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"Prescribed" means prescribed by any of the schedules to the SECT. 62. Act, or by general rules made under the Act: see sect. 117.
As to the Patent Office, see sect. 82.
As to representations of trade marks, see Rules 13 and 14, and Forms F and G, and Instructions 13, 16, and 17.
Application may be made for registration of any goods in a class upon one form; but for each separate class a separate form is necessary: Form F, and Instruction 10.
As to the classification of goods, see sect. 65 and Rule 6 and the third schedule there referred to, and Instruction 20.
Discretionary Powers. -Before exercising adversely to the applicant a discretionary power like that here conferred, the Comptroller is bound to afford him an opportunity of being heard personally or by an agent, and to give him ten days' notice of an appointment for the purpose: sect. 94, and Rules 17-19.
It was provided by sect. 5 of the Act of 1875 that if the registrar refused to enter on the register, as proprietor of a trade mark, the name of any person who was for the time being entitled to the exclusive use of such trade mark in accordance with the above Act or otherwise in accordance with law, the person aggrieved might apply for an order of the court to rectify the register, and the court might either refuse the application, or, if satisfied of the justice of the case, make an order for the rectification of the register.
With regard to this discretionary power it was held that when the court was satisfied that the applicant was a person who was for the time being entitled to the exclusive use of a trade mark in accordance with law, and that the trade mark was one within the definition contained in the Act, the court was bound ex debito justitia to rectify the register, just as it would before the Act have been bound ex debito justitia on similar proof to prevent any one infringing the trade mark shown to be his property. The burden of proof lay upon the person making application to amend the register, but if he produced such proof as would in the
SECT. 62. opinion of the court entitle him to an injunction, the words "if satisfied of the justice of the case" did not give the court a discretion to consider whether the nature of the trade mark was such as to make it inconvenient that he should exercise the right of property which he was proved actually to have: per Lord Blackburn in Orr-Ewing v. Registrar of Trade Marks, H. L. 1879, 4 App. Cas. 479; 48 L. J. Ch. 707; 41 L. T. N. S. 239; 28 W. R. 17.
The words "if satisfied of the justice of the case are not present in the corresponding section of this Act, sect. 90, nor in other sections of the Act where discretionary powers are conferred. The rule above referred to as to discretionary powers will therefore doubtlessly continue in force.
Restrictions on Registration.-The Comptroller is absolutely prohibited from registering trade marks which come within sects. 72, 73, and 86: see also Instructions 29-32.
Old Procedure.-Under the Act of 1875 four cases of application to the court seem to have been contemplated:
(i.) An appeal by an applicant for registration from the mere refusal of the application by the registrar, where there was no extraneous opposition.
(ii.) An application to rectify the register by altering or expunging an entry, made either by the person registered or by extraneous parties, being aggrieved.
(iii.) An application by the owner of a trade mark opposing the registration of a mark so similar to his own as to be calculated to deceive
(iv.) Conflicting claims to the same trade mark, which more parties than one claimed to register.
The first two classes of cases were dealt with by Rule 43 under the Act of 1875, whereby the procedure authorised was "by motion or by application in chambers or in such other manner as the court may direct." An application by motion was the most common; thus in class i., Ex parte Stephens, Jessel, M.R., 1876, 24 W. R. 819 (where a motion was expressly directed as the proper procedure); 3 Ch. D. 659; 46 L. J. Ch. 46; 24 W. R. 963; In re Barrows' Trade Mark, 1877, Malins, V.-C., 5 Ch. D. 353; 46 L. J. Ch. 450; 36 L. T. N. S. 291 ; 25 W. R. 407; and C. A. 5 Ch. D. 364; 46 L. J. Ch. 725; 36 L. T. N. S. 780 ; 25 W. R. 564; In
re Walkden Aerated Water Co., Jessel, M.R., 1877, 54 L. J. Ch. SECT. 62.
In class ii. all the reported applications seem to have been by motion, either (1.) by the registered owner, Ex parte Sales, Pollard & Co., Jessel, M.R., 1878, Seb. Dig. No. 620; In re Lysaght, Jessel, M.R., 1878, Seb. Dig. No. 623; Ex parte Walker & Co., Malins, V.-C., 1878, Seb. Dig. No. 624; or (2.) by persons aggrieved by the mark being on the register, In re Hyde & Co.'s Trade Mark, Jessel, M.R., 1878, 7 Ch. D. 724 ; 54 L. J. Ch. 395; 38 L. T. N. S. 777; 26 W. R. 625; In re Mitchell's Trade Mark, Jessel, M.R., W. N. 1878, p. 101; Ex parte Lawrence & Co., Jessel, M.R., 1878, 44 L. T. N. S. 98; 29 W. R. 392; In 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; 50 L. T. N. S. 763; 32 W. R. 390; In re Wragg's Trade Mark, Pearson, J., 1885, 54 L. J. Ch. 391.
The above, however, was the only case in which persons, other than applicants for registration, could rightly proceed under Rule 43. In all other cases, i.e., in the cases coming within classes iii. and iv. above, "the Act and Rules do not give the opponent any power to take the initiative by restraining the registration; if he wants to get an injunction, he must commence an action in the usual way. The application to the court, which is referred to in Rule 44 (quære, this should be 43), is clearly an application by the persons seeking to register. The rule (ie., Rule 44) points out a special case as the mode in which such cases as the present are to be tried; but the parties never in practice agree to the facts,
SECT. 62, and the registrar is not a lawyer, so as to be able to decide between the rival representations of the parties. The usual and proper course is for the registrar to require the opponent to apply for a direction as to the mode of trial, upon which my usual practice is to direct the applicant who desires to be registered to take out a summons which is invariably adjourned into court. In one or two cases I have, I believe, directed a motion, but the usual course is to direct a summons: "" per Jessel, M.R., In re Simpson, Davies & Sons' Trade Mark, 1880, 5 Ch. D. 525; 42 L. T. N. S. 675; 28 W. R. 760.
Prior to this decision, however, we find the following cases coming within class iii., where a trade mark owner, opposing the registration of a mark so similar to his own as to be calculated to deceive, proceeded, without any summons for directions, under Rule 43, (1.) by motion, Ex parte Barrows, Jessel, M.R., 1877, W.N. 119; In re Farina's Trade Mark, Hall, V.-C., 1878, 26 W. R. 261; In re Sannion & Co., Jessel, M.R., 1878, Seb. Dig. No. 625; In re Farina's Trade Mark, Hall, V.-C., 1879, 27 W. R. 456; In re Worthington's Trade Mark, Jessel, M.R., 1879, and C.A., 1880, 14 Ch. D. 8; 49 L. J. Ch. 646; 42 L. T. N. S. 563 ; 28 W. R. 747; and (2.) by summons in chambers (in the following cases it does not appear by whom the summons was taken out, but no mention is made of any direction by the court); In re Jelley, Son, & Jones' Application, Jessel, M.R., 1878, 51 L. J. Ch. 639; 46 L. T. N. S. 381; In re Whiteley, Jessel, M.R., 1879, 43 L. T. N. S. 627; 29 W. R. 235.
In the following cases in class iii., i.e., of opposition by a trade mark owner, directions were sought on ex parte motions, not by summons, and it was directed that the case should be heard, (1.) on motion, Ex parte the King of Saxony, Hall, V.-C., 1878, Seb. Dig. No. 598; and (2.) on a summons taken out by the opponents (not by the applicants, as in Re Simpson, Davies & Son's Trade Mark), In re Puton, Jessel, M.R., 1878, Seb. Dig. No. 601.
There seems to be but one reported case of opposition by a trade mark owner to the registration of a trade mark so similar to his own as to be calculated to deceive, which was tried on a special case: Allsop v. Walker, Jessel, M.R., 1877, Seb. Dig. No. 545. There is also one case within class iv., i.e., of conflicting
claims to registration of the same trade mark where a special SECT. 62. case was directed: Ex parte Grimshaw, Hall, V.-C., 1877, W. N. 24.
In other cases within class iv., cross summonses by both claimants have been directed: In re Powell, Jessel, M.R., 1878, Seb. Dig. No. 589; In re Rabone Bros. & Co., Jessel, M.R., 1879, Seb. Dig. No. 643; and in one case an action was directed, the question being one of title to the marks: In re Salamon, Jessel, M.R., 1877, Seb. Deg., 569, where it was said, "I always direct that these cases should be mentioned to the court, that I may decide the proper way in which they are to come before the court; the way depends on the circumstances of each case. If it be a simple question of law, it had better be by special case; if for directions for carrying out the Act, by summons in chambers; if of disputed facts, by motion."
New Procedure.-Cases of class i., i.e., of refusal by the Comptroller of his own motion to register a trade mark, are dealt with by the above sect. 62. The appeal at any rate in the first instance should, it seems, be to the Board of Trade. The latter may refer the appeal to the court, if it appears expedient, and in the absence of express provision, this may possibly be effected by directing the applicant to proceed by motion or by summons in chambers under sect. 90, in analogy to the procedure under Rule 43 of the Rules under the Act of 1875: see the cases cited above. If, however, the Board hears the appeal and comes to a decision against the applicant, and yet refuses to refer the matter to the court, the remedy of the applicant is not very clear. If the words "omission without sufficient cause of the name of any person" in sect. 90 be taken to include the refusal by the Comptroller to register a trade mark (which from the context of that section, and from the fact that the Board's express power to refer an appeal would then be nugatory, is by no means apparent), then the applicant may proceed by motion or summons; but if the contrary view of the meaning of the words quoted above is adopted, then the appeal to the Board would appear to be final in the event of the Board refusing to refer it to the court.
If the words "omission without sufficient cause of the name of any person" be held to include the mere refusal to register a trade mark, a further question may arise whether an applicant canno