publicly used by more than three persons on the same SECT. 74. or a similar description of goods shall, for the purposes of this section, be deemed common to the trade in such goods.

(1.)

This section is new, and qualifies sect. 64. It relates only to marks not already on the register, and simply means that the mere fact that a trade mark, comprising some of the essential particulars defined in sect. 64, comprises also a mark common to the trade, will not prevent its registration provided the common part be disclaimed.

The alteration of so much of a registered trade mark as is not an essential particular, is dealt with in sect. 92.

It is noticeable that in the case of new marks only words and combination of words which are common to the trade can be included in a trade mark, if registration be desired. This rule may be compared with sect. 64 (2). See Instruction 19.

"Prescribed" means prescribed by the schedules to, or rules under the Act: sect. 117. No "manner" nor "conditions" have been so prescribed. The old practice was to insert a note containing a disclaimer on the register, and now by Rule 32, the Comptroller may enter on the register such particulars as he may think necessary. The Board of Trade also is empowered, by sect. 62 (4), to order registration, subject to conditions.

(2.)

Disclaimers. The practice of entering a note on the register containing a disclaimer of so much of a mark as was proved to be common to the trade, was adopted under the Act of 1875: see In re Leonardt, Jessel, M.R., 1878, Seb. Dig. No. 610; In re Mitchell, Jessel, M.R., 1878, W. N. 101; In re Kuhn & Co., Jessel, M.R., 1878, 53 L. J. Ch. 238.

As to mode of disclaiming, see Instruction 19.

(3.)

Common Marks.-The following may be taken as instances of

SECT. 74. marks which have been found to be common to various trades since the passing of the Registration Acts :

(i.) In the iron trades, a crown, a horse-shoe, and the words "Best," 23 66 Bloom," and "Plating;" In re Barrows' Trade Mark, C. A. 1877, 5 Ch. D. 364; 46 L. J. Ch. 725; 36 L. T. N. S. 780 ; 25 W. R. 564.

(ii.) On sealing-wax, the words "Bank of England:" In re Hyde & Co.'s Trade Mark, Jessel, M.R., 1878, 7 Ch. D. 724; 54 L. J. Ch. 395; 38 L. T. N. S. 777; 26 W. R. 625.

(iii.) In the steel pen trade, the words "Selected," "Improved," "Office," Commercial," &c.: In re Leonardt, In re Mitchell, and In re Kuhn & Co., supra.

(iv.) In the tobacco trade, the letters "S. P. :" Exp. Sales, Pollard & Co., Jessel, M.R., 1878, Seb. Dig. No. 620.

(v.) In the match trade, the term "Braided Fixed Stars :" In re Palmer's Trade Mark, C. A. 1883, 24 Ch. D. 504; 50 L. T. N. S. 30; 32 W. R. 306.

(vi.) In the mineral water trade, a device of a syphon: In re Wragg's Trade Mark, Pearson, J. 1885, 54 L. J. Ch. 391.

See also, as to names which have become descriptive in course of time, notes to sect. 64 (3.)

Three-Mark Rule.-Under the Act of 1875 the Registrar was forbidden to register substantially similar or identical trade marks in respect of the same goods or classes of goods. It was found, however, that in so many cases similar or identical marks were in use prior to the passing of the Act in connection with substantially similar goods, that a new arrangement was necessary. It was therefore held that in the case of old marks, even identical marks might be registered up to the number of three for use on identical goods: In re Walkden Aerated Water Co., Jessel, M.R., 1877, 54 L. J. Ch. 394; In re Jelley, Son, & Jones, Jessel, M.R., 1878, 51 L. J. Ch. 639; 46 L. T. N. S. 381 ; In re Powell, Jessel, M.R., 1878, Seb. Dig. No. 589; see also note to sect. 72.

A mark which was found to be used in connection with goods of the same class by three or more persons was treated as common to the trade: ibid.

In calculating the number of persons who have used a device, alleged to be common to the trade, cases will be taken into consideration in which devices substantially similar, though not

identical, have been used; and also cases in which substantially SECT. 74. similar devices have been used, though never claimed as valid trade marks: In re Wragg's Trade Mark, Pearson, J., 1885, 54 L. J. Ch. 391; In re Walkden Aerated Water Co., Jessel, M.R., 1877, ibid.

The test now adopted of what constitutes a common mark is somewhat less stringent, for identically the same marks may, it seems, be registered even in excess of the number of three for goods which are in the same class, but are not the same, nor of the same description. In other words, there is now no restriction placed upon the number of similar or identical trade marks which may be registered for a class of goods, provided the goods themselves, in respect of which they are registered, are sufficiently distinct that no confusion is caused: see sect. 72, and In re Braby & Co.'s Applications, North, J., 1882, 21 Ch. D. 223; 51 L. J. Ch. 637; 46 L. T. N. S. 380; 30 W. R. 675.

It has been held that the books of the Registrar of Trade Marks which show that applications for the registration of particular marks have been refused, are not evidence that these marks have become common: Orr-Ewing & Co. v. Johnston & Co., C. A. 1880, 13 Ch. D. 434; 42 L. T. N. S. 67; 28 W. R. 330.

But an earlier judicial decision that a term has become open to the trade is of course conclusive: In re Anderson's Trade Mark, Chitty, J., 1884, 26 Ch. D. 409; 53 L. J. Ch. 664; 32 W. R. 677.

Mere length of user will not of itself make a mark, which was originally a trade mark, publici juris, where such user was originally fraudulent, and is still calculated to deceive, but it throws upon the trader claiming an exclusive right to the mark the onus of proving such original fraud, and continuing misrepresentation, and the longer the user the stronger must be the evidence. Upon this principle an application to register, in combination with the name of the applicants, a foreign trade mark, which had been used by the applicants, and by thirty other firms in this country in combination with their own respective names, or with some device for fifty years, was refused upon the opposition of the foreign proprietor of the mark who had only recently discovered such user: In re Heaton's Trade Mark, Kay, J., 1884, 27 Ch. D. 570; 53 L. J. Ch. 959; 51 L. T. N. S. 220; 32 W. R. 951.

SECT. 75.

Registration equivalent to

public use.

Effect of Registration.

75. Registration of a trade mark shall be deemed to be equivalent to public use of the trade mark.

This section is derived from sect. 2 of the Act of 1875. Prior to the Registration Acts a title to a trade mark could only be acquired by user upon or in connection with goods actually in the market: M'Andrew v. Bassett, Westbury, L.C., 1864, 4 De G. J. & S. 380; 33 L. J. Ch. 566; 10 Jur. N. S. 550; 10 L. T. N. S. 442; 12 W. R. 777. Length of user was wholly immaterial; it was only essential that the mark should actually be used upon a vendible article: Hall v. Barrows, Romilly, M.R., 1863, 32 L. J. Ch. 548; 9 Jur. N. S. 483; 8 L. T. N. S. 227; 11 W. R. 525; Cope v. Evans, Hall, V.-C., 1874, L. R. 18 Eq. 138; 30 L. T. N. S. 292 ; 22 W. R. 453. See notes to Merchandise Marks Act, 1862, sect. 1, and also sect. 64 of this Act.

per

This section "is for the benefit of those making new trade marks. As the law at present stands, if the mark be not already in use, and is sufficiently distinctive to distinguish the goods to which it is applied as being those of the person using it, the public use of the mark gives a property to it :" Lord Blackburn in Orr-Ewing v. Registrar of Trade Marks, H. L. 1879, 4 App. Cas. 496; 48 L. J. Ch. 807; 41 L. T. N. S. 239 ; 28 W. R. 17. By sect. 2 of the Act of 1875, registration was only equivalent to public user, provided there was a continuing connection of the trade mark with the goodwill of the business concerned in the goods for which it was originally registered.

Now by sect. 70 a trade mark is determinable with that goodwill; yet though no longer a trade mark it appears not to be removable from the register except on the application of the owner under sect. 91.

What will be the effect of a mark, which has ceased to be a trade mark, remaining on the register it is impossible to determine. Since it is no longer a trade mark within the meaning of the Act, neither this nor the succeeding section would appear to be applicable. Consequently it may perhaps be disregarded in practice, although present on the register.

proprietor

use of trade

76. The registration of a person as proprietor of a SECT. 76. trade mark shall be prima facie evidence of his right Right of first to the exclusive use of the trade mark, and shall, after to exclusive the expiration of five years from the date of the registra- mark. tion, be conclusive evidence of his right to the exclusive use of the trade mark, subject to the provisions of this Act.

This section follows sect. 3 of the Act of 1875. A mark which is not authorised to be registered as a trade mark, does not acquire the character of a trade mark by being on the register five years, and may be removed from the register though that period has elapsed: In re' Palmer's Applications, C. A. 1882, 21 Ch. D. 53; 51 L. J. Ch. 673; 46 L. T. N. S. 787; In re Leonard & Ellis' Trade Mark, C. A. 1884, 26 Ch. D. 288; 53 L. J. Ch. 603; 51 L. T. N. S. 35; In re Ralph's Trade Mark, Pearson, J., 1884, 25 Ch. D. 194; 53 L. J. Ch. 188; 32 W. R. 168; 49 L. T. N. S. 504; In re Wragg's Trade Mark, Pearson, J., 1885, 54 L. J. Ch. 391; In re Hyde's Trade Mark, Jessel, M.R., 1878, 7 Ch. D. 742; 54 L. J. Ch. 395; 38 L. T. N. S. 777; 26 W. R. 625. And probably a person sued for infringing a trade mark that has been on the register upwards of five years, can defend himself on the ground that it should never have been registered: In re Palmer's Application, supra.

It has been definitely laid down that this section is qualified by sect. 90, and that consequently any person aggrieved within the meaning of sect. 90 by an entry on the register is not precluded by the expiration of five years from the date of such registration from showing that the mark ought not to have been registered: In re Lloyd's Trade Mark, Chitty, J., 1884, 27 Ch. D. 646; 54 L. J. Ch. 66.

It seems that conclusive evidence of right to the exclusive use of a trade mark is furnished by the expiration of five years from the registration, not of the trade mark itself, but of the person who claims the exclusive right. Consequently in the case of assignment or transmission, the benefit, in this respect, of registration does not apparently descend to the subsequent proprietor.