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Designs and Trade Marks

LEGAL PROCEEDINGS

Penalty on piracy of registered design

Action for damages

Definition of
'design,' 'copy.
right

15. During the existence of copyright in any design

(a) It shall not be lawful for any person, without the license or written consent of the registered proprietor, to apply such design or any fraudulent or obvious imitation thereof, in the class or classes of goods in which such design is registered, for purposes of sale, to any article of manufacture, or to any substance, artificial or natural, or partly artificial and partly natural; and

(b) It shall not be lawful for any person to publish or expose for sale any article of manufacture or any substance to which such design or any fraudulent or obvious imitation thereof shall have been so applied, knowing that the same has been so applied without the consent of the registered proprietor.

Any person who acts in contravention of this section shall be liable for every offence to forfeit a sum not exceeding Fifty pounds to the registered proprietor of the design, who may recover such sum as a simple contract debt by action in any court of competent jurisdiction.

16. Notwithstanding the remedy given by this Act for the recovery of such penalty as aforesaid, the registered proprietor of any design may (if he elects to do so) bring an action for the recovery of any damages arising from the application of any such design, or of any fraudulent or obvious imitation thereof, for the purpose of sale, to any article of manufacture or substance, or from the publication, sale, or exposure for sale by any person of any article or substance to which such design or any fraudulent or obvious imitation thereof shall have been so applied, such person knowing that the proprietor has not given his consent to such application.

DEFINITIONS

17. In and for the purposes of this Act

'Design' means any design applicable to any article of manufacture, or to any substance, artificial or natural, or partly artificial and partly natural, whether the design is applicable for the pattern or for the shape or configuration, or for the ornament thereof, or for any two or more of such purposes and by whatever means it is applicable, whether by printing, painting, embroidering, weaving, sewing, modelling, casting, embossing, engraving, staining, or any other means whatever, manual, mechanical, or chemical, separate or combined, not being a design for a sculpture or other thing within the protection of the Sculpture Copyright Act of the year 1814 (54th George III. chapter 56). Copyright means the exclusive right to apply a design to any article of manufacture or to any such substance as aforesaid in the class or classes in which the design is registered.

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Designs and Trade Marks

18. The author of any new and original design shall be considered Definition of the proprietor thereof, unless he executed the work on behalf of an- 'proprietor' other person for a good or valuable consideration, in which case such person shall be considered the proprietor; and every person acquiring for a good or valuable consideration a new and original design or the right to apply the same to any such article or substance as aforesaid, either exclusively of any other person or otherwise, and also every person on whom the property in such design or such right to the application thereof shall devolve, shall be considered the proprietor of the design in the respect in which the same may have been so acquired and to that extent, but not otherwise.

PART III.-TRADE MARKS

REGISTRATION OF TRADE MARKS

19. (1) The Colonial Secretary may, on application by or on behalf Application for of any person claiming to be the proprietor of a trade mark, register registration the trade mark.

(2) The application must be made in the form set forth in the First Schedule to this Act, or in such other form as may be from time to time prescribed, and must be left at or sent by post to the Colonial Secretary's Office in the prescribed manner.

(3) The application must be accompanied by the prescribed number of representations of the trade mark, and must state the particular goods or classes of goods in connection with which the applicant desires the trade mark to be registered.

(4) The Colonial Secretary may, if he thinks fit, refuse to register a trade mark; but any such refusal shall be subject to appeal to the Governor in Council, who shall, if required, hear the case, and may make an order determining whether, and subject to what conditions, if any, registration is to be permitted.

(5) The Governor in Council may, however, if it appears expedient, refer the appeal to the Court; and in that event the Court shall have jurisdiction to hear and determine the appeal, and may make such order as aforesaid.

Limit of time for proceeding with

application

20. Where registration of a trade mark has not been or shall not be completed within twelve months from the date of the application, by reason of default on the part of the applicant, the application shall be deemed to be abandoned. 21. (1) For the purposes of this Act, a trade mark must con- Conditions of sist of or contain at least one of the following essential particulars :

(a) A name of an individual or firm printed, impressed, or
woven in some particular and distinctive manner; or
(6) A written signature or copy of a written signature of the
individual or firm applying for registration thereof as
a trade mark; or

(c) A distinctive device, mark, brand, heading, label, ticket,
or fancy word or words not in common use.

(2) There may be added to any one or more of these particulars, any letters, words, or figures, or combination of letters, words, or figures, or of any of them.

registration of trade mark

[graphic]

Connection of

trade mark with goods Registration of a series of marks,

Trade marks may be registered in any colour

Advertisement of application

Opposition to registration

Assignment and transmission of trade mark

Conflicting claims to registration

Restrictions on registration

Designs and Trade Marks

22. A trade mark must be registered for particular goods or classes of goods.

23. When a person, claiming to be the proprietor of several trade marks which, while resembling each other in the material particulars thereof, yet differ in respect of (a) the statement of the goods for which they are respectively used or proposed to be used, or (b) statements of numbers, or (c) statements of price, or (d) statements of quality, or (e) statements of names of places, seeks to register such trade marks, they may be registered as a series in one registration. A series of trade marks shall be assignable and transmissible only as a whole; but, for all other purposes, each of the trade marks composing a series shall be deemed and treated as registered separately.

24. A trade mark may be registered in any colour, and such registration shall (subject to the provisions of this Act) confer on the registered owner the exclusive right to use the same in that or any other colour.

25. Every application for registration of a trade mark under this part of this Act shall, as soon as may be after its receipt, be advertised in the 'Government Gazette' by the Colonial Secretary.

26. (1) Any person may, within two months of the first advertisement of the application, give notice, in duplicate, at the Colonial Secretary's Office of opposition to registration of the trade mark, and the Colonial Secretary shall send one copy of such notice to the applicant.

(2) Within two months after receipt of such notice, or such further time as the Colonial Secretary may allow, the applicant may send to the Colonial Secretary a counter statement, in duplicate, of the grounds on which he relies for his application, and if he does not do so shall be deemed to have abandoned his application.

(3) If the applicant sends such counter statement, the Colonial Secretary shall furnish a copy thereof to the person who gave notice of opposition, and shall require him to give security in such manner and to such amount as the Colonial Secretary may require for such costs as may be awarded in respect of such opposition; and if such security is not given within fourteen days after such requirement was made, or such further time as the Colonial Secretary may allow, the opposition shall be deemed to be withdrawn.

(4) If the person who gave notice of opposition duly gives such security as aforesaid, the Colonial Secretary shall inform the applicant thereof in writing, and thereupon the case shall be deemed to stand for the determination of the Court.

27. A trade mark when registered shall be assigned and transmitted only in connection with the good-will of the business concerned in the particular goods or classes of goods for which it has been registered, and shall be determinable with that good-will.

28. Where each of several persons claims to be registered as proprietor of the same trade mark, the Colonial Secretary may refuse to register any of them until their rights have been determined according to law, and the Colonial Secretary may himself submit, or require the claimants to submit their rights to the Court.

30 29. (1) Except where the Court has decided that two or more persons are entitled to be registered as proprietors of the same trade

Designs and Trade Marks

mark, the Colonial Secretary shall not register in respect of the same goods or description of goods a trade mark identical with one already on the register with respect to such goods or description of goods.

(2) The Colonial Secretary shall not register, with respect to the same goods or description of goods, a trade mark so nearly resembling a trade mark already on the register, with respect to such goods or description of goods, as to be calculated to deceive.

30. It shall not be lawful to register, as part of, or in combination with a trade mark, any words the exclusive use of which would, by reason of their being calculated to deceive or otherwise, be deemed disentitled to protection in a court of justice, or any scandalous design.

31. (1) Nothing in this Act shall be construed to prevent the Colonial Secretary entering on the register, in the prescribed manner and subject to the prescribed conditions, as an addition to any trade mark, 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.

(2) The applicant for entry of any such common particular or particulars must, however, disclaim in his application any right to the exclusive use of the same, and a copy of the disclaimer shall be entered on the register.

(3) Any word or combination of words which was or were, before the commencement of this Act, publicly used by more than three persons on the same or a similar description of goods shall, for the purposes of this section, be deemed common to the trade in such goods.

EFFECT OF REGISTRATION

32. Registration of a trade mark shall be deemed to be equivalent to public use of the trade mark.

33. The registration of a person as proprietor of a trade mark shall be prima facie evidence of his right to the exclusive use of the trade mark, and shall after the expiration of five years from the date of the registration be conclusive evidence of his right to the exclusive use of the trade mark, subject to the provisions of this Act.

34. A person shall not be entitled to institute any proceedings to prevent, or to recover damages for, the infringement of a trade mark, unless, in the case of a trade mark capable of being registered under this Act, it has been registered in pursuance of this Act.

REGISTER OF TRADE MARKS

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35. There shall be kept at the Colonial Secretary's Office a book Register of trade called the Register of Trade Marks, wherein shall be entered the marks names and addresses of proprietors of registered trade marks, notifications of assignment and of transmissions of trade marks, and such other matters as may be from time to time prescribed.

36. (1) At a time not being less than two months nor more than three months before the expiration of fourteen years from the date of registration of a trade mark, the Colonial Secretary shall send notice to the registered proprietor that the trade mark will be removed from the

[graphic]

Removal of trade mark after fourfee paid

teen years unless

Fees for registration, &c.

Trust not to be entered on registers

Refusal to regis

ter in certain

cases

Entry of assignments and transmissions in registers

Designs and Trade Marks

register unless the proprietor pays to the Colonial Secretary before the expiration of such fourteen years (naming the date at which the same will expire) the prescribed fee, and if such fee be not previously paid he shall, at the expiration of one month from the date of the giving of the first notice, send a second notice to the same effect.

(2) If such fee be not paid before the expiration of such fourteen years, the Colonial Secretary may, after the end of three months from the expiration of such fourteen years, remove the mark from the register, and so from time to time at the expiration of every period of fourteen years.

(3) If before the expiration of the said three months the registered proprietor pays the said fee, together with the additional prescribed fee, the Colonial Secretary may, without removing such trade mark from the register, accept the said fee as if it had been paid before the expiration of the said fourteen years.

(4) Where after the said three months a trade mark has been removed from the register for non-payment of the prescribed fee, the Colonial Secretary may, if satisfied that it is just so to do, restore such trade mark to the register, on payment of the prescribed additional fee.

(5) Where a trade mark has been removed from the register for non-payment of the fee or otherwise, such trade mark shall, nevertheless, for the purposes of any application for registration during the five years next after the date of such removal, be deemed to be a trade mark which is already registered.

FEES

37. There shall be paid, in respect of applications and registration and other matters under this part of this Act, such fees as may be from time to time prescribed, and such fees shall be levied and paid to the account of Her Majesty's Colonial Government, in such manner as the Governor shall from time to time direct.

PART IV.-GENERAL

38. There shall not be entered in any register kept under this Act, or be receivable by the Colonial Secretary, any notice of any trust expressed, implied, or constructive.

39. The Colonial Secretary may refuse to register a design or trade mark of which the use would, in his opinion, be contrary to law or morality.

40. Where a person becomes entitled by assignment, transmission, or other operation of law to the copyright in a registered design or to a registered trade mark, the Colonial Secretary shall, on request and on proof of title to his satisfaction, cause the name of such person to be entered as proprietor of the copyright in the design or trade mark in the register of designs or trade marks, as the case may be. The person for the time being entered in the register of designs or trade marks as proprietor of a copyright in a design or trade mark, as the case may be, shall, subject to any rights appearing from such register to be vested in any other person, have power absolutely to

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