§ Order of the Day for the House to be put into Committee, read.
§ Moved, That the House do now resolve itself into Committee.—(The Lord Chancellor.)
§ On Question, Motion agreed to.
§ House in Committee accordingly.
§ [The EARL of DONOUGHMORE in the Chair.]
§ Clause 1 agreed to.
§ Clause 2:
§ Registration of Trade Marks in Part B.
§ 2.—(1)Where any mark has for not less than two years been bona fide used in the United Kingdom upon or in connection with any goods (whether for sale in the United Kingdom or exportation abroad), for the purpose of indicating that they are the goods of the proprietor of the mark by virtue of manufacture, selection, certification, dealing with or offering for sale, the person claiming to be the proprietor of the mark may apply in writing to the registrar in the prescribed manner to have the mark entered as his registered trade mark in Part B of the register in respect of such goods.
726§ (2) The registrar shall consider every such application for registration of a trade mark in Part B of the register, and if it appears to him without search that the application is inconsistent with the provisions of section eleven or section nineteen of the principal Act, or if he is not satisfied that the mark has been so used as aforesaid, he may refuse the application or may accept it; subject to conditions, amendments or modifications as to the goods or classes of goods in respect of which the mark is to be registered, or to such limitations, if any, as to mode or place of user or otherwise as he may think right to impose, and in any other case he shall accept the application.
§ (3) Every such application shall be accompanied by a statutory declaration verifying the user, including the date of first user, and such date shall be entered on the register.
§ (4) Any such refusal or conditional acceptance shall be subject to appeal to the court, and if the ground for refusal is insufficiency of evidence as to user, such refusal shall be without prejudice to any application for registration of the trade mark under the provisions of the principal Act.
§ (5) Every such application shall, if accepted, be advertised in accordance with the provisions of the principal Act.
§ (6) A mark may be registered in Part B notwithstanding any registration in Part A by the same proprietor of the same mark or any part or parts thereof.
§ LORD MOULTON moved, in subsection (1), after "indicating," to insert "and does indicate." The noble and learned Lord said: The introduction of these words is not a matter of controversy, but is an endeavour to include trade marks which, though not complying with all the restrictions which we impose on new trade marks, still have acquired by common law trade mark effect. In bringing these within Part B there has been, I think by inadvertence, the omission to secure that these marks have obtained any distinctive value. That has been pointed out, and I do not find that there is any objection on the part of the Department to adding to the words "for the purpose of indicating," the words "and does indicate," because that addition implies that they have got a distinctive character. I think it will prevent a great abuse of this part of the Bill; otherwise, words in common use, having no merit as trade marks, night get put on.
§
Amendment moved—
Page 1, line 23, after ("indicating") insert ("and does indicate").—(Lord Moulton.)
§ THE LORD CHANCELLORAs I understand, the object of my noble and learned friend is to prevent the registration of marks which are quite incapable of distinguishing anybody's goods. I am 727 not at all sure that that could not be better attained by inserting in subsection (2), after the word "aforesaid," the words "or is incapable of distinguishing the goods of the applicant." I think that would be a more artistic method of carrying out his purpose.
§ LORD MOULTONIt seems to me that that wills carry it out just as well.
§ Amendment, by leave, withdrawn.
§ THE LORD CHANCELLOR had on the Paper an Amendment to move, in subsection (2), to leave out "without search." The noble and learned Lord said: This Amendment deals with the subject-matter of a great many other Amendments, and I do not think there is any point of substance between noble Lords and the Government. I have read through all the Amendments which have been put down on the point and, on the whole, I think I prefer the method in which I treated my own Amendment. It is in these words "Clause 2, page 2, line 6, leave out 'without search,'" and, later, I propose in Clause 2, page 2, line 23, at the beginning of subsection (5), to insert "There shall be no obligation upon the Registrar to make a search in respect of any application for registration in Part B of the Register, but". I will tell your Lordships in a sentence my object. It is to make it perfectly plain that there is no obligation upon the Registrar to make a search in every case and any formula which makes that clear is one which I should not find unsatisfactory. For instance, there is this Amendment by Lord Moulton—"Page 2, line 6, leave out 'without search' and insert 'after such search, if any, as the Registrar may deem necessary.'" I have no doubt that these words as drafted make it perfectly plain that the Registrar has an unrestricted discretion as to whether he will make any search or not. If my noble and learned friend prefers them, I accept his words and do not move my Amendment, with the understanding that, if between now and Report stage, I think of words which he and I might prefer, he gives me full freedom to make a suggestion to him on that stage. Then I will not move my Amendment, but he will move his.
§
Amendment moved—
Page 2, line 6, leave out ("without search") and insert ("after such search, if any, as the Registrar may deem necessary").—(Lord Moulton.)
§ LORD STUART OF WORTLEYI have an Amendment to the same effect as that of the noble and learned Lord. Of course, this is not a time when it is possible to develop the motives which prompted me to put down a scheme of Amendments, but it is necessary to say that the Bill, as introduced, did create great alarm in the minds of persons who possessed property of this kind in these trade marks and monopolies which, I should remind your Lordships, are not like the monopolies with which you are dealing in the case of patents—monopolies of a process, or of manufacture or of sale. It is merely a monopoly of certain means of identification, and that monopoly is good for the producer, good for the customer, and good for our export trade. Those who wish that their property in trade marks should continue to be protected, as they were in the past, by this search, were certainly very much alarmed by the original terms of this Bill. My scheme of Amendments sought to continue protection in the case of these so-called common law trade marks, which are not very numerous and not the property usually of small or humble persons. I could give instances in which they belong to very powerful firms who might have registered trade marks which complied with the more modern law. It is only most unwillingly that those with whom I am interested—your Lordships will guess from my Parliamentary experience the nature of the interest—can bring themselves to see anything like an unfettered discretion vested in the Department. We shall be told that this discretion will be exercised with discrimination and in all proper ways, but unfortunately we cannot look forward to having so well informed and so able an administrator of this sub-department—
§ THE LORD CHANCELLORWill the noble Lord allow me? Is he objecting to Lord Moulton's form of words?
§ LORD STUART OF WORTLEYI am afraid Lord Moulton's Amendment gives an unfettered discretion.
§ THE LORD CHANCELLORYes, it does. But does the noble Lord resist it?
§ LORD STUART OF WORTLEYI would rather have the modified form of my own Amendment. It all rests on the omission of the words "without search."
§ THE LORD CHANCELLORI did not move, and Lord Moulton moved his.
§ LORD STUART OF WORTLEYI think I have said enough on this point to show that there are important interests at stake. A modified discretion would have been preferred to an unfettered discretion.
§ On Question, Amendment agreed to.
§ LORD STUART OF WORTLEY had on the Paper an Amendment in subsection (2) to leave out "without search," and to insert "after such search as may be necessary to ensure compliance with Sections eleven and nineteen of the principal Act." The noble Lord said: I move this Amendment in order to elicit the reasons which have actuated the Lord Chancellor.
§
Amendment moved—
Page 2, line 6, leave out ("without search") and insert ("after such search as may be necessary to ensure compliance with sections eleven and nineteen of the principal Act").—(Lord Stuart of Wortley.)
§ THE LORD CHANCELLORI am afraid I have the bad taste to prefer Lord Moulton's Amendment. I can give no other reason. The view of the authorities is that they are not prepared to sanction a system under which search will have to be made automatically in every case. In the overwhelming number of cases experience has shown that search is unnecessary. It takes a great deal of time and trouble, and they have complete confidence in the official and prefer to leave to him the discretion whether to make a search or not.
§ LORD STUART OF WORTLEYMy Amendment does not require that he should make a search in every case. On the contrary, it leaves him a discretion while supplying guidance to that discretion. I know I canot prevail against the forces marshalled by the Lord Chancellor.
§ LORD GLENTANARI crave your Lordships' indulgence in addressing you for the first time. With reference to what the Lord Chancellor has said that search is in a great many cases unnecessary, may I point out that Section 11 of the principal Act is one which deals with the mark being of a scandalous or immoral nature. It is 730 one which probably could be quite easily seen at sight. Section 19 prevents the registration of trade marks identical with, or nearly resembling, trade marks already registered and, although the Lord Chancellor has said this can be dispensed with in a great many cases, it is a point on which, naturally, the industrial community has some difficulty.
§ On Question, Amendment negatived.
§ THE LORD CHANCELLOR moved, in subsection (5), to insert at the beginning of the subsection, "There shall be no obligation upon the registrar to make a search in respect of any application for registration in Part B of the register, but."
§
Amendment moved—
Page 2, line 23, after("(5)") insert ("There shall be no obligation upon the registrar to make a search in respect of any application for registration in Part B of the register, but").—(The Lord Chancellor.)
§ On Question, Amendment agreed to.
§ Clause 2, as amended, agreed to.
§ Clauses 3, 4, and 5 agreed to.
§ Clause 6:
§ Removal from register of word trade marks used as names of articles.
§ 6.—(1) Where in the case of an article or substance manufactured under any patent in force at or granted after the passing of this Act, a word trade mark registered under the principal Act or Part I of this Act is the name or only practicable name of the article or substance so manufactured, all rights to the exclusive use of such trade mark, whether under the common law or by registration (and notwithstanding the provisions of section forty-one of the principal Act), shall cease upon the expiration or determination of the patent, and thereafter such word shall not be deemed a distinctive mark, and may be removed by the court from the register on the application of any person aggrieved.
§ (2) If the proprietor of any registered word trade mark uses his mark as the name or only practicable description of any single chemical substance, such mark may, notwithstanding section forty-one of the principal Act, be removed by the court from the register on the application of any person aggrieved:
§ Provided that—
- (a) the provisions of this subsection shall not apply where the mark is used to denote only the proprietors brand or make of such substance, as distinguished from the substance as made by others, and in association with a suitable and practicable name open to the public use; and
- (b) in the case of marks registered before the passing of this Act, no application under this section for the removal of the mark from the register shall be entertained until after the expiration of four years from the passing of this Act.
§ (3) The power to remove a trade mark from the register conferred by this section shall be in addition to and not in derogation of any other powers of the court in respect of the removal of trade marks from the register.
§ (4) The provisions contained in Part III. of this Act authorising applications for the rectification of the register to be made in the first instance to the registrar instead of to the court shall apply to applications under this section.
§ THE LORD CHANCELLOR moved to omit all words from the beginning of subsection (2) down to and including "such mark," and to insert "No word which is the only practicable name or description of any single chemical element or single chemical compound, as distinguished from a mixture, shall be registered as a trade mark, and any such word now or hereafter on the register". The noble and learned Lord said: The object of this Amendment is to meet an objection to the wording of the subsection (2) of Clause 6, and these words have been agreed to by those who felt some doubt on the subject.
§
Amendment moved—
Page 3, line 25, leave out from the beginning of sub-section (2) to ("may") in line 27, and insert ("No word which is the only practicable name or description of any single chemical element or single chemical compound, as distinguished from a mixture, shall be registered as a trade mark and any such word now or hereafter on the register").—(The Lord Chancellor.)
§ LORD EMMOTTI thank the Lord Chancellor for this concession. I think it is entirely satisfactory to the people interested.
§ On Question, Amendment agreed to.
§ Clause 6, as amended, agreed to.
§ Clauses 7, 8, 9, and 10 agreed to.
§ Clause 11:
§ Registration of assignments.
§ 11.—(1) In section thirty-three of the principal Act (which relates to the registration of assignments, &c.), for the words "the registrar shall on request made in the prescribed manner" there shall be substituted the words "he shall make application to the registrar to register his title, and the registrar shall on receipt of such application."
§
(2)At the end of the same section the following paragraph shall be added:—
732
Except in the case of appeals or applications under sections thirty-three or thirty-five of this Act, an assignment or transmission of, or other instrument affecting, title to a registered trade mark shall not be admitted in evidence in any court unless it has been entered on the register of trade marks.
§ THE LORD CHANCELLOR moved, at the end of the clause, to insert "or unless the Court otherwise directs." The noble and learned Lord said: The object of this Amendment is to meet an objection raised that the title of the register of the trade mark may sometimes be required to be produced in evidence in Court in matters entirely unconnected with trade marks, and it is proposed to give the Court discretion to prevent the abuse of that practice.
§
Amendment moved—
Page 5, line 29, at end insert ("or unless the court otherwise directs").—(The Lord Chancellor.)
§ LORD MOULTONThe Amendment moved by the Lord Chancellor was the first suggestion to amend the clause put forward on behalf of the Department, but the Department have seen legal difficulties which still exist, and they have authorised me to bring forward a new clause in the place of Clause 11. In my opinion it accomplishes their object without touching litigation otherwise than as to the title of the trade mark. It is rather a long and complicated Amendment but it is entirely agreed between us and I think will give satisfaction to all.
§ THE LORD CHANCELLORI have just been informed that it is an agreed Amendment. I was not aware of that until this moment, and I will accept the proposed new clause.
§ Amendment, by leave, withdrawn.
§ Amendment moved—
§
Page 5, line 16, leave out Clause 11, and insert the following new clause—
11.—For Section 33 of the Principal Act the following section shall be substituted:—
§ On Question, Amendment agreed to.
§
LORD STUART OF WORTLEY moved, after Clause 11, to insert the following new clause—
.When considering applications for the registration of trade marks, or oppositions to trade marks, the registrar may have regard to the possibility or confusion arising whether within the United Kingdom or outside the United Kingdom.
§ The noble Lord said: Your Lordships may not be aware that in the Bagots Hutton case this House decided that they would not assist the owner of a trade mark which was threatened with a deceptive imitation, which according to the evidence in that case might cause confusion outside the United Kingdom, and, most unfortunately as it seems to me, the Department of the Controller of Patents conceive it to be their duty to follow the policy indicated in that decision in every case. It was natural that your Lordships' House should in that case have given the decision which it did, because in that case it was a question of selling gin to the coloured inhabitants of the Malay Peninsula. I could give your Lordships many instances, although one will suffice, in which it would be perfectly right that the Controller should in his discretion have it in his power to interfere where it can be shown that there is confusion arising from the deceptive use of identical trade marks outside the United Kingdom. Take, for instance, files or drills used in mining. The trade mark is just a picture of a chimney smoking. In Rumania and other countries they are called "chimney" files and drills, and any imitation of them which ingeniously omitted the name of the firm by using a "chimney" trade mark, might cause loss to the people who had earned well-deserved fame in the manufacture of these tools. I do not by my Amendment make it incumbent upon the Registrar to do anything compulsorily, but I submit that in such a case as I have given it is quite proper that some protection should be afforded in respect of confusion arising outside the United Kingdom, as at home.
734
§
Amendment moved—
Insert the said new clause.—(Lord Stuart of Wortley.)
§ VISCOUNT PEELThere is no doubt much force in the argument used by my noble friend, as to cases of confusion arising from the way in which these trade marks are dealt with in other countries, but I suggest that an Amendment is really unnecessary—and I am sure that he does not want to put in any clause which is unnecessary— because, it is already the practice to do what he says ought to be done. Constantly in these cases evidence is given as to what is taking place in other countries.
§ LORD STUART OF WORTLEYHow is it then that the whole of the Chambers of Commerce tell me that it is not done?
§ LORD MOULTONIf it is a case of knowledge and evidence I should say it is certainly the practice. The particular case to which the noble Lord referred was a case in which the resemlance was very remote. Their Lordships may have referred to the fact that it was also a foreign country, but I do not think there is any decision which says that the Controller is not to do this, and I am satisfied that he does it wherever it is a proper case.
§ LORD STUART OF WORTLEYIf I am assured that the Registrar still has unfettered discretion in every instance and does not consider himself bound by the Bagots Hutton case, I will ask leave to withdraw my Amendment.
§ Amendment, by leave, withdrawn.
§ Clause 12 agreed to.
§ Clause 13:
§ Short title, construction, and commencement.
§ 13.—(1) This Act may be cited as the Trade Marks Act, 1919, and the Trade Marks Acts, 1905 and 1914, and so much of the Patents and Designs Acts, 1907 to 1919, as relates to trade marks, and this Act may be cited together as the Trade Marks Acts, 1905 to 1919.
§ (2) This Act shall be construed as one with the principal Act and shall come into operation on the first day of January nineteen hundred and twenty.
§ THE LORD CHANCELLORMy Amendment to this clause is purely formal.
§
Amendment moved—
Page 5, line 40, leave out ("January") and insert ("April").—(The Lord Chancellor.)
§ On Question, Amendment agreed to.
§ Clause 13, as amended, agreed to.
§ First Schedule agreed to.
§ Second Schedule: