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SECT. 64. resembling each other in the "material" particulars thereof, yet differ in respect of the statement of the goods for which they are used, or statements of numbers, price, quality, or names of places, they should be registered as a series in one registration: see sect. 66.
There is an absolute prohibition in sect. 73 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, or otherwise, be disentitled to protection in a court of justice: see also sect. 86, and Instruction 30.
Letters may be registered alone as a trade mark if so used before August 1875: sub-sect. 3, infra; but in the case of new marks only in combination with an essential particular, as described in sub-sect. I.
For instances of trade marks composed of devices in conjunction with letters, see notes, infra.
The 13th August, 1875, was the date of the passing of the Act of 1875.
The sub-section is taken from sect. 10 of the Act of 1875, but is wider in scope, the words "letter, figure," and "of letters and figures" being now added.
As to what constituted a trade mark before the Act of 1875, see Merchandise Marks Act, 1862, sect. I.
If a trade mark in use before 13th August, 1875, fulfils the conditions of this section it must be registered before an action to prevent or to recover damages for its infringement can be brought: see sect. 77. But non-registration will not affect the owner's title.
If an old trade mark is not capable of registration, as not being within this section, a certificate of the Comptroller's refusal to register must be obtained before action: see sect. 77, Rule 57, Form L, and Instructions 39 and 40.
The certificate is admissible in evidence without further proof: see sect. 96.
The advantage accorded to an application for the registration of an old mark consists in the fact that the court will permit the
registration in respect of the same goods of similar or identical SECT. 64. old marks up to the number of three: see sect. 72 as to the three mark rule.
To obtain the registration of an old mark two things are essential: (i.) There must have been user in this country in connection with the goods in respect of which it is sought to register the trade mark, and (ii.) the trade mark must be distinctive.
User.-The application for registration must contain a statement of the time during which the trade mark has been used: Rule 10, and see Form F. But it would seem that, provided the trade mark has been used before 13th August 1875, the length of user is not material. Length of user was not previously necessary to entitle the proprietor to the protection of the court: see cases cited in notes to Merchandise Marks Act, 1862, sect. 1. And a proprietor is entitled to registration ex debito justitiæ, on giving such evidence as would formerly have entitled him to protection: see 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; and see Mitchell v. Henry, C. A., 1880, 15 Ch. D. 181; 43 L. T. N. S. 186; and In re Farina, Hall, V.-C., 1879, 27 W. R. 456.
User abroad is not sufficient to entitle a trade mark owner to registration: In re Leonard & Ellis' Trade Mark, C. A., 1884, 26 Ch. D. 288; 53 L. J. Ch. 603; 51 L. T. N. S. 35; In re Munch's Application, Chitty, J., 1883, 50 L. T. N. S. 12; 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.
There is, however, no necessity that the person claiming to be the proprietor should be a British subject: see notes to sect. 62 (1), and to Merchandise Marks Act, 1862, sect. I; and see In re Riviere's Trade Mark, ubi supra, and Mouson v. Boehm, Chitty, J., 1884, 26 Ch. D. 398; 53 L. J. Ch. 932; 50 L. T. N. S. 784; 32 W. R. 612; and In re Heaton's Trade Mark, Kay, J., 1884, 27 Ch. D. 570; 53 L. J. Ch. 959; 51 L. T. N. S. 220; 32 W. R. 951.
A trade mark sought to be registered as an old mark must be exactly the same in every respect as the trade mark in which property by user is claimed; if any alteration has been made the application will be treated as an application for the registration of a new mark.
Illustrative Cases.—(i.) The registration of the words "braided fixed stars "" as a trade mark for matches was held bad, because prior to the passing of the Act of 1875 they had not been used. alone, but merely upon a label in conjunction with other words : In re Palmer's Trade Mark, C. A., 1883, 24 Ch. D. 504; 50 L. T. N. S. 30; 32 W. R. 306.
(ii.) So too the word "Valvoline was removed from the register because before 1875 it had been used not alone, but in conjunction with a device: In re Leonard v. Ellis' Trade Mark, C. A., 1884, 26 Ch. D. 288; 53 L. J. Ch. 603; 51 L. T. N. S. 35. A trade mark can also only be registered as an old mark in respect of the goods in connection with which it was used before 1875: In re Jelley, Son, & Jones, Jessel, M.R., 1878; 51 L. J. Ch. 639. If it is sought to obtain registration in respect of other goods also, the application will be treated as an application for the registration of a new mark.
Distinctive." The words 'special and distinctive' import the specialising of the make and manufacture of a particular maker from all other manufacturers, and distinguishing the manufacture of one person from the manufacture of all others :" per Fry, L.J., in In re Leonard & Ellis' Trade Mark, ubi supra.
Prior to the Registration Acts, distinctiveness was an essential quality in a good trade mark, and the same degree of distinctiveness which was formerly requisite to entitle to the protection of the court, will entitle the owner of a mark to registration, ex debito justitiæ: 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; and In re Farina, Hall, V.-C., 1879, 27 W. R. 456.
As to the degree of distinctiveness requisite, see sect. 72, whereby the Comptroller is prohibited from registering a mark so nearly resembling a mark already on the register as to be calculated to deceive; but as to "three mark rule," relating to old marks, see sect. 74.
Word or words may be not sufficiently distinctive, inasmuch as (i.) they are merely descriptive of the article to which they are attached, or of the business in connection with which they are used, or are of too general import to allow any one to monopolise them, or (ii.) though originally new names applied to newly
discovered articles, they have become merely descriptive in SECT. 64. process of time and by usage, or (iii.) though originally the names of the inventors of the articles to which they are attached, they have become merely descriptive of the articles in question in consequence of the expiration of patents, or the publication of secret processes.
(i.) Descriptive and General Terms.
(1.) Descriptive of the goods, as "Nourishing Stout" in Raggett v. Findlater, Malins, V.-C., 1873, L. R. 17 Eq. 29; 43 L. J. Ch. 64; 29 L. T. N. S. 448; 22 W. R. 53; "Pictorial Almanac,” in Spottiswoode v. Clarke, Cottenham, L.C., 1846, 2 Ph. 154; 10 Jur. 1043; 8 L. T. 230; "Porous Plasters," in Re Brandreth, Jessel, M.R., 1878, Seb. Dig. No. 626; "Golden Ointment," in Green v. Rooke, Wickens, V.-C., 1872, W. N., p. 49.
It has, however, been held that "Family Salve" in Reinhardt v. Spalding, Hall, V.-C., 1879, 49 L. J. Ch. 57; 28 W. R. 300; and "Kitchen Crystal Soap" in Eastman's Trade Mark, Bacon, V.-C., 1880, W. N., p. 128, are sufficiently distinctive to be registered as old marks.
(2.) Descriptive of the business, as "Colonial" in Colonial Life Assurance Co. v. Home and Colonial Assurance Co., Romilly, M.R., 1864, 33 Beav. 548; 33 L. J. Ch. 741; 10 Jur. N. S. 967; 10 L. T. N. S. 448; 12 W. R. 783; "London and Provincial" in London and Provincial Law Assurance Society v. London and Provincial Joint-Stock Life Assurance Company, Shadwell, V.-C., 1847, 17 L. J. Ch. 37; 11 Jur. 938; 10 L. T. 127; "Capital and Counties" in London & County Banking Co. v. Hampshire & North Wilts Bank, Jessel, M.R., 1878, Seb. Dig. No. 618; "Australian in Australian Mortgage Land & Finance Co. v. Australian & New Zealand Mortgage Co., C. A. 1880, W. N., p. 6.
The difficulty in these cases is, that while the business name of another cannot be appropriated, yet a man cannot give himself any monopoly in a name which merely describes the nature of the business or the locality of its operations: per James, L.J., ibid.
In the majority of cases, such descriptive names as the above are used rather as trade names than as trade marks, properly so called, but the principles in pursuance of which they are protected are closely analogous vide notes, supra.
As regards similarity in the names of companies registered under the Companies Act, 1862, see 25 & 26 Vict., c. 89, s. 20.
(3.) General terms, as "Prize Medal" in Batty v. Hill, Wood, V.-C., 1863, 1 H. & M. 264; 8 L. T. N. S. 791; 11 W. R. 745; "Royal" in In re Royal Baking Powder Co., C. A. 1880, W. N., p. 49; “Post Office Directory" in Kelly v. Byles, C. A. 1880, 13 Ch. D. 691; 49 L. J. Ch. 181; 42 L. T. N. S. 338 ; 28 W. R. 587; 'Chronicle,” as the name of a newspaper, in Cowen v. Hulton, C. A. 1882, 46 L. T. N. S. 897; "Patent" in Edelsten v. Vick, Wood, V.-C., 1853, 11 Hare 78; 18 Jur. 7, and in Marshall v. Ross, James, V.-C., 1869, 8 Eq. 651; 39 L. J. Ch. 225; 21 L. T. N. S. 260; 17 W. R. 1086. The words "Registered," "Registered Design," "Copyright," "Entered at Stationers' Hall," "To Counterfeit this is Forgery," will not be registered, and should not therefore be upon the representations of trade marks accompanying an application: Instruction 30; see also In re Meikle's Trade Mark, Hall, V.-C., 1876, 24 W. R. 1067.
(ii.) Names of Articles which have become descriptive.—“ Paraffin Oil" in Young v. Macrae, Wood, V.-C., 1862, 9 Jur. N. S. 322; "Chlorodyne" in Browne v. Freeman, Wood, V.-C., 1864, 12 W. R. 305; and C. A. 1873, W. N., p. 173; "Linoleum" in Linoleum Manufacturing Co. v. Nairn, Fry, J., 1878, 7 Ch. D. 834; 47 L. J. Ch. 430; 38 L. T. N. S. 448; 26 W. R. 463; "Macassar Oil" in Rowland v. Breidenbach, Romilly, M.R., Seb. Dig. No. 386; "Golden Ointment" in Green v. Rooke, Wickens, V.-C., 1872, W. N., p. 49; "Valvoline" and "Valvoleum" in Re Horsburgh, Jessel, M.R., 1878, 53 L. J. Ch. 237; 50 L. T. N. S. 23; 32 W. R. 530, and in Re Leonard & Ellis' Trade Mark, C. A. 1884, 26 Ch. D. 288; 53 L. J. Ch. 603; 51 L. T. N. S. 35; “Braided Fixed Stars" in Re Palmer's Trade Mark, C. A. 1883, 24 Ch. D. 504; 50 L. T. N. S. 30; 32 W. R. 306; "Home Washer" 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. The principles governing these cases is that if a person invents a process for making a new article, and at the same time invents a new name for describing such article, and the article comes to be known by that name only, he cannot, afterwards, when everybody is at liberty to make that article, claim a monopoly in the name: In re Leonard and Ellis' Trade Mark, supra.