Orr-Ewing v. Registrar of Trade Marks, H. L. 1879, 4 App. Cas. SECT. 64. 484; 48 L. J. Ch. 707; 41 L. T. N. S. 239; 28 W. R. 17. An essential particular is that which makes the mark capable of being registered under the Act: see Instruction 7. It is unalterable, whilst the remainder of the mark may be altered under sect. 92. A mark which contains no essential particular and is therefore not authorised to be registered as a trade mark does not acquire under sect. 76 the character of a trade mark by being on the register for five years, and may be removed from the register though that period has elapsed. Re Palmer's Trade Mark, C. A. 1882, 21 Ch. D. 53; 51 L. J. Ch. 673; 46 L. T. N. S. 787, and C. A. 1883, 24 Ch. D. 504; 50 L. T. N. S. 30; 32 W. R. 306. See also Re Leonard and Ellis' Trade Mark, C. A. 1884; 26 Ch. D. 288; 53 L. J. Ch. 603; 32 W. R. 532; In re Ralph's Trade Mark, Pearson, J., 1883, 25 Ch. D. 194; 53 L. J. Ch. 188; 49 L. T. N. S. 504; 32 W. R. 168; In re Lloyd's Trade Mark, Chitty, J., 1884, 27 Ch. D. 646; 54 L. J. Ch. 66; and In re Wragg's Trade Mark, Pearson, J., 1885, 54 L. J. Ch. 391. As to what is a trade mark generally, see the notes to Merchandise Marks Act, 1862, sect. I; and as to the effect of registration under this Act see sects. 75-77, post. It should be noticed that this section does not purport to give an exhaustive definition of a trade mark. It merely enumerates certain attributes which are essential if it is sought to register a trade mark. To complete the definition of a trade mark properly so called it is necessary to remember that it must be affixed to or impressed upon a vendible article actually in the market: see judgment of Jessel, M.R., in Singer Manufacturing Co. v. Wilson, C. A. 1875, 2 Ch. D. 434; 45 L. J. Ch. 490; 34 L. T. N. S. 858; 24 W. R. 1023; and per Cairns, L.J., in Maxwell v. Hogg, C. A. 1867, L. R. 2 Ch. 307; 36 L. J. Ch. 433; 16 L. T. N. S. 130; 15 W. R. 467; and per Westbury, L.C., in M‘Andrew v. Bassett, 1864, 4 De G. J. & S. 380; 33 L. J. Ch. 566; 10 Jur. N. S. 550; 10 L. T. N. S. 442; 12 W. R. 777; and see notes to Merchandise Marks Act, 1862, sect. I. There is, then, no possibility of registering (i.) Such trade marks, properly so called, i.e., affixed to or E SECT. 64. impressed upon a vendible article, as do not fulfil the conditions of this section. (ii.) Such marks as are not affixed to or impressed on a vendible article, whether they fulfil the conditions in other respects of this section or not; as, for instance, some trade names which have become so appropriated by user as to denote goods of a particular manufacturer though they are not, and never were, impressed on the goods or upon the packages in which they are contained, so as to be trade marks properly so called and within this Act: per Lord Blackburn in Singer Manufacturing Co. v. Loog, H. L. 1882, 8 App. Cas. 33; 52 L. J. Ch. 481; 48 L. T. N. S. 3; 31 W. R. 325; and per Lord Cairns in Singer Manufacturing Co. v. Wilson, H. L. 1877, 3 App. Cas. 389; 47 L. J. Ch. 481; 38 L. T. N. S. 305; 26 W. R. 664. These, however, although unregistered, will be protected as heretofore (see for practice Merchandise Marks Act, 1862, sects. I, 21, and 22), for the principles according to which the court acts in preventing a man from passing off his goods as those of another have not been altered by this Act: Mitchell v. Henry, C. A. 1880, 15 Ch. D. 181; 43 L. T. N. S. 186, and see the cases cited above. (a.) Name.-This clause is a verbatim reprint from sect. 10 of the Act of 1875. Prior to the Registration Acts a name affixed to articles for sale was recognised as a trade mark, and a manufacturer or merchant could prevent others using it as a trade mark provided such user would be calculated to deceive purchasers. This would be likely to occur (i.) if a man bearing a different name, but carrying on a similar trade to that of a well-known manufacturer, adopted the latter's name for the purposes of his trade: Lazenby v. White, C. A. 1871, 41 L. J. Ch. 354; Ainsworth v. Walmsley, Wood, V.-C., 1866, 1 L. R. Eq. 518; 35 L. J. Ch. 352; 12 Jur. N. S. 205; 14 L. T. N. S. 220; 14 W. R. 363; and (ii.) if a man, who happened to bear the same name and to carry on the same trade as a well-known manufacturer, used his name in such a manner as to be a colourable imitation of the manner adopted by the latter; Holloway v. Holloway, Romilly, M.R., 1850, 13 Beav. 209; Burgess v. Burgess, C. A. 1853, 3 De G. M. & G. 896; 22 L. J. Ch. 675; 17 Jur. 292; 21 L. T. 53; Taylor v. Taylor, Wood, V.-C., 1854, 2 Eq. Rep. 290; 23 L. J. Ch. 255; 22 L. T. 271; James v. James, Romilly, M.R., 1872, 13 L. R. Eq. 421; 41 L. J. SECT. 64. Ch. 353; 26 L. T. N. S. 568; 20 W. R. 434. See also Rodgers v. Nowill, Wigram, V.-C., 1847, 6 Hare 325; and the proceedings in the Common Pleas there referred to. In regard to names which have ceased to be sufficiently distinctive to be good trade marks, see notes to sub-sect. 3, infra. "Where a person is selling goods under a particular name, and another person not having that name is using it, it may be presumed that he so uses it to represent the goods sold by himself as the goods of the person whose name he uses; but where the defendant sells goods under his own name, and it happens that the plaintiff has the same name, it does not follow that the defendant is selling his goods as the goods of the plaintiff. It is a question of evidence in each case whether there is false representation or not:" per Turner, L.J., in Burgess v. Burgess, supra. In short, the adoption of a name as a trade mark was subject always to this inconvenience, that if a Mr. Jones or a Mr. Brown relies on his name he will find it a very inadequate security, because there may be several other manufacturers of the same name:" per Wood, V.-C., in Ainsworth v. Walmsley, supra. 66 The words "printed, impressed, or woven in some particular and distinctive manner were doubtless inserted with the object of obviating this inconvenience. If the name be distinguished in the prescribed manner, imitation will be easily detected. See In re Price's Patent Candle Co., Pearson, J., 1884, 27 Ch. D. 681. The name need not necessarily be that of the actual manufacturer, for being a trade mark it is capable of assignment in connection with the goodwill of the business: see sect. 70. But see, as to names which may become deceptive, sect. 73. Fancy names, however, could not be registered under the Act of 1875 Ex parte Stephens, Jessel, M.R., 1876, 3 Ch. D. 659; 46 L. J. Ch. 46; 24 W. R. 963. They may henceforth be registered under clause c. of this section. A name printed in foreign characters will be sufficiently distinctive to be registered; In re Rotherham's Trade Mark, C. A. 1880, 14 Ch. D. 585 ; 49 L. J. Ch. 513; 43 L. T. N. S. 1. A trade name, as distinguished from a name used as a trade mark, inasmuch as it is not impressed upon goods or upon the SECT. 64. packages which contain them, is of course not capable of registra- (b.) Signature. This clause also comes from the Act of 1875, sect. 10, but the words "applying for registration thereof” are new. The motive of the addition is not very apparent; for the purchaser of the business of a manufacturer, who had used his signature as a trade mark, although unable to register it under this clause, could yet do so, it would seem, under clause a. Instances of signatures used as trade marks are to be found in Farina v. Silverlock, Cranworth, C., 1856, 6 De G. M. & G. 214; 26 L. J. Ch. 11; 2 Jur. N. S. 1008; 27 L. T. 277; 4 W. R. 731; In re Farina, Hall, V.-C., 1879, 27 W. R. 456; Massam v. Thorley's Cattle Food Co., Malins, V.-C., 1877, 6 Ch. D. 574; 46 L. J. Ch. 707; 36 L. T. N. S. 848; In re Maignen's Application, Jessel, M.R., 1880, 28 W. R. 759. (c.) The words "brand" and "fancy word or words not in common use" are new. Under sect. 10 of the Act of 1875, a mere combination of letters (such as "Aeilyton") not used as a trade mark before the passing of the Act, could not be registered: Ex parte Stephens, Jessel, M.R., 1876, 3 Ch. D. 659; 46 L. J. Ch. 46; 24 W. R. 963; see 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. This excluded fancy names, which, however, are now made capable of registration. Various limitations on this clause are contained in sects. 72, 73, and 86, and Instructions 29–32. As to what is a common mark, see sect. 72, and as to the registration of common marks in combination with trade marks provided the common part is disclaimed, see sect. 74. It will be noticed that a word will not be registered as a new mark unless it is "a fancy word not in common use," but if see sub used as a trade mark before August 13, 1875, any word will be SECT. 64 registered, provided only it is "special and distinctive : sect. 3. As to the meaning of distinctive, see notes infra, and sect. 72. The registration of a mark consisting of the words " Price's Patent Candle Company " in common letters round the upper border, and "National Sperm" in the centre, and the company's address round the lower border, was refused on the ground that the name of the firm printed in common letters was not distinctive, and that the words "National Sperm" were not "fancy words not in common use: "In re Price's Patent Candle Co., Pearson, J., 1884, 27 Ch. D. 681. When the name of an inventor has been declared by judicial decision to be a term open to the trade as a proper description of an article made in accordance with his original recipe, the portrait of the inventor is not a sufficiently distinctive device to be capable of registration alone: In re Anderson's Trade Mark, Chitty, J., 1884, 26 Ch. D. 409; 53 L. J. Ch. 664; 32 W. R. 677. The words "Zephyr Asiatic Walnut Pipe" are not capable of registration as a new trade mark, not being "fancy words not in common use:" In re Friedlander's Trade Mark, Chitty, J., 1885, W. N. p. 85. Where the words "Strathmore Blend" were registered as a trade mark for whisky, it was held that the word "blend" was not an essential part of the trade mark, being simply a description of an operation of manufacture, and that the use of the name "Strathmore," alone or in combination with a device, by another manufacturer was calculated to deceive: Blair v. Stock, Kay, J., 1884, 52 L. T. N. S. 123. (2.) Figures here mean numerals: Ex parte Stephens, supra. Words. If the essential particular is in combination with words, or combinations of words which are common to the trade, a disclaimer of the common portion should be entered on the register: see sect. 74, and as the meaning of "common," ibid. sub-sect. 3. When it is desired to register several trade marks which, while |