trade mark was not his own, though he may not have known to Chap. XIII. whom it belonged.1 In equity a plaintiff may elect between having an account of Account of 3 profits profits, or damages. At law, in order to obtain substantial damages. damages, it was necessary to prove that an injury had been actually done; in equity, so far as the right to an injunction is concerned, it is sufficient to show that the defendant threatens to do, and will, if not prevented, do that injury; and it becomes a mere question of fact whether that which the defendant is doing is reasonably likely to cause his goods to be mistaken for the plaintiff's manufacture. It is not necessary for the plaintiff to give evidence of deception in fact, i.e., to prove instances in which customers have purchased the defendant's goods in the belief that they were produced by the plaintiff,5 though, in practice, such evidence is generally relied on as a proof of the probability of mistakes. ultimate The question in trade mark cases is whether the ultimate Deception of purchaser is likely to be misled by the acts of which the plaintiff purchaser complains; and it is no defence to show that the immediate purchaser would not be misled; for "no man, however honest his personal intentions, has a right to adopt and use so much of his rival's established trade mark as will enable any dishonest trader into whose hands his goods may come to sell them as the goods of his rival." The question is whether the defendant has put into the hands of others the means of deceiving the ultimate purchasers.7 Even if the maker of the goods expressly tells the immediate purchaser that they are of his own manufacture, that will not save him from an injunction if they are sold with the plaintiff's trade mark attached to them, and in such a case all the plaintiff has to do is to show that his trade mark has been taken, that is, that the defendant has used an essential portion of the plaintiff's trade mark 1 Kerly, T. M. 426. See Ford v. Foster, 7 Ch. 611; Harrison v. Taylor, 11 Jur. N. S. 408; 12 L. T. 339. 3 The damages will be merely nominal in absence of proof of actual damage; Kerly, T. M. 422, 423. As to proof of actual damage, see Leather Co. v. Hirschfeld, 1 Eq. 299. Per Ld. Blackburu, Singer Co. v. Loog. 8 App. Cas. 30 G.P.P. Johnston v. Orr-Ewing, 7 App. Cas. 6 Ld. Watson, in Johnston v. Orr- 7 James, L. J., Singer Co. v. Loog, 18 Ch. D. 412; Chitty, J., Lever v. Goodwin, 36 Ch. D. 3. 14 Chap. XIII. upon goods of a similar description. It is not necessary to show that the mark used by the defendant is absolutely identical with that of the plaintiff; it is sufficient if it is so like it that unwary or ignorant purchasers would probably be misled. It is no answer to say that the purchasers were incautious, for "the loss to the plaintiff of the custom of an incautious purchaser is as great a damage as the loss of that of a cautious one." The Trade Marks Acts, 1875-1888. Object of the Acts. Effect of the Acts. 3 The principles of trade mark law were established before and are independent of any statutes, but we have now to consider the scope and effect of the modern legislation, embodied originally in the Trade Marks Registration Act, 1875, which, together with amending Acts of 1876 and 1877,6 has been repealed and replaced by the Patents, Designs and Trade Marks Act, 1883,7 as amended by the Patents, Designs and Trade Marks Act, 1888.8 The objects of these enactments' appear to be:-(1) To place restrictions on the bringing of actions for infringement of trade marks, by requiring that a trade mark shall be registered before any such action can be brought; (2) to facilitate evidence of title to trade marks by means of registration; and (3) to define the symbols or devices which the law will recognize as trade marks; and to protect the public by cutting down the numerous forms of words and other things by the use of which traders tried to secure to themselves exclusive rights; for, after the passing of the Act of 1875, certain things only could be registered, subject to this, that if a right had been acquired by user before that date to a particular device or form of words as a trade mark, then it might be registered under the Act, although it did not come within the definition of what could otherwise be registered as a trade mark under the Act.10 It has been suggested that the effect of the Acts may be to give the registered proprietor of a trade mark a right so absolute that he may maintain an action to prevent another person from selling goods with that mark upon them without reference to the question 1 Per Jessel, M. R., Singer Co. v. Wilson, 2 Ch. D. 442, 443. 2 Ford v. Foster, 7 Ch. 627. 3 Per Lord Blackburn, Johnston v. Orr-Ewing, 7 App. Cas. 229. See Singer Co. v. Loog, 8 App. Cas. 15, 18, 20; see Cotton, L. J., in S. C., 18 Ch. D. 395, 422. 4 38 & 39 Vict. c. 91. 5 39 & 40 Vict. c. 33. 7 46 & 47 Vict. c. 57. 8 51 & 52 Vict. c. 50. 9 See Edwards v. Dennis, 30 Ch. D. 464, 470; Re Van Duzer, 34 Ch. D. 623, 634. 10 See post, pp. 214, 216, as to "old" marks. whether or no the goods are sold under such circumstances as to Chap. XIII. pass them off as the goods of the plaintiff; but Cotton, L. J., while declining to express an opinion on that point, laid it down. that the principles on which the Court proceeds are not altered by the Acts,1 which (speaking generally) do not give new rights.2 Since the Acts, as before, the plaintiff, assuming that he has title under them, "is bound to show, either that the defendant has taken the whole or a substantial portion of his trade mark, or that the defendant has used his, the plaintiff's, trade mark in such a manner as to lead the public to believe that his, the defendant's, goods are the plaintiff's."3 The Act of 1875, it has been said, was intended to effect a great and fundamental change in the law, viz., that whereas before that Act the property in any trade mark could be obtained only by user, or, in the case of cutlery goods, by an assignment by the Cutlers' Company (see post, p. 220), under the Act a mode of acquiring a right in a trade mark was given mainly by registration; and accordingly the Act enabled a person who had invented a trade mark, which had not been previously used by some other person, to obtain registration of it and to treat its being on the register as evidence of public user or equivalent to public user, and so the Act gave a new title to the exclusive use of a trade mark.4 It is now established, after some doubts had been expressed on this point, that a mark may be registered, though there has been no such user of it as to give a right independently of the Acts. But a person cannot be allowed to register a trade mark, and thus preclude all other persons from using it, without ever using it himself or intending to use it.7 5 Registration under the Acts, it is submitted, must be notice to all persons of the right of the registered proprietor of a trade mark. A man who sells his goods and affixes thereto a device that is a real trade mark, is bound to go and look at the register and see if anybody else is proprietor of that device, and, if he does not, he must take the consequences; and therefore in such 1 Mitchell v. Henry, 15 Ch. D. 193. Re Lyndon, 32 Ch. D. 117. 3 Per Fry, L. J., Edwards v. Dennis, 30 Ch. D. 478. Per Fry, L. J., Re Hudson, 32 Ch. D. 325, 326. See Edwards v. Dennis, 30 Ch. D. 473, 479. Re Hudson, 32 Ch. D. 311, 318. And cf. 46 & 47 Vict. c. 57, s. 66, which 7 Batt v. Dunnett, [1899] A. C. 428; 8 Per Jessel, M.R., Re Palmer, 21 Ch. D. 58. Chap. XIII. cases the question whether the alleged infringer did in fact know that he was infringing would seem to be precluded. The Trade Marks Act, 1875. Trade Marks The scheme of the Act of 1875 (which is in substance that of the Acts now in force), was as follows. It established a register of trade marks1 and their proprietors, and then made registration in pursuance of the Act a condition precedent to the right to institute proceedings to prevent, or recover damages for, infringement, except in the case of trade marks in use before the 13th August, 1875, as to which it was provided that no such proceedings should be instituted until and unless registration had been made or refused. A trade mark was required to be registered as belonging to particular goods or classes of goods,” and, for the purposes of the Act, was defined as consisting of certain "essential particulars."4 66 3 The law as to registration of trade marks is now contained in Acts, 1883 to the Patents, Designs and Trade Marks Acts, 1883 to 1888. 1888. Registration. Series of markscolours. The Act of 1883 gave power to the Board of Trade to make general rules for regulating the practice of registration under the Act. Under this provision the rules now in force are the "Trade Marks Rules 1890, 1897 and 1898."7 8 Registration is to be obtained by an application to the Comptroller-General of Patents, Designs and Trade Marks at the prescribed place. For the purposes of registration, goods are classified in the manner appearing in the third schedule to the Rules of 1890, 10 and registration must be applied for in respect of particular goods or classes of goods.11 A person claiming to be the proprietor of several trade marks "resembling each other in the material particulars thereof," but differing in respect of the goods for which they are to be registered, or statements of numbers, price, quality, or names of places, may 1 "Not generally, but of trade marks as defined by the Act"; per Lord Cairns, C., Orr-Ewing v. Registrar of T. M., 4 App. Cas. 479, 483. 238 & 39 Vict. c. 91, s. 1, as amended by 39 & 40 Vict. c. 33, s. 1; Kerly, T. M. 312, 316. 3 S. 2. 4 S. 10. 546 & 47 Vict. c. 57; 48 & 49 Vict. c. 63; 51 & 52 Vict. c. 50. 6 S. 109. 7 See Kerly, T. M. 691-720. 8 46 & 47 Vict. c. 57, ss. 62, 78, 79, as amended by 51 & 52 Vict. c. 50. ss. 8, 19. 9 See Trade Marks Rules, 1890, r. 8: as to metal goods (Sheffield marks), see post, p. 220. 10 Rules, 1890, r. 6. 11 Act of 1883, ss. 62 (3), 65. See post, p. 218. have them registered as a series in one registration;1 and trade Chap. XIII. marks may be registered in any colour or colours. There is no right Discretion of comptroller. If the comptroller refuses registration when there is no opposi- Appeal. tion, the applicant may appeal to the Board of Trade, who may refer the appeal to the High Court of Justice. of appeal direct from such refusal to the Court. down in the House of Lords that, though the comptroller has a discretion, and no absolute right to registration is given to an applicant for registration of a trade mark, the meaning and intent of the statute is that the trade mark ought to be registered, unless for some of the reasons contemplated by the statute there is an objection to the registration; as where the proposed mark is obnoxious to the provision which forbids registration of words the use of which would be "calculated to deceive," by which is meant not "designed to deceive," but likely in fact to deceive.7 Applications for registration are advertised by the comptroller, Opposition to unless he refuses to entertain the application. Any person may, registration. within a limited time, give notice of opposition to registration, and the comptroller, after hearing the applicant and the opponent, if so required, decides whether the trade mark is to be registered, but his decision is subject to appeal to the Board of Trade, which may, if it appears expedient, refer the appeal to the High Court of Justice. Where there are conflicting claims to registration of the same trade mark, the comptroller may submit, or require the claimants to submit, their claims to the Court.10 on registra Except where the Court has decided that two or more persons Restrictions are entitled to be registered as proprietors of the same trade mark, tion. the comptroller shall not register, in respect of the same goods or description of goods, a trade mark identical 12 with one already Identical on the register, 13 or having such resemblance thereto as to be calculated to deceive; and the fact that the proprietor of the Similar 11 1 Act of 1883, s. 66. 14 8 S. 68; s. 12 of Act of 1888. 9 S. 69, amended by s. 13 of the Act of 1888. 10 S. 71. 11 Re Australian Wine Importers, 41 Ch. D. 278, 287. 12 Re Player, [1901] 1 Ch. 382; Re Crompton, [1902] 1 Ch. 758. 13 S. 72 (1); Re Dewhurst, [1896] 2 Ch. 137; Re Ehrmann, [1897] 2 Ch. 495. 14 S. 72 (2), as amended by s. 14 of the Act of 1888; Re Price's Candle Co., 27 marks. marks. |