisting of a bull-dog's head on a black ground surrounded by a circular band on which were the words "Read Brothers, London; the Bull-dog Bottling," and a label consisting of a rough terrier's head on a black ground, surrounded by a red circular band, on which were the words "Celebrated Terrier Bottling; E. Richardson:" Read v. Richardson, C. A., 1881, 45 L. T. N. S. 54. See also Woollam v. Ratcliff, Wood, V.-C., 1863, I H. & M. 259; Browne v. Freeman, Wood, V.-C., 1864, 12 W. R. 305; Welch v. Knott, Wood, V.-C., 1857, 4 K. & J. 747; 4 Jur. N. S. 330; Harrison v. Taylor, Wood, V.-C., 1865, II Jur. N. S. 408; Standish v. Whitwell, Wood, V.-C., 1866, 14 W. R. 512; Cope v. Evans, Hall, V.-C., 1874, L. R. 18 Eq. 138; 30 L. T. N. S. 292; 22 W. R. 453; Mitchell v. Henry, supra.
73. It shall not be lawful to register as part of or on registra in combination with a trade mark any words the exclusive use of which would, by reason of their being calculated to deceive, or otherwise, be deemed disentitled to protection in a court of justice, or any scandalous design.
This section follows sect. 6 of the Act of 1875. See also sect. 86, which, however, so far as trade marks are concerned,
does not appear to extend this section, for a mark which is con- SECT. 73. trary to law and morality would be disentitled to protection in a court of justice.
A refusal by the Comptroller to register under this section or under sect. 86, is a refusal within sect. 62, and the appeal in the first place is to the Board of Trade: see notes to sect. 62 (4).
Calculated to Deceive.-A trade mark may be calculated to deceive in two ways-(i.) It may be similar to another trade mark, or (ii.) it may contain a misrepresentation, leading purchasers to believe that the goods to which it is affixed are other than they are. The first case comes within sect. 72, and the second kind of deceptiveness alone is dealt with here. In other words, the section has reference to deceptiveness inherent in the mark itself, and not to any question of comparison or similarity. between two or more marks: In re Horsburgh, Jessel, M.R., 1878, 53 L. J. Ch. 237; 50 L. T. N. S. 23; 32 W. R. 530.
The principle upon which the courts refuse to assist a plaintiff himself guilty of misrepresentation has long been well established. "When the owner of a trade mark applies for an injunction to restrain the defendant from injuring his property by making false representations to the public, it is essential that the plaintiff should not in his trade mark, or in his business connected with it, be himself guilty of any false or misleading representation:" per Westbury, L.C., in Leather Cloth Co. v. American Leather Cloth Co., 1863, 4 De G. J. & S. 137; 33 L. J. Ch. 199; 10 Jur. N. S. 81; 9 L. T. N. S. 558; 12 W. R. 289.
Illustrative Cases.-Where the plaintiff has been held disentitled to protection on the ground of his own misrepresentation.
(i.) The plaintiff sold tea in packets labelled "Howqua's Mixture," although the tea was neither grown nor sold by Howqua, a well-known merchant: Pidding v. How, Shadwell, V.-C., 1837, 8 Sim. 477; 6 L. J. Ch. 345.
(ii.) The plaintiff sold "Perry's Medicated Mexican Balm,” but failed to obtain an injunction to restrain the sale of "Truefitt's Medicated Mexican Balm," because his show-cards contained representations that his mixture was made from a special recipe and of Mexican plants, which was not the fact: Perry v. Truefitt, Langdale, M.R., 1842, 6 Beav. 66; 1 L. T. 384.
(iii.) The plaintiffs having succeeded to the business of J. R. & C. P. Crockett, used a stamp containing the words "J. R. & C. P. Crockett, Manufacturers" and "tanned, patented." They were refused protection on the ground that the stamp falsely represented that J. R. & C. P. Crockett were the actual existing makers of the goods, and that the goods were tanned and patented, which was not the case: Leather Cloth Co. v. American Leather Cloth Co., Wood, V.-C., 1863, 1 H. & M. 271; 32 L. J. Ch. 721 ; 8 L. T. N. S. 829; 11 W. R. 931; Westbury, L.C., 1863, 4 De G. J. & S. 137; 33 L. J. Ch. 199; 10 Jur. N. S. 81 ; 9 L. T. N. S. 558; 12 W. R. 289; H. L. 1865, 11 H. L. C. 523; 35 L. J. Ch. 53; 11 Jur. N. S. 513; 12 L. T. N. S. 742 ; 13 W. R. 873.
(iv.) Again, protection will be refused to a plaintiff who deals in a substance intended to be mixed with beer and represented to be an extract of hops: Estcourt v. Estcourt Hop Essence Co., C. A. 1875, L. R. 10. Ch. 276; 44 L. J. Ch. 223; 32 L. T. N. S. 80; 23 W. R. 313.
The misrepresentation may, however, be so trifling and immaterial as not to disentitle the person making it to the protection of the court, as for instance the assumption of the title "Professor" Holloway v. Holloway, Langdale, M.R., 1850, 13 Beav. 209; and the result will be the same if it is made only after the institution of the action: Siegert v. Findlater, Fry, J., 1878, 7 Ch. D. 801; 47 L. J. Ch. 233; 38 L. T. N. S. 349; 26 W. R. 459; or in collateral documents, as advertisements in newspapers, and not in the trade mark itself; Ford v. Foster, C. A. 1872, L. R. 7 Ch. 611; 41 L. J. Ch. 682; 27 L. T. N. S. 219; 20 W. R. 818; see, however, Perry v. Truefitt, ubi supra. The fact that the misrepresentation is so gross as to be absurd and unlikely to deceive a reasonable man will not exonerate the person making it: see Leather Cloth Co. v. American Leather Cloth Co., supra.
To the above instances of misrepresentation there may be added :
(i.) Names of makers or inventors which are so completely personal as to import that the goods sold under them have been manufactured by particular individuals:" per Turner, L.J., in Bury v. Bedford, 1864, 4 De G. J. & S. 352; 33 L. J. Ch. 465; 10 Jur. N. S. 503; 10 L. T. N. S. 470; 12 W. R. 726.
Such names, however, may come to indicate only that the goods
are manufactured according to a particular process, in which case SECT. 74. they will not necessarily convey a false impression when used by others who have acquired a knowledge of the process: per Westbury, L.C., in Leather Cloth Co. v. American Leather Cloth Co., 1863, 4 De G. J. & S. 137 ; 33 L. J. Ch. 199; 10 Jur. N. S. 81; 9 L. T. N. S. 558; 12 W. R. 289; and in Hall v. Barrows, 163, 4 De G. J. & S. 150; 33 L. J. Ch. 204; 10 Jur. N. S. 55; 9 L. T. N. S. 561; 12 W. R. 322.
See, in regard to such names becoming merely descriptive, notes to sect. 64 (3) and the cases there cited.
(ii.) Such geographical names as convey an indication of a source of production or supply which, if true, renders them merely descriptive, and, if false, makes them deceptive: see Braham v. Beachim, Fry, J., 1878, 7 Ch. D. 848; 47 L. J. Ch. 348; 38 L. T. N. S. 640; 26 W. R. 654; and In re Saunion & Co., Jessel, M.R., 1878, Seb. Dig. No. 625, and notes to sect. 64 (3).
(iii.) The word "Patent," when used either after the expiration of the patent in such a manner as to indicate that the patent is still subsisting, or upon articles for which no patent has ever been granted: see notes to Merchandise Marks Act, 1862, sect. 7.
Sect. 105 of this Act provides further that any person who represents that any article sold by him is a patented article when no patent has been granted for the same, or describes any trade mark applied to any article sold by him as registered when it is not, shall be liable for every offence on summary conviction to a fine not exceeding five pounds. See also Instruction 30.
A similar penalty is imposed by the Merchandise Marks Act, 1862, upon any person who with intent to defraud shall mark or sell any article marked in such a way as falsely to indicate the place or country where it was made or produced, or shall place upon any article a mark falsely indicating that it is the subject of an existing patent, privilege, or copyright: see sects. 7 and 8 of that Act.
And by sect. 20 of the same Act any person who sells an article with, among other things, an indication upon it of the place or country where it was made or produced is to be deemed to warrant that the indication is true.
74. (1.) Nothing in this Act shall be construed to Saving for prevent the Comptroller entering on the register, in the provide for
SECT. 74. prescribed manner, and subject to the prescribed conditions, as an addition to any trade mark
entry on register of
common marks as
(a.) In the case of an application for registration of
a trade mark used before the thirteenth day of August one thousand eight hundred and seventyfive
Any distinctive device, mark, brand, heading,
label, ticket, letter, word, or figure, or combination of letters, words, or figures, though the same is common to the trade in the goods with respect to which the application is made;
(b.) In the case of an application for registration of a trade mark not used before the thirteenth day of August one thousand eight hundred and seventy-five
Any distinctive word or combination of words,
though the same is common to the trade in
the goods with respect to which the application is made;
(2.) The applicant for entry of any such common particular or particulars must, however, disclaim in his application any right to the exclusive use of the same, and a copy of the disclaimer shall be entered on the register.
(3.) Any device, mark, brand, heading, label, ticket, letter, word, figure, or combination of letters, words, or figures, which was or were, before the thirteenth day of August one thousand eight hundred and seventy-five,