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SECT. 62. proceed under sect. 90 at once without a previous appeal to the
As to proceedings on appeal to Board, see Rules 20-24.
For form of appeal, see Form H.
Cases of class ii., i.e., of application for the alteration or removal of an entry on the register, are dealt with in sects. 90 and 92, and the application to the court will presumably be by summons, or more usually by motion as heretofore: see cases cited above. Cases of class iii., i.e., of opposition by a trade mark owner to an application for the registration of a mark so similar to his own as to be calculated to deceive, are provided for by sect. 69 and Rule 29. It will be noticed that the summons by the opponent for directions is abolished, and the procedure will now be for the applicant for registration to take out a summons in chambers. This is substantially the course recommended in Re Simpson, Davies & Son's Trade Mark, supra.
Cases of class iv., i.e., of conflicting claims for registration of the same trade mark, are treated in sect. 71 and Rule 42, where it is provided that the procedure shall be by special case unless the court otherwise order. This is possibly the most convenient mode: Ex parte Grimshaw, supra, but see In re Salamon and In re Simpson, Davies & Son's Trade Mark, supra.
There are no express provisions in the Act as to costs of proceedings before the Comptroller or the Board.
Under the Act of 1875 it was held that the costs of an appeal from the refusal of the Comptroller to register a trade mark had to be paid by the applicant although the appeal was successful : 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 Maignen's Application, Jessel, M.R., 1880, 28 W. R. 759.
The stamp on the form of appeal to the Board is £1: see first schedule to the Rules.
In an appeal from the Comptroller's refusal to register under this section, the only order which it is competent for the Board or the court to make, is apparently that the application be proceeded with in the ordinary course, subject to such conditions, if any, as may be prescribed; neither the Board nor the court is authorised to dispense with the usual formalities prescribed by statute and to order immediate registration: In re Meikle's Trade
Mark, Hall, V.-C., 1876, 24 W. R. 1067; Orr-Ewing v. Registrar SECT. 62. of Trade Marks, Hall, V.-C., 1878, 8 Ch. D. 798; 47 L. J. Ch. 180; 38 L. T. N. S. 313; 26 W. R. 259; and H. L. 1879, 4 App. Cas. 479; 48 L. J. Ch. 707; 41 L. T. N. S. 239; 28 W. R. 17; Ex parte Lawrence Bros., Jessel, M.R., 1878, 44 L. T. N. S. 98; 29 W. R. 392; and see notes to sect. 68.
Conditions. Where application is made for the registration of a trade mark which is somewhat similar to one already on the register, and which would be liable to deceive if used in a similar way on similar goods, or in the same place, it may yet be registered subject to an undertaking being entered on the register restricting its use.
Illustrative cases.—(1.) Restriction as to mode of user:—
(i.) It appeared that "it is the custom with the bleaching trade to stamp the bleacher's mark in blue colour inside the first fold of each parcel of calico, which is then stitched up, the trade mark of the merchant or manufacturer being stamped upon the outside of the parcel. The bleacher's mark is looked for, not by the public, but by skilled wholesale buyers, who recognise in the mark a guarantee that the calico has been bleached by a particular house, and that the length of calico contained in the parcel has been measured by them. Thus these marks differ from ordinary trade marks, and convey a meaning only to skilled persons, who can readily distinguish between marks closely resembling one another." Registration was therefore granted of a mark resembling others on the register, subject to an undertaking to use it only in the way described above: In re Sykes & Co.'s Trade Mark, Hall, V.-C., 1880, 43 L. T. N. S. 626; 29 W. R. 235.
(ii.) A trade mark, which was not stamped upon the goods, but upon adhesive labels and metal labels soldered or otherwise fixed on the goods, or was printed upon the packages or coverings in which the goods were sold, was opposed by a manufacturer who had long impressed a similar mark on cutlery. It was, however, allowed to be registered upon an undertaking being given not to impress it upon metal goods: In re Whiteley's Trade Mark, Jessel, M.R., 1879, 43 L. T. N. S. 627; 29 W. R. 235; see also In re Farina, Hall, V.-C., 1879, Seb. Dig. 654.
(2.) Restriction as to goods, i.e., in respect of user upon only a
SECT. 62. limited portion of a class: see sect. 65 and Rule 6, and the third schedule there referred to; and see also sect. 72 as to the subdivision of classes.
(i.) An old trade mark was limited to use on galvanised iron only of all the goods contained in class 5 In re Lysaght, Jessel, M.R., 1878, Seb. Dig. No. 623.
(ii.) An old trade mark was registered for tin-plates and turnplates only, a similar mark being used by manufacturers of bariron: Ex parte Barrow, Jessel, M.R., 1877, W. N. 119.
(iii.) A new mark was limited to fencing wire only in class 5 as not interfering with the trade of the proprietor of a similar mark registered for other goods in that class: In re Jelley, Son, and Jones' Trade Mark, Jessel, M.R., 1878, 51 L. J. Ch. 639; 46 L. T. N. S. 381.
(iv.) A new mark was registered in respect of galvanised iron sheets in class 5, although a similar device was on the register in respect of "iron and all kinds of rolled, drawn, and galvanised wire and strand," and also "bar-iron, small rounds and squares, and all kinds of merchant iron": In re Braby & Co.'s Applications, North, J., 1882, 21 Ch. D. 223; 51 L. J. Ch. 637 ; 46 L. T. N. S. 380; 30 W. R. 675. See, however, In re Hargreaves' Trade Mark, Hall, V.-C., 1879, 11 Ch. D. 669; 27 W. R. 550. (3.) Restriction as to locality of user :
(i.) Two similar trade marks were registered for classes 12 and 13, upon cross undertakings being given and entered on the register,―by the one manufacturer not to use his mark in Europe, and by the other not to use his mark in certain specified colonies In re Rabone Bros. & Co., Jessel, M.R., 1879, Seb. Dig. No. 643.
(ii.) Where objections were raised by the owner of a registered trade mark to the proposed registration of another trade mark for use in connection with goods included in classes for which the first mark was used, but no formal opposition was lodged to the application in pursuance of an agreement of compromise, the court directed the comptroller, upon an ex parte application by the applicant, to enter on the register a note to the effect that the applicant undertook to use his mark only in connection with goods exported to certain specified countries: In re Keep's Trade Mark, Pearson, J., 1884, 26 Ch. D. 187; 50 L. T. N. S. 453; 32
W. R. 427. See also In re Mitchell's and Houghton and Hallmark's SECTS. 63, Trade Marks, Chitty, J., 1884, W. N. p. 217; 33 W. R. 148; and 1885, 28 Ch. D. 666; 33 W. R. 408.
It is presumable that under Rule 32 the Comptroller, without any application to the court, will henceforth be able to register trade marks subject to restrictions in regard to user, provided he does not transgress the rules contained in sect 72.
63. Where registration of a trade mark has not Limit of been or shall not be completed within twelve months proceeding with applifrom the date of the application, by reason of default cation. on the part of the applicant, the application shall be deemed to be abandoned.
This provision is founded on the Rules of 1883 under the Act of 1875.
The Comptroller is bound to register a trade mark as soon as may be after the expiration of two months from the date of the advertisement of the application, if he is satisfied that the applicant is entitled to registration. The registration is, however, subject to the subsequent determination of the court: Rule 30. If there is delay owing to the refusal of the Comptroller to register under sect. 62 or to opposition under sect. 69, it cannot be said to have occurred by reason of the default of the applicant, and there will be no abandonment.
64. (1.) For the purposes of this Act, a trade mark Conditions must consist of of contain at least one of the following tion of trade essential particulars:
(a.) A name of an individual or firm printed, impressed, or woven in some particular and
distinctive manner; or
(b.) A written signature or copy of a written
signature of the individual or firm applying for registration thereof as a trade mark; or (c.) A distinctive device, mark, brand, heading, label, ticket, or fancy word or words not in common
(2.) There may be added to any one or more of these particulars any letters, words, or figures, or combination of letters, words, or figures, or of any of them.
(3.) Provided that any special and distinctive word or words, letter, figure, or combination of letters or figures, or of letters and figures used as a trade mark before the thirteenth day of August one thousand eight hundred and seventy-five may be registered as a trade mark under this part of this Act.
This section is a re-enactment with alterations of sect. 10 of the Act of 1875, and should be read with sects. 72, 73, and 86; and see Instructions 29-32.
Trade marks may be regarded as divided into three classes,those actually in use before the passing of the Act of 1875, i.e., August 13, 1875, those registered under that Act, and those new trade marks which are sought to be registered under this Act. The first class may, as of course, be registered under this Act, provided the conditions of this section are fulfilled. The second class, having come within the definition contained in sect. 10 of the Act of 1875 and been registered thereunder, is to be deemed duly registered under this Act: see sect. 114 (2.) The third class, i.e., trade marks brought into use since 1875 and not yet registered, must come within the definition contained in subsect. I if registration is desired; in other words, if the registration is refused or opposed, it will be the duty of the court to ascertain whether some one or more of the essential particulars of a trade mark as defined by the Act is found to exist, so that the mark may be described with one or more than one essential particular or particulars which distinguish it: per Cairns, L.C.,