058-NLR-NLR-V-17-STEWARAT-v.-SILVA.pdf
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Present : Pereira J.
STEWART v. SILVA.
77—>P. G. Colombo, 44,049.
Person registering trade marl: under “ The Trade Marks Ordinance,1585,” is proprietor of mark—Rights of person registering sametrade mark under " The Patents, Designs, and Trade Marks Act,1883 ”—Priority—If no step taken to obtain- priority in Ceylonflocal registration remains unaffected.
When a trade mark is duly registered in Ceylon under 11 TheTrade Marks Registration Ordinance, 1888," its proprietor, so faras Ceylon is concerned, is the person who has so registered it, andits use by anybody else without his sanction is obnoxious to theOrdinance.
If the sametrade mark hasbeen registeredinEngland unde.F
“ The Patents, Designs, and Trade Marks Act, 1888." inasmuch asthe provisions of section 108 of that Act have been extended toCeylon, it is open to the person in whose favour it is so registeredto obtain priority by registration of the same mark in Ceylon underour Ordinance ;but solong asno steps have beentaken to obtain
such priority,and noproprietorship aliundeisestablished by
anybody, therightsaccruingfrom' localregistration remain
unaffected.
fjVHE facts are set out in the judgment.
Bawa. K.C., and Morgan de Saramt for complainant, appellant.
H. J. C. Pereira, for accused, respondent.
Cur. adv. vult.
February 17, 1914. Pereira J.—
This is an appeal from an acquittal with the sanction of theAttorney-General. The accused was charged with offences undersection 3. sub-section (1) (b) and sub-section (2), of “ The MerchandiseMarks Ordinance, 1888.'* In view of .the evidence, I think that theonly charge that need be considered is that under section 3 (2),that is to say, the charge of selling goods to which a trade markwas falsely applied without proof of the exculpatory circumstancesmentioned in sub-sections (a), (6), and (c). I think that, assumingthat the accused did sell goods to which a trade mark was falselyapplied, it is clear that he has failed to establish the exculpatorycircumstances mentioned above. So that the .only question fordecision is whether to the goods sold by the accused a trade markwas falsely applied. The accused has been proved to have soldcertain boots to which the trade mark of a kangaroo was appliedafter that trade mark had been duly registered by the complainant
1914.
0 180
1914,
Pereira J.
Stewartv. SUva
under “ The Trade Marks Begistration Ordinance, 1888.” It hasbeen argued lor the defence that the trade mark in question is one.s .that has been registered in England under “ The Patents, Designs,and Trade Marks Act, 1883,” as a trade mark for the boots importedby the accused,- and that therefore the accused has a right to sellthe boots under that trade mark, in spite of the registration of thesame trade mark in Ceylon, as a mark for the boots imported fromthe same manufacturer. There is no evidence that the trade markin question has been registered in England under The Patents,Designs, and Trade Maks Act, 1883 ” ; but, assuming that tobe so, what is the effect of the registration of the same trade markunder our Ordinance in Ceylon? Under section 19 of “ The TradeMarks Ordinance, 1888, ” the registration of a trade mark is pritnafacie evidence of the right of the person who has registered it to theexclusive use of the mark, and such registration becomes conclusiveevidence} after live years from the date of the registration. Themeaning of this, of course, is that for five years from the date ofregistration any person who can show that he is the proprietor of .the trade mark may establish by proof the fact of such proprietor-ship as against the person who has registered the mark in Ceylon.Now, the section of Ordinance No. 13 of 1888 under which theaccused is charged speaks of trade marks as defined in section 4 ofthe Ordinance, and the expression ” trade mark” is there defined(to put it briefly) as a trade mark registered under the local Ordi-nance or under the Patents, Designs, and Trade Marks Act,* ora trade mark which, whether with or without registration, isprotected by law in a British Possession to which the provisions ofthe 103rd section of. ” The Patents, Designs, and Trade Marks Act,1883,” are, under His Majesty's Order in Council, for the timebeing, applicable. The provisions of section 103 of ” The Patents,Designs, and Trade Marks Act, 1883, ” have been duly extended toCeylon (see Gazette No. 6,075 of September 15, 1905). That beingso, under section 41a of Ordinance No. 14 of 1888, if the trademark in question in this case was registered in England, the personin whose favour it was so registered was entitled to obtain priorityby registration here under our Ordinance in the manner laid downin section 41a ; but no such registration has been proved to exist,nor has any? proprietorship been established aldunde, if that werepermissible in the circumstances of the case. The only localregistration proved is that by the complainant. It may be opento any person to have the registration of a trad© mark expungedon proper cause shown. ; and in a case like .the present it is, I think,the practice in England to suspend proceedings when a properapplication is made for that purpose, pending proceedings in theproper quarter to have the registration of the trade mark involvedin the case expunged. But so long as the registration remains ithas effect, and in view of .the provision of section 6 (3) of Ordinance
No. 13 of 1688, the proprietor, so far as Ceylon is concerned, of thetrade mark in question in the case is the complainant, and its usewithout his sanction is obnoxious to the Ordinance. I set aside theacquittal, and convict the accused of the offence mentioned abovetinder section 3 (2) of Ordinance No. 18 of 1888. I think that inthe circumstances the punishment need be nominal, to serve merelyas a warning against a continuance of the offence. I sentence theaccused to pay a fine of Bs. 5, in default, to one week’s simpleimprisonment.
1914.
Pereira J.
Stewartv. Silva
Set aside.