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SECT. 90. or expedient to decide for the rectification of a register, and may direct an issue to be tried for the decision of any question of fact, and may award damages to the party aggrieved.
(3.) Any order of the court rectifying a register shall direct that due notice of the rectification be given to the Comptroller.
This is a re-enactment with modifications of sect. 5 of the Act of 1875.
There is no "It must be a
A "person aggrieved" is a term of wide import. definition of the grievance contained in the Act. legal grievance. It must be shown in some way that it tends to his (the applicant's) injury, or tends to damages in the legal sense of the word:" per Selborne, L.C., In re Riviere's Trade Mark, C. A. 1884, 26 Ch. D. 48; 53 L. J. Ch. 578; 32 W. R. 390. If this be shown the applicant is within the section. He need not be the registered proprietor of a trade mark, or even entitled to registration, nor, perhaps, need he carry on or intend to carry on business in the United Kingdom: ibid.
Illustrative Cases.—(i.) If a mere word not used as a trade mark before the Act of 1875 is registered, any dealer who has used the word in his trade, in connection with, or as descriptive of, an article in which he deals is a person aggrieved by the registration: Rose v. Evans, Hall, V.-C., 1879, 48 L. J. Ch. 618.
(ii.) In a case where the owner of a patented article, which had been exclusively manufactured by a licensee on payment of a royalty, registered the name of the article as a trade mark a year before the expiration of the patent, and then claimed the exclusive use of the name, it was held that the licensee who had exclusively manufactured the article during the continuance of the patent was a person aggrieved: In re Ralph's Trade Mark, Pearson, J., 1883, 25 Ch. D. 194; 53 L. J. Ch. 188; 49 L. T. N. S. 504 ; 32 W. R. 168.
(iii.) Consequently, any trader is aggrieved by the registration of a mark common to his trade: In re Hyde & Co.'s Trade Mark,
Jessel, M.R., 1878, 7 Ch. D. 724; 38 L. T. N. S. 777; 26 W. R. SECT. 90. 625; In re Mitchell's Trade Mark, Jessel, M.R., 1878, W. N., p. 101; In re Kuhn & Co., Jessel, M.R., 1878, 53 L. J. Ch. 238; In re Palmer's Trade Mark, C. A. 1882, 21 Ch. D. 47; 51 L. J. Ch. 673; 46 L. T. N. S. 787; In re Wragg's Trade Mark, Pearson, J., 1885, 54 L. J. Ch. 391.
(iv.) Or of a mark composed wholly or in part of a name which is merely descriptive of an article: In re Brandreth's Trade Mark, Jessel, M.R., 1878, 9 Ch. D. 618; 47 L. J. Ch. 816; 27 W. R. 281; Seb. Dig. No. 626; In re Sannion & Co., Jessel, M.R., 1878, Seb. Dig. No. 625, and see notes to sect. 64 (3).
(v.) Or of a mark containing a name which has become merely descriptive, as, for instance, the name of a patented article after the expiration of a patent or of an article manufactured by a particular process which has become generally known and adopted: In re Palmer's Trade Mark, C. A. 1883, 24 Ch. D. 504; 50 L. T. N. S. 30; 32 W. R. 306; 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, supra; and see notes to sect. 64 (3).
(vi.) Where a wine merchant in Madras requested his shipper to register a trade mark for him in England, and the shipper registered it in his own name, the wine merchant, though not using the mark in England, was held aggrieved: In re Riviere's Trade Mark, supra.
(vii.) Where a servant unknown to his employers obtained registration of a trade mark which they used in their trade, they were sufficiently aggrieved to obtain its removal: Ex parte Lawrence Bros., Jessel, M.R., 1878, 44 L. T. N. S. 98; 29 W. R. 392.
(viii.) Where a manufacturer had not registered his trade mark, nor used it for six years, he was yet considered not to have abandoned it, and to be aggrieved by the registration of a similar mark: Mouson v. Boehm, Chitty, J., 1884, 26 Ch. D. 398; 53 L. J. Ch. 932; 50 L. T. N. S. 784; 32 W. R. 612.
And it seems that a registered owner, finding he had registered a mark which from being common to the trade or from some other cause was a bad trade mark, was aggrieved within the meaning of the Act of 1875, and could move to expunge it or
SECT. 90. to vary the entry: Ex parte Sales, Pollard & Co., Jessel, M.R., 1878, Seb. Dig. No. 620; In re Lysaght, Jessel, M.R., 1878, ibid. No. 623; Ex parte Walker & Co., Malins, V.-C., 1878, ibid. No. 624. Henceforth he will proceed under sect. 91, post, when he desires cancellation. And analogously, where two manufacturers arranged that each of them should register the same trade mark, subject to restrictions as to user, and at the time of registration the restrictive notes were accidentally omitted, they were held to be persons aggrieved, and entitled to have the register rectified by the addition of the requisite notes: In re Mitchell's and Houghton and Hallmark's Trade Marks, Chitty, J., 1885, 28 Ch. D. 666; 33 W. R. 408.
Procedure. It would appear that there are four cases of appeal from the decision of the Comptroller recognised by the Act :(i.) A refusal by the Comptroller to register a trade mark as being in contravention of sects. 72, 73, and 86, or Instructions 2932. In this case, a right of appeal is given by sect. 62 to the Board of Trade, and the Board is empowered to refer the appeal to the court. It is open to argument whether the words "omission without sufficient cause of the name of any person from the register" in this section can be taken to cover such a refusal by the Comptroller to register a trade mark. They seem rather to point to a case where a trade mark is on the register, but is entered in the name of the wrong proprietor. If this is so, an applicant has no right of appeal to the court from the refusal of the Comptroller to register a mark, in the event of the Board declining to refer the case. If, on the other hand, the words are held to include such a refusal by the Comptroller, the express power given to the Board to refer an appeal appears to be nugatory, and further questions arise whether an applicant has the option of appealing either to the Board or to the court, and whether if, in exercise of this option, he appeal under sect. 62 to the Board, he can subsequently apply to the court if the Board refuse to refer the appeal.
(ii.) A refusal under sect. 72 by the Comptroller to register a trade mark owing to the opposition of a proprietor of a trade mark very similar to that sought to be registered. This case is dealt with in sect. 69 and Rule 29, and is altogether outside the above sect. 90.
(iii.) A refusal under sect. 71 of the applications of several SECT. 90. persons who claim the same trade mark by conflicting titles. This case also is not within sect. 90, but is specially provided for by sect. 71 and Rule 42. If, however, the Comptroller selects one of the rival applicants for registration, the other applicant may, it would seem, apply to the court under this section as a "person aggrieved by the omission of his name."
(iv.) A refusal by the Comptroller to rectify the register on the ground that such rectification is unnecessary, or in excess of the powers given to him by sect. 91. It is cases of this class which an application to the court under sect. 90 is more especially intended to remedy.
The Act of 1875, sect. 5, contained the words "if the registrar refuses to enter on the register as proprietor of a trade mark, the name of any person who is for the time being entitled to the exclusive use of such trade mark in accordance with the Act, or otherwise in accordance with law," which obviously included the case of mere refusal by the registrar to register. It was held under that section that upon application to the court owing to such refusal, "the first duty cast upon the court is to ascertain whether some one, or more than one, of the essential particulars of a trade mark as defined by the Act is found to exist, so that the mark may be described with one, or more than one, essential particular or particulars which distinguish it:" per Cairns, L.C., 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; and further, "that when the Court of Chancery is satisfied that the applicant is a person who is for the time being entitled to the exclusive use of a trade mark in accordance with law, and that the trade mark is one within the definition in the Act, the court is, ex debito justitiæ, to rectify the register, just as it would before the Act of 1875 have been bound ex debito justitiæ, on similar proof, to prevent any one infringing the trade mark shown to be his property: per Blackburn, L., ibid.
The procedure under the Act of 1875 was usually by motion, in accordance with Rule 43 of the Rules of 1876, even in cases where the person aggrieved did not himself seek registration, although it was held incidentally, in a case of opposition to registration, that the application to the court referred to in that rule was
SECT. 90. clearly an application by persons seeking to register: In re Simpson, Davies & Sons' Trade Mark, Jessel, M.R., 1880, 15 Ch. D. 525; 42 L. T. N. S. 675; 28 W. R. 760. The above seems to be the meaning of the judgment, but the report is somewhat confused.
It was customary to give to the Registrar two days' clear notice of the application, and to support the application by an affidavit of the person aggrieved, verifying the facts. No further evidence seems to have been required: Ex parte Stephens, Jessel, M.R., 1876, 24 W. R. 819.
Rectification will not, it seems, be granted in the absence of the registered proprietor, unless his consent be obtained: In re Mitchell's Trade Mark, Jessel, M.R., 1878, W. N., p. 101. But if his consent be first obtained, there seems no reason why the application should not be made ex parte: see In re Keep's Trade Mark, Pearson, J., 1884, 26 Ch. D. 187; 50 L. T. N. S. 453; 32 W. R. 427; and In re Mitchell's, and Houghton and Hallmark's Trade Mark, Chitty, J., 1884, W. N., p. 42; 33 W. R. 408.
If the registered owner of a trade mark goes into liquidation after notice has been given to him of an application to rectify the register, leave will be granted to serve the notice on the trustee in the liquidation: In re Rowe's Trade Mark, Chitty, J., 1882, 48 L. T. N. S. 388.
Where a person seeks to rectify the register, the onus is upon him to show that it ought to be rectified, but though his own evidence may be insufficient for the purpose, the onus is discharged if it appears from the evidence of the owner of the mark that the register ought to be rectified: In re Leonard and Ellis' Trade Mark, infra.
The application under this section will probably be by motion as under the Act of 1875, although there is no provision in regard to the practice contained in the Rules, e.g., (i.) by the registered owner: Ex parte Sales, Pollard & Co., Jessel, M. R., 1878, Seb. Dig. No. 620; In re Lysaght, Jessel, M.R., 1878, Seb. Dig. No. 623; Ex parte Walker & Co., Malins, V.-C., 1878, Seb. Dig. No. 624 ; see sect. 9, as to the practice henceforward; or (ii.) by a person aggrieved: In re Hyde & Co.'s Trade Mark, Jessel, M.R., 1878, 7 Ch. D. 724; 38 L. T. N. S. 777; 26 W. R. 625; In re Mitchell's Trade Mark, Jessel, M.R., 1878, W. N., p. 101 ; Ex parte Lawrence