Chap. XIII. mark already on the register consents to the registration of the other mark will not enable it to be registered.1 Deceptive or scandalous marks. Trusts. Old and new marks. What marks A person cannot register as part of, or in combination with, a trade mark, any words the use of which would, by reason of their being calculated to deceive, or otherwise, be disentitled to protection in a Court, or any scandalous design. And the comptroller may refuse to register a trade mark if the use would, in his opinion, be contrary to law or morality.3 No notice of any trust, expressed, implied, or constructive, may be entered on the register.+ Before we proceed to consider the sections defining the classes of marks which are capable of being registered as trade marks, it should be observed that the Acts now in force preserve a distinction, which was recognized by the Act of 1875, between marks which had, and marks which had not, been in use as trade marks before the passing of that Act. The former are generally called "old marks," the latter "new marks"; and it will be seen that, whereas a new mark cannot be registered unless it contains one of the "essential particulars" specified in the statutes, an old mark may be capable of registration though it does not satisfy that requirement. The purpose of this distinction was to preserve vested rights which had been acquired by user before the Act of 1875.6 By the Act of 1888,7 amending in this respect the Act of may be regis- 1883,8 a trade mark, to be registered under the Acts, must contain at least one of the following "essential particulars":-7 tered. Names. Signatures. Devices, &c. (1.) A name of an individual or firm printed, impressed, or woven in some particular and distinctive manner; or (2) A written signature or copy of a written signature of the individual or firin applying for registration thereof as a trade mark; or (3.) A distinctive device,10 mark, brand, label, heading, or ticket 12 or Ch. D. 681; Re Apollinaris Co., [1891] 1 Re Dewhurst, supra; Re Ehrmann, 2 S. 73. 3 S. 86. 4 S. 85. 538 & 39 Vict. c. 91, s. 10. 6 See Orr-Ewing v. Registrar of T. M., 4 App. Cas. 495. 7 S. 10. S S. 64. 9 An individual or firm cannot now register the signature of a predecessor in business (unless it was an "old mark," see Kerly, T. M. 129). 10 Rowland v. Mitchell, [1897]1 Ch. 71, the portrait of the manufacturer. 11 As to a "brand," see Piric v. Goodall, [1892] 1 Ch. 35. (4.) An invented word or invented words; 1 or (5.) A word or words having no reference to the character or quality of the goods, and not being a geographical name.* Where, therefore, it has to be determined whether a given mark constitutes a trade mark capable of registration as such under the Act, the first duty cast upon the Court is to ascertain whether some one, or more than one, of the essential particulars of a trade mark, as defined by the Act, is found to exist, so that the mark may be described with the one, or more than one, essential particular or particulars which distinguish it.3 Chap. XIII. Words. tial additions. There may be added to any one or more of the "essential Non-essenparticulars any letters, words, or figures, or combination of letters, words, or figures. In such case the application for registration must state "the essential particulars of the trade mark," and must disclaim any right to the exclusive use of the added matter; but the applicant need not disclaim his own Disclaimer. name or place of business." marks in common use. There may also be added, in the case of marks not in use before Addition of 1875," any distinctive word or combination of words, though the same is common to the trade in the goods with respect to which the application is made," subject to the same provisions as to in this clause. It would seem that it means "distinguishing the manufacture of the person who has registered the trade mark from the manufacture of all other persons," see per Fry, L. J., Re Wood, 32 Ch. D. 247, 262; Re Jackson Co., 60 L. T. 93; cf. per Romer, L. J., Re Faulder, [1902] 1 Ch. 125. The distinctiveness must be independent of colour: Re Hanson, 37 Ch. D. 112. See Seb. T. M. 38, as to the various kinds of marks included in this class. In the corresponding clause of the Act of 1883, there was included "fancy word or words not in common use," as to which see Re Van Duzer, 34 Ch. D. 623, 639; Waterman v. Ayres, 39 Ch. D. 29; Re Bovril, [1896] 2 Ch. 600. 1 An invented word need not be absolutely new; Re Linotype Co., [1900] 2 Ch. 238. This clause and the next seem to be substituted for 66 fancy words" in the Act of 1883; see last note. But these two clauses must not be read together; Re Eastman Co., Re Magnolia Metal Co., [1897] 2 Ch. 3 Per Lord Cairns, C., Orr-Ewing v. Registrar of T. M., 4 App. Cas. 479, 484. + I..., numerals; Ex parte Stephens, 3 Ch. D. 659. 5 S. 64 (2) of the Act of 1883, as amended by s. 10 of the Act of 1888. See Re Player, [1901] Ch. 382; Re Crompton, [1902]1 Ch. 758. 6 Re Goodall, 42 Ch. D. 566; Re Re Colman, [1894] 2 Ch. 115; Re 8 S. 64 (3) (i), as amended by s. 10 of Chap. XIII. disclaimer of right of exclusive user.1 Only additions, not essential particulars, need be disclaimed under this section. Subsequent additions by leave of Court. Common to the trade." Three Mark" Rule. Old marks. The registered proprietor of any trade mark may, by leave of the Court, add to or alter such mark in any particular, not being an "essential particular."s Words, or combinations of words, are to be deemed to be common to the trade if they have been "publicly used by more than three persons on the same or a similar description of goods."4 This is analogous to the "Three Mark Rule," as to old marks, viz., that registration of the same, or substantially the same, mark be granted to not more than three persons who can prove real user before 13th August, 1875, but that proof of user by more than three persons before that date debars all persons from registering." may So far we have been dealing with "new marks." With respect to "old marks," it is provided" that "any special and distinctive3 word or words, letter, figure, or combination of letters or figures, or of letters and figures, used as a trade mark before 13th August, 1875," may be registered as a trade mark 10 under the Act of 1883. Provided, therefore, that the words, &c., are special and distinctive, and have been used before 13th August, 1875, as trade marks, they are capable of registration under the Acts, though they may not come within the definitions of marks capable of registration as "new marks," but the mark must have been used alone as the trade mark, and not in combination with other words or in combination with any device.11 1 S. 74 (2), as amended by s. 16 of the Re Clément, [1900] 1 Ch. 114. + S. 74 (3). See Re Wragg, 29 Ch. D. 3 Kerly, T. M. 207, 214. The rule was first promulgated by the Commissioners 7 Act of 1883, s. 64 (3); Act of 1888, s. 10. 8 See Re Wood, 32 Ch. D. 247, 262; Re Hopkinson, [1892] 2 Ch. 116; Re Chesebrough (Vaseline), [1902] 2 Ch. 1; ante, p. 214. 9 I.e., numeral; Ex parte Stephens, 3 Ch. D. 659. 10 See Re Leonard and Ellis, 26 Ch. D. 288, 296; Re Harrison, McGregor & Co., 42 Ch. D. 691. 11 Re Palmer, 24 Ch. D. 504; Re Leonard and Ellis, 26 Ch. D. 288, 295; 66 marks as additions to old marks. Power is given to register, as an addition to any old mark, Chap. XIII. 'any distinctive device, mark, brand, heading, label, ticket, Registration letter, word, or figure, or combination of letters, words, or of common figures, though the same is common to the trade1 in the goods with respect to which the application is made"; but there must be a disclaimer of any right to exclusive user of the additions.3 As to "old" marks, the rule referred to above (p. 216) is still Three Mark acted on, that identical or similar marks may be registered by different persons in respect of similar kinds of goods up to the number of three; but if the mark was used by more than three persons it is deemed common to the trade, and no registration is allowed. Rule. marks. In the case of registered marks which comprise some additions Combination to the "essential particular," and which are often called “combination marks," it would seem that, as the additions could not be registered alone, there is no infringement unless the "essential particular" is taken." Application for registration of a trade mark is to be deemed to Effect of registration be equivalent to public use of the trade mark ; and registration of a person as proprietor of a trade mark is to be primâ facie evidence of his right to the exclusive use of the trade mark, and after the expiration of five years from the date of registration is to be conclusive evidence of his right, subject to the provisions of the Act. The result of these provisions appears to be that during the period of five years the registered proprietor is qualified to sue an infringer, but the defendant may rebut the plaintiff's primâ facie right without moving to expunge the mark from the register." If the mark has been on the register for five years, that dispenses Perry Davis v. Harbord, 15 App. Cas. 316, 321; Richards v. Butcher, [1891] 2 Ch. 522. 1 Ante, p. 216. Act of 1883, s. 74 (1) (a). Observe that as to new marks the corresponding provision extends only to words or combinations of words. * S. 74 (2); s. 16 of Act of 1888. See ante, p. 215. Re Bancroft & Co., 5 R. P. C. 209. Seb. T. M. 134; Re Horsbrugh, 53 L. J. Ch. 237. 6 Act of 1883, s. 75, amended by Act of 1888, s. 17; Re Batt, [1898] 2 Ch. 432. The meaning is that those 319. 7 S. 76. 8 S. 90, as amended by s. 23 of Act of 1888. 9 See Kerly, T. M. 272. Chap. XIII. with the necessity of the plaintiff's adducing evidence of exclusive use; but the defendant may nevertheless apply to have the register rectified by expunging the mark on the ground that it ought never to have been registered, as, for instance, if it was not a trade mark at all; for the Act was not intended to give the person who gets a mark placed on the register a right to enjoy that as a trade mark which never was a trade mark.2 Registration for entire class-user for part. Misrepre sentation in trade mark. Transfer of trade mark. It has been laid down that a person who has registered a trade mark for the whole of one of the classes of goods (under the classification contained in the Rules, Schedule II.), but, in fact, has used it for only part of the articles comprised in that class, cannot claim the exclusive right to use it for every article in the class. If a mark is registered for too wide a class of goods, the proper remedy is restriction, not removal." It should be noted that a plaintiff who would otherwise be entitled to maintain his action may be deprived of his right to sue if his trade mark contains a false representation likely to deceive the public, as where he describes his goods as patent when he has not any patent; but a mere collateral misrepresentation has not the same effect.8 A trade mark, when registered, can be assigned and transmitted only in connection with the goodwill of the business concerned in the particular goods, or classes of goods, for which it has been registered, and is determinable with that goodwill.9 A series of trade marks (ante, p. 212) is assignable and transmissible only as a whole.10 The business must be co-extensive with the goods or classes of goods in respect of which the trade mark is registered; and the assignee has no exclusive right unless the business assigned is co-extensive with the trade mark as registered."1 Per Cotton, L. J., Edwards v. Dennis, 30 Ch. D. 454, 472. 2 Per Jessel, M. R., Re Palmer, 21 Ch. D. 47, 58; Re Wood, 32 Ch. D. 247, 258, per Lindley, L. J.; Re Wragg, 29 Ch. D. 551; Baker v. Rawson, 45 Ch. D. 519, 531; National Starch Co. v. Munn's Co., [1894] A. C. 275; Batt v. Dunnett, [1899] A. C. 428. 3 See ante, p. 212. 4 Edwards v. Dennis, 30 Ch. D. 454; Re Hart, [1902] 2 Ch. 621 ; Hargreave v. Freeman, [1891] 3 Ch. 39; Batt v. 5 Re Crompton, [1902] 1 Ch. 758. 7 Singer Co. v. Wilson, 2 Ch. D. 434, 456. See Kerly, T. M. 407. 8 Ford v. Foster, 7 Ch. 611. Act of 1883, s. 70. See Re Wellcome, 32 Ch. D. 213; Re Magnolia Metal Co., [1897] 2 Ch. 371; Kerly, T. M. 324, 343. 10 S. 66. See ante, p. 208. 11 See Edwards v. Dennis, 30 Ch. D. 454, 479, per Fry, L. J. |