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Bros., Jessel, M.R., 1878, 44 L. T. N. S. 98; 29 W. R. 392; In SECT. 90. re Kuhn & Co., Jessel, M.R., 1878, 53 L. J. Ch. 238; In re Riviere's Trade Mark, C. A. 1884, 26 Ch. D. 48; 53 L. J. Ch. 578; 32 W. R. 390; Mouson v. Boehm, Chitty, J., 1884, 53 L. J. Ch. 932; 50 L. T. N. S. 784; 32 W. R. 612; In re Palmer's Trade Mark, C. A. 1882, 21 Ch. D. 47 ; 51 L. J. Ch. 673; 46 L. T. N. S. 787 ; and C. A. 1883, 24 Ch. D. 504; 50 L. T. N. S. 30; 32 W. R. 306; 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; and 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 Wragg's Trade Mark, Pearson, J., 1885, 54 L. J. Ch. 391.
It is noticeable that when the Comptroller raises any objection to the registration of a mark in the Sheffield Registry, the appeal by a person aggrieved lies direct to the court, and not, as in the case of other trade marks, to the Board of Trade: see sect. 81 (5). But it is questionable whether such an appeal comes within this section: see, as to meaning of "omission of any name," supra.
Rectification. Upon the suggested construction of this section it appears that the jurisdiction of the court to rectify the register arises :
(i.) Upon the omission without sufficient cause of the name of any person from the register, but not upon the omission of a trade mark.
(ii.) Upon any entry being made improperly.
Cases of the omission of a name, although the trade mark is duly on the register, will occur :
(i.) When the Comptroller, in the exercise of his discretion under sect. 71, registers one of two or more rival claimants to the same trade mark.
(ii.) When the Comptroller is dissatisfied with the title of an applicant claiming by assignment or transmission, and refuses to register him under sect. 87.
In the Act of 1875 the word "rectify" was used, and it was held that the term "rectification" is applicable only to cases in which there has been some mistake or error in the registration, and that consequently the court had no power to rectify in cases of transmission or assignment where no mistake or error was shown In re Ward, Sturt & Sharp's Trade Mark, Hall, V.-C.,
1881, 50 L. J. Ch. 347; 44 L. T. N. S. 97; 29 W. R. 395. In consequence of the altered wording of the new provision, this decision would appear to be no longer pertinent.
(iii.) When a trade mark has been registered in due course by an agent or by a single partner on behalf of his firm, and the person so registered subsequently refuses to assign the trade mark to those actually entitled: see In re Riviere's Trade Mark, C. A. 1884, 26 Ch. D. 48; 53 L. J. Ch. 578; 32 W. R. 390; In re Rust & Co.'s Trade Mark, Jessel, M.R., 1881, 44 L. T. N. S. 98; 29 W. R. 393; and In re Farina's Trade Mark, Jessel, M.R., 1881, ibid.
The right to the exclusive use of a trade mark after the expiration of five years from the date of registration, given by sect. 76 ante, is subject to and controlled by this section; and therefore any person who considers himself aggrieved within the meaning of this section is not precluded by the expiration of five years from the date of the entry from showing that the entry should be rectified: In re Lloyd's Trade Mark, Chitty, J., 1884, 27 Ch. D. 646; 54 L. J. Ch. 66 ; In re Palmer's Application, C. A. 1882, 21 Ch. D. 47; 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., 1883, 25 Ch. D. 194; 53 L. J. Ch. 188; 49 L. T. N. S. 504; 32 W. R. 168; In re Wragg's Trade Mark, Pearson, J., 1885, 54 L. J. Ch. 391.
Although the original application for registration of the mark was duly advertised, yet this fact alone will not prejudice the claim of a person who desires the rectification of the register. "There is no obligation to see the advertisement. It is as a precaution that the Act gives people an additional opportunity, besides looking at the register, of knowing what is going to be done. But if a person does not see the advertisement, he is in no worse position than he would have been before. He must use due diligence when the fact comes to his knowledge to remove the trade mark :" per Jessel, M.R., In re Hyde & Co.'s Trade Mark, 7 Ch. D. 724; 54 L. J. Ch. 395; 38 L. T. N. S. 777; 26 W. R. 625; see also In re Meikle's Trade Mark, Hall, V.-C., 1876, 24 W. R. 1067, and notes to sect. 68.
Rectification may be effected in three ways-By (i.) making SECT. 90. (ii.) expunging, or (iii.) varying an entry. Of these the last is practically a combination of the other two. The principal entries in the register will consist of (1.) the trade mark; (2.) the name of the proprietor; (3.) the class and description of goods; (4.) the date of the application, and such other particulars as the Comptroller may think necessary: see Rule 32.
(1.) Trade Mark :—(i.) As we have seen, the court under this section has apparently no jurisdiction to order the registration of a trade mark which the Comptroller in his discretion has refused. In the cases of opposition or of conflicting claims it is specially empowered by sect. 69 and Rule 29, and sect. 71 and Rule 42 respectively.
(ii.) The court has power to expunge an entry of a trade mark under this section on the application of a person aggrieved: see cases cited supra.
Under the Act of 1875 the court would make an order to this effect on the application also of a registered owner, but such an application seems no longer necessary: see sect. 91, empowering the Comptroller to cancel an entry on request of the registered owner: see Ex parte Sales, Pollard & Co., Jessel, M.R., 1878, Seb. Dig. No. 620.
(iii.) Under this section, upon the application of a person. aggrieved the court will give leave to alter a trade mark in any particular not being an essential particular within the meaning of sect. 64; e.g., by inserting on the register a disclaimer of a common portion as defined in sect. 74: In re Leonardt, Jessel, M.R., 1878, Seb. Dig. No. 610; In re Mitchell's Trade Mark, Jessel, M.R., 1878, W. N., p. 101 ; In re Kuhn & Co.'s Trade Mark, Jessel, M.R., 1878, 53 L. J. Ch. 238.
A registered proprietor, however, seeking to make an alteration in his trade mark must proceed under sect. 92 and not under this section: see Ex parte Walker & Co., Malins, V.-C., 1878, Seb. Dig. No. 624.
(2.) Name of the Proprietor :-The rectification of the entry of the proprietor's name will be effected (i.) when a name has been omitted without sufficient cause, as explained above; and (ii.) when a name has been entered without sufficient cause.
If mere cancellation is required by the registered owner, he
should proceed under sect. 91, but an alteration, other than mere cancellation, of the name, can only be effected on an application to the court under this section.
Under the Act of 1875 it was held that when the original registration of a proprietor had been properly made, as would be the case when a name is omitted in the sense indicated above, the court could order one name to be substituted for another without further formalities being observed: In re Rust & Co.'s Trade Mark, Jessel, M.R., 1881, 44 L. T. N. S. 98; 29 W. R. 393. See In re Farina's Trade Mark, Jessel, M.R., 1881, ibid.
But if the original application was defective in some particulars, or a wrongful act from the beginning, the court would only order cancellation and direct the rightful owner to make a fresh application: Ex parte Lawrence Bros., Jessel, M.R., 1878, 44 L. T. N. S. 98; 32 W. R. 392.
The ground of the distinction seems to have been that the word "rectification" implied that not a wrong but an error had been committed, and that consequently the power to "rectify" only arose where there had been a mistake in the registration: see In re Ward, Sturt & Sharp's Trade Mark, Hall, V.-C., 1881, 50 L. J. Ch. 347; 44 L. T. N. S. 97; 29 W. R. 395.
Now, however, that an express power to make an entry is given to the court, and the word "rectify," which was used in the Act of 1875, does not appear, it may be fairly presumed that, in all cases where the court can expunge an entry of a name, it has power also to substitute another name, provided the statutory formalities in regard to advertising, &c., were duly observed on the original application: see Ex parte Lawrence Bros., supra; and In re Hyde & Co.'s Trade Mark, Jessel, M.R., 1879, 7 Ch. D. 724; 54 L. J. Ch. 395; 38 L. T. N. S. 777; 26 W. R. 625; and In re Meikle's Trade Mark, Hall, V.-C., 1876, 24 W. R. 1067.
It is to be noticed in this connection that by sect. 79 (5), where a trade mark has been removed from any cause whatever, such trade mark is, nevertheless, for the purpose of any application for registration during the five years next after the date of such removal, to be deemed to be still registered; consequently, the only safe course for a person aggrieved seems to be to ask, not for mere cancellation, but for the substitution of his own name for the name entered on the register without sufficient cause.
Otherwise he will be debarred for five years from registering his SECT. 90. own mark.
(3.) In respect of the remaining entries in the register it may be said generally that cancellation at the request of the registered proprietor may be effected under sect. 91, but rectification in any other manner or on the application of any other person can only be made by the court under this section.
Where two manufacturers agreed that each should register the same trade mark, subject in each case to a note restricting user, and such notes were accidentally omitted, an application by both parties under this section to rectify the register by adding the restrictive notes was successful: In re Mitchell's and Houghton and Hallmark's Trade Marks, Chitty, J., 1884, 28 Ch. D. 666; 33 W. R. 408.
As to the subdivision of classes see sect. 72, and as to the limitation of the user of trade marks by inserting a note on the register see sect. 62 (3).
Costs.—As a rule, costs will be given to the successful applicant for rectification; and this will be the case although he gives no notice to the registered proprietor of his intention to take action in the matter: In re Kuhn & Co.'s Trade Mark, Jessel, M.R., 1878, 53 L. J. Ch. 238; and although he offered no opposition to the original application, having overlooked the usual advertisements: In re Hyde's Trade Mark, Jessel, M.R., 1878, 7 Ch. D. 724; 38 L. T. N. S. 777; 26 W. R. 625; 54 L. J. Ch. 395.
The provision as to costs contained in this section applies presumably only to applications under the section, and not to applications to the court under sects. 69, 71, and 92.
In any event it does not appear to extend the general rule, that the costs of and incident to all proceedings in the Supreme Court are in the discretion of the court (Rules of Court, 1883, Order lxv. Rule 1), to costs incurred previous to the application : see In re Brandreth's Trade Mark, Jessel, M.R., 1878, 9 Ch. D. 618; 47 L. J. Ch. 816; 27 W. R. 281.
In all cases where the Comptroller appears his costs will have to be paid, but it is not apparent that service of the notice of motion on him is essential : In re Riviere's Trade Mark, Pearson, J., 1883, 26 Ch. D. 52; 53 L. J. Ch. 455; 49 L. T. N. S. 506; and see In re Rotherham's Trade Mark, C. A. 1880, 14 Ch. D. 585;