*

* of that schedule

and the enactments mentioned in Part II shall, until so repealed, have effect as if they formed part of this Act: Provided, That this repeal shall not affect any convention, order in council, rule, or table of fees having effect under any enactment so repealed, but any such convention, order in council, rule, or table of fees in force at the commencement of this Act shall continue in force, and may be repealed, altered, or amended as if it had been made under this Act.

(2) Except where otherwise expressly provided, this Act shall extend to all patents granted * before the commencement

*

*

of this Act, and to applications then pending, in substitution for such enactments as would have applied thereto if this Act had not been passed

Short title and commencement.

99. This Act may be cited as the Patents and Designs Act, 1907, and shall, save as otherwise expressly provided, come into operation on the 1st day of January, 1908.

8 Edw. 7, ch. 4, sec. 2.

This Act may be cited as the Patents and Designs Act, 1908 (see sec. 92, supra).

[5 EDW. 7.]

GREAT BRITAIN.
TRADE-MARKS ACT, 1905.

CHAPTER 15.-An Act to consolidate and amend the law relating to trade-marks. [11th August, 1905.]

Be it enacted by the King'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:

Short title.

1. This Act may be cited as the trade-marks act, 1905.

Commencement of act.

2. This Act shall, save as otherwise expressly provided, come into operation on the 1st day of April, 1906.

PART I.

Definitions.

3. In and for the purposes of this Act (unless the context otherwise requires)

A "mark" shall include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof.

A "trade-mark" 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 trade-mark by virtue of manufacture, selection, certification, dealing with, or offering for

sale.

A "registrable trade-mark" shall mean a trade-mark which is capable of registration under the provisions of this Act.

"The register" shall mean the register of trade-marks kept under the provisions of this Act.

A "registered trade-mark" shall mean a trade-mark which is actually upon the register.

"Prescribed" shall mean, in relation to proceedings before the court, prescribed by rules of court, and in other cases, prescribed by this Act or the rules thereunder.

"The court" shall mean (subject to the provisions for Scotland. Ireland, and the Isle of Man) His Majesty's High Court of Justice in England.

Register of trade-marks.

4. There shall be kept at the Patent Office for the purposes of this Act a book called the register of trade-marks, wherein shall be entered all registered trade-marks with the names and addresses of their proprietors, notifications of assignments and transmissions, disclaimers, conditions, limitations, and such other matters relating to such trade-marks as may from time to time be prescribed. The register shall be kept under the control and management of the comptroller general of patents, designs, and trade-marks, who is in this Act referred to as the registrar.

Trust not to be entered on register.

5. There shall not be entered in the register any notice of any trust expressed, implied, or constructive, nor shall any such notice be receivable by the registrar.

Incorporation of existing register.

6. The register of trade-marks existing at the date of the commencement of this Act, and all registers of trade-marks kept under previous acts, which are deemed part of the same book as such register, shall be incorporated with and form part of the register. Subject to the provisions of sections 36 and 41 of this Act the validity of the original entry of any trade-mark upon the registers so incorporated shall be determined in accordance with the statutes in force at the date of such entry, and such trade-mark shall retain its original date, but for all other purposes it shall be deemed to be a trademark registered under this Act.

Inspection of and extract from register.

7. The register kept under this Act shall at all convenient times be open to the inspection of the public, subject to such regulations as may be prescribed; and certified copies, sealed with the seal of the Patent Office, of any entry in any such register shall be given to any person requiring the same on payment of the prescribed fee.

REGISTRABLE TRADE-MARKS.

Trade-mark must be for particular goods.

8. A trade-mark must be registered in respect of particular goods or classes of goods.

Registrable trade-marks.

9. 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.

(2) The signature of the applicant for registration or some predecessor in his business.

(3) An invented word or invented 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 word or words, other than such as fall within the descriptions in the above paragraphs (1), (2), (3), and (4), shall not, except by order of the Board of Trade or the court, be deemed a distinctive mark:

Provided always that any special or distinctive word or words, letter, numeral, or combination of letters or numerals used as a trade-mark by the applicant or his predecessors in business before the 13th day of August, 1875, which has continued to be used (either in its original form or with additions or alterations not substantially affecting the identity of the same) down to the date of the application for registration shall be registrable as a trade-mark under this Act. For the purposes of this section "distinctive " shall mean adapted to distinguish the goods of the proprietor of the trade-mark from those of other persons.

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 with respect to which it is registered or proposed to be registered.

Colored trade-marks.

10. A trade-mark may be limited in whole or in part to one or more specified colors, and in such case the fact that it is so limited shall be taken into consideration by any tribunal having to decide on the distinctive character of such trade-mark. If and so far as a . trade-mark is registered without limitation of color it shall be deemed to be registered for all colors.

Restriction on registration.

11. It shall not be lawful to register as a trade-mark or part of a trade-mark any matter, the use of which would by reason of its being calculated to deceive or otherwise be disentitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design.

REGISTRATION OF TRADE-MARKS.

Application for registration.

12. (1) Any person claiming to be the proprietor of a trade-mark who is desirous of registering the same must apply in writing to the registrar in the prescribed manner.

(2) Subject to the provisions of this Act the register may refuse such application, or may accept it absolutely or subject to conditions, amendments, or modifications.

(3) In case of any such refusal or conditional acceptance the registrar shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving at the same, and such decision shall be subject to appeal to the Board of Trade or to the court at the option of the applicant.

(4) An appeal under this section shall be made in the prescribed manner, and on such appeal the Board of Trade or the court, as the case may be, shall, if required, hear the applicant and the registrar, and shall make an order determining whether, and subject to what conditions, amendments, or modifications, if any, the application is to be accepted.

(5) Appeals under this section shall be heard on the materials so stated by the registrar to have been used by him in arriving at his decision, and no further grounds of objection to the acceptance of the application shall be allowed to be taken by the registrar, other than those stated by him, except by leave of the tribunal hearing the appeal. Where any further grounds of objection are taken the applicant shall be entitled to withdraw his application without payment of costs on giving notice as prescribed.

(6) The registrar or the Board of Trade or the court, as the case may be, may at any time, whether before or after acceptance, correct any error in or in connection with the application, or may permit the applicant to amend his application upon such terms as they may think fit.

Advertisement of application.

13. When an application for registration of a trade-mark has been accepted, whether absolutely or subject to conditions, the registrar shall, as soon as may be after such acceptance, cause the application as accepted to be advertised in the prescribed manner. Such advertisement shall set forth all conditions subject to which the application has been accepted.

Opposition to registration.

14. (1) Any person may, within the prescribed time from the date of the advertisement of an application for the registration of a trademark, give notice to the registrar of opposition to such registration. (2) Such notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.

(3) The registrar shall send a copy of such notice to the applicant, and within the prescribed time after the receipt of such notice, the applicant shall send to the registrar, in the prescribed manner, a counterstatement of the grounds on which he relies for his application, and, if he does not do so, he shall be deemed to have abandoned his application.

(4) If the applicant sends such counterstatement, the registrar shall furnish a copy thereof to the persons giving notice of opposition, and shall, after hearing the parties, if so required, and considering the evidence, decide whether, and subject to what conditions, registration is to be permitted.

(5) The decision of the registrar shall be subject to appeal to the court or, with the consent of the parties, to the Board of Trade.

i

(6) An appeal under this section shall be made in the prescribed manner, and on such appeal the Board of Trade or the court, as the case may be, shall, if required, hear the parties and the registrar, and shall make an order determining whether, and subject to what conditions, if any, registration is to be permitted.

(7) On the hearing of any such appeal any party may either in the manner prescribed or by special leave of the tribunal bring forward further material for the consideration of the tribunal.

(8) In proceedings under this section no further grounds of objection to the registration of a trade-mark shall be allowed to be taken by the opponent or the registrar other than those stated by