« PreviousContinue »
(3.) If the applicant sends such counter statement, SECT. 69. the Comptroller shall furnish a copy thereof to the person who gave notice of opposition, and shall require him to give security in such manner and to such amount as the Comptroller may require for such costs as may be awarded in respect of such opposition; and if such security is not given within fourteen days after such requirement was made or such further time as the Comptroller may allow, the opposition shall be deemed to be withdrawn.
(4.) If the person who gave notice of opposition duly gives such security as aforesaid, the Comptroller shall inform the applicant thereof in writing, and thereupon the case shall be deemed to stand for the determination of the court.
This section is substantially the same as Rule 16 of the Rules of 1876, as modified by Rule 15 of the Rules of 1883 made under the Act of 1875.
For notice of opposition see Form J, and as to counter statement and bond, see Instruction 33. The stamp on the notice of opposition is I see first schedule to Rules. The bond will bear the ordinary ad valorem duty: see Stamp Act, 1870, 33 & 34 Vict., c. 97, and note to sub-sect. (3), infra. No stamp is required on the counter statement.
Person includes a body corporate sect. 117. It is not necessary that a person opposing registration should himself be entitled to register the trade mark, or should be carrying on business in this country. Any one presumably who, being "aggrieved" within the meaning of sect. 90, can apply for the rectification of the register, can also oppose under this section an application to register: In re Riviere's Trade Mark, C. A. 1884, 26 Ch. D. 48 ; 53 L. J. Ch. 578; 32 W. R. 390. See also In re Heaton's Trade
SECT. 69. Mark, Kay, J., 1884, 27 Ch. D. 570; 53 L. J. Ch. 959; 51 L. T. N. S. 220; 32 W. R. 951; 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. This section does not deal with a case of opposition to the registration of a trade mark where the opponent also seeks registration of the identical trade mark; such a case is one of conflicting claim, and is provided for in sect. 71. But it includes all cases of opposition where the mark to which the application relates is similar to a mark of the opponent, whether registered, or only proposed to be registered.
By sect. 72 the Comptroller is prohibited from registering a trade mark so nearly resembling a trade mark already on the register as to be calculated to deceive.
If the opponent's mark is not registered, but registration is claimed at the time of opposition, an order will not be made for registration, in the event of the opposition being successful, but the opponent must make an application in the ordinary manner : see In re Meikle, Hall, V.-C., 1876, 24 W. R. 1067; and Ex parte Lawrence Bros., Jessel, M.R., 1878, 40 L. T. N. S. 98 ; 29 W. R. 392; and see notes to sect. 68.
For form of counter-statement, see Instruction 33. No stamp is apparently required.
For form of security, see Instruction 33. Before the applicant is required to bring an opposition matter before the court, he will be afforded an opportunity of objecting to the solvency of the security: Instruction 34.
The following are the ad valorem duties imposed by the Stamp Act, 1870, 33 & 34 Vict., c. 97.
Procedure.-Where a case stands for the determination of the court under this section, the Comptroller is to require the applicant for registration to issue a summons in the chambers of a judge for an order that, notwithstanding the opposition of which notice has been given, the registration be proceeded with by the Comptroller: see, as to the practice, Rule 29. This is approximately the old practice, which was for the Registrar to require the opponent to apply for a direction as to the mode of trial, whereupon the person seeking to register was usually directed to take out a summons which could be adjourned into court: In re Simpson, Davies & Sons' Trade Mark, Jessel, M.R., 1880, 15 Ch. D. 525; 42 L. T. N. S. 675 ; 28 W. R. 760.
The summons for directions is now abolished.
A motion for an injunction by the opponent was held to be irregular under the Act of 1875 (In re Simpson, Davies & Sons' Trade Mark, supra), although that course had been adopted in previous cases: see In re Worthington & Co.'s Trade Mark, Jessel, M.R., 1879, 14 Ch. D. 8 ; 49 L. J. Ch. 646; 42 L. T. N. S. 563 ; 28 W. R. 747; In re Farina, Hall, V.C., 1878, 26 W. R. 261; In re Farina, Hall, V.-C., 1879, 27 W. R. 456.
The practice was never consistent. In the following cases directions seem to have been sought by the opponent by motion and not by summons, and the directions given were (i.) motion: Ex parte King of Saxony, Hall, V.-C., 1878, Seb. Dig. No. 598, (ii.) summons taken out by the opponents: In re Paton, Jessel, M.R., 1878, Seb. Dig. No. 601, and not by the applicant as recommended in Re Simpson, Davies & Sons' Trade Mark, supra; and (iii.) an action, the question proving to be one of title to the mark: In re Salamon, Jessel, M.R., 1877, Seb. Dig. No. 569.
As to the notification of the order of the court to the Comptroller, see Rule 44.
When a registered owner does not desire the absolute rejection
SECT. 70. of an application, but is satisfied with the limitation of the user of the mark proposed to be registered, no formal notice of opposition is requisite under this section, but the court will give the Comptroller directions to add a note to the desired effect upon an ex parte application by the person desiring registration: In re Keep's Trade Mark, Pearson, J., 1884, 26 Ch. D. 187; 50 L. T. N. S. 453; 32 W. R. 427, and see Rule 32. And as to limited registration, see notes to sect. 62 (4).
Assignment and trans
Costs. The case stands for the determination of the court only 'when security for costs has been given, and consequently the court, in exercising the discretionary power given to it by the Rules of Court, 1883, Order lxv., as to costs "of and incident to all proceedings in the High Court," has only jurisdiction to order the payment of costs incurred subsequently to that time, and has no power to order the payment of the costs of previous proceedings: In re Brandreth's Trade Mark, Jessel, M.R., 1878, 9 Ch. D. 618; 47 L. J. Ch. 618; 27 W. R. 281. The words in sect. 90 authorising the court to make such order as to the costs of proceedings as it shall think fit, are presumably not intended to extend its jurisdiction to costs incurred in previous proceedings before the Comptroller. In regard to these latter there seems to be no provision in the Act.
An unsuccessful opponent will have to pay the costs even though the opposition is raised by a public body acting in the public interest: In re Rosing, C. A., 1878, Seb. Dig., No. 621. But no costs will be given if the application, being in respect of several classes, succeeds as to same and fails as to others; In re Rosing, supra, and In re Jelley, Son, & Jones' Trade Mark, Jessel, M.R., 1878, 51 L. J. Ch. 639: 46 L. T. N. S. 381.
In any case the costs of the Comptroller, if he appear, will have to be paid: In re Orr-Ewing's Trade Marks, Hall, V.-C., 1880, W. N., p. 24; and see 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, Jessel, M.R., 28 W. R. 759.
70. A trade mark, when registered, shall be assigned mission of and transmitted only in connection with the goodwill of the business concerned in the particular goods or
classes of goods for which it has been registered, and SECT. 70. shall be determinable with that goodwill.
This section is a re-enactment of a part of sect. 2 of the Act of 1875.
When a person becomes entitled to a registered trade mark by assignment or transmission he must apply to have his name inserted on the register: sects. 78 and 87, Rules 34-36, Form K, and Instructions 42.
The application must be accompanied by a statutory declaration verifying his title: Rule 37, and Form K. See Rule 58.
The fee for the registration of a subsequent proprietor is for the first mark £1, and for every additional mark assigned or transmitted at the same time 28.
The person for the time being on the register has full power to assign and deal with a trade mark sect. 87. But it is questionable whether the five years, affording conclusive evidence of title, will date from the registration of the trade mark rather than merely from the date of the registration of the assignment or transmission: sect. 76. By sect. 4 of the Act of 1875 it was provided that every person subsequently registered should stand in the same position as if his title were a continuation of the title of the first registered proprietor. A similar provision seems wanting in this Act.
The intimate connection between the trade marks and the goodwill of a business has long been recognised.
Illustrative Cases.-(i.) In a contract the words "goodwill," &c., were held to include "such other things as are necessarily connected with and belong to the goodwill," as, for instance, the trade marks: Cooper v. Hood, Romilly, M.R., 1858, 26 Beav. 293; 28 L. J. Ch. 212; 4 Jur. N. S. 1266; 32 L. T. 171; 7 W. R. 83. (ii.) It appears also that just as the firm name is a very important part of the goodwill of the business, so is it with a trade mark. Each proves that the articles to which it is affixed emanate from the firm Churton v. Douglas, Wood, V.-C., 1859, Johns. 174; 28 L. J. Ch. 841; 5 Jur. N. S. 887; 33 L. T. 57 ; 7 W. R. 365. (iii.) So the sale of a business includes the sale of the goodwill and trade marks without special mention: Shipwright v. Clements,