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THE

MERCHANDISE MARKS ACT, 1862.

25 & 26 VICT., c. 88.

An Act to Amend the Law relating to the Fraudulent

Marking of Merchandise. [7th August 1862.]

WHEREAS it is expedient to amend the laws relating to the fraudulent marking of merchandise, and to the sale of merchandise falsely marked for the purpose of fraud : Be it therefore enacted by the Queen's most excellent Majesty, by and with the advice and consent of the Lords Spiritual and Temporal, and Commons, in this present Parliament assembled, and by the authority of the same, as follows:

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SECT. 1.

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1. In the construction of this Act the word “ person shall include any person, whether a subject of her ConstrucMajesty or not, and any body corporate or body of the words. like nature, whether constituted according to the law of this country or of any of her Majesty's colonies or

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Sect. 1. dominions, or according to the law of any foreign

country, and also any company, association, or society of persons, whether the members thereof be subjects of her Majesty or not, or some of such persons subjects of her Majesty and some of them not, and whether such body corporate, body of the like nature, company, association, or society be established or carry on business within her Majesty's dominions or elsewhere, or partly within her Majesty's dominions and partly elsewhere; the word “mark” shall include any name, signature, word, letter, device, emblem, figure, sign, seal, stamp, diagram, label, ticket, or other mark of any other description; and the expression “trade mark” shall include any and every such name, signature, word, letter, device, emblem, figure, sign, seal, stamp, diagram, label, ticket, or other mark as aforesaid lawfully used by any person to denote any chattel, or (in Scotland) any article of trade, manufacture, or merchandise, to be an article or thing of the manufacture, workmanship, production, or merchandise of such person, or to be an article or thing of any peculiar or particular description made or sold by such person, and shall also include any name, signature, word, letter, number, figure, mark, or sign which in pursuance of any statute or statutes for the time being in force relating to registered designs is to be put or placed upon or attached to any chattel or article during the existence or continuance of any copyright or other sole right acquired under the provisions of such statutes or any of them; the word

“misdemeanor" shall include crime and offence in SECT. I. Scotland; and the word "court" shall include any sheriff or sheriff substitute in Scotland.

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Person.—Prior to the passing of this Act, the court would give protection to an alien using a trade mark in his business in this country in the event of infringement. “I apprehend that every subject of every country, not being an alien enemy—and even to an alien enemy the court has extended relief in cases of fraudhas a right to apply to this court to have a fraudulent injury to his property arrested. And here the plaintiffs have the right, a right recognised, I imagine, everywhere in the world, or at least in every civilised community, of saying, “We being the manufacturers of certain goods, claim that another man shall not manufacture goods and put upon them our trade mark, and then pass them off as manufactured by us : per Wood, V.-C., in Collins Co. v. Cowen, 1857, 3 K. & J. 428; 3 Jur. N. S. 929; 29 L. T. 245; 30 L. T. 62 ; 5 W. R. 676.

Illustrative Cases. — (i.) An injunction was granted to an American company of edge-tool makers, restraining English manufacturers from imitating their stamp upon steel goods not made by them : Collins Co. v. Cowen, supra ; Collins Co. v. Brown, Wood, V.-C., 1857, 3 K. & J. 423 ; 3 Jur. N. S. 929 ; 30 L. T. 62 ; Collins Co. v. Reeves, Stuart, V.-C., 1858, 28 L. J. Ch. 56; 4 Jur. N. S. 865 ; 33 L. T. 1o1; 6 W. R. 717 ; Collins Co. v, Walker, Kindersley, V.-C., 1859, 7 W. R. 222.

(ii.) An injunction was granted to a French manufacturer, who sold his cotton in packets labelled with a cross and the letters "C. B.,” restraining an English maker from selling cotton, not the plaintiff's, as French cross embroidery cotton," or embroidery cotton," or cross cotton,” and from using a label consisting of an anchor and the letters “W. T. :" Cartier v. Westhead, Wood, V.-C., 1861, Seb. Dig. No. 199.

(ii.) A similar injunction to restrain the sale of cotton, labelled with a cross and the letters “ C. S.” instead of "C. B. :" Cartier v. Carlile, Romilly, M.R., 1862, 31 Beav. 292 ; 8 Jur. N. S. 183; see also Howe v. M'Kernan, Romilly, M.R., 1861, 30

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SECT. 1.

Beav. 547 ; and Farina v. Cathery, Wood, V.-C., 1867, Seb. Dig.

No. 275.

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Although in some of these cases actual fraud was either established or presumed, the ratio decidendi seems to have been in them all the mere fact that the plaintiff's right to the exclusive use of a trade mark had been infringed : see, as to this, notes under heading “Trade Mark," infra.

It will be noticed that the definition, contained in this section, of the "persons” who can take advantage of the Act, is very wide, and obviously includes aliens, whether carrying on business in Great Britain or not.

It is questionable, however, whether an alien owner of a trade mark who has not obtained a reputation for it by user in this country can claim any rights of property in it here: see In re Münch’s Application, Chitty, J., 1883, 50 L. T. N. S. 12; W. N. p. 170; In re Riviere's Trade Mark, C. A. 1884, 26 Ch. D. 48 ; 53 L. J. Ch. 578 ; 50 L. T. N. S. 763 ; 32 W. R. 390 ; In re Leonard and Ellis' Trade Mark, C. A. 1884, 26 Ch. D. 288 ; 53 L. J. Ch. 603; 51 L. T. N. S. 35; and see note on “ Acquisition of Trade Marks," infra.

By the Act of 1883, sect. 75, post, registration of a trade mark is made equivalent to public user. As to whether an alien not using his trade mark in Great Britain can register under the Act, and so secure the advantages attending registration, see Act of 1883, sections 62 and 103 ; and In re Münch's Application, In re Riviere's Trade Mark, and In re Leonard and Ellis' Trade Mark,

ubi supra.

Trade Mark.-Prior to the definition in this section no authoritative definition of a trade mark existed, but the principle of law in pursuance of which trade marks were protected was well established.

“ Originally the right to bring an action in respect of the improper use of a trade mark arose out of the common law right to bring an action for a false representation, which, of course, must be a false representation made fraudulently. It differed from an ordinary action for false representation in this respect, that the action for false representation is generally brought by the person to whom the false representation is made ; but in the case of the improper use of a trade mark the common law

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