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TRADE MARKS
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See also:TRADE MARKS
.
A " See also:trade See also:mark " may be defined as a See also:symbol, consisting in See also:general of a picture, a See also: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 See also:sale
.
A trade mark differs in its legal See also:character both from a patent and from a See also:copyright
.
In the See also:case of a trade mark the See also:property and the right to See also:protection are in the See also:device or symbol adopted to designate the goods to be sold, and not in the See also:article which is manufactured and sold
.
The arti: lc is open to the whole See also:world to manufacture and sell, and all that the ownerof the trade mark is entitled to prevent is such use of his mark by other traders as will See also:lead purchasers to buy, as his, goods which are not his
.
On the other See also:hand, patent-right and copy-right protect the substance of the article; and any unauthorized manufacture of it in the former case, or See also: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 See also:common See also:element
.
Patent-right and copy-right See also:rest upon the view that the results of the See also:original labour of the inventor and the author ought, as a See also:matter alike of See also: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 See also:long as the mark is sufficiently distinctive really to identify his goods and, for purposes of See also:registration, to satisfy the Trade Marks Acts
.
In truth, the registration of a trade mark is rather the recognition of a fact than the See also: Loog (r88o, 18 Ch . D., 412), " is entitled to See also: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 See also:direct false See also:representation himself to a purchaser from him, he enables such purchaser to tell a See also:lie or to make a false representation to somebody else who is the ultimate customer." I . See also:British Trade Marks before the Registration Acts.—The existing law in the See also:United See also:Kingdom cannot be properly appreciated unless the subject is approached in the first instance from the See also:historical See also:side . See also:English trade-mark law practically commences with the first years of the 19th See also:century . The use of trade marks was indeed of far earlier date, for in 1742 we find See also:Lord See also:Hardwicke declaring that " every particular trader had some particular mark or See also:stamp," But in the very case in which Lord Hardwicke made that statement (See also:Blanchard v . Hilt, 2 Atkyns, 484) he refused to protect the " See also:Great See also:Mogul " stamp on See also:cards, being apparently See also:tinder the See also:influence of the notion that the legal recognition of trade marks would involve the creation of a new See also:species of See also:monopoly; and with regard to a case decided in the reign of James I . (See also:Southern v . How, Cro . Jac . 471), in which a See also:clothier had applied the mark of another clothier to his own inferior goods, the reports leave it doubtful whether the See also:action was brought by the owner of the mark, or by a defrauded customer, in which latter event it would be merely an See also:ordinary action for deceit . But although the actual law of trade marks cannot be traced farther back than the beginning of the 19th century, Lord See also:Eldon repeatedly granted injunctions to restrain one trader from fraudulently " passing off " his goods as those of another, and thus laid a See also:foundation on which the present law has been built up . The stages through which its development passed possess considerable See also:interest, and may he described quite briefly .
The first reported case—apart from the doubtful one in the See also:time of James I. above referred to—in which the infringement of a trade mark (a label on blacking) was restrained by the See also:court of See also:chancery was See also:Day v
.
Day (See also: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 See also:damages
.
In 1833 it was held by the court of See also: See also:Fox (3 Mylne & See also:Craig 338), that an See also:injunction to restrain the infringement of a trade mark could be obtained, even although the defendant had acted without fraudulent See also:intent . On the common law side, on the other hand, See also:fraud was an essential ingredient in the cause of action, and remained so till the See also:fusion of law and equity by the Judicature Acts . The effect of Lord Cottenham's decision in the case of Milling-ton v . Fox clearly was to recognize a right of property in trade marks, and the action for infringement became a See also:familiar species of litigation . Under the then existing law, however, the See also:plain-tiff 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 See also: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 See also:hope of his recovering . Moreover, even if the trade mark proprietor secured a See also:judgment in his favour, it carried with it no See also:immunity from the See also:obligation of again establishing his right to the mark against any subsequent infringer who See also:chose to dispute it . Thus—to take an interesting and pertinent See also:illustration given in Kerly on Trade Marks (p . 6) —the case of See also:Rodgers v . Nowill (22 L . J . Ch . 404) lasted five years and cost the plaintiff £2211, without giving him in the end any See also:security that he might not have to incur equal delay and expense in proving his See also:title to the exclusive use of the trade mark in proceeding against other defendants . To See also: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 See also:establishment of a See also:system of registration of trade marks which would simplify the See also:proof of a plaintiff's title, and the creation of a criminal law of false marking.' The first step in the accomplishment of the latter See also:object was taken by the Merchandise Marks Act 1862 . II . Under the Registration Acts.—See also:Provision was first made for the registration of trade marks by the Trade Marks Registration Act 1875 . That See also:statute made registration in the See also:register of trade marks which it established prima facie See also: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 See also: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 See also: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 See also:combination with one or more of the " essential particulars " prescribed by the act, such as a distinctive device, heading, mark, label or See also: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 See also:committee presided over by Lord See also:Herschell . Neither the act of 1875 nor those of 1883 and 1888 altered the common law See also:definition of a trade mark, nor contained any definition of the See also:term . The description in the acts of what was registrable as a trade mark led to much litigation, and the interpretations of the See also:judges See also:left commercial men dissatisfied on three points : (r) the number of See also:good and valuable trade marks which were not registrable; (2) that on allowing registration the patent See also:office insisted on disclaimers which hampered the owner in obtaining protection in the colonies and See also:foreign countries; (3) that there was no effective See also:period of See also:limitation to attacks on ' Further reference may be made, in regard to the subject of trade marks before the Registration Acts 1883-1888, to an admirable See also:introductory See also:chapter in Kerly on Trade Marks, and also to the See also:report of the Merchandise Marks Committee 1862, and the See also:annual reports of the commissioners add the See also:comptroller-general of patents from 1876 to 1884 (2nd report) . x xvIT . 5registered trade marks, because though registration for five years was declared conclusive by s . 76 of the act of 1883, the See also:powers of the court to rectify the register could be invoked even after the See also: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 See also:fancy word or words not in common use " [s . 64, (1) (c)] . The expression " fancy word," used in the act of 1883, gave rise to considerable difference of See also:opinion . It was interpreted by the court of See also:appeal as See also:equivalent to " obviously meaningless as applied to the article in question," or " obviously non-descriptive." In accordance with this See also:interpretation, the words " See also:gem " for guns, " See also:melrose " for a See also:hair restorer, " electric " for See also:velveteen, and " washerine " for a See also:soap were all held not to be registrable . On the recommendation, however, in 18871 of a committee appointed by the See also: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 See also:bill was introduced in 1905 at the instance of the See also:London Chamber of See also:Commerce, and after See also: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 ,888 with respect to trade marks, and embodies them with amendments (to be noticed later) in a See also:separate statute . The only portions of the earlier acts left See also:standing with respect to trade marks were ss . 83 and 84 (as amended in 1885 and 1888) with reference to the See also: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 1885rrelating to registration of trade-marks, both as enacted in the acts of 1883 and 1885 and as applied by orders in See also: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 See also: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 purposeof 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, See also:brand, heading, label, name, See also:signature, word, See also:letter, See also:numeral or any combination thereof " (s . 3) . The act, modifying to the extent indicated in italics the acts of '883 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 See also:company, individual or See also: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 See also: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 See also: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 r, 2, 3 and 4, shall not, except by See also: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 YI 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 See also:colours, that fact may be taken into See also:account in deciding whether the mark is distinctive (s . I o) . There are certain special rules as to See also:cotton marks . Trade marks containing the essential particulars are not registrable if they contain any matter which would by See also: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 See also:design (s . II) . (See Eno v . Dunn, 1890, 15 App . Cas . 243, 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 14th of See also:August 1875, subject to the qualification that it has " continued to be used either in its original See also: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 Invented of 1905 . An invented word need not be wholly Words. meaningless, nor is it disqualified because words may have suggested it . Thus mazawattee " was held to be an " invented word," although the latter See also:part of it was a Sinhalese term meaning " See also:estate," and there were estates in See also:Ceylon having names ending with " wattee " from which See also:tea came; and in a leading case on the construction of the clauses under consideration (Eastman Co.'s Trade Mark, L . See also:Rep . 1898, A . C . 571), the word " solio " was held to be registrable as a trade mark for photographic printing See also: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 See also:judge's See also:eye is the ultimate test as to the degree of resemblance that is calculated to deceive, although See also:expert evidence on the point is admissible . " Savonol " for soap (J . C .
& J
.
See also: 337) . Subsections (3) and (4), it should be noted, are See also:independent: the former deals with newly-coined words, the latter deals with the existing words of. the English See also:language, or of other See also: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 . See also:Bauer & Co., 1904, 21 R.P.C . 576) . The exact See also:scope of clause (5) as to other distinctive marks has not been much discussed by the courts . Registration was allowed of the word " See also:apollinaris " as a distinctive mark for the See also:mineral See also:waters of the applicants, on an undertaking to apply it only to See also:water from the See also:Neuenahr See also:spring or See also:district (in re Apollinaris Trade Mark, 1907, 2 Ch . 178) . Under See also: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 Identical two different persons (s . 19) ; and where several appli-Marks. cants make See also:rival claims to identical marks the registrar may refuse to register until their rights have been deter-See also: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 See also: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 markmay be conditional on entering both marks as associated trade marks (s . 24) . This See also:section applies only to marks closely resembling one already on the register for the same goods or See also:des- AssocIated cription of goods, and has nothing to do with identical Marks . marks (See also: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 See also: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) which undertakes the examination of goods in respect standard_ of origin, material, mode of manufacture, quality, 1sation accuracy, or other characteristic, and certifies the result marks. 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 See also: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 See also:assignment and transmission needs permission of the board of trade (s . 62) . In respect of cotton piece-goods, marks consisting of a See also: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 Cotton respect of cotton See also:yarn the same rule applies with respect Marks. 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 (so)] . 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 use oI as to create the belief that he has authority so to do; See also:Royat a similar provision is embodied in the Merchandise arms, &c . Marks Act 1898 of the Isle of Man . The central register of trade marks is kept at the Patent Office, See also:Southampton Buildings, London, and is under the See also:charge of the comptroller-general of patents, designs and trade marks, Registries. who is appointed by and acts under the superintendence of the board of trade, and has a See also:deputy the registrar of trade marks . There is a See also:branch registry at See also:Manchester, whose See also: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 See also: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 See also:Sheffield containing the marks for See also:metal goods (" Sheffield marks ") registered by persons carrying on business in or within six See also: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 See also: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 See also:head registry which were all dealt with by the Cutlers' Company . That company, by arrangement made with the See also:sanction of the See also:treasury, retain all fees taken at Sheffield with respect to registration up to £400, and See also:half of the fees received in excess of that amount (Part . 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 See also:classification in force is scheduled to the Trade Marks Rules 1906 (R . & O., 1906, No . 233) . Doubts as to the class to which the goods in question See also:Procedure. 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 See also:power to refuse applications or accept them absolutely or subject to conditions, amendments and modifications (s . 12) . His discretion is not See also: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 See also:state his reasons, and his decision is subject to appeal to the board of trade or the court at the See also: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 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 ? " See also:Wine and See also:spirits, See also:beer, and even aperient drinks and See also:baking See also: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 See also: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 See also: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 See also:acceptance (s . 13) . See also: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 See also: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)1 . 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 Ietters, 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 4523 . 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 See also:request of the registered owner of a trade mark as to errors or changes of address in the name Comtloa of the registered owner, or by cancelling entries of cw'tioq marks or by striking out classes of goods for which a"Al Hon of er a mark is registered or by entering disclaimers or the Register. memoranda as to a mark, provided that they do not extend the rights given by the existing registration (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 be-coming 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 See also: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 See also: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 Effect of the use of the mark on or in connexion with the Rensrra- This es rule is subject which to theisfollowing registered (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 See also: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 he taken to be valid in all respects unless it was obtained by fraud, or the mark offends against s. r i of the act . This See also:pro-See also:vision as to validity limits the power which formerly existed ofhis acts or refusals to the court or the board of trade Appeals,@a (ss . 53, 54) . In cases of difficulty he consults the law See also:officers (s . 56) . Actions or other proceedings with relation to trade marks, so fai as they are for the court, may be brought in the High Court of Justice in See also:England or•See also:Ireland and in the Court of Session in See also:Scotland (ss . 3, 69) . In the case of marks registered on application at the Manchester branch; the chancery court of See also:Lancaster has concurrent See also:jurisdiction with the High Court (s . 71) . Actions for infringement of a trade mark are not within the jurisdiction of the See also:county court (See also:Bow v . See also:Hart, 1905, I K.B . 592) . An annual report is made by the comptroller-general of patents, &c., as to proceedings with reference to trade marks . " calculated to deceive " a purchaser from him, the use of them is illegal . To this general rule there are several exceptions:- 1 . No monopoly is allowed in names that are merely descriptive . But words which prima facie are descriptive, such as See also:camel-hair belting," for belting made of camel-hair (Reddaway v . Benham . 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 See also:possession or See also:protectorate or foreign See also: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 See also:dissolution of See also: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 See also:hearing . This last provision does hot 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 See also: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 See also:juris; if it is separated from the goodwill (a trade mark can only be assigned with the goodwill) ; if the mark is applied by the trader to. See also:spurious goods (as where boxes of cigarettes were so Iabelled, in conformity with an alleged See also:custom of the trade, as to indicate that they were of See also:Russian manufacture, which was not the fact; or when the mark is abandoned) ; (temporary disuse, however, is not See also: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
1896, App
.
Cas
.
199), or " See also: 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 See also:composition of the goods is a See also:secret, even if the name might otherwise be taken as merely that of the goods, he cannot rely on the See also:defence that the name is descriptive (Birmingham See also:Vinegar Co. v . See also:Powell, 1897, App . Cas . 710; the " See also:Yorkshire Relish Case ") . If, however, the See also:primary meaning of the word is See also:simple and well known, it is extremely difficult to establish a secondary |