The Registration Act of 1875. criminal law effected by the Act, and which are referred to in a later section of this chapter. Thirteen years later the Trade-Marks Registration Act, 1875 (), which came into operation on the 13th of August, 1875, established the present register of trade-marks. The object of the Act was two-fold; it was directed, on the one hand, to diminish the difficulty and cost of, or to altogether remove the necessity for the proof of title by use and reputation, which had cast so great a burden upon the owners of trade-marks in proceedings to restrain infringement, and, on the other, to secure the publication of marks which had been appropriated as trade-marks, and to define the rights of their proprietors, for the information of traders, and, further, to limit the classes of marks which should be capable of being so appropriated (a). The Act, accordingly, provided that registration should be primâ facie evidence of the right of the registered proprietor to the exclusive use of the trade-mark (b) in connection with goods of the class for which it was registered and used (c), and should, after the expiration of five years, be conclusive evidence of such right, so long as the trade-mark remained upon the register (d); provided that the proprietor of the mark remained the owner of the goodwill of the business in which it was used. And, with a view to compelling registration, the Act provided that from and after the 1st of July, 1876 (a date which was extended by the amending Acts (e)), a person should not be entitled to institute any proceeding to prevent the infringement of any trade-mark as defined by the Act until and unless such trade-mark was registered in pursuance of the Act, or, according to a () 38 & 39 Vict. c. 91. See the chapter on "The Register," below, P. 52. (a) Per Fry, L. J., in the Apollinaris Co.'s Tm., (1891) 2 Ch. p. 235; 8 R. P. C. 137; and Cotton, L. J., in Van Duzer's Tm., 34 C. D. p. 634; 4 R. P. C. 31 (1887). (b) Sect. 3. (c) Edwards v. Dennis, 30 C. D. 454 (1885), C. A.; below, P. 257. (d) Palmer's Tm., 21 C. D. 47; 24 C. D. 504 (1882), C. A.; below, P. 258. (e) 39 & 40 Vict. c. 33, and 40 & 41 Vict. c. 37. subsequent modification, in the case of any mark in use as a trade-mark before the passing of the Act of 1875, until and unless registration of the mark as a trade-mark should have been refused (f). the Act of 1875. The marks admitted to registration as trade-marks under What might the first Registration Act were required (g) to consist of one as tradebe registered or more of the following essential particulars: a name of marks under an individual or firm printed, impressed, or woven in some particular or distinctive manner; or a written signature or copy of a written signature of an individual or firm; or a distinctive device, mark, heading, label, or ticket; and to these essential particulars there might be added any letters, words, or figures, or combination of letters, words, or figures; and it was further provided that any special and distinctive word or words, or combination of figures or letters, used as a trade-mark before the passing of the Act might be registered as such under the Act. The Act attained a considerable measure of success, and 27,844 trade-marks were registered under it, but its provisions did not allow words to be registered as trademarks (h) unless they were old marks, or were registered in combination with one or more of the enumerated essential particulars; and as word-marks are exceedingly popular in this country, and were admitted and protected as trade-marks abroad, an alteration of the definition clause was determined upon (i). This was effected by the Patents, Designs, and Trade-Marks Act, 1883 (j), which came into operation on the 1st of January, 1884. The new Act The Regisrepealed the Act of 1875, with its amending Acts of 1876 of 1883. and 1877, but re-enacted, in substance, their principal provisions. It directed that the register of trade-marks, of which the old register is to be deemed to be a part (k), should be kept at the Patent Office established by the f) 39 & 40 Vict. c. 33, s. 1. See now sect. 77 of the Act of 1883, below, p. 260. (g) Sect. 10. A) Erp. Stephens, 3 C. D. 659 (1876), Jessel, M. R. (Aeilyton). (j) 46 & 47 Vict. c. 57. tration Act "Fancy words" allowed to be registered. Lord Herschell's Com Act (1), and should be under the control of the Comptroller-General of Patents, Designs, and Trade-marks, who acts under the superintendence and direction of the Board of Trade (m). It also introduced a number of new rules and provisions to regulate applications for, oppositions to, and rectifications of registration, and effected important changes with regard to the Sheffield cutlery marks (n), which the older Act had, substantially, left untouched. The most material alteration introduced by the Act of 1883 was the power it conferred to register a mark of which the essential particular should be a "fancy word or fancy words not in common use." What was intended by a fancy word not in common use the Act did not define, and the omission was the cause of a great deal of litigation; but a fairly definite meaning was at length put upon the phrase by the Court of Appeal, in the Melrose hair restorer, and the Electric velveteen cases (o). To fall within the meaning, a word must, the Lords Justices held, be "obviously not intended to be descriptive," and must "speak for itself and be a fancy word of its own inherent strength," and be "so obviously and notoriously inappropriate as neither to be deceptive or descriptive, nor calculated to suggest deception or description." Soon after the decisions just referred to, a very dismittee, 1887. tinguished Committee, presided over by Lord Herschell, were appointed by the Board of Trade to inquire into the duties, organization, and arrangements of the Patent Office under the Act of 1883, as far as related to trade-marks and designs, and in August, 1887, the Committee presented an interim, and in March, 1888, a final report, dealing not only with the matters specified, but with the general question of the registration of trade-marks. These important reports are frequently referred to in subsequent pages of this book, and it will be sufficient here to refer to (1) Sect. 78. (m) Sect. 82. (n) Sect. 81, see below, p. 91. (0) Van Duzer and Leaf's Tms., 34 C. D. 623; 4 R. P. C. 31 (1887). See below, p. 143. word or a few only of the suggestions made by the Committee. They recommended that a new definition clause should be enacted, stating what symbols might be registered, and substituting for the fancy-word phrase in the Act of 1883 the phrases "An invented word or invented words; or a Invented word or words having no reference to the character or words. quality of the goods, and not being a geographical name" (p), and that additions to registered trade-marks (that is, matter other than their essential particulars registered with them) should be expressly disclaimed by the applicants for registration (p). The alterations and some minor changes were passed into law by the amending Act of 1888 (7), which came into operation on the 1st of January, 1889. rejected. The Committee further reported, as principles which Doubtful ought to govern the Comptroller in the acceptance for marks to be registration or the rejection of marks: that "inasmuch as the object of registration is to secure a distinctive mark, and the registration of a mark which may conflict with a mark already registered would not only be to the detriment of the owner of such prior mark, but of the applicant himself, we think that in cases where it is doubtful whether the mark ought to be accepted or not, the safer and more beneficial course would be to reject it " (r); and that, in their opinion, in comparing a new mark tendered for registration with a prior mark which it was alleged to too closely resemble, the question should be determined by considering what is the leading characteristic, or, as it is otherwise expressed, what is the idea, of each mark. The Acts, it has been held, vest in the Comptroller a discretion, to be exercised, of course, judicially and subject to appeal, whether to register or reject any mark first used since the 13th of August, 1875 ($); and this discretion, exercised in the light of the recommendations of the committee, has (p) Act of 1888, s. 10. (q) 51 & 52 Vict. c. 50. (s) Eno v. Dunn, 15 App. Ca. 253; 7 R. P. C. 311. (Fruit-Salt Baking Powder.) made the choice of a new trade-mark, or the registration. of an existing one, often a matter of considerable uncertainty and trouble. Down to the end of the year 1892, 70,625 trade-marks had been registered under the Acts, and some five or six thousand applications are annually made for registration (t); Unregistered but a very large number of trade-marks in actual use in trade-marks the country still remain unregistered, either because they are not capable of registration for the reason that they do are still numerous. not fall within the definition clause of the Act (u), or because their proprietors do not think it worth while to seek to register them. These unregistered trade-marks, notwithstanding the prohibitory sections of the Acts (r) already mentioned, which make registration, in general, a condition precedent to litigation to restrain or to obtain damages for infringement, are in many cases to a great extent protected by the Courts in the passing off actions, next to be referred to. For it is now well settled that if the use by the defendant upon his goods of an unregistered trade-mark belonging to the plaintiff is calculated to pass off or cause to be passed off the defendant's goods as the goods of the plaintiff, an injunction may be granted to restrain such use (y), and this whether the use be deliberately fraudulent and intended by the defendant to be deceptive, or not (≈). 3. Passing off and Trade-name Actions. By the judgments in Millington v. Fox (a) and later cases in equity (b), and by the Acts referred to above and (t) Comptroller's Report for 1892. (x) Act of 1875, s. 1; Act of (y) Montgomery v. Thompson, 41 C. D. 35; (1891) A. C. 217; 8 R. P. C. 361 (Stone Ales), where the plaintiff's mark was removed from the register, but he succeeded in the action. () Reddaway & Co. v. Bentham Hemp Spinning Co., (1892) 2 Q. B. 639; 9 R. P. C. 503; C. A., see below, p. 265. (a) 3 My. & Cr. 338 (1838), Cottenham, L. C. (b) See the next chapter. |