Provision is made for entry on the register of persons entitled Chap. XIII. to registered trade marks "by assignment, transmission, or other operation of law." The person for the time being entered in the register as the proprietor of a trade mark has, subject to other vested rights appearing on the register, power absolutely to assign, grant licences as to, or otherwise deal with the same; but any equities in respect of such trade mark may be enforced as in respect of any other personal property.2 Registered proprietor. Power to deal with trade mark. a condition A person is not entitled to institute any proceeding to prevent, Registration or recover damages for, the infringement of a trade mark (whether precedent it be an old or a new mark) which is capable of registration under to suing for infringement. the Act unless it has been registered under the Act of 1883 or the former Acts. But in the case of an "old mark," used before 13th August, 1875, and being one which is incapable of being registered, the right to sue for infringement is preserved in case an application has been made for registration and refused; and a certificate of such refusal may be obtained from the Comptroller." The result is that the owner of a trade mark suing to prevent, or recover damages for, infringement must be able to produce a certificate of registration, if the mark, whether old or new, is capable of registration, or, if it be an old mark, a certificate of refusal of registration. Notwithstanding, however, that a plaintiff may be disentitled, or may fail, to maintain an action for infringement, he may yet obtain an injunction to restrain the use of a mark in such a way as to pass off the defendant's goods for those of the plaintiff." The High Court may, in its discretion, on the application of Rectification any person aggrieved, order the register to be rectified by making, 1 S. 87, amended by Act of 1888, s. 21. Ex p. New Ormonde Co., [1896] 2 Ch. 520, where a company had changed its name after registration. S. 87, as amended by s. 21 of Act of 1888. Having regard to the provisions of s. 70 (sup.), it is doubtful whether such licences can be valid; see Kerly, T. M. 335. The corresponding section of the Act of 1875 (38 & 39 Vict. c. 91), s. 1, did not extend to proceedings to recover damages, but it was so extended by the Act of 1876 (39 & 40 Vict. c. 33), s. 1. + Act of 1883, s. 77. See, for example, Goodfellow v. Prince, 35 Ch. D. 9. S. 77. See Orr-Ewing v. Registrar of T. M., 4 App. Cas. 498, per Lord Blackburn. E.g., see Hart v. Colley, 44 Ch. D. 7 As to who is a 66 of register. Chap. XIII. expunging, or varying entries in it; and the comptroller may correct a clerical error, and he may also cancel the entry or part of the entry of a trade mark upon proper application by the registered proprietor. Sheffield marks. International and colonial arrangements of trade marks. Special provision is made by the Act of 1883,3 for the registration at Sheffield by the Cutlers' Company, in a register to be called the Sheffield Register, of trade marks used on "metal goods' (which are defined as meaning all metals whether wrought, unwrought, or partly wrought, and all goods composed wholly or partly of any metal) by any person carrying on business in Hallamshire, in the County of York, or within six miles thereof." Where an arrangement has been made by the Crown with a foreign state for mutual protection of trade marks, and an Order for protection in Council to such effect is in force, any person who has applied for protection for any trade mark in any such state is entitled to registration of his trade mark under the Patents, Designs, and Trade Marks Acts in priority to other applicants; and such regis tration is to have the same date as the date of application in such foreign state; but the application must be made within four months from his applying for protection in the foreign state." The proprietor of the trade mark will not be entitled to recover damages for infringements happening before the actual registration of his trade mark in this country. The prior use during such period in the United Kingdom or the Isle of Man of the trade mark will not invalidate the registration of the trade mark. The application for the registration of a trade mark is to be made in the ordinary manner, except that any trade mark, the registration of which has been duly applied for in the country of origin, may be registered.7 a mark which ought never to have been 1 S. 90, amended by s. 23 of the Act 2 S. 91, amended by s. 24 of Act of 1888. 3 S. 81, amended by s. 20 of Act of 1888. 4 See as to Sheffield marks, Kerly. T. M. 101, and T. M. Rules, 1890, rr. 56-59; and as to the "Cutlers' Com pany's Acts," Kerly, T. M. 101. 5 S. 103 (1), amended by 48 & 49 Viet. c. 63, s. 6. 6 S. 103 (2). 7 S. 103 (3). See Re Californian Fig Syrup Co., 40 Ch. D. 620; Re Vignier, 61 L. T. 495; Re Carter Medicine Co., Marks Acts. The above provisions may be applied by an Order in Council Chap. XIII. to any "British possession" (i.e., any territory or place situate within His Majesty's dominions other than the United Kingdom, the Isle of Man, and Channel Islands), the legislature of which has made satisfactory provision for the protection of inventions, designs, and trade marks, patented or registered in this country.1 It should be added that under the Merchandise Marks Act, Merchandise 1862, the forgery of a trade mark was made a misdemeanour. This Act was repealed by the Merchandise Marks Act, 1887,3 which makes it a punishable offence to forge or falsely apply to goods a registered trade mark; or to apply to goods any trade. description which is materially false as to the number, quality, measure, gauge, or weight, or as to the place or country in which they were produced, or as to their mode of manufacture, or material, or as to their being the subject of an existing patent, privilege or copyright, or as to the person or firm who manufactured them; falsifying a genuine trade mark, by alteration, addition, effacement, or otherwise, is a forgery of it. It is also an offence against the Act to sell goods to which a forged trade mark is applied, unless the seller, having taken reasonable precautions, has no reason to suspect its genuineness or has otherwise acted innocently.8 Trade Name. 9 There is no right by English law to the exclusive use of a name Trade name apart from its use in connection with a trade or business; but the law recognizes a plaintiff's right to prevent others from personating his business by using any such description as would lead customers to suppose they were trading with the plaintiff; 10 and this rests on the principle, which is the ground of the law as to Chap. XIII. trade marks,1 viz., that one man will not be allowed to pass off his goods as those of a rival trader, and thus to obtain the benefit of his rival's reputation and of custom intended for his rival. This principle applies equally to the use of a name which has been so appropriated by user as to come to mean the goods of a particular producer, though it has never been impressed on or affixed to goods and is not a trade mark properly so called. 3 A "trade name " may be that of a person, or firm, or company, or that of the establishment at which the trade is carried on; or it may be a name under which goods are known in the market as being made or sold by a particular person, firm, or company; and a man has a right to prevent other persons from using a name, real or fictitious, or a description, whether true or not, which is calculated to represent, i.e., which has the effect, whether intended or not, of representing to the world that the goods produced by A. are goods produced by B., on the ground that B., having established a business reputation under a particular name, has a right to prevent anyone else from injuring his business by using that name.8 9 In cases of trade name, as in those of trade marks, the right to relief has been sometimes rested on the ground of fraud in the defendant; but it seems to be settled that the plaintiff need not allege the defendant's act in using the name to be fraudulent, or even that he knew of the plaintiff's right to its use,10 but only that the use by the defendant is such as to be reasonably likely to cause the defendant's goods to be taken for those of the plaintiff,11 1 See Glenny v. Smith, 2 Dr. & Sm. 476, 480; Levy v. Walker, 10 Ch. D. 436; Goodfellow v. Prince, 35 Ch. D. 9. 2 Singer Co. v. Loog, 8 App. Cas. 15, 32, per Lord Blackburn. 3 Lery v. Walker, 10 Ch. D. 436. Lee v. Haley, 5 Ch. 155; Braham v. 5 E.g., "The Carriage Bazaar," Boul- As "Singer Sewing Machines," Singer Co. v. Loog, sup.; Birmingham Co. v. 7 Singer Co. v. Loog, sup., per Lord Watson, at p. 38. 8 Levy v. Walker, 10 Ch. D. 436: Société Anonyme v. Panhard Co., [1901] 2 Ch. 513. 9 Ante, p. 207. 10 Ainsworth v. Walmisley, 1 Eq. 524 (unless plaintiff claims damages); Turton v. Turton, 42 Ch. D. 128, 138, per Lord Esher, M. R. See ante, pp. 207, 208. 11 That it is a mere question of fact and not of the defendant's intention, see Glenny v. Smith, 2 Dr. & Sm. 476, 480; Hookham v. Pottage, 8 Ch. 91; Singer Co. v. Wilson, 3 App. Cas. 376, 396; Singer Co. v. Loog, sup., per Lord Watson, at p. 38. and that the plaintiff need not prove that any customer has in Chap. XIII. fact been deceived. "All the Court requires is to be satisfied that the names are so similar as to be calculated to produce confusion between the two-so calculated to do it that when it is drawn to the attention of those adopting the name complained of that that would be the result, it would not be honest for them to persevere in their intention, though originally the intention might not have been otherwise than honest." If the natural consequence of the use by the defendant of the name adopted by him is that his goods will be taken to be those of the plaintiff, and he continues that user after notice of the plaintiff's right to the name, the Court holds the user to be wrongful and in a certain sense fraudulent."3 man's own It should be added that a man has a right to trade under his Use of a own name, even though the effect may be to injure a rival trader who happens to bear the same name, provided he does so bond 4 fide; but he must not use his own name in such a manner as to represent that his business is that of a rival trader of the same name.5 Whether the right to the exclusive use of a trade name can be properly called "property" appears to be still a moot point;6 but it is perhaps rather a matter of verbal nicety than of practical importance, the substantial ground of the jurisdiction and the principles on which the Court acts being well ascertained." Co. v. Loog, 8 App. Cas. 32, 33. See 7 See per Lord Herschell, in Mont- name. |