Alexander Wood Renton and William Feilden Craies

“ No trader is entitled to “pass off” his goods as those of another, and if he infringes this rule he is liable to an action for an injunction and damages, and these rights are preserved by the 'Trade Marks Act 1905 (s. 45) . The right to be protected against “passing-off” is restricted to goods of the same description as those upon which the trader uses the “get-up,” &c., imitated. ”

“ Provision is made to prevent importation of merchandise which copies or simulates the name of any domestic manufacture, manufacturer or trader, or of a manufacturer or trader located in a country affording like privileges to the United States, or which copies or simulates the trade mark registered in the United States, or which bears names or marks calculated to create the belief that it is made in the United States, or in any country other than the true country of origin. ”

“ The international convention for the protection of industrial property, made at Paris in 1883, to which Great Britain acceded in 1884, contains a provision that all goods illegally bearing a trade mark or trade name may be seized on importation into those states of the union where the mark or name has a right to legal protection, and that the seizure shall be effected at the request of either the proper public department or of the interested party, pursuant to the internal legislation of each country. ”

“ A registered trade mark may be taken off by order of the court on the application of a person aggrieved, on the ground that it was registered without a bona fide intention to use it in connexion with a particular class of goods, and that there has not been any such bona fide user, or that there has been no such bona fide user during the five years preceding the application. ”

“ Loog (1880, 18 Ch. D., 412) , “is entitled to present his goods as being the goods of another man, and no man is permitted to use any mark, sign or symbol, device or means, whereby, without making a direct false representation himself to a purchaser from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer.”
I. British Trade Marks before the Registration Acts.—The existing law in the United Kingdom cannot be properly appreciated unless the subject is approached in the first instance from the historical side. ”

“ The purchaser of the goodwill of a business has the right to use the trade name under which the business is known, and to restrain others from using it or such imitations of it as may mislead the public. ”

“ Any person is guilty of an offence, punishable on indictment or summary conviction by fine or imprisonment, who does any of the five following acts, unless he proves as regards the first four of them that he acted without intent to defraud (there is a special defence to No. v. which is noted below) : (i) . forges any trade mark, or makes, disposes of, or has in his possession for such purpose any die or instrument; (ii.) falsely applies any trade mark or a colour able imitation of any trade mark to goods; (iii.) applies any false trade description to goods ”

“ As to a Commonwealth trade mark to be applied to all goods included in or specified by a resolution passed by both houses, that in their opinion the conditions as to the remuneration of labour in connexion with their manufacture are fair and reasonable (s. 78) . The mark consists in a device or label bearing the words “Australian Labour Conditions.”
2. As to workers’ trade marks intended to protect the products of any individual Australian worker or association of such workers other than primary products of agricultural or pastoral industries (s. 74) . ”

“ The central register of trade marks is kept at the Patent Office, Southampton Buildings, London, and is under the charge of the comptroller-general of patents, designs and trade marks, who is appointed by and acts under the superintendence of the board of trade, and has a deputy—the registrar of trade marks. There is a branch registry at Manchester, whose chief officer is the keeper of cotton marks, which deals with 'all applications for the registration of trade marks for cotton goods falling within classes 23, 24, 25 in schedule 3 of the Trade Marks Rules 1906. ”

“ The assignments, &c., on proof of title; are recorded on the register (s. 33) . It is a condition precedent to an action for the infringement of a new trade mark that the plaintiff should be the registered proprietor of the mark at the time when the action comes on for hearing. This last provision does not apply to an action for “passing-off” (vide infra) . In actions for infringement, evidence of passing off, or that the infringing mark is calculated to deceive, is not necessary. ”

“ Where two or more persons are registered owners of the same or substantially the same mark in respect of the same goods, no one of them shall as against any other of them have any right of exclusive-user except so far as their respective rights have been defined by the court. ”

“ Registration of a trade mark does not entitle the proprietor to interfere with or restrain the user by any person of a similar mark upon or in Connexion with goods upon or in connexion with which such person has by himself or his predecessors in business continuously used such trade mark from a date anterior to the use of the mark by the registered proprietor, or to object tc the registration of the other man’s similar mark for concurrent user. ”

“ It is not merely or chiefly the retailer or dealer who has to be kept in view when the question of the likelihood of deception is under consideration. The courts have regard also, and mainly, to the ultimate purchaser whom the trade mark may reach, and careless or unwary persons are considered as well as those who are careful and intelligent. ”

“ In dealing with a claim for infringement the court must admit evidence of the usages of trade as to the get-up of the goods for which the mark is registered, and of any trade marks or get-up legitimately used with such goods by other persons s. ”

“ The care of this register is vested in the Cutlers' Company, who are substituted for the Comptroller as to registration of “Sheffield marks” (s. 63) . Applications made to the company are notified to the registrar, and may not be proceeded with if he objects. Any person aggrieved by the registrar s objection may appeal to the court. Applications made to the registrar for metal marks are notified to the Cutlers' Company. Persons aggrieved by the decision of the Cutlers' Company have an appeal to the 'courts (s. 64) . ”

“ The use of a fancy name “iron oxide tablets " has been restrained where it was found likely to cause deception as being used to supersede in the market certain well-known “ Iron Ox" tablets (Lion Ox Remedy Co. v. Co-operative Wholesale Society Ltd., 1907, 24 R.P.C. 425) . (2) A trader cannot be prevented from trading under his own name, if he is using it honestly (bona fide) ”

“ A man is not re uired, however, to disclaim his own name, or trade name, or that oil his place of business, if the name appears in the mark. The number of applications to register trade marks in 1884 was 7104, and the number of marks registered 525. ”

“ The registry has been long established, but was not recognized by statute till 1905. Records are kept and are open to public inspection of all applications made since 1875, whether granted or refused. There is a branch registry at Sheffield containing the marks for metal goods (“ Sheffield marks ) registered by persons carrying on business in or within six miles of, Hallamshire. ”