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SECT. 66. (d.) statements of quality, or (e.) statements of names of
places, seeks to register such trade marks, they may be registered as a series in one registration. A series of trade marks shall be assignable and transmissible only as a whole, but for all other purposes each of the trade marks composing a series shall be deemed and treated as registered separately.
As to the representations to be furnished of a series of trade marks see Rule 14, and as to mode of advertising see Rule 28: see Instruction 18. The Act of 1875, contained no provision corresponding to this, but the mode, known as representative registration, here defined, was occasionally adopted.
Illustrative Cases.—(i.) Where a firm of iron manufacturers had been in the habit of using as trade marks the letters “B. B. H.,” which were the initials of the firm, and also the same marks coupled with symbols or words common to the trade denoting the quality of the iron, it was decided on appeal that the proper mode of registration was to register the trade mark B. B. H. “to be used either alone or with any device or words signifying the quality of the iron: " In re Barrows' Trade Marks, Malins, V.-C., 1877, 5 Ch. D. 353; 46 L. J. Ch. 450; 36 L. T. N. S. 291; 25 W. R. 407; and C. A. 1877, 5 Ch. D. 364; 46 L. J. Ch. 725; 36 L. T. N. S. 780; 25 W. R. 564.
(ii.) Where an attempt was made to obtain separate registration of a number of marks in all of which the essential particulars consisted of a goat's head and the name "Brook's," it was held that such a series was not entitled to separate registration, but only to representative registration: In re Brook's Trade Mark, Hall, V.-C., 1878, 26 W. R. 791.
Material particular probably means the same as the term "essential particular" in sect. 64 (1), i.e., that which makes the mark capable of registration under the Act, and which is unalterable under sect. 92, even by leave of the court. Just as under sect. 64 there may be registered any letters, words, or figures in addition to the essential particular in the case of a single mark, so in the case of a series there may be registered
the essential particular, as for instance "B. B. H." in Re Barrows' SECT. 67. Trade Mark, supra, with (a.) the statement of the goods on which it is used, e.g., "B. B. H. Plating; " or (b.) statements of numbers, e.g., a goat's head and the name Brook's, in Re Brook's Trade Mark, supra, followed by various numerals denoting quality; or (c.) statements of price, e.g., In re Steedman's Trade Mark, L. J. N. of C. 1883, p. 83; (d.) statements of quality, e.g., "B. B. H. Special Best, Best;" or (e.) statements of names of places, e.g., “ B. B. H. Bloomfield."
It seems doubtful whether under this section an additional device, common to the trade, as the Crown and Horse-shoe in In re Barrows' Trade Mark, can be registered in connection with a distinctive mark, unless the combination was in use as a trade mark before August 1875: see sect. 74, which seems to place some limitation on the practice of allowing the registration of common marks as additions to trade marks, subject to a disclaimer being entered of the portion common to the trade: see too In re Kuhn & Co.'s Trade Mark, Jessel, M.R., 1878, 53 L. J. Ch. 238.
67. A trade mark may be registered in any colour, Trade marks and such registration shall (subject to the provisions registered in of this Act) confer on the registered owner the exclusive right to use the same in that or any other colour.
Under the Act of 1875 no regard was had to the colour of trade marks owing to the difficulties of advertisement: see In re Robinson's Trade Mark, Jessel, M.R., 1880, 29 W. R. 31.
Consequently, in deciding the question of piracy the colour of the marks was not taken into account, but the only test adopted was a comparison of the uncoloured diagrams: Nuthall v. Vining, C. A. 1880, 28 W. R. 330.
Since under the Act of 1875 a trade mark was registered only in black, and might thereafter be printed in any colour, the registration of a mark, which if printed in a colour similar to that used in the case of a trade mark already on the register would be liable to deceive, was refused: In re Worthington &
SECT. 67. Co.'s Trade Mark, C. A. 1879, 14 Ch. D. 8; 49 L. J. Ch. 646; 42 L. T. N. S. 563; 28 W. R. 747.
It should be remembered that the principles according to which the court acts in preventing a man passing off his goods as those of another have not been altered by the Registration Acts, and that a question of piracy cannot be disposed of by simple inspection of the trade marks without inquiring whether, according to the understanding of the trade, the resemblance is such as to be likely to cause deception: Mitchell v. Henry, C. A. 1880, 15 Ch. D. 181; 43 L. T. N. S. 186.
As a consequence of this rule great weight will always be given to the opinion of the committee of experts at Manchester, which, though not a judicial tribunal, is appointed to give an opinion on technical matters peculiarly within the knowledge of its members: 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.
By Rule 13 it is provided that in place of a representation the Comptroller may in exceptional cases deposit a specimen or copy of a trade mark at the Patent Office, and reference may be made to this copy or specimen in the advertisement: see Rule 25. This is to meet the case of coloured trade marks.
Under Rule 8 of the Rules under the Act of 1875 it was likewise the custom to allow the deposit of specimens of trade marks in the textile fabric classes in the majority of cases: see Mitchell v. Henry, and In re Robinson's Trade Mark, supra.
Consequently where the registered trade mark for textile fabrics was a silver rupee, it was held that a mark consisting of a gold mohur which had been so deposited under Rule 8 was not calculated to deceive, and was therefore registrable: In re Robinson's Trade Mark, supra.
Ornamental or coloured ground-work, such as tartans or checks, cannot be claimed as part of a mark unless such ground-work be included within the mark by some border or lines: see Instruction 29.
The general effect of the above section cannot be held very important. It enables manufacturers to register a trade mark in any colour, and places a mark so registered in exactly the same position as though it were registered in black. It does not render it incumbent upon the owner to use the mark coloured to
correspond with the deposited representation; nor does it affect SECT. 68. the rules whereby the courts are guided in forming decisions upon questions of piracy.
68. Every application for registration of a trade Advertisemark under this part of this Act shall, as soon as may be after its receipt, be advertised by the Comptroller.
As to advertisement of application, see Rules 25-28, and also Instructions 21-28.
Since the object of the prescribed advertisement is to give people an additional opportunity, besides looking at the register, of knowing what is going to be done (per Jessel, M.R., in Re Hyde's Trade Mark, 1878, 7 Ch. D. 724; 54 L. J. Ch. 395; 38 L. T. N. S. 777; 26 W. R. 625), the usual practice has been for the court, in reversing the Registrar's refusal to register, to order, not that the trade mark should be entered on the register, but that the Registrar should proceed with the application in the ordinary course: In re Meikle's Trade Mark, Hall, V.-C., 1876, 24 W. R. 1067. See also Orr-Ewing v. Registrar of Trade Marks, Hall, V.-C., 1878, 8 Ch. D. 793; 47 L. J. Ch. 180; 38 L. T. N. S. 313; 26 W. R. 259; and H. L. 1879, 4 App. Cas. 497; 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.
The same rule will doubtless be adhered to by the Board of Trade under sect. 62.
There is no obligation to see the advertisement, and if a person interested does not see it, he is in no worse position than he would have been before; he must merely use due diligence, when the fact comes to his knowledge, to remove the trade mark: In re Hyde's Trade Mark, supra. Consequently, when a common mark has been registered without opposition, its removal may be obtained by a person aggrieved within a reasonable time after the fact of its registration became known to him (ibid.)
This can be effected even after the expiration of five years from the date of registration, for it has been held that sect. 3 of the Act of 1875 (to which sect. 76 of this Act corresponds), making the registration of a trade mark prima facie evidence, and the continuance
SECT. 69. of the registration for five years conclusive evidence of the right of the registered proprietor to the exclusive use of that trade mark, does not control, and has no bearing upon the right of any one who holds himself aggrieved by improper registration to apply to the court for the removal of the trade mark alleged to have been improperly registered: In re Palmer's Trade Mark, C. A., 1882, 21 Ch. D. 47; 51 L. J. Ch. 673; 46 L. T. N. S. 787; In re Leonard & Ellis' Trade Mark, C. A., 1884, 26 Ch. D. 288; 53 L. J. Ch. 603; 32 W. R. 532; and 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; In re Wragg's Trade Mark, Pearson, J., 1885, 54 L. J. Ch. 391.
Opposition to registration.
As to rectification of the register, see sect. 90.
By sect. 63 it is provided that if registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the application shall be deemed to be abandoned.
The Comptroller is bound, unless, of course, prevented by the default of the applicant, to register the trade mark as soon as may be after the expiration of two months from the first advertisement of the application, if he considers the applicant entitled to registration: see Rule 30.
69. (1.) Any person may, within two months of the first advertisement of the application, give notice in duplicate at the Patent Office of opposition to registration of the trade mark, and the Comptroller shall send one copy of such notice to the applicant.
(2.) Within two months after receipt of such notice, or such further time as the Comptroller may allow, the applicant may send to the Comptroller a counter statement in duplicate of the grounds on which he relies for his application, and if he does not do so, shall be deemed to have abandoned his application.