proprietor) be deemed a user of the several trade marks of which such associated trade mark is made up. It is provided by s. 26 of the Trade Marks Act that when a Series of person claiming to be the proprietor of several trade marks trade marks: (distinctly differing from one another in character for the same description of goods) seeks to register such trade marks, they may be registered as a series in one registration. In such case, however, all the trade marks in a series so registered shall be deemed to be, and shall be registered as associated trade marks. of associated trade marks. It should be noted that associated trade marks (which term Assignment includes combined trade marks, and a series of trade marks) are assignable or transmissible only as a whole and not separately, though for all other purposes they are deemed to have been registered as separate trade marks (s. 27). Where user of a registered trade mark is required to be proved for any purpose, the tribunal may (in its discretion) accept user of an associated trade mark, or of the trade mark with additions or alterations not substantially affecting its identity, as an equivalent for such user (s. 27). Sections 66 and 67 deal with the falsification of entries in the register of trade marks, and penalise any one falsely representing that a trade mark is registered; and s. 68 prohibits an unauthorised assumption of the Royal Arms. Other sections of the Act deal with the advertisements requisite before insertion on the register (a), and to opposition to an application for the registration of a trade mark (b). The apportionment of trade marks on the dissolution of partnership is also dealt with (c). Whilst yet other sections treat of the correction (d), alteration (e), and rectification (f) of the register; the registration of assignments, etc. (g), "special trade marks" (h), and the powers and duties of the Registrar of trade marks (i). User of associated trade marks. The registration of foreign and colonial trade marks is International governed by ss. 103 and 104 of the Patents, Designs, and trade marks. and colonial Fraudulent trade marks Trade Marks Act, 1883 (as amended by the Patents, Designs, and Trade Marks (Amendment) Act, 1885), and the orders in Council made thereunder (a). Apart from any statute, no one can claim to be protected in not protected. the use of a trade-mark, name, or description, which is a fraud on the right of another trader, or a deception on the public, or used as an instrument of dishonest trading (b). The Act provides that no trade mark shall be registered which is identical with a mark already registered with respect to the same description of goods, or having such resemblance to it as to be calculated to deceive (c), nor any words the use of which would, by reason of their being calculated to deceive or otherwise, be deemed disentitled to protection in a court of justice," nor any scandalous design "(d). Public user. 66 The Court will not accede to an application for registration which is made with the object of getting the benefit of an old fraudulent user (e). And where there has been a concurrent user of a trade name or mark by more than one person, and one of the users has allowed it to fall into desuetude, he may not again revive its use to the prejudice of his former co-users (ƒ). The trade mark or other right for which protection is claimed must in cases outside the statute have been publicly known and recognised in connection with some particular class of goods. Where there is no established reputation there can be no injury (g). A very short time, however, may suffice to make a trade mark or name recognised in a market (h). Apparently, however, in cases outside the statute protection will generally be granted, even though the plaintiff is unable to show, in addition to an established reputation for his own goods, something (a) 5 Ed. VII. c. 15, s. 65; and see In re Californian Fig Syrup Co.'s Trade Mark, (1888) 40 Ch. D. 620. (b) See Marshall v. Ross, (1869) L. R. 8 Eq. 651; Ford v. Foster, (1872) L. R. 7 Ch. 611; Lee v. Haley, (1869) L. R. 5 Ch. 155; Chearin v. Walker, (1877) 5 Ch. D. 850. (c) ss. 11 and 19. (d) 5 Ed. VII. c. 15, s. 11. See In re Dunn's Trade Marks, (1889) 41 Ch. D. (e) In re Fuente's Trade Marks, (1891) 2 Ch. 166. (f) Daniel & Arter v. Whitehouse, (1898) 1 Ch. 685. (g) Goodfellow v. Prince, (1887) 35 Ch. D. 9; see Schove v. Schmincke. (1886) 33 Ch. D. 546; Licensed Victuallers' Newspaper Co. v. Bingham, (1888) 38 Ch. D. 139. (h) M'Andrew v. Bassett, (1864) 33 L. J. Ch. 561. amounting to an actual intention to deceive on the part of the defendant (a). Registration is prima facie evidence, and registration for seven Registration. years conclusive evidence, of exclusive right to the trade mark, subject to the provisions of the Act (b). Where, however, a trade mark, applicable to an entire class of goods, though registered for more than the prescribed period, has been dormant with regard to certain goods pertaining to the class, it is liable to be expunged from the register, in relation to those particular commodities in respect of which it has not been used (c). Prior to the passing of the Act of 1905 it was held that the last words of s. 76 of the Act of 1883 left it open to any defendant in an action for infringement, at any time after registration, to contest a trade mark on the ground that it ought never to have been registered (d); in view of ss. 41 and 11 of the New Act this contention is, however, in the absence of fraud, obviously no longer tenable. The registration appears only conclusive as to what has happened subsequently thereto (e). In cases outside the Act a party may lose his right by non-user and abandonment, or by permitting the trade mark to become common property (f). A trade mark can only be registered for particular goods or classes of goods (g). As already stated (h), a person is not entitled to institute any proceedings to prevent, or to recover damages for, the infringement of an unregistered trade mark. Trade names which existed before the first registration Act do not by reason of the limitations introduced by statute, lose the protection which the law, as it then stood, gave them. Trade Mark, (1883) 24 Ch. D. 504; Re 551. (e) See Mouson & Co. v. Boehm, (1884) 26 Ch. D. 398; and see supra as to Concurrent User. (f) See above, p. 719. (g) 5 Ed. VII. c. 15, s. 8, and see ante, p. 714. (h) See p. 722, and 5 Ed. VII. c. 15, s. 42. As to International and Colonial Trade Marks, see 5 Ed. VII. c. 15, s. 65, and ante, p. 725. When right dependent on registration. No infringe ment where Powers of registered owner. It is clear alike at common law and by statute (a) that where no deception. a person has no exclusive right in a trade mark he cannot be injured, unless that of which he complains is (apart from any question of intention) likely to deceive. Probably, however, in the case of trade marks in which the right is said to be exclusive, the mere user of the appropriated mark will of itself amount to an infringement, the effect of recent legislation apparently being to create a vested proprietary right in the owner of a trade mark analogous in character to that possessed by the absolute possessor of any other description of personal property (b). Consequently, in order to justify an injunction it is not necessary to adduce instances in which deception has occurred, "the law is content with proof of acts likely to deceive" (c). Deception of ultimate purchaser. Innocent infringement. It is not necessary, however, that it should be shown that there was any likelihood of deception towards the immediate purchasers. A trade mark or description is calculated to deceive if it is sent forth attached to or impressed on the goods in such a manner as is likely to mislead those members of the general public who may become the ultimate purchasers (d). A manufacturer must not only beware of deceiving his own customers; he must not put into their hands that which may become an instrument of deception to others (e). It is no answer to a complaint of misrepresentation to say that an observant person who made careful examination would not be misled. The test is the impression likely to be produced on the casual and unwary customer (ƒ). Prior to recent legislation it remained a somewhat doubtful (a) Trade Marks Act, 1905, s. 15, and see Faulder & Co.'s Trade Mark, In re, (1902) 1 Ch. 125, C. A. (b) 5 Ed. VII. c. 15, s. 38, sub-ss. 1, 2. (c) Jay v. Ladler, (1888) 40 Ch. D. p. 656. See also per Lindley, L.J., Reddaway v. Bentham Hemp Spinning Co., (1892) 2 Q. B. p. 644. Co., (1900) 1 Ch. 1; S. C. in C. A., 69 L. J. Ch. 46. As to misuse of testimonials by representing those obtained for one article as having been gained for another and totally distinct commodity, see F. King & Co. v. Gillard & Co., (1905) 2 Ch. 7, C. A. (f) Per Lord Selborne, Singer Manufacturing Co. v. Loog, (1882) 8 App. Cas. p. 18. See Hookham v. Pottage, (1872) L. R. 8 Ch. 91; cp. Civil Service Supply Association v. Dean, (1879) 13 Ch. D. 512; and see Panhard et Levassor v. Panhard et Levassor Motor Co., (1901) 2 Ch. 513. point whether an action for damages would lie for the infringement of a trade mark, save in cases where the defendant had acted with knowledge of the plaintiff's claim. The Act of 1905, however, tends to remove this uncertainty. Where, however, there is a proved continuous user by an unregistered person or his predecessors in business of a trade mark, for specific goods, from a date anterior to that at which another person registered the same mark, for similar goods, in compliance with statutory requirements, it is expressly provided (s. 41, paragraph 2) that nothing in the Act of 1905 shall entitle the proprietor of the registered mark to object (upon proof of user) to such other person being also put upon the register. And thenceforward the right of user in both will be concurrent. The courts of Common law common law originally made no distinction between cases of infringement of a trade mark and ordinary cases of fraudulent imitation of a trade name or description. In both alike it was considered that the intent to deceive was an essential element of the wrongful act (a). In Crawshay v. Thompson (b) the defendants had used a trade mark resembling that of the plaintiff, and on their attention being called to the matter had refused to desist. It was held that the plaintiff must prove, not merely that the defendants' trade mark was so like his own as to be calculated to deceive, but that the defendants had used it with the intention of supplanting him, and that the mere fact that the defendants were aware of the resemblance did not necessarily give him a cause of action (c). Where fraud was once proved the plaintiff was entitled to a verdict, even though he did not prove any actual damage. His right, it was said, was necessarily injured (d). rule. The courts of equity intervened by injunction to prohibit the Equity rule. continuance of any conduct or practice, whether by infringement of trade mark or otherwise, which was likely to deceive the public, and thus unfairly divert to one trader the custom intended for another (e). Apparently, however, in all cases, the (a) Payton v. Snelling, (1901) A. C. 309. (b) (1842) 4 M. & G. 357. (c) Lever Bros., Ltd. v. Bedingfield, (1899) 80 L. T. 100. (d) Blofield v. Payne, (1833) 4 B. & Ad. 410. (e) Hookham v. Pottage, (1872) L. R. 8 Ch. 91. |