documents in Court at the hearing, and not to object to produce them, the Court set aside the order, without prejudice to any order the judge at the trial might think fit to make as to discovery of documents. If the case set up is that the mark objected to is Particulars. deceptive, and it is alleged that it has in fact deceived certain persons, particulars as to the persons deceived may be ordered to be given (h). An office copy of any order to rectify must be left forthwith at the Trade-Marks Branch of the Patent Office, and the register is to be thereupon rectified or altered, or the purport of the order to be otherwise duly entered on the register, as the case may be (i). The comptroller is directed, if he thinks that the rectification or variation. should be made public, to publish, by advertisement or otherwise, and in such manner as he thinks just, the circumstances attending the rectification or variation in the register at the expense of the person applying for it (k). Damages under section 90. It is difficult to see what damages can be given under the section. In several of the older cases under sect. 35 of the Companies Act of 1862, upon which sect. 90 is founded, the difference between costs as between solicitor and client and as between party and party were given as damages (1); but these cases were overruled (m), and, though it has since been held (n) that solicitor and client costs may be given in the Chancery Division under the jurisdiction inherited from the old Court of Chancery in any proper case, there is no reason to suppose that the cases first referred to would now be followed. (A) Humphries v. The Taylor Drug Co., 39 C. D. 693; 5 R. P. C. 687 (1888), Kekewich, J. An action for infringement. (1) Rule 46. (*) Rule 50. (1) e.g., Anderson's Case, 17 C. D. 373. (m) Cockburn v. Edwards, 18 C. D. 449; Buckley on the Companies Acts, 6th ed. p. 140. (n) Andrews v. Barnes, 39 C. D. 133, Kay, J., and C. A. Order to be served on the comptroller. Possibly in a case where the presence of the wrongly registered mark of the respondent upon the register has caused the applicant to fail in proceedings taken to register a mark which he was otherwise entitled to register, the costs of these abortive proceedings might be given as damages under the section. There is no reported case in which damages have been given under the section. In any event, it seems that damages could only be granted where an order for rectification is made (0). Costs (p). The ordinary rule that the unsuccessful party must pay the costs of the proceedings is rarely departed from (q), and these costs include the comptroller's costs, if he think fit to appear. The comptroller is never directed to pay costs. The Court has, however, a discretion whether to give costs or not, and, in the exercise of this discretion, Kekewich, J., refused to give costs to a successful applicant who could not have been interfered with in the slightest degree in his business had he allowed the mark to remain unaltered (»); and in a case where the defendant in an action for passing off his goods as those of the plaintiff, successfully applied to expunge the plaintiff's registered mark, North, J., reserved the costs of the application till after the hearing of the action (s). And where in a similar case the plaintiff obtained an injunction against the defendant, on the ground of the fraudulent passing off of the latter's goods as his, and the defendant's motion to rectify failed, and was dismissed with costs at the trial, but, when urged on other grounds, succeeded in the Court of Appeal, no costs of the appeal on that point were given, (0) Ottos Kopje Diamond Mines, Ltd., (1893) 1 Ch. 618, a company case. (p) See also Chap. IV., p. 85; and Chap. XV., p. 364. (a) Hyde & Co.'s Tm., 7 C. D. 724 (1878); Kuhn & Co.'s Tm., 53 L. J. Ch. 238 n. (1878), both Jessel, M.R. (r) Humphries v. Taylor Drug Co., 53 L. T. 820 (1888), Kekewich, J., (Herbalin); see also Perry Davis' Tm., 5 R. P. C. 337, Kay, J. (s) Gianaclis' Tm., 6 R. P. C. 467; 58 L. J. Ch. 782 (1889). because the objection was not urged in the Court below, In Hill's Trade-Mark the application to rectify was In Talbot's Trade-Mark (r), where the application to rectify succeeded, no costs were given, because the applicant failed in regard to one of the grounds relied on, and he had delayed to move for three years. As regards security for costs where the respondent is resident abroad, see above, p. 241. Appeal. An order made on an application under sect. 90 is a final order, and an appeal to the Court of Appeal against it must consequently be heard by not less than three judges (r). The appeal must be brought within fourteen days, and must be by a fourteen days' notice of motion (). The Court may stay execution of its order to rectify Stay of pending an appeal, and it will sometimes do so (2), but execution. the appeal itself does not act as a stay (a). In Re Palmer's Application (b) the Court of Appeal, having reversed the decision of the judge of first instance on a preliminary (t) Thompson v. Montgomery, 41 (e) W. N. (1894) 12; 11 R. P. (r) Rivière's Tm., 26 C. D. 48 (1884), C. A.; Judicature Act, 1875, sect. 12; see the notes to Ord. 58, rr. 3 and 15, in the Annual Practice. (y) Ord. 58, rr. 3, 9 and 15; see Re Blyth and Young, 13 C. D. 416; and Onslow v. The Commissioners of (z) Harrison v. Woodroffe, 7 R. (a) Ord. 58, r. 16. (b) 22 C. D. 88 (1882). Sect. 91. Alteration of address. Amendment or cancellation only at the proprie tor's request. objection, refused to stay the proceedings on the merits before the judge pending an appeal to the House of Lords against their decision. 2. Correction and Cancellation of Entries at the Proprietor's Request. By sect. 91 (b) and (c) (a) the comptroller is empowered to correct any clerical error in the name, style, or address of the registered proprietor, and to cancel the entry of a trade-mark on the register, wholly or in part. The sub-sections provide that— "The comptroller may, on request in writing accompanied by the prescribed fee (b)— "(b) Correct any clerical error in the name, style, or address of the registered proprietor of a patent, design, or trade-mark. (c) Cancel the entry or part of the entry of a trade-mark on the register: provided that the applicant accompanies his request by a statutory declaration (c) made by himself, stating his name, address, and calling, and that he is the person whose name appears on the register as the proprietor of the said trademark." Rule 48 directs the comptroller to enter any alteration of the address of the registered proprietor on application (d) and payment of the prescribed fee (d). It is not expressly stated in sub-sect. (b) by whom the request is to be made, but obviously it is intended to be made by the registered proprietor only, and the forms attached to the rules and referred to above are drafted on the assumption that this is so. It is suggested that the proviso printed in the Act as part of sub-sect. (c) is to be construed as applicable to the whole section. A similar (a) Sub-sects. (a) and (d) deal with the correction of errors in or in connection with an application to register, and the omission of any of the goods referred to in it. (b) 5s. (c) Rule 61. Forms O. and P., Appendix, p. 612. (d) 5s. p. 612. Form M., Appendix, error in printing to that suggested is to be found in sect. 64 (3) (ii.). of an entry. Sub-sect. (c) providing for cancellation of an entry at Cancellation the proprietor's request, corresponds to the rule of February, 1878, made under the old Act. A registered proprietor may wish to cancel the whole or part of a trademark registered in his name, because he has ascertained that it ought not to have been registered, and so to avoid. the costs of any application under sect. 90 to expunge it which might be made by a person aggrieved, or because it stands in the way of some other registration he desires to be effected, or in pursuance of an arrangement with other traders, or to cancel part of a mark in order to more readily support the registration of the remainder. Sub-sect. (b) only relates to the correction of clerical errors. Any other alteration of the register must be effected under sect. 90, already discussed, or under sect. 92. 3. Alterations in Non-Essential Particulars. Sect. 92 provides that "(1) The registered proprietor of any registered Sect. 92. trade-mark may apply to the Court for leave to add to or alter such mark in any particular, not being an essential particular within the meaning of this Act, and the Court may refuse or grant leave on such terms as it may think fit. "(2) Notice of any intended application to the Court under this section shall be given to the comptroller by the applicant; and the comptroller shall be entitled to be heard on the application. "(3) If the Court grants leave, the comptroller shall, on proof thereof, and on payment of the prescribed fee (e), cause the register to be altered in conformity with the order of leave." This section corresponds to the rule 35 of the old code under the Act of 1875. (e) Ten shillings. |