"you cannot register a mark of which the only distinction is the use of a colour, because, practically, under the terms of the Act, that would give you a monopoly of all the colours of the rainbow." colour upon marks. The difficulties of registration in connection with mere colour marks, such as the line headings for cotton piece goods are referred to in the earlier part of the chapter (e). The colours in which a mark is actually used, or is Bearing of likely to be used, have often a material bearing upon the resem questions of alleged resemblance calculated to deceive, or blance of of infringement (f); for instance, a design similar in outline to that of the device in another mark, but filled up in a totally different manner, may have the distinctive filling up observed by the use of a deep colour in printing (g). And in a recent case the words red star brand were directed to be removed from the register on the ground that they Constituted a mark having such resemblance to a star deice mark, which was coloured red in actual use, as to be Calculated to deceive (h). In some cases marks have been allowed to be entered or retained on the register upon the proprietors undertaking to use them in particular colours only, a note of the undertaking being placed on the register (i). (e) Above, p. 136. (f) Mitchell v. Henry, 15 C. D. 181 (1880), C. A.; Turney and Sons' Tm., 11 R. P. C. 37 (1893), North, J. g) Worthington's Tm., 14 C. D. 8 (1880), C. A.; Biegel's Tm., 4 R. P. C. 525; 57 L. T. 247 (1887), Chitty, J., Turney and Sons' Tm., supra. (h) Société, &c. de l'Etoile's Tm., (1894) 1 Ch. 61; (1894) W. N. 42; 10 R. P. C. 436; 11 R. P. C. 142; Stirling, J., and C. A. (i) Re Jeffrey & Co., 18 May, 1888, Stirling, J., registration allowed with note binding applicants not to use mark in black, or any colour so dark as to resemble black; Re Johnson, Philpott & Co., 21 Feb. 1888, North, J., register rectified by consent, by adding note that the proprietor was only to use his mark in blue and white. Both cases are cited Sebastian, 3rd ed. p. 368. CHAPTER IX. ADDITIONS AND DISCLAIMERS. PAGE Additions .. Lord Herschell's Committee on additions and disclaimers Additions which are common to the trade The registration of common words in a monopoly Distinctive means prima facie distinctive Common to the trade .. .. Common words in a distinctive label need not be disclaimed Common additions are not part of the trade-mark .. .. 171 .. 172 172 . 173 . 173 .. 174 It is provided by sect. 64 of the Act (a) that a trade-mark for registration under the Act must consist of, or contain, one at least of the essential particulars enumerated in that section. It is not, however, necessarily confined to such essential particulars, but it may comprise other matter also, as, for instance, statements of quality or price (b), or descriptive or ornamental matter, and most trade-marks do, in fact, comprise some such additions to the parts the marks which are claimed and protected as their essential particulars. All the Acts have provided for such (a) Chap. VIII., p. 106. (b) Cf. sect. 66, series of marks, above, p. 90. of additions; the provision in the present Act (c), which, with immaterial verbal changes, is the same as the corresponding sections of the Acts of 1875 (d) and 1883 (e), being in the following terms: "There may be added to any one or more of these Additions. [the essential] particulars [mentioned in this section] any letters, words, or figures (ee), or combination of schell's Com disclaimers. Remarking upon this provision, Lord Herschell's Com- Lord Hermittee reported as follows (g) :-" It is said, and we think mittee on truly, that it is not easy to understand what is the exact additions and status of the added matter provided for by sect. 64. Where the added words are not common to the trade in the goods with respect to which the application is desired, the right of exclusive user need not be disclaimed (), yet it is presumed that the proprietor of the trade-mark could not object to their use by any other person except in connection with the essential particular of his trade-marks. What purpose then do they serve? Perhaps they may be useful in the case of a colourable imitation of the essential particular. If, with such an imitation, the added words were used, it would assist the proprietor in establishing that his trade-mark had been infringed. But the added matter may, it is assumed, be of so distinctive a character as to form an essential part of the trade-mark so that its use might be an infringement. We think it would clearly be desirable that the added matter, which the proprietor does not claim the exclusive use of, should be disclaimed, so that the public may know exactly what is the trademark registered. We think, too, that all disclaimers should appear in connection with the mark in the official journal." (c) Sect. 64 (2), Act of 1888, s. 10. (d) Sect. 10. (e) Sect. 64 (2). (ee) "Figures' here means numerals, Exp. Stephens, 3 C. D. 659 (1876), Jessel, M.R. (f) The word in italics was repealed, and the words in brackets were added by the Act of 1888, (g) Report of 1888, p. xii. Disclaimers to be included in the application to register. The "essential particulars" trade-mark are not neces In consequence of this recommendation, what is now the latter part of sect. 64 (2), and also sect. 64 (3) (i) were added by the Act of 1888. The former provides that— ["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."] Disclaimers in respect of additions which are primâ facie distinctive, but are in fact common to the trade in question, were already required by the Act of 1883, and they are dealt with by a separate section of the Act, sect. 74, which is set out below. The reason for requiring the essential particulars of a mark tendered for registration to be identified, and the remaining matter contained in it to be disclaimed is, then, that the exact status of the latter may be defined. It is an advantage to traders to have the whole trade-mark, with all the common marks and words, the descriptive additions and the other added matter, if any, all reproduced upon the register as it is printed when the trade-mark is in actual use (k); and, on the other hand, it is material that the public should know what parts of the mark as registered may be lawfully used by others than the proprietor. The statement and disclaimer are also of service to enable the comptroller and the Court to more readily determine whether a mark which it is sought to place upon, or to remove from, the register does or does not comply with the requirements of sect. 64. It is necessary to guard against a possible confusion of a registered which may arise from the use of the words "essential particulars" with somewhat different meanings in connection with trade-marks. All the material and distinctive parts of a trade-mark, and all its prominent features are sometimes spoken of as its essential particulars, and these may include items which do not fall within the list sarily all its distinctive parts. (k) See Kuhn & Co.'s Tm., 53 L. J. Ch. 238 n. (1878), Jessel, M.R. of symbols in sect. 64 (1); for instance, they may comprise words which, although distinctive, are not capable of registration under sect. 64 (1) (d), or sect. 64 (1) (e). It follows, however, from the sub-section set out above, that all the items of a composite trade-mark which are not referable to any of the classes enumerated in the list contained in the Act, are to be treated as "added matter," and that no exclusive rights in regard to such items are conferred by the registration. Of course, the trade-mark may, as a whole, fall into one of the classes-for example, as a distinctive label or an old mark. The provision that the statement and disclaimer shall Disclaimer on be contained in the application is not merely directory. appeal. It cannot be waived by the Court on an appeal from the comptroller (). The cases cited were both decided on sect. 74, and in respect of applications made before the Act of 1888 came into operation; but the terms of sect. 74 and sect. 64 (2), as amended by the last-mentioned Act, correspond, and the same construction will, no doubt, be put upon them in the latter section as in the former. It is further provided by sect. 64 (3) (i) that— prietor need ["A person need not under this section disclaim The prohis own name or the foreign equivalent thereof, or not disclaim his place of business; but no entry of any such name his own name. shall affect the right of any owner of the same name to use that name or the foreign equivalent thereof "] (m). This provision was also added by the Act of 1888. A Trade-name. trader has, as is shown elsewhere (n), a right to the exclusive use of his own name, limited by the rights of other traders to honestly use their own names, or the names which they honestly adopt. This exists independently of the law of trade-marks, and the report of Lord Herschell's Committee (1) Goodall's Tm., 42 C. D. 566 (1889), North, J.; Re Meeus' Application, (1891) 1 Ch. 41; 8 R. P. C. 25, Chitty, J. As to the comp troller's power of amendment, see |