Trade Mark and Design Act of 1868

CAP. LV.

An Act respecting Trade Marks and Industrial Designs.

[Assented to 22nd May, 1868.]

Preamble.Her Majesty, by and with the advice and consent of the Senate and House of Commons of Canada, enacts as follows:

Minister of Agricuiture to register trade marks and industrial designs and grant certifications on certain conditions.1. The Minister of Agriculture shall cause to be kept in his office books to be denominated respectively the "Trade Mark Register," and "The Register of Industrial Designs," in which any proprietor of a Trade Mark or of a Design may have the same registered by depositing with the said Minister a drawing and description in duplicate of such Trade Mark or Design, together with a declaration that the same was not in use to his knowledge by any other person than himself at the time of his adoption thereof; and the said Minister of Agriculture, on receipt of the fee hereinafter provided, shall cause the said Trade Mark or Design to be examined; to ascertain whether it resembles any other Trade Mark or Design already registered; and if he find that such Trade Mark or Design is not identical with or does not so closely resemble as to be confounded with any other Trade Mark or Design already registered, he shall register the same, and shall return to the proprietor thereof one copy of the drawing and description, with a certificate signed by the Minister or his Deputy to the effect, that the said Trade Mark or Design has been duly registered in accordance with the provisions of this Act; and there shall be further stated in such certificate the day, month and year of the entry thereof, in the proper Register; and every such certificate shall be received in all Courts of Law or of Equity in Canada, as evidence of the facts therein alleged, without proof of the signature.

Minister may make rules and adopt forms.2. The Minister of Agriculture may, from time to time, subject to the approval of the Governor in Council, make such rules and regulations and adopt forms for the purposes of this Act, and such rules, regulations and forms circulated in print for the use of the public, shall be deemed to be correct for the purposes of this Act, and all documents executed according the same and accepted by the Minister of Agriculture shall be held valid so far as relates to the official proceedings under this Act.

TRADE MARKS.

What shall be deemed trade marks.2. For the purposes of this Act, all marks, names, brands, labels, packages or other business devices, which may be adopted for use by any person in his trade, business, occupation or calling, for the purpose of distinguishing any manuiacture, product or article of any description by him manufactured, produced, compounded, packed or offered for sale, no matter how applied, whether to such manufacture, product or article, or to any package, parcel, case, box or other vessel or receptacle of any description whatever containing the same, shall be considered and known as Trade Marks, and may be registered for the exclusive use of the party registering the same in the manner hereinafter provided; Exclusive right to use registered mark.and thereafter he shall have the exclusive right to use the same, to designate articles manufactured or sold by him, and for the purposes of this Act, timber and lumber of any kind upon which labor has been expended by any person in his trade, business, occupation or calling &hall be deemed a manufacture, product or article.

Trademarks may be cancelled.4. Any person having registered a Trade Mark may petition for the cancellation of the same, and the Minister of Agriculture may cause, on receiving such petition, the said Trade Mark to be so cancelled; and the same shall after such cancellation be considered as if it had never been registered under the name of the said party.

Registered trade marks assignable.5. Every Trade Mark registered in the Office of the Minister of Agriculture shall be assignable in law, and on the assignment being produced and the fee hereinafter provided being paid, the Minister of Agriculture shall cause the name of the assignee, with the date of the assignment and such other details as he may see fit, to be entered on the margin of the Register of Trade Marks on the folio where such Trade Mark is registered.

Conflicting claims to a trademark how to be dealt with.6. If any person shall make application to register, as his own, any trade mark, which has been already registered, the Minister of Agriculture shall cause all parties interested therein to be notified to appear, in person or by Attorney, before him, with their witnesses, for the purpose of establishing which is the rightful owner of such trade mark, and after having heard the parties and their witnesses, the said Minister shall order such entry or cancellation, or both, to be made as he shall deem just; in the absence of the said Minister, his Deputy may hear and determine the case and make such entry or cancelation or both, as to right and justice may appertain, and, similarly, any error in Registering Trade Marks or any oversight about conflicting registrations of Trade Marks may be settled in the same manner.

Penalty for using another person's trade mark.7. If any person, other than the party who has registered the same, shall mark any goods or any article of any description whatever with any trade mark registered under the provisions of this Act, or with any part of such trade mark, whether by applying such trade mark or any part thereof to the article itself or to any package or thing containing such article, or by using any package or thing so marked which has been used by the proprietor of such trade mark, or shall knowingly sell or offer for sale any article marked with such trade mark, or with any part thereof, with intent to deceive and to induce persons to believe that such article was manufactured, produced, compounded, packed or sold by the proprietor of such trade mark, he shall be guilty of a misdemeanor, and, on conviction thereof, shall forfeit, for each offence, a sum of not less than twenty dollars and not exceeding one hundred dollars, which amount shall be paid to the proprietor of such trade mark, together with the costs incurred in enforcing and recovering the same; Proviso.Provided, always, that every complaint under this section shall be made by the proprietor of such trade mark, or by some one acting on his behalf and duly authorized thereto.

Penalty for registering another's trade mark as your own.8. If any person shall knowingly and wilfully register as bis own any trade mark, the property of a person not resident in Canada, he shall be guilty of a misdemeanor, and shall be subject and liable to the penalty mentioned in the preceding section; And the entry of every such trade mark in the Trade Marks Register, shall be cancelled on receipt of a certificate signed by the Clerk of the Court, or the Justices of the Peace before whom the conviction was had, of any such conviction; and one-half of every such penalty shall be paid to the party prosecuting, and the other half to the Crown.

Penalty for using trade marks of persons not resident in Canada.9. If any person shall counterfeit or use the trade mark of any person, not resident in Canada, with intent to deceive the public and lead to the belief that the articles or package so marked were manufactured or put up by the owner such trade mark, although the same is not registered in Canada, he shall, on conviction thereof, forfeit a sum of not less than ten dollars nor more than fifty dollars for each offence, with costs, one-half of which penalty shall be paid to the complainant and the other half to the Crown.

Recovery of penalties.10. Complaints under either of the two next preceding sections may be brought by any party or person whatever, and the penalties mentioned in the three next preceding sections shall be enforced and recovered in the same manner, and subject to the same provisions as are provided in the sections of this Act respecting the registration and protection of designs.

Close imitation of trade mark forbidden.11. The use of any trade mark either identical with that of any manufacturer, producer, packer, or vender, or so closely resembling it as to be calculated to be taken for it by ordinary purchasers, shall be held to be a use of such trade mark.

Action of damages for using trade mark.12. Notwithstanding anything in the preceding sections contained, a suit may be maintained by any proprietor of a trade mark against any person using his registered trade mark, or any fraudulent imitation thereof, or selling articles bearing such trade mark, or any such imitation thereof, or contained in packages being or purporting to be his, contrary to the provisions of this Act.

Registration of Designs.

Copyright of regisered design.13. The Copyright acquired for an industrial design by the Registration of the same as aforesaid shall be valid for the term of five years.

Registration of design, how made.14. Every design to be protected must be registered before publication; and, after Registration, the name of the proprietor, who must be a resident of Canada, shall appear upon the article to which his design applies; if the manufacture be a woven fabric, by printing upon one end; if another substance, at the edge or upon any convenient parts, the letters Rd., with the mention of the year of the Registration; the mark may be put upon the manufacture by making it on the material itself, or by attaching thereto a label containing the proper marks.

Proprietor of design.15. The author of the design shall be considered the proprietor thereof, unless he has executed the design for another person, for a good or valuable consideration, in which case such other person shall be considered the proprietor, and shall alone be entitled to register it; but his right to the property shall only be co-extensive with the right which he may have acquired.

Designs assignable in law.16. Every design shall be assignable in law, either as to the whole interest or any undivided part thereof, by an instrument in writing, which assignment shall be recorded in the office of the Minister of Agriculture, on payment of the the fees hereinafter provided; And every proprietor of a design may grant and convey an exclusive right, under any copyright, to make, use and vend, and to grant to others to make, use and vend such design within and throughout Canada, or any part thereof, for the unexpired term thereof or any part thereof; which exclusive grant and conveyance shall be called a license, and shall be recorded in the same maimer and within the same delay as assignments.

No person to use a registered design without license.17. During the existence of the right (whether it be of the entire or partial use of such design,) no person shall, without the license in writing of the registered proprietor, apply such design, or a fraudulent imitation thereof, to the ornamenting of any article of manufacture, &c., for the purposes of sale, or publish, sell, or expose for sale or use any article of manufacture, &c., to which such design, or fraudulent imitation thereof shall have been applied, Penalty for contravention.under penalty of not less than twenty dollars, and not exceeding one hundred and twenty dollars, to the proprietor of the design, and costs—to be recovered by the registered proprietor, or his assignee, by suit in any Court, having jurisdiction in suits of a like amount.

Penalty for marking an unregistered article as registered.18. Every person placing the words "registered," or the letters " Rd.," upon any unregistered article, or upon any article the copyright of which has run out, or advertising the same for sale as a registered article, or unlawfully selling, publishing, or exposing for sale such article, knowing the same to have been fraudulently stamped or that the copyright thereof has expired, shall forfeit for every offence a sum not less than four dollars and not exceeding thirty dollars, to be recovered in the same manner as penalties under the next preceding section, and that by any person whatever, who shall receive one-half the amount of the said last mentioned penalty, on the recovery of the amount which the offender may have been condemned to pay.

Action of damages for using design without license.19. A suit may be maintained by the proprietor of any design for the damages he has sustained by the application or imitation of the design, for the purpose of sale, against any person so offending, he (the offender) knowing that the proprietor of the design had not given his consent to such application.

How the true proprietor may proceed against person having fraudulently registered a design as his own.20. If any person, not being the lawful proprietor of a design, be registered as proprietor thereof, the rightful owner may institute an action in the Superior Court in the Province of Quebec, in the Court of Queen's Bench in the Provinces of Ontario, and in the Supreme Court in the Provinces of Nova Scotia or New Brunswick as the case may be, and the Court having cognizance of such suit may, if it appear that the design has been registered in the name of a wrong person, either direct the registration to be cancelled, or that the name of the lawful proprietor shall be substituted for the name in the register, with costs in its discretion, and on application, by the Plaintiff supported by affidavit, it shall be lawful for any such Court, pending such action or proceedings, at its discretion, to issue an order upon the defendant prohibiting the use of such design, pending such suit or proceedings, under pain of being held in contempt of such Court.

Alteration in register on order of the court.21. The Minister of Agriculture, after due service of such order and payment of the fee hereinafter provided, shall cause such alteration to be made in the Register as shall in said order be directed.

Limitation of actions.22. All proceedings, under the preceding sections of this Act, shall be brought within twelve months from the commission of the offence, and not after; nor shall any of the clauses of this Act apply to protect any design which does not belong to a person resident within Canada and is not applied to a subject matter manufactured in Canada.

Certificate on copy returned to the owner.23. On the copy returned to the person registering, a certificate shall be given, signed by the Minister or by his Deputy, that the design has been registered, the date of registration, the name of the registered proprietor, his address, the number of such design, and the number or letter employed to denote or correspond with the registration, Its effect.which said certificate, in the absence of proof to the contrary, shall be sufficient proof of the design, of the name of the proprietor, of the registration of the commencement and period of registry, of the person named as proprietor being proprietor, of the originality of the design, and of compliance with the provisions of this Act; and generally the writing so signed shall be received as evidence of the facts therein stated, without proof of the signature.

GENERAL PROVISIONS.

Inspection of registers.24. Any person may be allowed to inspect the Register of Trade Marks and the Register of Industrial Designs; and the Minister may cause copies or representations of Trade Marks or Industrial Designs to tie delivered, on the applicant for the same paying the fee which shall be deemed sufficient for the purpose of having the same copied or represented.

Minister may refuse to register certain designs.25. The Minister of Agriculture shall have power to refuse to register such designs as do not appear to him to be within signs. the provisions of this Act, or when the design is contrary to public morality or order, subject, however, to appeal to the Governor in Council.

Publication of titles of design.26. The Minister of Agriculture shall, from time to time, cause to be published in the Canada Gazette the titles of the designs registered and the names and places of abode of the registered proprietors.

Clerical errors not to invalidate.}}27. Clerical errors happening in the drawing up or copying of any of any instrument, shall not be construed as invalidating the same, but when discovered they may be corrected under the authority of the Minister of Agriculture.

Table off fees.28. The following fees shall be payable, to wit:—

On every application to register a design or trade mark, including certificate.	$5.00
For each certificate of registration not already provided for.	1 .00
or each copy of any drawing, the reasonable expenses of preparing the same.
For recording any assignment.	2.00

For office copies of Documents or entries, not above mentioned, the following charges shall be exacted:

For every single or first folio.	$0.60
For every subsequent hundred words, (fractions from and under fifty being not counted, and over fifty being counted for one hundred).	0.25

All of which fees shall be paid over by the Minister of How applied. Agriculture to the Receiver General of Canada.

Repeal of former Acts.29. The Act twenty-fourth Victoria, chapter twenty-first of the Statutes of the late Province of Canada, and the thirtieth Victoria, chapter thirty-first of the Province of New Brunswick, and all other Acts or parts of Acts inconsistent with the present Act are hereby repealed as to any further registration or the granting of any new exclusive right under the provisions thereof; Rights acquired under repealed Acts saved.but all rights heretofore acquired by virtue of such provisions shall remain good and valid and assignable in law, and all penalties and forfeitures incurred or to be incurred under the same may be sued for and enforced, and all prosecutions commenced before the passing of this Act for any such penalties or forfeitures already incurred may be continued and completed, and entries and registrations under the said Acts respectively may be cancelled, as if the said Acts and parts of Acts had not been repealed.

Deputy Minister substituted for Secretary of Registration and Statistics.30. For all the purposes of the Act of Canada cited in the next preceding section of this Act, so far as the same remains in force after the passing of this Act, the Deputy of the Minister of Agriculture shall be and is hereby substituted for the Secretary of the Board of Registration and Statistics mentioned in the said Act, and shall have all the powers and duties of these officers.

Short title.31. In citing this Act it shall be sufficient to call it "The Trade Mark and Design Act of 1868."