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Bible Encyclopedias
Trade Marks
1911 Encyclopedia Britannica
or Trade mark " may be defined as a symbol, consisting in general of a picture, a label or a word or words, applied or attached to the goods of a trader for the purpose of distinguishing them from the similar goods of other traders, and of identifying them as his goods, or as those of his successors, in the business in which they are produced or put forward for sale. A trade mark differs in its legal character both from a patent and from a copyright. In the case of a trade mark the property and the right to protection are in the device or symbol adopted to designate the goods to be sold, and not in the article which is manufactured and sold. The article is open to the whole world to manufacture and sell, and all that the owner of the trade mark is entitled to prevent is such use of his mark by other traders as will lead purchasers to buy, as his, goods which are not his. On the other hand, patent-right and copyright protect the substance of the article; and any unauthorized manufacture of it in the former case, or reproduction of it in the latter, while the protection lasts, is prohibited. The grounds, however, on which trade marks, patent-right and copyright obtain legal recognition, though they are to a certain extent dissimilar, have a common element. Patent-right and copyright rest upon the view that the results of the original labour of the inventor and the author ought, as a matter alike of justice and of public policy, to be secured against piracy; while, as regards the proprietor of a trade mark, the question of originality does not arise so long as the mark is sufficiently distinctive really to identify his goods and, for purposes of registration, to satisfy the Trade Marks Acts. In truth, the registration of a trade mark is rather the recognition of a fact than the grant of a privilege (Kerly and Underhay, Trade Marks Act, 1905, p. 3). The law as to trade marks as well as that as to patents or copyright is based on a man's rights to have guaranteed to him the profit derivable from his own property. " No man," said James (L.J.), in the case of the Singer Manufacturing Co. v. Loog (1880, 18 Ch. D., 412), " is entitled to present his goods as being the goods of another man, and no man is permitted to use any mark, sign or symbol, device or means, whereby, without making a direct false representation himself to a purchaser from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer." I. British Trade Marks before the Registration Acts. - The existing law in the United Kingdom cannot be properly appreciated unless the subject is approached in the first instance from the historical side. English trade-mark law practically commences with the first years of the 10th century. The use of trade marks was indeed of far earlier date, for in 1742 we find Lord Hardwicke declaring that " every particular trader had some particular mark or stamp." But in the very case in which Lord Hardwicke made that statement ( Blanchard v. Hill, 2 Atkyns, 484) he refused to protect the " Great Mogul " stamp on cards, being apparently under the influence of the notion that the legal recognition of trade marks would involve the creation of a new species of monopoly; and with regard to a case decided in the reign of James I. ( Southern v. How, Cro. Jac. 471), in which a clothier had applied the mark of another clothier to his own inferior goods, the reports leave it doubtful whether the action was brought by the owner of the mark, or by a defrauded customer, in which latter event it would be merely an ordinary action for deceit. But although the actual law of trade marks cannot be traced farther back than the beginning of the 10th century, Lord Eldon repeatedly granted injunctions to restrain one trader from fraudulently " passing off " his goods as those of another, and thus laid a foundation on which the present law has been built up. The stages through which its development passed possess considerable interest, and may be described quite briefly. e The first reported case - apart from the doubtful one in the time of James I. above referred to - in which the infringement of a trade mark (a label on blacking) was restrained by the court of chancery was Day v. Day (Eden on Injunctions, ed. 1821, p. 314) in 1816. In 1824 the common law courts, in the case of Sykes v. Sykes (3 B. & C. 541), established the right of the owner of an infringed trade mark to damages. In 1833 it was held by the court of king's bench that it was not necessary for the plaintiff in an infringement action to prove that the defendant's goods were inferior to his, or that he had suffered special damage by the infringement. Later this became a rule of equity as well as of law. On another point, however, the practice of the courts of common law and equity diverged for a time. It was decided by Lord Cottenham in 1838, in the leading case of Millington v. Fox (3 Mylne & Craig 338), that an injunction to restrain the infringement of a trade mark could be obtained, even although the defendant had acted without fraudulent intent. On the common law side, on the other hand, fraud was an essential ingredient in the cause of action, and remained so till the fusion of law and equity by the Judicature Acts.
The effect of Lord Cottenham's decision in the case of Millington v. Fox clearly was to recognize a right of property in trade marks, and the action for infringement became a familiar species of litigation. Under the then existing law, however, the plaintiff in such actions generally found himself in a very disadvantageous and unsatisfactory position. The basis of his action was the reputed association between his trade mark and his goods. This association the defendant - often a person of no means - would deny, and it had to be proved as a fact by witnesses at a cost to the plaintiff which there was little hope of his recovering. Moreover, even if the trade mark proprietor secured a judgment in his favour, it carried with it no immunity from the obligation of again establishing his right to the mark against any subsequent infringer who chose to dispute it. Thus - to take an interesting and pertinent illustration given in Kerly on Trade Marks (p. 6) - the case of Rodgers v. Nowill (22 L. J. Ch. 404) lasted five years and cost the plaintiff £2211, without giving him in the end any security that he might not have to incur equal delay and expense in proving his title to the exclusive use of the trade mark in proceeding against other defendants. To complete this statement of the shortcomings of the law before the Merchandise Marks Act 1862, it should be noted that the infringement of trade marks - except in cases where the seller of spuriously marked goods cheated the buyer - was not a criminal offence. The remedies obviously needed were the establishment of a system of registration of trade marks which would simplify the proof of a plaintiff's title, and the creation of a criminal law of false marking. 1 The first step in the accomplishment of the latter object was taken by the Merchandise Marks Act 1862.
II. Under the Registration Acts. - Provision was first made for the registration of trade marks by the Trade Marks Registration Act 1875. That statute made registration in the register of trade marks which it established prima facie evidence of the right of the registered proprietor to the exclusive use of the trade mark in connexion with goods of the class for which it was registered and used, and enacted that it should after the expiration of five years be conclusive proof of such right, provided that the proprietor of the mark remained the owner of the goodwill of the business in which it was used. This provision was carried as to the act of 1883 (s. 76). The act also provided that a person should not be entitled to institute any proceeding to prevent the infringement of trade mark until it was registered, or (a later statutory modification) until, in the case of a mark in use before the passing of the act of 1875, registration of the mark as a trade mark had been refused. The act of 1875 was a considerable success, but no provision was made under it for the registration of words unless they either were old marks or were registered in combination with one or more of the " essential particulars " prescribed by the act, such as a distinctive device, heading, mark, label or ticket. These limitations excluded from registration most of the trade marks ordinarily in use.
The Patents Designs and Trade Marks Act 1883 remedied this defect besides altering the law in other important respects. The act of 1883 was amended in 1888 on the recommendation of a committee presided over by Lord Herschell. Neither the act of 1875 nor those of 1883 and 1888 altered the common law definition of a trade mark, nor contained any definition of the term. The description in the acts of what was registrable as a trade mark led to much litigation, and the interpretations of the judges left commercial men dissatisfied on three points: (1) the number of good and valuable trade marks which were not registrable; (2) that on allowing registration the patent office insisted on disclaimers which hampered the owner in obtaining protection in the colonies and foreign countries; (3) that there was no effective period of limitation to attacks on 1 Further reference may be made, in regard to the subject of trade marks before the Registration Acts 1883-1888, to an admirable introductory chapter in Kerly on Trade Marks, and also to the report of the Merchandise Marks Committee 1862, and the annual reports of the commissioners and the comptroller-general of patents from 1876 to 1884 (2nd report).
xxv11.5 registered trade marks, because though registration for five years was declared conclusive by s. 76 of the act of 1883, the powers of the court to rectify the register could be invoked even after the lapse of the five years (re Gestetner's Trade Mark, 1907, 2 Ch. 478). In re-enacting and enlarging the provisions of the act of 1875 the act of 1883 laid down certain essential particulars of one at least whereof a trade mark must consist to be registrable. These particulars will be considered later in dealing with the present law. The act of 1883 first provided for " word marks," and included among them " a fancy word or words not in common use " [s. 64, (r) (c)].
The expression " fancy word," used in the act of 1883, gave rise to considerable difference of opinion. It was interpreted by the court of appeal as equivalent to " obviously meaningless as applied to the article in question," or " obviously nondescriptive." In accordance with this interpretation, the words " gem " for guns, " melrose " for a hair restorer, " electric " for velveteen, and " washerine " for a soap were all held not to be registrable. On the recommendation, however, in 1887, of a committee appointed by the board of trade, and presided over by Lord Herschell, the expression " invented word " was substituted for " fancy word " by the act of 1888.
In 1905 and 1907 the legislation as to trade marks was amended and remodelled. A bill was introduced in 1905 at the instance of the London Chamber of Commerce, and after consideration by a select committee became the Trade Marks Act 1905. This act repeals the bulk of the provisions of the Patents, &c., Acts of 1883 and 1888 with respect to trade marks, and embodies them with amendments (to be noticed later) in a separate statute. The only portions of the earlier acts left standing with respect to trade marks were ss. 83 and 84 (as amended in 1885 and 1888) with reference to the administration in the patent office of the law as to trade marks (1905, s. 74); ss. 103 and 104 of the act of 1883 (as amended in 1885) relating to registration of trade marks, both as enacted in the acts of 1883 and 1885 and as applied by orders in council, are to be read as applying to trade marks registrable under the act of 1905 (s. 65). The sections of the Patents Acts of 1883, 1885 and 1888, thus preserved as to trade marks, were repealed by the Patents and Designs Act 1907. Sections 62 seq. of this act replace ss. 83 and 84 of the act of 1883, and retain the administration of trade mark law in the patent office; and s. 91 replaces ss. 103 and 104 of the act of 1883 as to international and colonial arrangements for mutual protection (inter alia ) of trade marks. According to the rule laid down by the Interpretation Act 1889 the references in the act of 1905 to the acts of 1883, &c., are to be read as applying to the above-stated sections of the act of 1907.
The act of 1905 differs from the preceding acts in containing a definition of trade mark for the purposes of the act unless the context otherwise requires; viz. that it " shall mean a mark used or proposed to be used upon or in connexion with goods for the purpose of indicating that they are the goods of the proprietor of such mark by virtue of manufacture, selection, certification, dealing with or offering for sale "; and " mark " is defined as including " a device, brand, heading, label, name, signature, word, letter, numeral or any combination thereof " (s. 3). The act, modifying to the extent indicated in italics the acts of 1883 and 1888, prescribes (s. 9) that a trade mark to be registrable must contain or consist of at least one of the following essential particulars: 1. The name of a company, individual or firm represented in a special or particular manner (under the act of 1883 it has been held that the name must be in the nominative case, and that ordinary printing is not representation in a particular manner).
2. The signature of the applicant for registration or some predecessor in his business. It is not clear that this includes descriptive trading styles.
3. An invented word or words.
4. A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname. 5. Any other distinctive mark; but a name, signature, or word or words other than such as fall within the descriptions in the above paragraphs I, 2, 3 and 4, shall not, except by order of the board of trade or of the court, be deemed a distinctive mark. By distinctive is meant " adapted to distinguish the goods of the proprietor of the trade mark from those of other persons ": and " in determining whether a trade mark is so adapted the tribunal may in the case of a trade mark in actual use take into consideration the extent to which such user has rendered such trade mark in fact distinctive for the goods in respect of which it is registered or proposed to be registered." Where the mark is limited to specified colours, that fact may be taken into account in deciding whether the mark is distinctive (s. io). There are certain special rules as to cotton marks.
Trade marks containing the essential particulars are not registrable if they contain any matter which would by reason of its being calculated to deceive or otherwise be disentitled to protection in a court of justice or would be contrary to law or morality, or any scandalous design (s. 11). (See Eno v. Dunn, 1890, 15 App. Cas. 293, and the " Motricine " case, 1907, 2 Ch. 435.) Registration of the same matter as a trade mark under the act of 1905 and as a design under the Patents and Designs Act (1907) is possible ( re U.S. Playing Card Co.'s Applic., 1907, W. N. 251).
Old marks are registrable, i.e. any special or distinctive word or words, letter, numeral or combination of letters or numerals, used by the applicant or his predecessors in business before the ,4th of August 1875, subject to the qualification that it has " continued to be used either in its original form or with additions or alterations not substantially affecting the same down to the date of the application for registration " (s. 9). In the case of new marks, but not of old marks, a trade mark is not registrable except by order of the court in respect of any goods or description of goods which is identical with a mark already on the register with respect to such goods or description of goods, or so nearly resembles such registered mark as to be calculated to deceive (s. 19).
Most controversy arose under the acts of 1883 and 1888 as to the meaning of the phrase " invented word " preserved in the act of 1905. An invented word need not be wholly /n meaningless, nor is it disqualified because words may have suggested it. Thus " mazawattee " was held to be an " invented word," although the latter part of it was a Sinhalese term meaning " estate," and there were estates in Ceylon having names ending with " wattee " from which tea came; and in a leading case on the construction of the clauses under consideration ( Eastman Co.'s Trade Mark, L. Rep. 1898, A. C. 571), the word " solio " was held to be registrable as a trade mark for photographic printing paper under both clauses, although it was objected that " solio " was equivalent to " sunio." The expression " calculated to deceive " has been considered by the courts in very many cases. It is not merely or chiefly the retailer or dealer who has to be kept in view when the question of the likelihood of deception is under consideration. The courts have regard also, and mainly, to the ultimate purchaser whom the trade mark may reach, and careless or unwary persons are considered as well as those who are careful and intelligent. The judge's eye is the ultimate test as to the degree of resemblance that is calculated to deceive, although expert evidence on the point is admissible. " Savonol " for soap ( J. C. & J. Field Ltd. v. Wagel Syndicate Ltd., 1900, 17 R.P.C. 266), " tachytype " for typographical and composing machines (in re Linotype Co.'s Application, 1900, 17 R.P.C. 380), have been held to be invented words. But the following have been held not invented - " uneeda " (=you need a) in re National Biscuit Co. (1902; I Ch. 783); " absorbine " for an absorbent preparation ( Christy & Co. v. Tipper & Son, 1905, 21 R.P.C. 97, 775); " bioscope " ( Warwick Trading Co. v. Urban, 1904, 21 R.P.C. 240); " cyclostyle " ( re Gestetner's Trade Mark, 1907, 2 Ch. 478); and cf. in re Kodak and Trade Marks (1903, 20 R.P.C. 337).
Subsections (3) and (4), it should be noted, are independent: the former deals with newly-coined words, the latter deals with the existing words of the English language, or of other languages likely to be known to the public. A word which is really " invented " may be registered, whether it is descriptive or not. An old word used in a new sense is not invented (Hommel v. Bauer & Co., 1904, 21 R.P.C. 576). The exact scope of clause (5) as to other distinctive marks has not been much discussed by the courts. Registration was allowed of the word " apollinaris " as a distinctive mark for the mineral waters of the applicants, on an undertaking to apply it only to water from the Neuenahr spring or district (in re Apollinaris Trade Mark, 1907, 2 Ch. 178). Under prior legislation the mark had been refused registration as being a geographical name ( re Apollinaris Co.'s Trade Mark, 1891, 2 Ch. 186).
Identical marks (except old marks) may not be registered in respect of the same goods, or goods of the same description, for two different persons (s. 19); and where several appli. cants make rival claims to identical marks the registrar may refuse to register until their rights have been deter mined by the court or settled by agreement in manner approved by the registrar, or, on appeal, by the board of trade (s. 20). In the case of honest concurrent user or of other special circumstances making it proper so to do, the court may permit the registration of the same mark or of nearly identical marks for the same goods by more than one owner, subject to such conditions or limitations, if any, as to mode or place of use or otherwise as the court may think it right to impose (s. 21).
New provisions were made in 1905 as to what are called " associated trade marks." Where registration is sought for a mark so closely resembling a mark of the applicant already on the register for the same goods as to be calculated to deceive or cause confusion if used by any one but the applicant, the registration of the new mark as to create the belief that he has authority so to do; a similar provision is embodied in the Merchandise Marks Act 1898 of the Isle of Man.
The central register of trade marks is kept at the Patent Office, Southampton Buildings, London, and is under the charge of the comptroller-general of patents, designs and trade marks, who is appointed by and acts under the superintendence of the board of trade, and has a deputy - the registrar of trade marks. There is a branch registry at Manchester, whose chief officer is the keeper of cotton marks, which deals with all applications for the registration of trade marks for cotton goods falling within classes 23, 24, 25 in schedule 3 of the Trade Marks Rules 1906. The registry has been long established, but was not recognized by statute till 1905. Records are kept and are open to public inspection of all applications made since 1875, whether granted or refused.
There is a branch registry at Sheffield containing the marks for metal goods (" Sheffield marks ") registered by persons carrying on business in or within six miles of Hallamshire. The care of this register is vested in the Cutlers' Company, who are substituted for the comptroller as to registration of " Sheffield marks " (s. 63). Applications made to the company are notified to the registrar, and may not be proceeded with if he objects. Any person aggrieved by the registrar's objection may appeal to the court. Applications made to the registrar for metal marks are notified to the Cutlers' Company. Persons aggrieved by the decision of the Cutlers' Company have an appeal to the courts (s. 64).
In 1906 fourteen applications were made at the head registry which were all dealt with by the Cutlers' Company. That company, by arrangement made with the sanction of the treasury, retain all fees taken at Sheffield with respect to registration up to X400, and half of the fees received in excess of that amount (Parl. Pap., 1907, No. 164, p. 9).
A trade mark must be registered in respect of particular goods or classes of goods (s. 8), and the classification in force is scheduled to the Trade Marks Rules 1906 (R. & 0., 1906, No. 233). Doubts as to the class to which the goods in question belong are settled by the registrar. The procedure for obtaining registration is regulated by the act of 1905 and the rules above mentioned. The registrar has power to refuse applications or accept them absolutely or subject to conditions, amendments and modifications (s. 12). His discretion is not absolute, but subject to the provisions of the act (re Birmingham Small Arms Co.'s Application, 1907, 2 Ch. 396); and he must if required state his reasons, and his decision is subject to appeal to the board of trade or the court at the option of the applicant [s. 12 (3)].
" New marks " may not be placed on the register except by order of the court for any goods or description of goods which are identical with marks already on the register with respect to the same goods, &c., or so nearly resemble a registered mark as to be calculated to deceive (s. 19). The question whether particular goods are of the same description is not determined solely by reference to the statutory classification. " The true test," says Kerly (Trade Marks, p. 181), " would seem to be supplied by the question: Are the two sets of goods so commonly dealt in by the same trader that his may be conditional on entering both marks as associated trade marks (s. 24). This section applies only to marks closely resembling one already on the register for the same goods or description of goods, and has nothing to do with identical marks ( Birmingham Small Arms Co.'s Application, 1907, 2 Ch. 396).
In the case of combined trade marks provision is made for registering as separate trade marks the part in which the applicant has exclusive rights, and as associated marks trade marks of which the exclusive portion forms a part (s. 25).
A series of trade marks of the same owner may be registered on one registration as associated marks (s. 26).
Provision is made for allowing the registration of marks used upon or in connexion with goods by an association (or person) manufacture, which undertakes the examination of goods in respect of origin, material, mode of quality, accuracy, or other characteristic, and certifies the result of the examination by marks used upon or in connexion with the goods. These marks cannot be registered unless the board of trade consider their registration of public advantage. Their registration is not conditional on the association or person being a trader or having goodwill in connexion with the examination or certification. The registration gives the association or person the rights of the owner of a registered trade mark, except that assignment and transmission needs permission of the board of trade (s. 62).
In respect of cotton piece-goods, marks consisting of a line heading alone or a word alone are not registrable, and no word or line heading is treated as distinctive in respect of such goods. In respect of cotton yarn the same rule applies with respect to words, and no registration of any cotton mark gives any exclusive right to the use of a word, letter, numeral, line, heading or combination thereof [s. 64 (103 By s. 68, which is a re-enactment of s. 105 of the Patents, &c., Act, 1883, it is made illegal for any person without the authority of the king to use the royal arms in any trade in such a manner customers, knowing his mark in connexion with one set, and seeing it upon the others, would be likely to suppose that it was used upon them also to indicate that they were his goods? " Wine and spirits, beer, and even aperient drinks and baking powder, have been held to be " goods of the same description." When a trade mark contains (1) parts not separately registered as trade marks or (2) matter common to the trade or otherwise of a non-distinctive character, the registrar, or the;board of trade or the court, in deciding whether -the mark shall be entered or retained on the register, may impose as a condition that the owner shall disclaim all right to exclusive use of any part or parts of such trade mark or of all or any portion of such matter to the exclusive use whereof they deem him not to be entitled, or make any other disclaimer which they consider needful to define his rights under the registration (s. 15). Marks calculated to deceive are not entitled to protection (Eno v. Dunn, 1890, 15 App. Cas. 250).
Applications as accepted are advertised; the advertisements state the conditions, if any, imposed on acceptance (s. 13). Notice of opposition to the registration of a trade mark may be given under s. 14 of the act of 1905 (which replaces s. 69 of the act of 1883). The registrar after consideration decides whether the opposition is well or ill founded. His decision is subject to appeal to the High Court or by consent of the parties to the board of trade [1905, s. 14 (5)]. In 1906 there were 251 notices of opposition, of which 51 were heard. There were 4 appeals to the board of trade, all referred by the board to the court under s. 59 of the act.
There may be added to any one or more of the " essential particulars " above enumerated any letters, words or figures, or a combination of these. But the right to the exclusive use of the added matter must be disclaimed. A man is not required, however, to disclaim his own name, or trade name, or that of his place of business, if the name appears in the mark. The number of applications to register trade marks in 1884 was 7104, and the number of marks registered 45 2 3. In 1906 the corresponding figures were 11,414 and 4731. These figures included 153 applications made to the Cutlers' Company at Sheffield (Parl. Pap., 1907, 164, 24th report).
The register may be corrected on the request of the registered owner of a trade mark as to errors or changes of address in the name of the registered owner, or by cancelling entries of n marks or by striking out classes of goods for which a mark is .registered or by entering disclaimers or memoranda as to a mark, provided that they do not extend the rights given by the existing registration getting rid of long registered marks by proceedings to rectify the register.
Registered trade marks are assignable and transmissible only with the goodwill of the business concerned in the goods for which they are registered, and are determinable with the goodwill (s. 22). Associated marks are assignable and transmissible only as a whole and not separately (s. 27). The owner of a registered mark may assign the right to use his registered mark in any British possession or protectorate or foreign country in connexion with any goods for which it is registered, together with the goodwill of the business therein of such goods (s. 22). Provision is made for apportioning marks where the goodwill of a business by dissolution of partnership or otherwise does not pass to a single successor (s. 23).
The assignments, &c., on proof of title, are recorded on the register (s. 33). It is a condition precedent to an action for the infringement of a new trade mark that the plaintiff should be the registered proprietor of the mark at the time when the action comes on for hearing. This last provision does not apply to an action for " passing-off " (vide infra). In actions for infringement, evidence of passing off, or that the infringing mark is calculated to deceive, is not necessary. The court decides on the probability of deception by inspecting and comparing the marks ( Hennessy v. Keating, 1907, 24 R.P.C. 485).
In the case of an old mark in use before the 14th of August 1875 proceedings may be taken if registration under the act of 1907 has been refused (s. 42).
The right to a trade mark lapses if the mark ceases to be distinctive and becomes publici juris; if it is separated from the goodwill (a trade mark can only be assigned with the goodwill); if the mark js applied by the trader to spurious goods (as where boxes of cigarettes were so labelled, in conformity with an alleged custom of the trade, as to indicate that they were of Russian manufacture, which was not the fact; or when the mark is abandoned); (temporary disuse, however, is not abandonment unless the mark has in the meantime become associated with the goods of another trader); or where, as in the " linoleum " case (7 Ch. D. 834) it has become the name of the goods, and so merely descriptive; or after fourteen years where registration is not renewed. In dealing with a claim for infringement the court must admit evidence of the usages of trade as to the get-up of the goods for which the mark is registered, and of any trade marks or get-up legitimately used with such goods by other persons (s. 43).
The registrar has an uncontrolled discretion in the administration of the act, except in those cases in which an appeal is given from his acts or refusals to the court or the board of trade (ss.
(ss. 53, 54). In cases of difficulty he consults the law officers (s. 56).
I.ctions or other proceedings with relation to trade marks, so far as they are for the court, may be brought in the High Court of Justice in England or Ireland and in the Court of Session in Scotland (ss. 3, 69). In the case of marks registered on application at the Manchester branch, the chancery court of Lancaster has concurrent jurisdiction with the High Court (s. 71). Actions for infringement of a trade mark are not within the jurisdiction of the county court (Bow v. Hart, 1905, 1 K.B. 592). An annual report is made by the comptroller-general of patents, &c., as to proceedings with reference to trade marks.
III. " Passing-of " and Trade Name. - A trader has generally, besides his trade mark, numerous other symbols, which he uses as indicia of his goods, e.g. the name of title under which he himself trades, the name under which his goods are known and sold, badges of property which are termed " trade name," and the distinctive " get-up " of the goods as they appear in the market. These symbols enjoy the protection of the law, under certain conditions, equally with trade marks. No trader is entitled to " pass off " his goods as those of another, and if he infringes this rule he is liable to an action for an injunction and damages, and these rights are preserved by the Trade Marks Act 1905 (s. 45). The right to be protected against " passing-off " is restricted to goods of the same description as those upon which the trader uses the " get-up," &c., imitated. Even if the " passing-off " is done innocently it will be restrained ( Millington v. Fox, 1838, 3 Mylne and Craig, 338). This case is described as not one of the use of a properly descriptive name, but rather a case of the same class as those in which a fancy or invented name is used ( Cellular Clothing Co. v. Maxton, 1899, App. Cas. 326, 341). Although the first purchaser is not deceived, still if the article delivered to him bears words or marks such that it is " calculated to deceive " a purchaser from him, the use of them is illegal.
To this general rule there are several exceptions: - I. No monopoly is allowed in names that are merely descriptive. But words which prima facie are descriptive, such as " camel-hair belting," for belting made of camel-hair (Reddaway v. Banham, (s. 33).
A registered trade mark may be altered or added to in matters not substantially affecting its identity (s. 34). Thus a firm on becoming a limited company has been allowed to add the word limited " to its name upon a registered mark, but no alteration will be permitted in regard to any " essential particular." In the above cases the corrections or alterations are made by the registrar subject to appeal to the board of trade (ss. 32, 34). A registered trade mark may be taken off by order of the court on the application of a person aggrieved, on the ground that it was registered without a bona fide intention to use it in connexion with a particular class of goods, and that there has not been any such bona fide user, or that there has been no such bona fide user during the five years preceding the application. Non-user may be excused if proved to be owing to special circumstances and not to any intention not to use or to abandon the use of the mark (s. 37). (See re Hare's Trade Mark, 1907, 24 R.P.C. 263).
The register may be rectified by order of the court on the application of any person aggrieved, or in the case of fraud in registration or transmission of the mark on the application of the registrar. The powers of rectification include correcting or expunging wrong entries, supplying errors and omissions and defects (s. 35).
Registration is effective for 14 years but is renewable (s. 28). The registration if valid gives the proprietor the exclusive right to the use of the mark on or in connexion with the goods rule r is pesubject whic to the ls following dqualifications.
(a) Where two or more persons are registered owners of the same or substantially the same mark in respect of the same goods, no one of them shall as against any other of them have any right of exclusive user except so far as their respective rights have been defined by the court. (b ) Registration of a trade mark does not entitle the proprietor to interfere with or restrain the user by any person of a similar mark upon or in connexion with goods upon or in connexion with which such person has by himself or his predecessors in business continuously used such trade mark from a date anterior to the use of the mark by the registered proprietor, or to object to the registration of the other man's similar mark for concurrent user.
In all legal proceedings relating to a registered trade mark registration is prima facie evidence of validity, and after seven years from the original registration, or seven years from the passing of the act of 1905, whichever shall last happen, the original registration shall be taken to be valid in all respects unless it was obtained by fraud, or the mark offends against s. ii of the act. This provision as to validity limits the power which formerly existed of 1896, App. Cas. 199), or " Stone Ales " for ales brewed at Stone (Montgomery v. Thompson, 1891, App. Cas. 217), may be shown to have acquired by long use a " secondary distinctive meaning," and, in fact, to mean the goods of a particular trader. And where a defendant is not selling the genuine goods indicated by the name, as where the composition of the goods is a secret, even if the name might otherwise be taken as merely that of the goods, he cannot rely on the defence that the name is descriptive ( Birmingham Vinegar Co. v. Powell, 1897, App. Cas. 710; the " Yorkshire Relish Case "). If, however, the primary meaning of the word is simple and well known, it is extremely difficult to establish a secondary meaning exclusive of the primary one ( Hommel v. Bauer & Co., 1905, 22 R.P.C. 43; " Haematogen," a preparation for forming blood, secondary meaning not established; cf. Fells v. Hedley & Co., 1904, 21 R.P.C. 91; " Naphtha soap," secondary meaning not established; Wurm v. Webster & Girling, 1904, 21 R.P.C. 373; " White Viennese Band," secondary meaning not established; Cellular Clothing Co. v. Maxton, 1899, A.C. 326, " cellular " as applied to cloth, secondary meaning not established). But although a name may not, owing to the fact that it consists of well-known or descriptive words, be inherently entitled to protection, a distinctive scroll or device, in which it is embodied, may be so. Thus, in a case ( Weingarten Brothers v. Bayer & Co., 1905, 21 Times L.R. 418; and see 19 Times L.R. 604) which sharply divided judicial opinion in England, the defendants were restrained from selling corsets in boxes bearing the name " Erect Form Corsets " scrolled thereon by the plaintiffs in a distinctive manner. No monopoly, of course, could be claimed in the words, but it was otherwise with the scroll. The use of a fancy name " iron oxide tablets " has been restrained where it was found likely to cause deception as being used to supersede in the market certain well-known " Iron Ox " tablets ( Iron Ox Remedy Co. v. Co-operative Wholesale Society Ltd., 1907, 24 R.P.C. 425). (2) A trader cannot be prevented from trading under his own name, if he is using it honestly (bona fide); even though from its similarity to the name of another trader-even one previously well-establishedit may injure the business of the latter ( Burgess v. Burgess, 1853, 3 De Gex, M. & G. 896; Turton v. Turton, 1889, 42 Ch. D. 128; Dunlop Pneumatic Tyre Co. v. Dunlop Motor Co., 1907, App. Cas. 43 0). This right is recognized by the Trade Marks Act 1905, s. 44, which provides that registration of a trade mark under the act shall not interfere with any bona fide use by any person of his own name or place of business or that of any of his predecessors in business. But if a trader has never carried on such a business on his own account or in partnership with others, he cannot, by promoting and registering a joint-stock company with a title of which his name forms part, confer on the company the rights which he as an individual possesses in the use of his name ( Fine Cotton Spinners, &c., Association Ltd. and John Cash & Sons Ltd. v. Harwood Cash &. Co. Ltd., 1907, 2 Ch. 184). If a trader's own name has, before he entered the trade, become the trade name of some other person's goods, he would probably .not be allowed to use it without taking steps to prevent deception. This rule does not debar him from using " any bona fide description of the character or quality of his goods " (1905, s. 44). A name can become universally known as referring to the goods of a particular maker, i.e. as having a secondary meaning. This does not give exclusive rights to use of the name, but only to prevent other firms from using the goods so as to pass off their goods as those of the person whose name is in question ( Joseph Rodgers & Sons Ltd. v. Ilearnshaw, 1906, 23 R.P.C. 348).
It is provided by the Companies Act 1862 (s. 20), that no company shall be registered under a name identical with that by which a subsisting company is already registered, or so nearly resembling it as to be calculated to deceive, unless the subsisting company is in process of being wound up and consents to such registration; and provision is also made for a change of the name of any company which, through inadvertence or otherwise, is registered under a name coming within the statutory prohibition. It is to be observed (cf. Buckley, Companies Acts, 8th ed. p. 27) that (a) the Companies Act 1862 applies only to the case of taking the name of a subsisting company already registered, and not to a case where a new company proposes to register in the name of, or in a name closely resembling, the name of an old-established company which is not registered, or of a firm or individual trader; ( b ) that as soon as the new company is registered the act ceases to apply; and (c ) that the act forbids registration irrespectively of the question whether the business proposed to be carried on by the new company is the same as that of the subsisting company or not. But the provisions of the Companies Act on this subject are merely supplemental to the common law, and any company trading in the United Kingdom may restrain persons from registering a new company to carry on a rival business under a name identical with or so similar as to be calculated to deceive, and a company already registered under such a name may be restrained from carrying on a rival business under it. The right to interfere depends not upon fraud but upon the tendency of the similarity to cause confusion, deception or mistake (Fine Cotton Spinners case above cited; Birmingham Small Arms Co. v. Webb, 1907, 24 R.P.C. 27; Star Cycle Co. V. Frankenburgs, 1907, 24 R.P.C. 405; re Reddaway & Co., 1907, 24 R.P.C. 203). In such proceedings evidence is admissible to show how the existing company has used the name, and what, by reason of its connecting that name with its goods, the public have come to attribute to it ( Daimler Motor Car Co. v. London Daimler Co., 1907, 24 R.P.C. 379). A new company will not be allowed to take the whole name of a subsisting company, even although that name is of a descriptive character ( Manchester Brewery Co. Ltd. v. North Cheshire and Manchester Brewery Co. Ltd., 1899, App. Cas. 83).
The purchaser of the goodwill of a business has the right to use the trade name under which the business is known, and to restrain others from using it or such imitations of it as may mislead the public. But he is not entitled by the use of the trade name to make the vendor liable, under g the doctrine of " holding out," for debts of the business incurred after the sale. And if the vendor of the goodwill gave his name to the business, he cannot (in the absence of any restrictive condition in the agreement for sale) be prevented from beginning to trade in his own name again, unless it be shown that in so doing he is attempting to deceive the public into the belief that he is still the owner of the old business. In construing the words ",calculated to deceive " (s. 20) the courts will adopt principles closely analogous to those applicable in " passing off " cases in which the question is raised whether a trade name or the description or get-up of a particular class of goods is or is not likely to deceive ( British Vacuum Cleaner Co. v. New Vacuum Cleaner Co., 1907, 2 Ch. 312; Aerators Ltd. v. Tollett, 1902, 2 Ch. 319, 324). When the names of the two companies contain terms of common ordinary meaning descriptive of an article, s. 20 will be applied less readily than where the words said to create the confusion are of the character of fancy words relating rather to the maker than the article (Vacuum Cleaner Case).
IV. Merchandise Marks.-The first attempt to make the falsification of trade marks a criminal offence was in the Merchandise Marks Act 1862 (25 & 26 Vict. c. 88). That statute provided that the forgery of a trade mark with intent to defraud, and the false application of a trade mark to goods with the like intent, should be misdemeanours, but left upon the prosecutor the burden of establishing the fraudulent intent. The act contained no provision for summary prosecutions, and did not provide for the seizure of falsely-marked goods on importation from abroad. The international convention for the protection of industrial property, made at Paris in 1883, to which Great Britain acceded in 1884, contains a provision that all goods illegally bearing a trade mark or trade name may be seized on importation into those states of the union where the mark or name has a right to legal protection, and that the seizure shall be effected at the request of either the proper public department or of the interested party, pursuant to the internal legislation of each country. The law had to be amended in order to carry out this article in the convention, and the Merchandise Marks Act 1887 was passed to effectuate this object and generally to make better provision for the protection of merchandise. It was subsequently amended in 1891 and 1894. The effect of the provisions of these statutes may be briefly stated. Any person is guilty of an offence, punishable on indictment or summary conviction by fine or imprisonment, who does any of the five following acts, unless he proves as regards the first four of them that he acted without intent to !defraud (there is a special defence to No. v. which is noted below): (i). forges any trade mark, or makes, disposes of, or has in his possession for such purpose any die or instrument; (ii.) falsely applies any trade mark or a colourable imitation of any trade mark to goods; (iii.) applies any false trade description to goods; (iv.) causes any of the above offences to be committed; (v.) sells or exposes for sale, or has in his possession for sale, trade or manufacture, any goods or things to which any forged trade mark or false trade description is applied, or any trade mark or colourable imitation of a trade mark is falsely applied, unless the defendant proves that, having taken all reasonable precautions, he had no ground to suspect the genuineness of the mark, &c., and also that on demand he gave to the prosecutor all the information in his power as to the person from whom he obtained the goods, &c., or proves that he otherwise acted " innocently." (See Thwaites & Co. v. McEvilly, 1903, 20 R.P.C. 663).
" Trade description " is defined as any descriptive statement or other indication as to the measurement, quantity (not quality, it should be observed)., or weight, place or mode of production, or the material of the goods, or as to their being subject to an existing patent, privilege or copyright; conventional or customary descriptions lawfully in use in August 1887 to indicate that the goods are of a particular class or method of manufacture are allowed to be continued; but if they contain the name of a place and are calculated to mislead as to the real place of production, the name of the latter must be added. The test of what is a trade description depends upon the understanding of the trade and not on scientific correctness ( Fowler v. Cripps, 1906, 1 K.B. 16).
On a prosecution for any of these offences, there is a power to forfeit the things found although no one is convicted. If the offender is indicted (it is in his option to be tried in this way) the punishment is fine and imprisonment, the latter not to exceed two years. On summary conviction the punishment is not to exceed, for a first offence, four months' imprisonment, with or without hard labour, and a fine of X20; and for any subsequent offence six months' imprisonment and a fine of £50. The importation is forbidden of goods by means of or in relation to which an offence against the acts has been committed, and also of all goods of foreign manufacture bearing any name or trade name being or purporting to be that of a manufacturer or trader within the country, unless it be accompanied by a definite indication of the country where the goods were made or produced. There are also special provisions with regard to the marking of catch-cases. The commissioners of customs have power to make general orders for carrying out the Merchandise Marks Acts. (See Regulations of the 1st of December 1887, Stat. R. & O. Revised, 1904, vol. viii. tit. Merchandise Marks.) Prosecutions may be undertaken by the board of trade in cases appearing to affect the general interests of the country or of a section of the community, or of a trade, subject to regulations made on the 21st of May 1892; and the board of agriculture and fisheries has a like power in the case of the produce of agriculture, horticulture and fisheries [act of 1894, s. 1; Board of Agriculture and Fisheries Act 1903, s. 1 (8); see the regulations of the 27th of October 1894, Stat. R. & O. Revised, vol. viii. tit. Merchandise Marks.]. Under the Sale of Food and Drugs Act 1899, and the Butter and Margarine Act 1907, the importation, except in containers showing their character, of margarine, margarine cheese, adulterated or impoverished butter, milk-blended butter or condensed, separated or skimmed milk, is penalized, and it is provided that the commissioners of customs, in accordance with directions given by the treasury after consultation with the board of agriculture, shall take such samples of consignments of imported articles of food as may be necessary for the enforcement of the law.
V. International Arrangements
(The Trade Marks Act 1905 applies to the British Islands.) By the international convention for the protection of industrial property (see Patents), which was signed at Paris in 1883, the signatory states (others have since acceded) agreed that the subjects or citizens of each state should, in all the other states, enjoy as regards trade marks and trade names the advantages that their respective laws then granted, or should thereafter grant, to their own subjects or citizens. So far as Great Britain is concerned the provisions made for carrying out this convention are contained in s. 65 of the Trade Marks Act 1905 and in s. 91 of the Patents and Designs Act 1907.1 The effect of that section is to confer on an applicant for the protection of a trade mark in one of the other contracting states a priority over other applicants for registration in the United Kingdom during the space of four months. The section does not, however, exempt the applicant from the conditions and formalities incumbent on ordinary applicants for registration in Great Britain; nor does the fact that the foreign application has been successful of itself give the applicant a right to have his mark accepted for registration. Under the Convention of Madrid of the 14th of April 1891 (to which Great Britain is not a party) a trade mark may be registered as the result of a single application in the countries of all the signatory powers. Besides the general international conventions there are also particular arrangements between many states, e.g. Germany and Italy (Italian law of the 24th of December 1 9 03). Guatemala and Salvador, also signatory parties, have withdrawn from the convention.
The following is a list of the British orders in council that have been issued, applying to foreign countries, s. 103 of the Patents, &c., Act 1883: - 1 This section supersedes ss. 103, 104 of the Patents, &c., Act 1883. The references to these sections in the Trade Marks Act 1905 must now be read as applying to s. 91 of the Patents, &c., Act 1907.
| Foreign State. | Date of Order in Council. | Belgium | June 26, 1884. | Brazil | June 26, 1884. | Cuba | January 12, 1905. | Denmark (including the Faroe | Islands) | November 20, 1894. | Dominican Republic. ... . | October 21, 1890. | Ecuador.. .. ... . | May 16, 1893. | France. .. .. ... . | June 26, 1884. | Germany. .. .. .. . | October 9, 1903. | Greece | October 15, 1894. | Honduras. .. .. .. . | September 26,1901. | Italy | June 26, 1884. | Japan | October 7, 1899. | Mexico | May 28, 1889. | Netherlands . | June 26, 1884. | Indian Colonies) . | November 17, 1888. | (Curacoa and Surinam) | May 17, 1890. | Norway (and Sweden). .. . | July 9, 1885. | Paraguay | September 24, 1886. | Portugal.. .. .. .. . | June 26, 1884. | Rumania | August 5, 1892. | Servia | June 26, 1884. | Spain | June 26, 1884. | Sweden (and Norway). ... . | July 9, 1885. | Switzerland | June 26, 1884. | Tunis. .. .. .. . | June 26, 1884. | United States. .. .. . | July 12, 1887.2 | Uruguay.. . | September 24, 1886. All these orders in council are printed in the Statutory Rules and Orders Revised (ed. 1904), vol. ix., under the title " Patents, &c." By orders in council, made under the provisions of the Foreign Jurisdiction Acts, penalties have been imposed on British subjects committing offences against the Patents, &c., Act1883-1888(now represented by the Trade Marks Act 1905, and the Patents and Designs Act 1907) and the orders in council issued thereunder, and the Merchandise Marks Act 1887: China and Corea (1904), Egypt (1899), Morocco (1889), Muscat (1904), Ottoman Empire (1899), Persia, Persian coast and islands (1889-1901), Siam (1906) and Zanzibar (1906). (1906).
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