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SECT. 91. 49 L. J. Ch. 513; 43 L. T. N. S. 1; In re Maignen's Application, Jessel, M.R., 1880, 28 W. R. 759.
Damages. This enactment is new. It is difficult to conceive of a case where damage can be shown excepting where there has been infringement. As to actions for damages generally, see notes to Merchandise Marks Act, 1862, sect. 22.
As to notifying the Comptroller of an order of the court, see Rule 44 and Form N. He may advertise the order if he think fit: Rule 47.
91. The Comptroller may, on request in writing, to correct accompanied by the prescribed fee,
(a.) Correct any clerical error in or in connection with an application for a patent, or for registration of a design or trade mark; or
(b.) Correct any clerical error in the name, style, or address of the registered proprietor of a patent, design, or trade mark.
(c.) Cancel the entry or part of the entry of a trade mark on the register; provided that the applicant accompanies his request by a statutory declaration made by himself, stating his name, address, and calling, and that he is the person whose name appears on the register as the proprietor of the said trade mark.
All documents and drawings for amending which there is no special provision may be amended by the Comptroller's leave (Rule 51), and in addition to the powers here given, the Comp
troller is expressly empowered to alter the addresses of the pro- SECT. 92. prietors in the register (Rule 46).
(a.) As to Forin of Request, see Form Q. The fee on request
to alter a clerical error is 5s.: see first schedule to Rules. (b.) See also Rule 46 and Form M.
(c.) For the form of application to cancel, see Form O, and of declaration to accompany it, see Form P. As to mode of making declarations, see Rule 58.
This section empowers the Comptroller to cancel an entry, or part of an entry, on the application of the registered proprietor. An alteration in the trade mark itself can only be effected under sect. 92.
Persons aggrieved by an entry can obtain the rectification of the register by its removal under sect. 90.
Under the Act of 1875 a trade mark would be removed by the court on an application by the registered proprietor: Ex parte Sales, Pollard & Co., Jessel, M.R., Seb. Dig. No. 620.
And a trade mark registered in respect of all the goods in a class, might be limited, on the application of the registered proprietor, to certain specified goods only, by means of an addition to the entry in the register: In re Lysaght, Jessel, M.R., 1878, Seb. Dig. No. 623.
As such an alteration as this amounts to more than cancellation, an application to the court may still be necessary to effect it. This will be made under sect. 90, by motion: see Ex parte Stephens, Jessel, M.R., 1876, 24 W. R. 819.
The Comptroller and also the Board of Trade have, however, power in the case of new applications to register trade marks subject to such a condition : see sect. 62 (4), and Rule 32.
92. (1.) The registered proprietor of any registered Alteration trade mark may apply to the court for leave to add to mark. or alter such mark in any particular, not being an essential particular within the meaning of this Act, and the court may refuse or grant leave on such terms as it may think fit.
(2.) Notice of any intended application to the court
SECT. 93. under this section shall be given to the Comptroller by the applicant; and the Comptroller shall be entitled to be heard on the application.
Falsification of entries in
(3.) If the court grants leave, the Comptroller shall, on proof thereof and on payment of the prescribed fee, cause the register to be altered in conformity with the order of leave.
This is practically a re-enactment of Rules 34 and 35 of the Rules of 1883.
As to what constitutes an essential particular, see sect. 64.
The application has usually been by motion. Under the Act of 1875, the address of the proprietor inserted in the trade mark was allowed to be changed: Ex parte Walker & Co., Malins, V.-C., 1878, Seb. Dig. No. 624.
Notice must be given to the Comptroller fourteen days, at least, before the application: see Rule 48.
As to the mode of informing the Comptroller of the order, see Rule 44 and Form N.
Representations of the trade mark as altered must also be supplied: Rule 48. The fee for entering an alteration in the register is Ios. see first schedule to the Rules.
The Comptroller may, if he think fit, make public the alteration in the register by advertisement or otherwise at the expense of the applicant: Rule 47.
As to the cancellation of an entry upon the application of the registered proprietor, see sect. 91, and upon the application of any person aggrieved, see sect. 90.
The costs of the Comptroller's appearance will have to be provided for see In re Maignen's Application, Jessel, M.R., 1880, 28 W. R. 759; In re Rotherham's Trade Mark, C. A. 1880, 14 Ch. D. 585; 49 L. J. Ch. 513; 43 L. T. N. S. 1 ; In re Riviere's Trade Mark, Pearson, J., 1883, 26 Ch. D. 52; 53 L. J. Ch. 455 ; 49 L. T. N. S. 506.
93. If any person makes or causes to be made a register. false entry in any register kept under this Act, or a
writing falsely purporting to be a copy of an entry in SECTS. 94, any such register, or produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, he shall be guilty of a misdemeanor.
This section is based on sect. 37 of the Patents Act of 1852 (15 & 16 Vict., c. 83), which, however, was only applicable to patents.
As to the punishment of a misdemeanor in the Isle of Man, see sect. 112.
Act Exercise of that ary power
94. Where any discretionary power is by this given to the Comptroller, he shall not exercise power adversely to the applicant for a patent, or amendment of a specification, or for registration of a trade mark or design, without (if so required within the prescribed time by the applicant) giving the applicant an opportunity of being heard personally or by his agent. As to the exercise of discretionary powers, see Rules 17-19.
95. The Comptroller may, in any case of doubt or Power of difficulty arising in the administration of any of the to take provisions of this Act, apply to either of the law officers law officers. for directions in the matter.
"Law officer" means the Attorney-General or the SolicitorGeneral for England: sect. 117.
96. A certificate purporting to be under the hand of Certificate the Comptroller as to any entry, matter, or thing which troller to be he is authorised by this Act, or any general rules made
SECT. 97. thereunder, to make or do, shall be prima facie evidence of the entry having been made, and of the contents thereof, and of the matter or thing having been done or left undone.
Applications and notices by post.
This is based on sect. 8 of the Act of 1875, which, however, provided that the certificate should be evidence, not primâ facie evidence merely.
The Comptroller is empowered (sect. 77) to grant a certificate of his refusal to register an old mark, if he is requested to do so (see Form L), and also on request (Forms R and S) to give a certificate of any entry, matter, or thing, which he is authorised to make or do, for the purpose of legal proceedings or other special purpose (Rule 57). See also Form T1. The Instructions (39) contemplate the giving of certificates of four kinds :
(i.) For use in legal proceedings: Form S, fee IOS.
(ii.) For use in applying for registration in foreign countries: Form R, fee 5s.
(iii.) Of any application and proceedings: Form T1, fee 58. (iv.) Of refusal to register an old mark: Form L, fee £1. As to obtaining these forms and the payment of the fees, see Instructions 2 and 3.
97. (1.) Any application, notice, or other document authorised or required to be left, made, or given at the Patent Office or to the Comptroller, or to any other person under this Act, may be sent by a prepaid letter through the post; and if so sent shall be deemed to have been left, made, or given respectively at the time when the letter containing the same would be delivered in the ordinary course of post.
(2.) In proving such service or sending, it shall be sufficient to prove that the letter was properly addressed and put into the post.