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THE PATENTS, DESIGNS, AND TRADE
MARKS ACT, 1883.
46 & 47 VICT., c. 57.
An Act to Amend and Consolidate the Law relating to Patents for Inventions, Registration of Designs, and of Trade Marks.
[25th August 1883.]
BE it enacted by the Queen's most excellent Majesty, by and with the advice and consent of the Lords Spiritual and Temporal, and Commons, in this present Parliament assembled, and by the authority of the same, as follows:
1. This Act may be cited as the Patents, Designs, and Trade Marks Act, 1883.
PATENTS, DESIGNS, &c., ACT, 1883.
2. This Act is divided into parts, as follows:
SECTS. 2, 3,
Division of Act into parts.
ment of Act.
3. This Act, except where it is otherwise expressed, Commenceshall commence from and immediately after the thirtyfirst day of December one thousand eight hundred and eighty-three.
Registration of Trade Marks.
62. (1.) The Comptroller may, on application by or Application on behalf of any person claiming to be the proprietor tration. of a trade mark, register the trade mark.
(2.) The application must be made in the form set forth in the first schedule to this Act, or in such other form as may be from time to time prescribed, and must be left at, or sent by post to, the Patent Office in the prescribed manner.
(3.) The application must be accompanied by the prescribed number of representations of the trade mark, and must state the particular goods or classes
SECT. 62. of goods in connection with which the applicant desires the trade mark to be registered.
(4.) The Comptroller may, if he thinks fit, refuse to register a trade mark, but any such refusal shall be subject to appeal to the Board of Trade, who shall, if required, hear the applicant and the Comptroller, and may make an order determining whether, and subject to what conditions, if any, registration is to be permitted.
(5.) The Board of Trade may, however, if it appears expedient, refer the appeal to the court; and in that event the court shall have jurisdiction to hear and determine the appeal, and may make such order as aforesaid.
The Comptroller is the Comptroller-General of Patents, Designs, and Trade Marks: sect. 117; as to his position, see sect. 82.
Mode of Application: see Rules 7-13, and Instructions 1-3 and 8-17. The application may, if made by a firm, be signed by one or more members of the firm, and if made by a body corporate, it may be signed by the secretary or other principal officer: Rule 7, Form F, and Instruction II. In any case the application may be made by an agent duly authorised to the satisfaction of the Comptroller: Rule 8, Form F, and Instruction 12. As to purchase of Forms, see Instructions 2 and 3. The fee payable upon application is 5s.: First Schedule to Rules.
Cutlery.-Applications for the registration of trade marks used on cutlery, edge-tools, or on raw steel, or on goods made of steel, or of steel and iron combined, if made by a person carrying on business in Hallamshire, or within six miles thereof, are to be made to the Cutlers' Company: sect. 81 (3), Rules 53-56, and Instruction 37; the mark is to be registered in the Sheffield Registry, and the registration thereof is to be notified to the
Comptroller, who is also to enter the mark in the Register of SECT. 62. Trade Marks: sect. 81 (6). As to the Register of Trade Marks, see sect. 78.
Person includes a body corporate: sect. 117, and see Rule 7. By Rule 5 of the Rules under the Act of 1875, it was expressly provided that an alien as well as a British subject could make application for the registration of a trade mark, but not, apparently, if he were not using it in his business in Great Britain: see In re Riviere's Trade Mark, C. A. 1884, 26 Ch. D. 48; 53 L. J. Ch. 578; 32 W. R. 390; and In re Leonard and Ellis' Trade Mark, C. A. 1884, 26 Ch. D. 288; 53 L. J. Ch. 603; 32 W. R. 532. As to the practice before 1875, see Merchandise Marks Act, 1862, sect. 1, and the cases cited in the notes thereto. The term "person" in this section also seems to be intended to include an alien: see sect. 103 (3). Provided he is using the mark as a trade mark in Great Britain (see In re Leonard and Ellis' Trade Mark, supra), he would be " a person claiming to be a proprietor" thereof within the meaning of the cases cited in the notes to sect. I of the Merchandise Marks Act, 1862 (and see notes infra), and would consequently be entitled to apply for registration under this section. If, however, there has been no user of the trade mark in Great Britain, the foreign owner can have acquired no right to it by common repute-cannot be said to claim property in it-and consequently he cannot apply for registration unless he is entitled to do so under sect. 103. If he be the member of a foreign state to which that section has been declared by Order in Council to be applicable, and if he has applied for registration in the "country of origin,” he may obtain registration under this Act: sect. 103 (3). If, further, he is a member of a foreign state with which her Majesty has made an arrangement for mutual protection of trade marks, and to which sect. 103 has been declared by Order in Council to be applicable, he will be entitled to registration under this Act in priority to other applicants: sect. 103 (1).
There seems to be no provision for the case of a member of a foreign state where there is no protection of trade marks, if he has not used his trade mark in this country; but it is presumed that, if there are any such states, sect. 103 will not be declared applicable to them.
Claiming to be the Proprietor.-By sect. 77, registration of a trade mark, capable of being registered under this Act or the Act of 1875, or refusal by the Comptroller to register any other trade mark in use before 13th August 1875, is made a condition precedent to proceedings to prevent or to recover damages for infringement. Registration, or the certificate of refusal, as the case may be, may be obtained at any time before action brought; and in the meantime property in the trade mark remains unaffected. The only way in which such property can be acquired is by legal user in this country, whereby proprietorship is acquired by common repute (see Merchandise Marks Act, sect. I, and notes thereto), or registration under the Act of 1875 or this Act, which is equivalent to public user: see sect. 75. A person therefore who claims to be a proprietor and who is yet unregistered, must be one who has acquired a property by user in this country, or else one who, having invented a new trade mark, seeks to acquire property in it by registration, which is equivalent to such user. As to the effect of registration, see sects. 75-77.
Trade Mark.-As to what is a trade mark generally, and as to acquisition thereof, see notes to Merchandise Marks Act, 1862, sect. I. As to what is a trade mark capable of registration under this Act, see sect. 64, post.
Registration.—If an applicant dies after the date of the application and before the trade mark applied for has been entered on the register, the trade mark may be entered for the successor to the goodwill of his business: Rule 31.
As to mode of registration, see Rules 30-33.
As to the restrictions placed on the Comptroller's authority, see sects. 72, 73, and 86, and Instructions 29-32.
The form set forth in the first schedule to the Act has been replaced by Form F in the second schedule to the Rules: see Rules 4 and 5.
Clerical errors in or in connection with the application for a trade mark may be corrected by the Comptroller: see sect. 91, and Form Q in second schedule to Rules.
As to mode of application, see Rules 7-16.