Trade Marks

Under the Registration Acts.

Provision was first made for the registration of trade marks by the Trade Marks Registration Act, 1875. This act was a considerable success, but no provision was made under it for the registration of words unless they either were old marks or were registered in combination with one or more of the "essential particulars" prescribed by the act, such as a distinctive device, heading, mark, label or ticket. These limita tions excluded from registration most of the trade marks ordi narily in use.

The Patents, Designs and Trade Marks Act, 1883, remedied this defect besides altering the law in other important respects. The act of 1883 was amended in 1888 on the recommendation of a committee presided over by Lord Herschell. Neither the act of 1875 nor those of 1883 and 1888 altered the common law definition of a trade mark, nor contained any definition of the term. The description in the acts of what was registrable as a trade mark led to much litigation, and the interpretations of the judges left commercial men dissatisfied on three points: (I) The number of good and valuable trade marks which were not registrable; (2) that on allowing registration the Patent Office insisted on disclaimers which hampered the owner in obtaining protection in the Colonies and foreign countries ; (3) that there was no effective period of limitation to attacks on registered trade marks, because, though registration for five years was declared conclusive by sec. 76 of the act of 1883, the powers of the court to rectify the register could be invoked even after the lapse of the five years (re Gestetner's Trade Mark, 1907, 2 Ch. 478). In re-enacting and enlarging the provisions of the act of 1875 the act of 1883 laid down certain essential particulars of one at least whereof a trade mark must consist to be registrable. The act of 1883 first provided for "word marks," and included among them "a fancy word or words not in common use" (sec. 64 [1] [c]).

The expression "fancy word," used in the act of 1883, gave rise to considerable difference of opinion. It was interpreted by the court of appeal as equivalent to "obviously meaningless as applied to the article in question," or "obviously non-descriptive." In accordance with this interpretation, the words "gem" for guns, "melrose" for a hair restorer, "electric" for velveteen, and "wash erine" for a soap were all held not to be registrable. On the recommendation, however, in 1887, of a committee appointed by the Board of Trade, and presided over by Lord Herschell, the expression "invented word" was substituted for "fancy word" by the act of 1888.

In 1905, 1907, 1914 and 1919 the statute law as to trade marks was amended and remodelled. A bill was introduced in 1905 at the

instance of the London Chamber of Commerce, and after con sideration by a select committee became the Trade Marks Act, 1905. This act repeals the bulk of the provisions of the Patents, etc., Acts of 1883 and 1888 with respect to trade marks, and embodies them with amendments in a separate statute.

The Act of 1905.

This differs from the preceding acts in con taining a definition of trade mark for the purposes of the act unless the context otherwise requires ; viz., that it "shall mean a mark used or proposed to be used upon or in connection with goods for the purpose of indicating that they are the goods of the proprietor of such mark by virtue of manufacture, selection, cer tification, dealing with or offering for sale"; and "mark" is defined as including "a device, brand, heading, label, name, signature, word, letter, numeral or any combination thereof" (sec. 3). The act, modifying to the extent indicated in italics the acts of 1883 and 1888, prescribes (sec. 9) that a trade mark to be registrable must contain or consist of at least one of the following essential particulars: I. The name of a company, individual or firm represented in a special or particular manner (under the act of 1883 it has been held that the name must be in the nominative case, and that ordinary printing is not representation in a particular manner).

2. The signature of the applicant for registration or some prede cessor in his business. It is not clear that this includes descriptive trading styles.

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 surname.

5.

Any other distinctive mark; but a name, signature, or or words other than such as fall within the descriptions zn the above paragraphs z, 2, 3 and 4, shall not, except by order of the Board of Trade or of the court, be deemed a distinctive mark. B y distinctive, is meant "adapted to distinguish in Great Britain, not in foreign markets (In re Gallahero Application, 1924, 41 T.L.R. 139) the goods of the proprietor of the trade mark from those of other persons": and "in determining whether a trade mark is so adapted the tribunal may in the case of a trade mark in actual use take into consideration the extent to which such user has rendered such trade mark in fact distinctive for the goods in respect of which it is registered or proposed to be regis tered." Where the mark is limited to specified colours, that fact may be taken into account in deciding whether the mark is dis tinctive (sec. 1o).