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ing such trade mark of another person to have been so SECT. 4. applied or used as aforesaid, and that whether
such trade mark or forged or counterfeited trade mark as aforesaid, together with which any such chattel or article shall be sold, uttered, or exposed for sale or other purpose as aforesaid, shall be in, upon, about, or with such chattel or article, or in, upon, about, or with any cask, bottle, stopper, vessel, case, cover, wrapper, band, reel, ticket, label, or other thing in, upon, about, or with which such chattel or article shall be so sold or uttered or exposed for sale or other purpose as aforesaid, shall for every such offence forfeit and pay to her Majesty a sum of money equal to the value of the chattel or article so sold, uttered, offered, or exposed for sale or other purpose as aforesaid, and a further sum not exceeding five pounds, and not less than ten shillings.
As to meaning of “person” and “trade mark,” see sect. I.
A vendor of an article with a trade mark is to be deemed to contract that the mark is genuine : sect. 19.
A plaintiff suing for a penalty may be compelled to give security for costs : sect. 24. But if he obtain judgment he will be entitled to an indemnity for all costs and charges incurred, unless the court order that costs of the ordinary amount only shall be allowed : sect. 17, but see also sect. 23.
The rights or civil remedies of a person aggrieved will not be affected by the fact that judgment has been obtained for the offence described in this section : sect. 11.
It is unnecessary in a proceeding under this section to prove an intention to defraud any particular person; sect. 12.
As to what amount of imitation constitutes forgery, see
Additions to and alterations of trade marks
5. Every addition to and every alteration of and also
every imitation of any trade mark which shall be made, made withe applied, or used with intent to defraud or to enable any treended for other person to defraud, or which shall cause a trade
mark with such alteration or addition, or shall cause such imitation of a trade mark to resemble any genuine trade mark so or in such manner as to be calculated or likely to deceive, shall be and be deemed to be a false, forged, and counterfeited trade mark within the meaning of this Act; and every act of making, applying, or otherwise using any such addition to or alteration of a trade mark or any such imitation of a trade mark as aforesaid done by any person with intent to defraud or to enable any other person to defraud, shall be and be deemed to be forging and counterfeiting a trade mark within the meaning of this Act.
Prior to this Act, the imitation of a trade mark might support an indictment for obtaining money under false pretences, but not for forgery : see notes to sect. 1, and R. v. Closs, C. C. R. 1857, D. & B. 460 ; 7 Cox 494 ; 27 L. J. M. C. 54; 3 Jur. N. S. 309; and R. v. Smith, C. C. R. 1858, D. & B. 566 ; 8 Cox 32 ; 27 L. J. M. C. 225; 4 Jur. N. S. 1003 ; 31 L. T. 135 ; 6 W. R. 495.
It is unnecessary in a proceeding under this Act to prove that the accused intended to defraud any particular person ; it is sufficient to prove that he did the act charged with intent to defraud, or to enable some other person to defraud, or that any other person might be enabled to defraud : sect. 12.
A comparison may be made between the definition of forgery contained in this section and the rule in regard to imitation
adopted in the courts of equity. To secure protection it is Sect. 6. enough to show that a trade mark has been taken ; and “a trade mark to be taken need not be exactly copied ; it need not be
; copied even with slight variations; but it must be a substantial portion of the trade mark ; it has sometimes been called the material portion, but that means the same thing :" per Jessel, M.R., in Singer Manufacturing Co. v. Wilson, 1875, 2 Ch. D. 434; 45 L. J. Ch. 490; 34 L. T. N. S. 858 ; 24 W. R. 1023. As to what is an essential particular, see Act of 1883, sect. 64.
In short, the test of the degree of imitation which will amount to forgery, or to infringement, as the case may be, is the probability of deception. As to what has been held “calculated to deceive," see Ransome v. Benthall, Shadwell, V.-C., 1833, 3 L. J. Ch. 161 ; Crawshay v. Thompson, C. P. 1842, 4 Man. & G. 357 ; 5 Scott N. R. 562 ; 11 L. J. C. P. 301 ; Spottiswoode v. Clarke, Cottenham, L.C., 1846, 2 Ph. 154 ; 1 Coop. 254; 10 Jur. 1043 ; Welch v. Knott, Wood, V.-C., 1857, 4 K. & J. 747 ; 4 Jur. N. S. 330 ; Woollam v. Ratcliff, Wood, V.-C., 1863, 1 H. & M. 259; Browne v. Freeman, Wood, V.-C., 1864, 12 W. R. 305 ; Blackwell v. Crabb, Wood, V.-C., 1867, 36 L. J. Ch. 504; Cope v. Evans, Hall, V.-C., 1874, L. R. 18 Eq. 138 ; 30 L. T. N. S. 292 ; 22 W. R. 453.
A similar test is adopted in deciding as to the similarity of trade marks, sought to be registered under the Act of 1883, to trade marks already on the register : see Act of 1883, sect. 72, and notes thereto, post.
6. Where any person who, at any time after the Any person thirty-first day of December one thousand eight hundred 31st Decemand sixty-three, shall have sold, uttered, or exposed for shall have sale or other purpose as aforesaid, or shall have caused cle having a or procured to be sold, uttered, or exposed for sale or bound to other purpose as aforesaid, any chattel or article, together information
, with any forged or counterfeited trade mark, or together procured it. with the trade mark of any other person used without lawful authority or excuse as aforesaid, and that
false trade mark, be
SECT. 6. whether any such trade mark, or such forged or
counterfeited trade mark as aforesaid, be in, upon, about, or with such chattel or article, or in, upon, about, or with any cask, bottle, stopper, vessel, case, cover, wrapper, band, reel, ticket, label, or other thing in, upon, about, or with which such chattel or article shall have been sold or exposed for sale, such person shall be bound, upon demand in writing delivered to him or left for him at his last known dwelling-house or at the place of sale or exposure for sale by or on the behalf of any person whose trade mark shall have been so forged or counterfeited or used without lawful authority or excuse as aforesaid, to give to the person requiring the same, or his attorney or agent, within forty-eight hours after such demand, full information in writing of the name and address of the person from whom he shall have purchased or obtained such chattel or article, and
of the time when he obtained the same; and it shall be justices to
lawful for any justice of the peace, on information on parties refusing to oath of such demand and refusal, to summon before him give infor
the party refusing, and on being satisfied that such demand ought to be complied with, to order such information to be given within a certain time to be appointed by him; and any such party who shall
refuse or neglect to comply with such order shall for for every such offence forfeit and pay to her Majesty the Penalty for refusal, £5. sum of five pounds, and such refusal or neglect shall be
prima facie evidence that the person so refusing or neglecting had full knowledge that the trade mark,
together with which such chattel or article was sold, Sect. 7. uttered, or exposed for sale or other purpose as aforesaid, at the time of such selling, uttering, or exposing, was a forged, counterfeited, and false trade mark, or was the trade mark of a person which had been used without lawful authority or excuse, as the case may be.
As to nieaning of “person” and “trade mark," see sect. 1 ; and as to what constitutes a forged or counterfeited trade mark, see sect. 5.
As to recovery of penalties, see sects. 15 and 16. The vendor of an article with a forged trade mark himself commits an offence : sect. 4. And even where there is no intent to defraud, he is deemed to give a warranty that the trade mark is genuine :
A person suing for a penalty may be compelled to give security for costs : sect. 24. But if he succeed, he will be, as 'a rule, entitled to a full indemnity for all costs and charges incurred for the purposes
of the action : sect. 17.
value of the
7. Every person who, with intent to defraud or to Marking enable another to defraud, shall put or cause or procure indication of
quantity, to be put upon any chattel or article, or upon any cask, &c., upon an bottle, stopper, vessel, case, cover, wrapper, band, reel, intent to deticket, label, or other thing, together with which any equal to the chattel or article shall be intended to be or shall be article and sold or uttered or exposed for sale, or for any purpose of sum not extrade or manufacture, or upon any case, frame, or other and not less thing in or by means of which any chattel or article shall be intended to be or shall be exposed for sale, any false description, statement, or other indication of or respecting the number, quantity, measure, or weight of