Odger's English Common Law

TRADE MARKS. 613
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.
(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 regis-
tered at the Patent Office is made equivalent to such public
user. 2 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. 3 The right to a registered trade mark can be assigned
only with the goodwill of the business concerned in the parti-
cular goods for which it has been registered, and will
determine with that goodwill. 4
(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
1 5 Edw. VII. c. 15.
2
Ss. -I, 39.
3 S. 10.
* S. 22.
5 S. 42.