What is an essential particular Alteration of old marks. The alteration can only be permitted in any particular which is not an essential particular within the meaning of the Act. Reference is obviously intended to be made to the essential particulars enumerated in sect. 64 (f), which must, under the Act of 1888, be stated in the application for the registration of any mark made subsequently to the 1st of January, 1889 (g). As regards an old mark, however, that is, a mark registered under sect. 64 (3) (ii.), no part of the mark is specified as an essential particular, and "essential" must therefore be read as equivalent to "substantial" (h) or "material." The section has accordingly a much more restricted operation in regard to old marks than in regard to marks first used since 13th August, 1875, and registered under the provisions applying to new marks. The policy of the Acts is that old marks should be registered and kept registered substantially as they were used before the date mentioned (i). In the absence of special circumstances, therefore, no alteration at all should be permitted (k). But the section allows some alterations to be made in old marks. For instance, the Court has authorized the addition of the word limited to a mark where the proprietors had assigned their rights to a company bearing their old firm name with that addition (7), and has permitted the name of certain works abandoned by the proprietors to be struck out, and the name of other works retained by them to be printed in a different position in the registered mark (m). 66 (f) The proviso in the old rule ran, so that he do not alter any one or more of the particulars in such mark which are declared by sect. 10 of the Act (of 1875) to be the essential particulars of a trademark." A signature mark, therefore, cannot be altered, above, p. 118. (g) Chap. VIII., p. 112. (h) Adams' Tms., 9 R. P. C. 174; 66 L. T. 610 (1892), Kekewich, J.; cf. per Lord Cairns in Orr-Ewing v. The Registrar of Tms., 4 App. Cas. p. 484 (1879). (i) Phillips' Tms., (1891) 3 Ch. 139; 8 R. P. C. 469, Chitty, J.; Adams' Tms., supra. And see Chap. VIII., p. 160. (k) Re Henry Clay, (1892) 3 Ch. 549; 9 R. P. C. 449, Kekewich, J. (1) Guinness & Co.'s Tm., 5 R. P. C. 316 (1888), Chitty, J. (m) Burham Brick, &c. Co.'s Tm., 9 R. P. C. 422 (1892), Stirling, J. mark." "Patent." But it has refused to expunge trade-mark so printed upon "Trade- In the case of new marks, alterations in matters other Alterations than the essential particulars are more readily permitted, allowed in and in estimating the resemblance referred to in sect. 72 (2), it is proper to have regard to the possibility of such alteration (r). new marks. But no alteration to the prejudice of other registered None allowed to the prejuproprietors, or such as to cause the altered entry to infringe dice of other the restrictions of the Acts can be allowed. Thus, in persons. Reiss' Trade-Mark (s), the applicant, having a registered combination device trade-mark bearing the words Grass Bleach, Best Quality, and having ceased to use the method of grass bleaching, desired to substitute for Grass their own trade name, Reiss. The comptroller required (t) them to inform the Court that there were certain other trade-marks containing the name Reiss, and North, J., refused to grant the application until he was satisfied that the altered mark would bear no resemblance to any of the marks referred to. Amongst the alterations allowed in reported cases are Instances of the addition of limited to a name (u); the correction of an (n) See Chap. X., · p. 214. (0) Phillips' Tm., supra. This alteration was allowed in the case of a new mark in Colman's Tms., (1892) 2 Ch. 402; 8 R. P. C. 209, by Kekewich, J., the proprietors of the mark undertaking to register a statement of the essential particulars of their marks and to disclaim the remainder of them. (p) Adams' Tm., supra. (2) Re Henry Clay, supra. (r) Murphy's Tm., 7 R. P. C. 163 (1890), Stirling, J. (8) 5 R. P. C. 291 (1888), North, J. (t) He consented not to appear on their undertaking to read his letters in the matter to the Court. (u) Bryant & May's Tm., 4 T. L. R. 675 (1887), Stirling, J.; Guinness & Co.'s Tm., 5 R. P. C. 316 (1888), Chitty, J.; Burke's Tms., W. N. (1891) 2, North, J. alterations. English letter printed by mistake for a Russian letter (x); the omission of certain words (y); and the alteration of the name of the proprietor's works (z). Notice of the application and order to the comptroller. Advertisement by the comptroller. The comptroller may Procedure on an Application under Section 92. The procedure to be adopted is generally the same as that on an application under sect. 90 (a), with such differences as are occasioned by the fact that on applications under that section the registered proprietor is usually a respondent to the application, while on applications under sect. 92 he is himself the applicant, and there is usually no respondent other than the comptroller. Fourteen days' notice of the intended application must be given to the comptroller (b), and if leave is granted the applicant is directed to forthwith supply to the comptroller such a number of representations of the trade-mark, as altered, as the comptroller may deem sufficient (c). The person in whose favour the order is made, or such one of them if more than one, as the comptroller may direct, must forthwith leave at the Patent Office, Trade-Marks Branch, an office copy of the order. The register is thereupon to be rectified or altered, or the purport of the order to be otherwise duly entered on the register, as the case may be (d). The comptroller must, if he thinks the rectification or variation should be made public, at the expense of the applicant, publish by advertisement or otherwise, and in such manner as he thinks just, the circumstances attending the rectification or variation of the register (e). The comptroller is entitled to appear and to be heard (x) Ermen & Roby's Tm., 4 R. P. C. 70; 56 L. J. 177 (1886), Chitty, J. (y) Burke's Tm., supra. (z) Burham Brick, &c. Co.'s Tm., 9 R. P. C. 422 (1892), Stirling, J. For other orders, see Sebastian, 3rd ed. p. 406. (a) See above, p. 237. (b) Sect. 92 (2), r. 51, p. 603. (c) Rule 51. (d) Rule 46. on the application. If he thinks there is no objection to appear on the the alteration sought to be made, or that it is sufficient to application. see that the facts are brought before the Court (f), he does not usually appear. He frequently signifies to the applicant that he has no objection to the proposal, and his acquiescence is, of course, of material importance in inclining the Court to accede to the application. The applicant is always directed to pay the costs of the The applicant comptroller, if the comptroller appears (g). must pay his costs. (f) See Reiss' Tm., 5 R. P. C. 291, supra, p. 249, n. (g) Further as to costs, see above, P. 244. 1. Title to new trade-marks conferred by registration 2. Registration as evidence of title sect. 76. Registered proprietor entitled to exclusive use of mark comparison with earlier Acts "subject to the provisions of this Act" PAGE .. 252 253 254 254 255 .. 255 .. 255 256 right limited to goods for which the mark is registered and actually used 256 256 certificate of registration evidence of title prima facie or con- 257 the register may be rectified at any time 258 259 260 registration is conclusive if there is no application under sect. 90 3. Registration is a condition precedent to an action for infringe . 260 (a) new marks incapable of registration are within the pro section is a condition precedent to an action, but not to the only the registered proprietor or his assignee can sue THE PROHIBITION DOES NOT AFFECT PASSING OFF ACTIONS proof of fraud is not necessary to escape the prohibition 269 269 270 Acts. and of the protection of the Merchandise Marks Act .. Object of the THE general object of the Registration Acts was not to create new rights, but to regulate the use of, and the means of, protecting trade-marks (a). Their main effect, (a) Lyndon's Tm., 32 C. D. p. 117; 3 R. P. C. 102 (1886), per Cotton, L.J. |