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SECT. 77. There is no provision corresponding to sect. 4 of the Act of 1875, by which it was enacted that every proprietor registered in respect to a trade mark subsequently to the first registered proprietor shall, as respects his title to that trade mark, stand in the same position as if his title were a continuation of the title of the first registered proprietor. See, however, sect. 87.
to action in certain
The marginal note seems in conflict with the enactment. The word first" therein was apparently borrowed without consideration from the Act of 1875.
77. A person shall not be entitled to institute any for infringe- proceeding to prevent or to recover damages for the on defence infringement of a trade mark unless, in the case of a trade mark capable of being registered under this Act, it has been registered in pursuance of this Act, or of an enactment repealed by this Act, or, in the case of any other trade mark in use before the thirteenth of August one thousand eight hundred and seventy-five, registration thereof under this part of this Act, or of an enactment repealed by this Act, has been refused. The Comptroller may, on request, and on payment of the prescribed fee, grant a certificate that such registration has been refused.
This section is derived from sect. I of the Act of 1875, as amended by the Acts of 1876 and 1877, but contains important modifications. Under the earliest Act a person was not entitled to institute proceedings to prevent the infringement of any trade mark as defined by the Act until, and unless, such trade mark was registered.
By the Act of 1876, the necessity for registration as a condition precedent to the institution of proceedings either to prevent, or to recover damages for infringement, was limited to the case of trade marks adopted since the commencement of the Act of 1875,
and it was provided that in respect of any device, mark, name, SECT. 77combination of words, or other matter or thing in use as a trade · mark, before the passing of the Act of 1875, a certificate that registration had been refused should be sufficient to entitle the proprietor to institute proceedings, either to prevent infringement, or to recover damages.
The amendment introduced by the Act of 1876 was, as will be seen, of two kinds: "It renders registration a condition precedent to a proceeding to recover damages, as well as to a proceeding to prevent infringement; and it provides that if the proprietor of a trade mark in use before the passing of the principal Act has been refused registration, he may, notwithstanding such refusal, institute proceedings either for prevention of, or damages for the infringement of such trade mark, and need not wait till he has got the register rectified. . . . The effect of the Act of 1876 is that if one who says he is the proprietor of a trade mark (i.e., a trade mark used before the passing of the Act of 1875), wishes to institute proceedings against some one who, as he says, is infringing it, he must first try to have his trade mark registered. If the registration is refused for any reason, he may apply to have the register rectified, and then the court will have to determine as the principal question whether the reason of the refusal was sufficient. But he may also seek for more speedy redress. He may obtain a certificate of the refusal and then institute proceedings to prevent infringement, and then the court will have to determine whether he was the proprietor of the trade mark, and in so doing will have incidentally to determine whether the reason of the refusal was sufficient; for he cannot obtain an injunction unless he proves, to the satisfaction of the court, that the alleged trade mark was 'a special or distinctive word or words, or combination of figures or letters used as a trade mark before the passing of the Act,' and that 'he was for the time being entitled to the exclusive use of such trade mark in accordance with law :'" per Lord Blackburn in Orr-Ewing v. Registrar of Trade Marks, H. L. 1879, 4 App. Cas. 479; 48 L. J. Ch. 707 ; 41 L. T. N. S. 239; 28 W. R. 17.
The effect of the new provision in this Act is as follows:
(i.) Both new and old trade marks which are capable of registra
SECT. 78. tion as coming within the definition contained in sect. 64, must be registered, or else proceedings cannot be taken.
(ii.) In the case of old marks which do not fulfil the conditions of sect. 64, application for registration must be made and a certificate of refusal obtained before action. To ascertain what is "any other trade mark" within the meaning of this section, recourse must be had to the case law preceding legislation on the subject. Two qualities must undoubtedly be present: (1.) the mark must be distinctive, and (2.) it must be actually in use upon or in connection with an article in the market: see notes to sect. 64, and to sect. I of the Merchandise Marks Act, 1862.
If these qualities are taken to be essential, a trade name which is "so appropriated by user as to come to mean the goods of a particular person, though it is not, and never was impressed on the goods or on the packages in which they are contained, so as to be a trade mark properly so called," will not be within the section, nor will a certificate of refusal be a necessary condition precedent to an action; see Singer Manufacturing Co. v. Loog, H. L. 1882, 8 App. Cas. 15; 52 L. J. Ch. 481; 31 W. R. 325.
(iii.) New marks incapable of registration as not coming within the definition of sect. 64, will receive protection as heretofore without the necessity of either registration, or a certificate of refusal. The definition is very wide, so there will probably not be many such.
As to the certificate of refusal to register, see Rule 57, and Form L, and Instructions 39-41. A stamp of £1 is impressed on the form of request: see First Schedule to the Act.
The certificate is admissible in evidence without proof: see sect. 96.
The latter part of the marginal note is at variance with the section.
As to the practice in proceedings for the prevention of, and recovery of damages for, infringement, see Merchandise Marks Act, 1862, sects. 21 and 22.
Register of Trade Marks.
78. There shall be kept at the Patent Office a book called the Register of Trade Marks, wherein shall be
entered the names and addresses of proprietors of SECT. 79. registered trade marks, notifications of assignments and
of transmissions of trade marks, and such other matters
as may be from time to time prescribed.
As to the entries to be made, see Rule 32.
As to the entry of orders of the court, see Rule 44, and as to the entry of assignments, see sect. 87, Form K, and Instruction 42. As to the alteration of the register, see sects. 91 and 92, and Rules 45-48.
As to the "Sheffield Register" for marks used on cutlery, and belonging to persons carrying on business in Hallamshire, or within six miles thereof, see sect. 81.
teen years unless fee paid.
79. (1.) At a time not being less than two months Removal of nor more than three months before the expiration of fourteen years from the date of the registration of trade mark, the Comptroller shall send notice to the registered proprietor that the trade mark will be removed from the register unless the proprietor pays to the Comptroller before the expiration of such fourteen years (naming the date at which the same will expire) the prescribed fee; and if such fee be not previously paid, he shall at the expiration of one month from the date of the giving of the first notice send a second notice to the same effect.
(2.) If such fee be not paid before the expiration of such fourteen years the Comptroller may after the end of three months from the expiration of such fourteen years remove the mark from the register, and so from time to time at the expiration of every period of fourteen years.
(3.) If before the expiration of the said three months the registered proprietor pays the said fee, together with the additional prescribed fee, the Comptroller may, without removing such trade mark from the register, accept the said fee as if it had been paid before the expiration of the said fourteen years.
(4.) Where after the said three months a trade mark has been removed from the register for non-payment of the prescribed fee, the Comptroller may, if satisfied that it is just so to do, restore such trade mark to the register on payment of the prescribed additional fee.
(5.) Where a trade mark has been removed from the register for non-payment of the fee or otherwise, such trade mark shall nevertheless for the purpose of any application for registration during the five years next after the date of such removal, be deemed to be a trade mark which is already registered.
This section is a re-enactment, with modifications, of Rules 29 and 30 of the Rules under the Act of 1875.
The prescribed fee was formerly £2. It is now £1: see first schedule to the Rules.
Where a trade mark is removed under this section, the Comptroller must enter in the register a record of such removal: see Rule 45.
The additional fee was £1, it is now only 10s.: see first schedule to the Rules.