SECT. 70. Malins, V.-C., 1871, 19 W. R. 599. See Levy v. Walker, C. A. 1879, 10 Ch. D. 436; 48 L. J. Ch. 273 ; 39 L. T. N. S. 656. See per Blackburn in Singer Manufacturing Co. v. Loog, H. L. 1882, 8 App. Cas. 33; 52 L. J. Ch. 481; 31 W. R. 325.

Conversely, as is specially provided in this section, a trade mark could never exist nor be transferred in gross, that is, independently of the business in which it had been used: Cotton v. Gillard, Jessel, M.R., 1874, 44 L. J. Ch. 90. See Ex parte Lawrence Bros., Jessel, M.R., 1878, 44 L. T. N. S. 98; 29 W. R. 392.

Determinable with that Goodwill.-By Rule 34 of the rules under the Act of 1875 (numbered 33 in the issue of 1883) the court was empowered to remove, upon the application of a person aggrieved, any trade mark from the register, on the ground that the registered proprietor was not engaged in any business concerned in the goods within the same class as the goods with respect to which the trade mark was registered.

There seems now to be no provision equivalent to this, for, provided the registration were originally proper, sect. 90 appears not to apply.

The words " a trade mark shall be determinable with the goodwill" appear to mean that on the determination of the goodwill the mark ipso facto ceases to be a trade mark within the meaning of the Act. The result consequently will be that marks, which are not trade marks, may remain on the register, incapable of removal unless the registered proprietor applies for cancellation under sect. 91, or until on non-payment of the requisite fees the Comptroller's power to cancel under sect. 79 arises.

Since, however, such marks, though on the register, have ceased to be trade marks, properly so called, their continuance on the register may possibly be held not to render operative the restrictions imposed by sect. 72, and they may consequently be disregarded.

Under the above-mentioned Rule 33 of the Rules under the Act of 1875 it was held that a patentee of a machine, which had been exclusively manufactured by a licensee on payment of a royalty, carried on business so long as the patent subsisted; but that a trade mark which he had registered must be removed on his failing to continue to manufacture the machines himself for a year and nine months after the expiration of the patent: 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.

claims to

71. Where each of several persons claims to be SECT. 71. registered as proprietor of the same trade mark, the conflicting Comptroller may refuse to register any of them until registration. their rights have been determined according to law, and the Comptroller may himself submit or require the claimants to submit their rights to the court.

This is a re-enactment of a part of sect. 5 of the Act of 1875. The submission to the court is to be by special case: see Rules 40-43. This was also the course under the Act of 1875: Ex parte Grimshaw, W. N. 1877, p. 24, where Hall, V.-C., refused to use his discretion "to order otherwise;" see Rule 44 of the Rules under the repealed Act.

In practice, however, the statement of the special case gave rise to so much difficulty, that it was abandoned, and one of the parties was, as a rule, directed to take out a summons for directions: see In re Simpson, Davies & Son's Trade Mark, Jessel, M.R., 1880, 15 Ch. D. 525; 42 L. T. N. S. 675; 28 W. R. 760. See also notes to sects. 62 (4), and 69.

Cross summonses, taken out by both claimants and at once adjourned into court, have been directed: In re Powell, Jessel, M.R., 1878, Seb. Dig. No. 589; In re Rabone, Jessel, M.R., 1879, Seb. Dig. No. 643.

In one case an action was directed, because the question to be tried was a question of title, and it was said that the way in which cases of conflicting claims should come before the court depended upon the circumstances of each individual case. "If it be a simple question of law it had better be by special case; if for directions for carrying out the Act, by summons in chambers; if of disputed facts, by motion:" In re Salamon, Jessel, M.R., 1877, Seb. Dig. No. 569.

Henceforth procedure by special case would seem to be obligatory, unless the court gives some special directions to the contrary: see Rule 43.

For form of application for settlement by the comptroller of a special case see Form T. It has to be signed by both claimants, and bears a stamp of £2, which includes apparently the whole

SECT. 71. cost of the settlement by the Comptroller of the special case: see first schedule to the Rules.

The section being directory only in form it is competent for the Comptroller to decide between the conflicting titles of the applicants and to select one for registration without referring to the court. He cannot register more than one: see sect. 72.

The applicant whose application is thus refused may proceed, it would seem, under sect. 90, as a "person aggrieved by the omission without sufficient cause of his name from the register.”

Before exercising adversely to an applicant a discretionary power like that here given, the Comptroller is bound to afford him an opportunity of being heard personally or by an agent, and to give him ten days' notice of an appointment for the purpose: sect. 94, and Rules 17-19.

The section deals only with conflicting claims to the same trade mark. The case of opposition to an application on the ground that the trade mark sought to be registered is, although not identical, yet so similar to a mark claimed by the opponent as to be calculated to deceive, comes within sect. 69, even when the opponent claims registration of his mark concurrently with his opposition to the other application.

A title to the same trade mark may be acquired by two or more persons in several ways.

Illustrative Cases.—(i.) When they have used the mark independently for several years: In re Powell, Jessel, M.R., 1878, Seb. Dig. No. 589; In re Rabone Bros. & Co., Jessel, M.R., 1879, Seb. Dig. No. 643.

(ii.) When on a dissolution of partnership it is agreed that the several partners may continue the same trade: Benbow v. Low, Bacon, V.-C., 1880, 44 L. T. N. S. 875; 29 W. R. 837. See also Hine v. Lart, Shadwell, V.-C., 1846, 10 Jur. 106; 7 L. T. 41; and Banks v. Gibson, Romilly, M.R., 1865, 34 Beav. 566; 34 L. J. Ch. 591; 11 Jur. N. S. 680; 13 W. R. 1012.

(iii.) When a trader who has carried on business in two shops bequeaths the business carried on at one of them to one legatee and the business carried on at the other to another legatee: see Dent v. Turpin, Wood, V.-C., 1861, 2 J. & H. 139; 30 L. J. Ch. 495; 7 Jur. N. S. 673 ; 4 L. T. N. S. 637 ; 9 W. R. 548.

The trade marks will pass without a distinct stipulation upon an

assignment or transmission of the goodwill of the business in con- SECT. 72. nection with which they have been used: see sect. 70.

As to the registration of the same old marks for use on the same goods up to the number of three when equally valid titles are shown, see notes on the "three-mark rule” to sects. 72 and 74.

on registra

72. (1.) Except where the court has decided that Restrictions two or more persons are entitled to be registered as tion. proprietors of the same trade mark, the Comptroller shall not register in respect of the same goods or description of goods a trade mark identical with one already on the register with respect to such goods or description of goods.

(2.) The Comptroller shall not register with respect to the same goods or description of goods a trade mark so nearly resembling a trade mark already on the register with respect to such goods or description of goods as to be calculated to deceive.

The section is derived from sect. 6 of the Act of 1875. There, however, the restriction was against registration of identical or similar trade marks "in respect of the same goods or classes of goods." Greater latitude is here given to the Comptroller, for he can, it seems, register identical or similar trade marks provided the goods, although they may be in the same class, are substantially different.

A refusal to register by the Comptroller under this section would seem to come within sect. 62, in which case the appeal seems to be to the Board of Trade in the first place. The Board will be able to decide, when the trade marks are similar but not identical, whether they are so similar as to be calculated to deceive, and to order the registration to proceed or not as the case may be. If, however, the trade marks are identical the Board cannot order registration, but must refer at once to the

SECT. 72. court; for the registration of identical trade marks, it will be noticed, is absolutely prohibited except by leave of the court.

As to whether an applicant can proceed at once to the court without the appeal being referred by the Board, see notes to sect. 62 (4).

Where the refusal is not at the instance of the Comptroller, but is the result of opposition by the registered owner, the mode of procedure is regulated by sect. 69.

And where several persons, all unregistered, claim simultaneously the registration of the same trade mark the procedure is regulated by sect. 71.

Where a person claims to be the proprietor of several marks which, while resembling each other in the essential particulars, yet differ in certain respects, they should be registered as a series in one registration: see sect. 66.

As to notifying the Comptroller of an order of the court, see Rule 44.

Subdivision of Classes.-In spite of the prohibition against the registration in respect of the same goods or classes of goods of a trade mark identical with one already on the register, or so similar as to be calculated to deceive, the court under the Act of 1875 permitted in some cases the subdivision of classes.

Illustrative Cases.—(1.) In the case of old marks.

(i.) In class 5 for use only on tin-plates, turn-plates, and sheet iron: Ex parte Barrow & Co., Jessel, M.R., 1877, W. N., p. 119.

(ii.) In classes II, 12, and 13 with a proviso that it should not be stamped on metal goods: In re Whiteley, Jessel, M. R., 1879, 43 L. T. N. S. 627; 29 W. R. 235.

(iii.) In class 5 for use only on galvanised iron: In re Lysaght, Jessel, M.R., 1878, Seb. Dig. No. 623.

(iv.) In classes 12 and 13 for use only on goods exported to certain colonies: In re Rabone Bros., Jessel, M.R., 1879, Seb. Dig. No. 643.

(2.) In the case of new marks.

(i.) In class 5 for use only on fencing wire: In re Jelley, Son, & Jones' Trade Mark, Jessel, M.R., 1878, 51 L. J. Ch. 639; 46 L. T. N. S. 381.

(ii.) In class 5 for use only on corrugated galvanised iron sheets: In re Braby & Co.'s Applications, North, J., 1882, 21