COMMONS AMENDMENTS. (Hansard, 13 July 1937)

§ LORD TEMPLEMORE

My Lords, I think it would be convenient if I might take all the Amendments to Clause 4 together. This clause, which is one of the most important clauses in the Bill, deals with cases in which a word trade mark has become the name or description of the article or substance in relation to which it has been used. It protects a trade mark from being invalidated by the mere fact that it is used as such a name or description by the public—a matter which the trade mark owner often cannot control—unless in an ordinary case there has been a well-known and established use of the word as such a name or description of the article or substance (not being goods of the owner of the trade mark) by a person carrying on a trade therein, or in the case of an article or substance which was formerly manufactured under a patent, a period of two years or more after the cesser of the patent has elapsed and the word is still the only practicable name or description of the article or substance.

364 The clause, as it stood, was wide enough to cover the cases, firstly, where the word had become the descriptive name before the date of its registration as a trade mark, and, secondly, where it had become such a name after registration. The Amendments, other than that at page 4, line 4—which I will mention in a moment—are designed to limit the clause to the second case where the word became the descriptive name of the article or substance after the registration of the trade mark. This will leave cases in which the word may be alleged to be already descriptive at the date of the application for registration to be dealt with under the ordinary rules for testing the suitability of a mark for registration, and if a mark should be registered which does not satisfy those conditions it will be open to any person aggrieved to apply for its removal from the Register.

The reference to Section 41 of the principal Act in subsection (2) at page 4, is now no longer necessary, because Section 41 deals with the validity of the original registration of the trade mark whereas, as I have said, the amended clause is confined to matters arising after registration. The Amendment at page 4, line 4, is of a drafting character only and is intended to make clear the original in- tention—namely, that the well-known and established use of the word or words as the name or description of the article or substance by some person other than the proprietor or a registered user of the trade mark must, in order to invalidate the trade mark, be use in relation to goods which are not the goods of the proprietor or registered user. I beg to move that these Amendments be agreed to.