the application of any such design, or of any fraudulent or obvious imitation thereof for the purpose of sale, to any article of manufacture or substance, or from the publication, sale, or exposure for sale by any person of any article or substance to which such design or any fraudulent or obvious imitation thereof shall have been so applied, such person knowing that the proprietor had not given his consent to such application (1). (1) Sect. 59. See as to registration after exhibition, sect. 58 of Act of 1883, extended to exhibitions abroad by sect. 3 of Act of 1886. The following is the list of fees prescribed by 1st Schedule to the Rules: 1. On application to register one design to be applied to single articles in each class, except Classes 13 and 14 2. On application to register one design to be applied to single articles in Classes 13 and 14 3. On application to register one design to be applied to a set of articles for each class of registration. £ s. d. 0 10 0 010 4. On notice of appeal to Board of Trade against refusal of comptroller to register 100 100 copy 0 1 0 5. Copy of certificate of registration, each 7. On request to enter name of subsequent proprietor 050 same as registration fee. 8. On notice to comptroller of intended exhibition of an unregistered design 9. Inspection of design of which copyright has expired, for each quarter of an hour 13. On request to enter new address 14. For office copy every 100 words, but never less than 18. 050 010 costs according to agreement. 05 0 CHAPTER IX. TRADE-MARKS AND TRADE NAMES. The law with regard to trade-marks first received what may Statutes be called statutory recognition in the Trade Marks Act of 1875. and rules. This statute is now superseded by the Patents, Designs, and Trade Marks Act, 1883, amended by the Act of 1885 and by the Acts of 1886 and 1888; and it is by these Acts and the various rules from time to time made pursuant to their provisions, the last being the Trade Mark Rules, 1890, that the law of trademarks is now governed. The Acts may be cited collectively as "the Patents, Designs, and Trade Marks Acts, 1883 to 1888." The original foundation of the whole law with regard to the trade-marks is as stated in the judgment of the House of Lords in a celebrated case (1), based on the principle that when one knowing that goods are not made by a particular trader sells them as and for the goods of that trader, he does that which injures that trader. At first it was put upon the ground that he did so when he sold inferior goods as and for the traders, but it is established alike at law and in equity that it is an actionable injury to pass off goods known not to be the plaintiff's as and for the plaintiff's even though not inferior. “The modes in which goods may be passed off as and for the plaintiff's vary. The most usual is where a particular mark on the goods or on the packages in which they are sold has been used to denote that they are made by a particular firm to such an extent that it is understood in the market to bear that meaning. The law as to those trade-marks is now regulated by statutes, but before there was any legislation on the subject it was well settled that when any one adopted a mark so closely resembling the trade-mark of the plaintiff that it would be likely to be mistaken for it, and put it on his goods and sold them knowing that though the persons to whom he sold them were well aware that they were not the plaintiff's make, yet that they were meant to be sold to others who would see only the trade-mark and were likely to be deceived by its resem (1) Singer Manufacturing Co. v. Loog, 8 App. Cas. 15, 29. Principle of the law. blance to that of the plaintiff, he might be properly found to have knowingly and fraudulently sold the goods as and for the plaintiff's goods. And so far there was no difference between law and equity. But at law it was necessary to prove that an injury had been actually done. In equity it was enough to show that the defendants threatened to do, and would, if not prevented, do that injury” (1). The principle of the law is also admirably stated by Lord Langdale in the well-known case of Croft v. Day (2). No man has a right to sell his own goods as the goods of another. You may express the same principle in different forms, and say that no man has a right to dress himself in colours or adopt and bear symbols to which he has no peculiar or exclusive right, and thereby personate another person for the purpose of inducing the public to suppose that he is that other person, or that he is connected with and selling the manufacture of such other person, while he is really selling his own. It is perfectly manifest that to do these things is to commit a fraud, and a very gross fraud. In a very recent case before the Privy Council the common law right of a man to have protection for his trade-mark was raised. In Malta there is no statute regulating trade-marks, and the mark sought to be protected was "Kaisar-i-Hind,” applied to a certain kind of cigarettes, and Lord Watson, in delivering the judgment of the Privy Council, says: In Malta there is no law or statute establishing the registration of trademarks, and no authority exists from whom an exclusive right to a particular trade-mark can be obtained. The rights of the parties to this cause are therefore dependent upon the general principles of the commercial law. These principles have been very fully illustrated and explained by several cases in the House of Lords (3), all of which were cases which arose before the passing of the first Trade Marks Registration Act in the year 1875. In the first of these cases the interest which a merchant or manufacturer has in the trade-mark which he uses (1) Singer Manufacturing Co. v. Loog, 8 App. Cas. 15, 29. (2) 7 Beav. 84. In this case the firm of Day & Martin, the blacking manufacturers in Holborn-though there was no longer either a Day or a Martin, as in the original firm, both being long since dead-was held entitled to restrain a real Day and a real Martin from trading under the name of Day & Martin; the reason for the injunction being that the name of Day & Martin had been adopted for the purpose of representing and holding out to the public that it was the old firm of Day & Martin: Merchant Banking Co. of London v. Merchants Joint Stock Bank, 9 Ch. Div. 560; Turton v. Turton, 42 Ch. Div. 128. (3) Leather Cloth Co., Lim. v. American Leather Cloth Co., Lim., 11 H. L. C. 538; Wotherspoon v. Currie, 5 H. L. 508; Johnston & Co v. Orr Ewing & Co, 7 App. Cas. 219. was thus defined by Lord Cranworth: "The right which a manufacturer has in his trade-mark is the exclusive right to use it for the purpose of indicating where, or by whom, or at what manufactory the article to which it is affixed was manufactured." As soon, therefore, as a trade-mark has been so employed in the market as to indicate to purchasers that the goods to which it is attached are the manufacture of a particular firm, it becomes, to that extent, the exclusive property of the firm, and no one else has a right to copy it, or even to appropriate any part of it, if by such appropriation unwary purchasers may be induced to believe that they are getting goods which were made by the firm to whom the trade-mark belongs (1). mark. What is the statutory definition of a trade-mark? It is now Definition provided by sect. 10 of the Patents, Designs, and Trade Marks of tradeAct of 1888, amending sect. 64 of the Act of 1883, that " a trade-mark must, for the purposes of the Act, consist of or contain at least one of the following essential particulars : 66 ‘(a) A name of an individual or firm printed, impressed, or woven in some particular and distinctive manner; or "(b) A written signature, or copy of a written signature, of the individual or firm applying for registration thereof as a trade-mark; or "(c) A distinctive device, mark, brand, heading, label, or ticket; or 66 "(d) An invented word or invented words; or "(e) A word or words having no reference to the character or quality of the goods, and not being a geographical name. "(2.) There may be added to any one or more of the essential particulars mentioned in this section any letters, words, or figures, or combination of letters, words, or figures, or of any of them, but the applicant for registration of any such additional matter must state in his application the essential particulars of the trade-mark, and must disclaim in his application any right to the exclusive use of the added matter, and a copy of the statement and disclaimer shall be entered on the register. 66 "(3.) Provided as follows: "(i.) A person need not under this section disclaim his own (1) Somerville v. Schembri, 12 App. Cas. 453, at pp. 456, 457. "(ii.) Any special and distinctive word or words, letter, figure, or combination of letters or figures, or of letters and figures, used as a trade-mark before the 13th day of August, 1875, may be registered as a trade-mark under this part of this Act." "The general object of the Trade Marks Acts is not to give new rights, but to place restrictions on the bringing of actions for infringement of trade-marks, by requiring that a trade-mark shall be registered before any action to prevent its infringement can be brought" (1). By the Act of 1883, "a fancy word or words" was entitled to be registered for the first time. The question then arose what word or words should be considered as "a fancy word or words" (2). In a leading case on the subject one of the judges of the Court of Appeal said: "I think a word to be a fancy word must be obviously meaningless as applied to the article in question. I think it must be a word fanciful in its application to the article to which it is applied, in the sense of being so obviously and notoriously inappropriate as neither to be deceptive nor descriptive, nor calculated to suggest deception or description (3). The difficult expression, "fancy word or fancy words," has now, however, been omitted from the Act of 1888, and the words, "an invented word or invented words, a word or words having no reference to the character or quality of the goods, and not being a geographical name " have been inserted in their stead. Soon after the passing of the Act of 1875 it was found that many marks were used by two or more individuals, and this gave rise to the promulgation of what is called the "Three Marks" rule, which has now been embodied in the Patents, Designs, and Trade Marks Act, 1883, sect. 74 (3) of which provides "that any device, mark, brand, heading, label, ticket, letter, word, figure, or combination of letters, words, or figures. which was or were before the 13th day of August, 1875, publicly (1) Edwards v. Dennis, 30 Ch. Div. 454, 470, decided on the Acts of 1875 and 1876. It has been decided on s. 77 of the Act of 1883 (re-enacting 8. 1 of Act of 1875, as amended by Act of 1876), that when a trade-mark has been registered an assignee of the registered proprietor can bring an action to prevent the use of the trade-mark without having registered the assignment: Ihlee v. Henshaw, 31 Ch. D. 323. (2) In re Van Duzer's Trade-mark, and In re Leaf's Trade-mark, 34 Ch. Div. 623. (3) Under the Act of 1883, the word "gem" (In re Arbenz' Application, 35 Ch. Div. 248), and the word "reversi" (In re Waterman's Trademark, 39 Ch. Div. 29), were held to be bad. The common name of an article in a foreign European country is not a trade-mark in England: Davis & Co. v. Stribolt & Co., 6 R. P. C. 207. |