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SECT. 7. Such chattel or article, or any part thereof, or of the place or country in which such chattel or article shall have been made, manufactured, or produced, or shall put or cause or procure to be put upon any such chattel or article, cask, bottle, stopper, vessel, case, cover, wrapper, band, reel, ticket, label, or thing as aforesaid, any word, letter, figure, signature, or mark for the purpose of falsely indicating such chattel or article, or the mode of manufacturing or producing the same, or the ornamentation, shape, or configuration thereof, to be the subject of any existing patent, privilege, or copyright, 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 or uttered or exposed for sale, and a further sum not exceeding five pounds and not less than ten shillings.
As to the meaning of " person see sect. I, and as to the recovery of penalties, see sects. 15 and 16.
A person suing for a penalty may be compelled to give security for costs sect. 24. If, however, he obtain judgment he will, as a rule, be entitled to a full indemnity in respect of such costs: sect. 17; see, however, sect. 23.
It is unnecessary in a proceeding under this section to prove an intent to defraud any particular person: sect. 12.
The recovery of the penalty for the offence here defined, will not affect the rights or civil remedies of the person injured:
A person selling an article, with a false description upon it, is liable in a penalty; sect. 8. And even if he does so in ignorance he is deemed to give a warranty that the description is true :
As to geographical names which may indicate a source of origin
or may be merely fancy names, by the use of which no deception SECT. 7. is conceivable, see notes to sect. 64 (3) of the Act of 1883.
It is provided by the Customs Consolidation Act, 1876 (39 & 40 Vict., c. 36), sect. 153, that "if any articles of foreign manufacture, and any packages of such articles, bearing any names, brands, or marks, being or purporting to be the names, brands, or marks of manufacturers resident in the United Kingdom, shall be imported into any of the British possessions abroad, the same shall be forfeited."
And by sect. 42 it is enacted that clocks and watches, or any other article of metal, impressed with any mark or stamp, representing, or in imitation of any legal British assay, mark, or stamp, or purporting, by any mark or appearance, to be of the manufacture of the United Kingdom, if imported into the United Kingdom, shall be forfeited, destroyed, or otherwise disposed of. By an amending Act-the Revenue Act, 1883 (46 & 47 Vict., c. 55), sect. 2—it is provided that the following enactments shall have effect as if they were contained in the above sect. 42:
1. (a.) Articles of foreign manufacture not imported by or for, but bearing the name and address, or name and trade mark, of a manufacturer of such articles resident or having a place of business in the United Kingdom.
"(b.) Articles of foreign manufacture bearing, either alone or in conjunction with other names or words, the name of a part of, or place in the United Kingdom, which name has, in the opinion of the Commissioners of Customs, been placed upon such articles to impart to them a special character of British manufacture.
66 2. The proprietary right of a manufacturer in any name or mark on any articles of foreign manufacture shall be proved or evidenced in such manner and upon such conditions as the Commissioners of Customs shall prescribe.
"3. Articles bearing the name of a place which would render them subject to prohibition under this section shall not be admissible by reason of there being another place of the same, name out of the United Kingdom.
"4. Names, addresses, and marks on boxes, cases, cards, or other things in which, or attached to which, articles of foreign manufacture are imported, shall be deemed to be borne by the articles themselves.
"5. The Commissioners of Customs in administering this section, whether in the exercise of any discretion or opinion or otherwise, shall act under the control of the Commissioners of Her Majesty's Treasury.
"6. In this section the word 'name,' as applied to a manufacturer, shall include any abbreviation or imitation of a name, and the word 'manufacturer' shall include a dealer, and a manufacturing or trading company, having a place of business in the United Kingdom.”
Misrepresentation.-Prior to the passing of this Act misrepresentations, such as are indicated in this section, were sufficient to disentitle the owner of a mark to the protection of the court: Pidding v. How, Shadwell, V.-C., 1837, 8 Sim. 477; 6 L. J. Ch. 345; Perry v. Truefitt, Langdale, M.R., 1842, 6 Beav. 66; I L. T. 384; Leather Cloth Co. v. American Leather Cloth Co., H. L. 1865, 11 H. L. C. 525; 35 L. J. Ch. 53; 11 Jur. N. S. 513; 12 L. T. N. S. 742; 13 W. R. 873; and see notes to sect. 73 of the Act of 1883.
The question has most frequently arisen in regard to the use of the word "patent" or "patented." The general rule is that (1.) if the article has never been the subject of a patent the use of the word will disentitle to protection: Flavel v. Harrison, Wood, V.-C., 1853, 10 Hare 467; 22 L. J. Ch. 866; 17 Jur. 368; 1 W. R. 213; Morgan v. M'Adam, Wood, V.-C., 1866, 36 L. J. Ch. 228; 15 L. T. N. S. 348; Leather Cloth Co. v. Lorsent, James, V.-C., 1869, 9 Eq. 345; 39 L. J. Ch. 86; 21 L. T. N. S. 661; 18 W. R. 572; Lamplough v. Balmer, Wood, V.-C., 1867, W. N., p. 293; Nixey v. Roffey, Malins, V.-C., 1870, W. N., p. 227; but that (2.) if the article has been the subject of a patent which has expired, the use of the word will disentitle to protection only when the user is of such a nature as to imply that the patent is still subsisting: Leather Cloth Co. v. American Leather Cloth Co., ubi supra; Cheavin v. Walker, C. A. 1877, 5 Ch. D. 850; 46 L. J. Ch. 686; 36 L. T. N. S. 938.
There will naturally be no false representation of the existence of a patent, when by the usage of many years the word "patent" has become a mere designation of the goods: Edelsten v. Vick, Wood, V.-C., 1853, 11 Hare 78; 18 Jur. 7; Marshall v. Ross, James, V.-C., 1869, L. R. 8 Eq. 651; 39 L. J. Ch. 225;
21 L. T. N. S. 260; 17 W. R. 1086; and see Sykes v. Sykes, SECT. 8. K. B. 1824, 3 B. & C. 541 ; 5 D. & R. 292; 3 L. J. K. B. 46; and Cheavin v. Walker, ubi supra. It will be observed that similar principles to those enunciated above are followed in this Act; ie., by the insertion of the word "existing" and the proviso in sect. 9, post.
It is provided by the Act of 1883, sect. 105, that any person who represents that any article sold by him is a patented article when no patent has been granted for the same, or describes any design or trade mark applied to any article sold by him as registered which is not so, shall be liable to a fine not exceeding five pounds.
The words "Registered," "Registered Design," "Copyright," "Entered at Stationers' Hall," "To counterfeit this is forgery," will not in any case be registered under the last-named Act: see Instructions, 30, post.
Sect. 73 of the Act of 1883 contains also an absolute prohibition against the registration as part of or in combination with a trade mark of any words the exclusive use of which would by reason of their being calculated to deceive be deemed disentitled to protection in a court of justice.
As to false representations that medals or certificates have been awarded in respect of any articles by the Exhibition Commissioners of 1851 or 1862, see the Exhibition Medals Act, 1863, (26 & 27 Vict., c. 119).
As to registered designs and the mark thereon indicating that they are the subject of copyright, see notes under heading “Designs” to sect. I.
A trade mark owner who is himself guilty of misrepresentation cannot take advantage of the facilities conferred by this Act: Morgan v. M'Adam, Wood, V.-C., 1866, 36 L. J. Ch. 228; 15 L. T. N. S. 348.
8. Every person who, after the thirty-first of December one thousand eight hundred and sixty-three, shall sell,
utter, or expose for sale or for any purpose of trade or
Selling or exposing for sale after the 31st December 1863
manufacture, or shall cause or procure to be sold, uttered, false state
or exposed for sale or other purpose as aforesaid, any chattel or article upon which shall have been, to his 3., penalty knowledge, put, or upon any cask, bottle, stopper, vessel,
than £5 or
less than 58. case, cover, wrapper, band, reel, ticket, label, or other thing, together with which such chattel or article shall be sold or uttered or exposed for sale or other purpose as aforesaid, shall have been so put, or upon any case, frame, or other thing used or employed to expose or exhibit such chattel or article for sale shall have been so put, any false description, statement, or other indication of or respecting the number, quantity, measure, or weight of such chattel or article or any part thereof, or the place or country in which such chattel or article. shall have been made, manufactured, or produced, shall for every such offence forfeit and pay to her Majesty a sum not exceeding five pounds and not less than five shillings,
As to the meaning of ". person,' see sect. I; and as to the recovery of penalties, see sects. 15 and 16.
A person suing for a penalty may be compelled to give security for costs sect. 24. But if he succeed in obtaining judgment he will ordinarily be entitled to a full indemnity in respect of all costs incurred: sect. 17, and compare sect. 23.
In a proceeding under this section, intent to defraud any particular person need not be proved, but fraudulent knowledge must be shown: sect. 12.
A vendor selling, even in ignorance, an article with such a description upon it as is defined in this section, impliedly contracts that the description is true: sect. 20.
The civil remedies of any person injured will not be affected by the recovery of penalties under this section: sect. 11. This section is subject to the proviso in sect. 9.