Odger's English Common Law

612 INFRINGEMENT OF PATENTS, COPYRIGHTS, &C.
(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 1 name or
a surname
;
2
(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, 3 be deemed a
distinctive mark." 4
There are certain words which the Eegistrar 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, 6 and also, as a rule, any words which are merely a
puffing description of the goods. Thus the words perfection* and classic 7
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, 9 Solio, w 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.
8 See In re Cadbury's Application, [1914] 1 Ch. 331.
* 5 Bdw. VII. c. 15, s. 9.
5 S. 19.
6 In re Joseph Crosfield # Sons, Ltd., [1910] 1 Ch. 119, 130.
7 In re Sharpe's Trade Mark (1914), 31 Times L. E. 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, " liovril," [1896] 2 Ch. 600.
8 In re Burroughs, Wellcome % Co.'s Trade Marks, [1S04] 1 Ch. 736.
io in re Eastman Co.'s Trade Mark, [1908] A. C. 571, 577 ; 15 K. P. C. 476.
11 In re Carl Lindstroem's Trade Mark, [19141 2 Ch. 103.
" S. 11.
18 See also the Merchandise Marks Act, 1887 (50 & 51 Vict. c. 28), s. 2. ante, p. 374.