an injunction; and the case was, by consent, treated as the hearing of the cause. The V.C., Sir R. Malins, after stating the facts of the case, said: "The question I have to decide is, whether the manner in which the defendant uses the name of the plaintiff, is or is not calculated to deceive. It is not necessary that I should come to the conclusion that there is any intention on the part of the defendant to mislead; that is immaterial. If it is calculated to mislead, that is, if it is calculated to mislead the public into the shop of the defendant, while it is their intention to go into the shop of the plaintiff, that is an injury done to the plaintiff." His Lordship then referred to some cases, and said: “ All these cases proceed upon this principle, viz., that the thing done is calculated to deceive." His Lordship, after comments upon the facts, came to the conclusion that what the defendant had done, was calculated to mislead the unconscious, unwary, and heedless portion of the public, into the impression that the shop of the defendant was the shop of the plaintiff; and his Lordship granted a perpetual injunction.

66

Though a name may (as appears by the cases referred to in previous pages) become and constitute a trade mark, yet a name descriptive of a machine, the subject of a patent, cannot, in general, be a trade mark after the expiration of the patent; but if a person adopts and uses that name, so as to represent himself as the agent of the parties who sell the things that are the subject of the expired patent, that is fraud, and will be restrained (y).

It is submitted that the following general rules may be deduced from the authorities cited in this chapter:1. That the use by B. of a name previously adopted by A. is fraud; even though the name may not be actually a trade mark.

2. That even approximate imitation of names, or (y) Wheeler & Wilson Manufacturing Company v. Shakespear, 39 L. J. N.S. 36.

labels, is fraud; and so is an imitation of a material part of the terms used to designate a material sold.

3. That though a man may undoubtedly, in general, use his own name for various purposes, yet he may not, by using a part of it only, imitate another man's name, and so mislead the public, and induce them to believe that the goods he sells under his so garbled name, are the goods sold by another man (z).

4. That an addition to, or an alteration made by A. in, the trade mark of another, so far trifling as not fairly to strike or meet the observation of the general public, is fraud.

(z) See the peculiar case of James v. James, cited ante, p. 81.

APPENDIX.

CONTENTS.

The Trade Marks Registration Act, 1875

The Trade Marks Registration Amendment Act, 1876

The Trade Marks Registration Extension Act, 1877

Order in Council, 12th December, 1877

Rules under the Trade Marks Registration Acts, 1875–7 .

Instructions to Persons applying for the Registration of Trade Marks 123

REGISTRATION OF TRADE MARKS.

[38 & 39 VICT. CH. 91]

An Act to establish a Register of Trade Marks.

[13th August 1875.]

BE it enacted by the Queen's most Excellent Majesty, by and with the advice and consent of the Lords Spiritual and Temporal, and Commons, in this present Parliament assembled, and by the authority of the same, as follows:

1. [Registration of trade marks.] A register of trade marks as defined by this Act, and of the proprietors thereof shall be established under the superintendence of the Commissioners of Patents, and from and after the first day of July one thousand eight hundred and seventysix a person shall not be entitled to institute any proceeding to prevent the infringement of any trade mark as defined by this Act until and unless such trade mark is registered in pursuance of this Act.

2. [Characteristics of registered trade mark.] A trade mark must be registered as belonging to particular goods, or classes of goods; and when registered shall be assigned and transmitted only in connexion with the goodwill of the business concerned in such particular goods or classes of goods, and shall be determinable with such goodwill, but subject as aforesaid registration of a trade mark shall be deemed to be equivalent to public use of such mark.

3. [Title of first proprietor of a trade mark.] The registration of a person as first proprietor of a trade mark shall be primâ facie evidence of his right to the exclusive use of such trade mark, and shall, after the expiration of five years from the date of such registration, be conclusive evidence of his right to the exclusive use of such trade mark, subject

to the provisions of this Act as to its connexion with the good will of a business.

4. [Title of proprietor claiming by transmitted proprietorship.] Every proprietor registered in respect to a trade mark subsequently to the first registered proprietor shall, as respects his title to that trade mark, stand in the same position as if his title were a continuation of the title of the first registered proprietor.

5. [Rectification of register.] If the name of any person who is not for the time being entitled to the exclusive use of a trade mark in accordance with this Act or otherwise in accordance with law, is entered on the register of trade marks as a proprietor of such trade mark, or if the registrar refuses to enter on the register as proprietor of a trade mark the name of any person who is for the time being entitled to the exclusive use of such trade mark in accordance with this Act, or otherwise in accordance with law, or if any mark is registered as a trade mark which is not authorised to be so registered under this Act, any person aggrieved may apply in the prescribed manner for an order of the court that the register may be rectified; and the court may either refuse such application, or it may, if satisfied of the justice of the case, make an order for the rectification of the register, and may award damages to the party aggrieved.

Where each of several persons claims to be registered as proprietor of the same trade mark, the registrar may refuse to comply with the claims of any of such persons until their rights have been determined by the court, and the registrar may himself submit or require the claimants to submit in the prescribed manner their rights to the court.

The court may, in any proceeding under this section, decide any question as to whether a mark is or is not such a trade mark as is authorised to be registered under this Act, also any question relating to the right of any person who is party to such proceeding to have his name entered on the register of trade marks, or to have the name of some other person removed from such register, also any other question that it may be necessary or expedient to decide for the rectification of the register.

The court may direct an issue to be tried for the decision of any question of fact which may require to be decided for the purposes of this section. Whenever any order has been made rectifying the register the court shall by its order direct that due notice of such rectification be given to the registrar.

6. [Restrictions on registry of trade marks.] The registrar shall not, without the special leave of the court, to be given in the prescribed manner, register in respect of the same goods or classes of goods a trade mark identical with one which is already registered with respect to such goods or classes of goods, and the registrar shall not register with respect to the same goods or classes of goods a trade mark so nearly resembling a trade mark already on the register with respect to such goods or classes of goods as to be calculated to deceive.

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 not, by reason of their being calculated to deceive or otherwise, be deemed entitled to protection in a court of equity; or any scandalous designs.

7. [Establishment of registry and general rules.] Subject as aforesaid, a register office shall be established from and after such time (not being later than the first day of January one thousand eight hundred and seventy-six). in such manner and with such officers, and at such salaries, to be paid out of moneys provided by Parliament, as the Lord Chaucellor may, with the consent of the Treasury, direct; and the Lord Chancellor may from time to time, with the assent of the Treasury as to fees, make, and, when made, alter, annul, or vary, such general rules as to the registry of trade marks, and as to notices to be given by advertisement before the registration of trade marks, and as to the classification of goods for the purposes of this Act, and as to the registration of first and subsequent proprietors of trade marks, and as to the fees to be charged for registration, and also for the continuance of a trade mark on the register or otherwise, and as to the removal from the register of any trade mark, as to notices, and as to the persons entitled to inspect the register, and as to any proceedings to be taken to obtain the judgment or leave of the court in any matter in which the judgment or leave of the court is required to be obtained under this Act, and generally for the purpose of carrying into effect this Act, as he may deem expedient.

Any rules made in pursuance of this section shall be laid before both Houses of Parliament if Parliament be then sitting, or if not then sitting, then within ten days from the then next assembling of Parliament, and shall be of the same validity as if they had been enacted by Parliament; provided that if either House of Parliament resolve, within one month after such rules have been laid before such House, that any of such rules ought not to continue in force, any rule in respect of which such resolution has been passed shall, after the date of such resolution, cease to be of any force, without prejudice, nevertheless, to the making of any other rule in its place, or to anything done in pursuance of any such rules before the date of such resolution.

8. [Certificate of registrar to be evidence.] The certificate of the registrar as to any entry, matter, or thing which he is authorised by this Act, or any general rules made thereunder, to make or do, shall be evidence of such entry having been made, and of the contents thereof, and of such matters and things having been done or left undone.

9. [Provision as to Cutlers Company and Sheffield corporate marks] With respect to the master, wardens, searchers, assistants, and commonalty of the Company of Cutlers in Hallamshire, in the county of York (in this Act called "the Cutlers Company "), and the marks or devices (in this Act called "Sheffield corporate marks") assigned or to be assigned by the master, wardens, searchers, and assistants of that company, be it enacted as follows: (1.) Within the prescribed time and in the prescribed manner the Cutlers Company shall at their own expense deliver to the registrar under this Act copies of all Sheffield corporate marks in force at the time of such delivery:

(2.) When any person, after the passing of this Act, applies to the said master, wardens, searchers, and assistants to assign to him any mark or device, notice of such application, with a copy of such mark or device, shall, within the prescribed time