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also draws up the specification and prepares the drawings in the form the Patent Office requires. Only those persons who are registered as such are allowed to act as patent agents, and a person holding himself out as a patent agent without being duly registered under the Act is liable to a heavy fine.
Grounds on which grant may be opposed.-If the examiner's report is favourable, the invention is advertised in the weekly Official Journal and, within two months of publication, any person can oppose the grant of the patent on the grounds
(1) That the applicant obtained the invention from him or in fraud of him.
(2) That the invention was claimed in a specification filed within the last fifty years.
(3) That the complete specification does not fairly or sufficiently describe the invention.
(4) That the complete specification differs from the provisional one and that the opponent has, in the interval, applied for a patent for the further invention.
The Comptroller of the Patent Office hears the opposing claims, and there is a right of appeal to the Law Officers of the Crown.
If there is no opposition, or no successful opposition, the patent is granted for fourteen years from the date of the application. This period may be extended by the High Court for an additional five or ten years if it appears that the patentee has not been adequately remunerated.
Grounds on which grant may be revoked. The patent so granted may be revoked on the grounds, inter alia
(1) That the invention was obtained by fraud, or that the invention had been publicly used before the application for the patent was made.
(2) On the expiration of four years of the grant-that it is being exclusively worked outside the United Kingdom. (3) That the patentee is not working the patent adequately, or is prejudicing any trade or industry. The claimant may ask for the grant of a compulsory licence to work the invention or, in the alternative, revocation. (4) That there has been abuse of monopoly rights in the circumstances set out in the Act of 1919.
No restrictive provisions may now be imposed on the purchasers of patented articles, as was formerly a common practice. The Register of Patents.
A register of the proprietors of patents is kept at the Patent Office, and all assignments and licences must be entered thereon.
The patentee may request the Comptroller to indorse the register with the words "licences of right," in which case any person may as of right be entitled to a licence on terms. Notices of mortgages may be entered, but no trust can be entered on the register.
Rights of Patentee.
The patentee is entitled to all rights in and profit arising from his invention during the period for which the patent is granted or any extension thereof. Should another person infringe his patent, the patentee may bring an action for infringement, claiming both damages and an injunction to restraint of further infringement.
The patentee may assign his rights, either absolutely or with limits as to time or space. It is not essential that an assignment should be by deed, but it is necessary that it should be so in order that the assignee may sue in his own name for infringement.
Rights of the Crown.
Where it seems probable that an invention is one likely to prove of value to the Crown, special terms may be imposed upon the inventor when he applies for a patent; and the War Office and Admiralty have the right to acquire, and keep secret, inventions likely to prove useful to the naval and military authorities, on paying to the inventor a sum sanctioned by the Treasury.
The following fees are payable by the patentee, viz.—
On sealing the patent
For renewal beyond four years, for every succeeding
If these payments are not made before the commencement of the year, the patent lapses, but an extension of three months may be granted on payment of certain fees.
On the death of the owner of a patent, the patent is vested in the personal representative of the deceased, a patent being deemed personal property.
The law relating to Trade Marks was consolidated and amended by the Trade Marks Act, 1905 (referred to herein as "the Act "), and the Trade Marks Act, 1919.
A trade mark may be defined as a mark used upon, or in connection with, goods, to indicate that they are the goods of the proprietor of such mark by virtue of manufacture, selection, certification, dealing with or offering for sale. The Act provides that all trade marks shall be registered; and the right to the exclusive use of the trade mark is obtained only by such registration.
Registration of Trade Marks.
The register is kept at the Patent Office, and an application to the registrar for registration must be accompanied by the prescribed fee, five representations of the mark which it is desired. to register, and details of the particular goods or classes of goods in respect of which the mark is to be registered. A registrable trade mark must contain or consist of at least one of the following essential particulars
(1) The name of a company, individual, or firm represented in a special or particular manner, e.g., impressed, woven or printed.
(2) The signature of the applicant or some predecessor in his business.
(3) An invented word or words.
(4) A word or words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name or a
(5) Any other distinctive mark; but a name, signature or word, other than such as fall under the four previous heads is not, except by order of the Board of Trade or the Court, deemed a distinctive mark. And no word which is the only practicable name or description of any single chemical element or single chemical compound, as distinguished from a mixture may, as a rule, be registered as a trade mark.
"old mark," that is, a mark existing and continuously used before 13th August, 1875.
In re Powell's Trade Mark (1894) where the words "Yorkshire Relish" alone had been used only on packing cases containing bottles of sauce, prior to 1875, and the bottles themselves had been marked with another trade mark, it was held that the
user of the words "Yorkshire Relish " upon the packing cases had not constituted user as a trade mark prior to 1875.
There are certain forms of wording which cannot be registered as a trade mark, e.g., "Patent," "Registered Design and certain emblems, e.g., representations of any member of the Royal Family, and, unless registered before 1875, British National Flags, the word "Royal," the Royal Arms or crests or anything resembling them. Further, such generic terms as "Brussels" carpet, "Nottingham " lace or "Cheshire" cheese cannot be used as trade marks, as they are distinctive of a wider origin than is contemplated in the use of a trade mark, which indicates the narrower origin of one manufacturer or body.
Certain persons may be appointed and may use in their trade the Royal Arms, but any one using them without authority is liable to a fine of £5.
After the application has been accepted it is advertised by the registrar and, within two months of such advertisement, any person may give notice of opposition to the registration of the mark on the ground that it resembles an existing trade mark or is not sufficiently distinctive. The opposition claim is heard by the registrar, but there is a right of appeal to the Board of Trade or the Chancery Division. The registrar must not register anything which is calculated to deceive or which is contrary to law or morality, or which would be a scandalous design.
Where a word trade mark is registered which is the name or the only practicable name of an article or substance manufactured under any patent in force, or granted after the passing of the Act of 1919, all rights to the exclusive use of such trade mark cease upon the expiration or determination of the patent.
The registration is for fourteen years, and is renewable every fourteen years.
Section 17 of the Act of 1887 provides that "on the sale or in the contract for the sale of any goods to which a trade mark, or mark, or trade description has been applied, the vendor shall be deemed to warrant that the mark is a genuine trade mark and not forged or falsely applied, or that the trade description is not a false trade description within the meaning of this Act, unless the contrary is expressed in some writing signed by or on behalf of the vendor and delivered at the time of the sale or contract to and accepted by the vendee."
Assignment of Trade Mark.
A trade mark can be assigned, but only in connection with the goodwill of the business with which it is connected.
Infringement of Trade Mark.
Infringement consists either of the unauthorized use of the actual mark or of a mark calculated to deceive and to mislead purchasers into the belief that the goods are those of the proprietor of the registered mark. In cases of infringement of a trade mark, the proprietor has the same remedies as for the infringement of a patent or of a copyright. It was held in Condy v. Taylor (1887) that where a manufacturer sells articles, usually sold and used in small quantities, in bulk to a dealer without any restriction as to its disposal, he is taken to authorize its sale by the dealer as the manufacture of his vendor and it may be called by the name registered as a trade mark by the manufacturer.
Merchandise Marks Acts.
The Merchandise Marks Act, 1887, provides that any person who forges a trade mark, or falsely applies to goods any mark so nearly resembling a trade mark as to be calculated to deceive, or applies any false trade description to goods, is liable to criminal proceedings and if convicted is punishable by fine or imprisonment, or both, and the goods may be forfeited and destroyed. It was held in Reddaway v. Banham (1896) that a trader is not entitled to pass off his goods as those of another trader by selling them under a name which is likely to deceive purchasers into believing that they are purchasing goods of that other trader, even though in its primary meaning the name is a true description of the goods.
By the Merchandise Marks Act, 1891, it is provided that the customs entry relating to goods imported is deemed to be a trade description, and powers are conferred on the Board of Trade to undertake prosecutions in the public interest, e.g., where adulterated goods are imported the customs entry is now deemed to be a "trade description" and offenders against this Act are liable to prosecution.
The Merchandise Marks Act, 1911, enacts that where any goods which, if sold, would be liable to forfeiture by the Act of 1887, are imported into the United Kingdom, and they bear any name or trade mark being or appearing to be the name or trade mark of any manufacturer, dealer or trader in the United Kingdom, and it appears that the use of the name or trade mark is fraudulent, the specified officer of Customs and Excise may require the importer to produce any documents in his possession relating to the goods, and to supply the name and address of the persons by whom and to whom consigned, and any information so obtained may be furnished by the Commissioners of