committed by an occasional quotation from a prior authority, especially if the source from which it is derived is fairly acknowledged. "But if, in effect, the great bulk of the plaintiff's publication-a large and vital portion of his work and labour-has been appropriated and published in a form which will materially injure his copyright, mere honest intention on the part of the appropriator will not suffice, as the Court can only look at the result and not at the intention in the man's mind at the time of doing the act complained of, and he must be presumed to intend all that the publication of his work effects." 1

3

nor is

But, except in the case of works of fiction,2 a bona fide abridgment does not constitute an infringement, if intellectual labour and independent judgment have been bestowed on the condensation and rearrangement of the original; nor is "any fair dealing with any work for the purposes of private study, research, criticism, review or newspaper summary; 14 "the reading or recitation in public of any reasonable extract from any published work."5 So writers of books bonâ fide intended for the use of schools are allowed considerable latitude in reproducing short passages from copyright books which are not intended for the use of schools.

If an English book is translated into French, and then the defendant translates the French version of it into English, the sale of the retranslation in England will be an infringement of the copyright in the original work."

III. TRADE MARKS.

Closely resembling copyright is the right to the exclusive use of a particular trade mark, a right which is now entirely statutory. Before January 1st, 1876, this right could only be acquired by the actual user of the mark without any substantial alteration on the same class of goods for a considerable time; the mark had to be such as would distinguish its owner's goods from all other goods of the same class, and must have been placed upon the goods themselves, not merely on packing cases which did not reach retail customers. But since January 1st, 1876, a new and unused mark can be registered, provided that the applicant has a real intention of using it upon the description of goods for which it is registered.

1 Per Sir W. Page Wood, V.-C., in Scott v. Stanford (1867), L. R. 3 Eq. at p. 723, commenting on Cary v. Kearsley (1802), 4 Esp. 169.

2 Dickens v. Lee (1844), 8 Jur. 183.

8 Gyles v. Wilcox (1740), 2 Atk. 141; Tonson v. Walker (1752), 3 Swans. 672. 4 S. 2 (1) (i.).

5 S. 2 (1) (vi.).

6 S. 2 (1) (iv.).

7 Murray v. Bogue (1852), 17 Jur. 219.

See the Trade Marks Act, 1905 (5 Edw. VII. c. 15).

1

A trade mark is "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." The word "mark" includes "a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof," and the sale of any goods so marked imports, in the absence of an express agreement to the contrary, a warranty that the trade mark is genuine and not forged or falsely applied.2

The object of a trader in using a trade mark is to distinguish his goods from those of other manufacturers. Hence the mark must be distinctive; it must distinguish the owner's goods from others on the market. "The function of a trade mark is to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods-to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market. It tells the person who is about to buy, or considering whether he shall buy, that what is presented to him is either what he has known before under the similar name, as coming from a source with which he is acquainted, or that it is what he has heard of before as coming from that similar source." 3

4

A register of trade marks is kept at the Patent Office and is open to the inspection of the public. It contains all registered trade marks, with the names and addresses of their proprietors; but no notice of any trust affecting the trade mark is entered on the register. "Each trade mark must be registered in respect of particular goods or classes of goods." "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;

5

15 Edw. VII. c. 15, s. 3.

2 Merchandise Marks Act, 1887 (50 & 51 Vict. c. 28), s. 17.

Per Bowen, L. J., in In re Powell's Trade Mark, [1893] 2 Ch. at pp. 403, 404. 45 Edw. VII. c. 15, s. 4.

5 S. 8.

(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; ?

2

1

(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." 4

3

There are certain words which the Registrar will not register as a trade mark or as part of a trade mark. He will refuse to register any ordinary English word which is common to the trade or is identical with a trade mark already registered, and also, as a rule, any words which are merely a puffing description of the goods. Thus the words perfection and classic were refused registration on the ground that they were merely laudatory and also well-known English words. On the other hand, such fancy words as Bovril, Tabloid, Solio,1o and Parlograph,11 have been recognised as "invented words" and have therefore been allowed to be registered as trade marks. Any scandalous design or any matter the use of which would be contrary to law or morality will also be refused registration.12

If a man has an exclusive right to use a particular trade mark, it becomes his property for the purpose of its being applied to goods; and if any other person applies that trade mark or any mark closely resembling it to his own goods, or in any other way appropriates and uses it to the prejudice of its owner, he commits a tort; for his act is a violation of a right of property.13 In order to succeed in an action to

1 Yet the word "Berna," which is the Italian and Spanish name for Berne, has been registered in England: In re Berna Commercial Motors, Ltd., [1915] 1 Ch. 414. 2 The registration of christian names is now permitted. 3 See In re Cadbury's Application, [1914] 1 Ch. 331.

45 Edw. VII. c. 15, s. 9.

5 S. 19.

In re Joseph Crosfield & Sons, Ltd., [1910] 1 Ch. 119, 130.

7 In re Sharpe's Trade Mark (1914), 31 Times L. R. 105. As to the word "Uneeda" see In re" Uneeda Trade Mark, [1901] 1 Ch. 550; [1902] 1 Ch. 783.

8 In re Trade Mark No. 58,405, Bovril," [1896] 2 Ch. 600.

In re Burroughs, Wellcome & Co.'s Trade Marks, [1904] 1 Ch. 736.

10 In re Eastman Co.'s Trade Mark, [1908] A. C. 571, 577; 15 R. P. C. 476.

11 In re Carl Lindstroem's Trade Mark, [1914] 2 Ch. 103.

12 S. 11.

13 See also the Merchandise Marks Act, 1887 (50 & 51 Vict. c. 28), s. 2. ante, p. 374.

recover damages for such a tort the plaintiff must prove three things

(i.) that he is the person at present entitled to the use of a trade mark for goods of a particular class;

(ii.) that such trade mark has been duly registered in his name at the Patent Office; and

(iii.) that the defendant has violated the plaintiff's exclusive right to the use of his trade mark.

It is not necessary for the plaintiff to prove special damage, or that there was any fraudulent intention on the part of the defendant.

2

(i.) Before the Trade Marks Act, 1905,1 the right to a trade mark, like the right to a trade name, had to be acquired by public user of it; but now an application to have it registered at the Patent Office is made equivalent to such public user. The fact that a trade mark has been registered by A. is prima facie evidence that A. is its owner and has the right to use it. The right to a registered trade mark can be assigned only with the goodwill of the business concerned in the particular goods for which it has been registered, and will determine with that goodwill.*

3

(ii.) No one can commence proceedings for the infringement of a right to a trade mark unless the same has been registered, or unless it was in use before August 13, 1875, and has been refused registration under the Act of 1905.5

(iii.) It will be a violation of the plaintiff's right if the defendant has used the trade mark for trading purposes in the United Kingdom, or in any foreign market where the plaintiff's goods circulate, upon or in connection with goods for which the mark is registered and used and which are not the genuine goods of the plaintiff. It is enough if the defendant has used any essential part of the mark or any colourable imitation of it in a way which is calculated to deceive the public. Where A. has registered a picture

15 Edw. VII. c. 15.

2 Ss. 4. 39.

3 S. 10.

4 S. 22.

5 S. 42.

or device as his trade mark, the use by B. of a similar picture or device will be an infringement, if a purchaser would be thereby induced to purchase B.'s goods in the belief that they are A.'s. The test is not whether there is a similarity between two marks when lying side by side, but whether, when a person sees one mark apart from the other, he may take it for that other. Thus the use of the word Onsoria was held to be an infringement of a trade mark consisting of the word Anzora: but the word Swankie was held not to be an infringement of a trade mark consisting of a picture of a swan together with the word Swan, as there was no serious danger of any confusion between the two words. If the Court is satisfied that the trade mark used by the defendant is calculated to deceive purchasers, it is not as a rule necessary for the plaintiff to prove that any purchaser was in fact deceived. A person who uses such a deceptive trade mark is not entitled to any protection in respect of it.5

3

On proof of the facts (i.), (ii.) and (iii.) above, the plaintiff can recover damages, and in most cases he may also claim an injunction and a declaration of his right to the exclusive use of the trade mark. He may claim an account of the profits made by the defendant from wrongful sales of goods improperly marked with the trade mark; but if he does so, he cannot as a rule obtain damages as well."

IV. TRADE NAMES.

A man's name is that by which others identify him. Any man can take any name which he pleases so long as he can get other people to call him by it-and this in spite of the annoyance which such an act may cause to others who already bear that name. So, too, a man can give any name he pleases

1 In re Sandow, Ltd.'s Application (1914), 31 R. P. C. 196; 30 Times L. R. 394, and see post, p. 621.

2 Lewis v. Vine and Vine's Perfumery Co. (1913), 31 R. P. C. 12.

3 Re Thomas Crook's Trade Mark (1914), 31 R. P. C. 79; 110 L. T. 474. Reddaway v. Banham, [1896] A. C. 199.

5 S. 11.

6 Lever v. Goodwin (1887), 36 Ch. D. 1; Leather Cloth Co. v. Hirschfield (1865), L. R. Eq. 299.

See however, the Registration of Business Names Act, 1916 (6 & 7 Geo. V. c. 58).