MERCHANDISE MARKS ORDINANCE

MERCHANDISE MARKS ORDINANCE

CHAPTER 41.

MERCHANDISE MARKS.

To amend the law relating to fraudulent marks on

merchandise.

[1st January, 1891.]

1. This Ordinance may be cited as the Merchandise

Marks Ordinance.

2. (1) In this Ordinance-

'false trade description' means a trade description which

is false in a material respect as regards the goods to which it is applied,
and includes every alteration of a trade description, whether by way of
addition, effacement, or otherwise, where that alteration makes the
description false in a material respect; and the fact that a trade
description is a trade mark, or part of a trade mark, shall not prevent
such trade description being a false trade description within the
meaning of this Ordinance; 'goods' means anything which is the
subject of trade,

manufacture, or merchandise;

'name' includes any abbreviation of a name;

'person', 'manufacturer', 'dealer', or 'trader', and

'proprietor', include any body of persons, corporate or
unincorporate;

'trade description' means any description, statement, or

other indication, direct or indirect-

(a)as to the number, quantity, measure, gauge, or weight of any
goods; or

(b)as to the factory, premises, place or country in which any
goods were made or produced; or

(c)as to the mode of manufacturing or producing any goods; or

(d)as to the material of which any goods are composed; or

(e)as to any goods being the subject of an existing patent,
privilege, or copyright,

and the use of any figure, word, or mark which, according to the
custom of the trade, is commonly taken to be an indication of any
of the above matters, shall be deemed to be a trade description
within the meaning of this Ordinance ;





'trade mark' means a trade mark registered in the register of trade
marks kept under any Ordinance, or kept under or preserved by
the Trade Marks Act, 1905, and includes any trade mark which,
either with or without registration, is protected by law in any
British possession or foreign state to which the provisions of
section 91 and the proviso to subsection (I) of section 98 of the
Patents aiid Designs Act, 1907, are, under Order in Council, for
the time being applicable.

(2) The provisions of this Ordinance respecting the application of
a false trade description to goods shall extend to the application to
goods of any such figures, words, or marks, or arrangement or
combination thereof, whether including a trade mark or not, as are
reasonably calculated to lead persons to believe that the goods are the
manufacture or merchandise of some person other than the person
whose manufacture or merchandise they really are.

(3) The provisions of this Ordinance respecting the application of
a false trade description to goods, or respecting goods to which a false
trade description is applied, shall extend to the application to goods of
any false name or initials of a person, and to goods with the false name
or initials of a person applied, in like manner as if such name or initials
were a trade description, and for the purposes of this enactment 'false
name' or 'initials' means, as applied to any goods, any name or initials
of a person which

(a) are not a trade mark or part of a trade mark; and

(b)are identical with or a colourable initation of the name or
initials of a person carrying on business in connexion with
goods of the same description, and not having authorized
the use of such name or initials; and

(c)are either of a fictitious person or of some person not bona
fide carrying on business in connexion with such goods.

3. (1) Any person who-
(a) forges any trade mark; or

(b)falsely applies to goods any trade mark or any mark so nearly
resembling a trade mark as to be calculated to deceive; or

(c)makes any die, block, machine, or other instrument for the
purpose of forging, or of being used for forging, a trade
mark; or





(d) applies any false trade description to goods; or

(e)disposes of or has in his possession any die, block, machine,
or other instrument for the purpose of forging a trade mark ;
or

(f) causes any of the things above in this section mentioned to
be done,
shall, subject to the provisions of this Ordinance and unless he proves
that he acted without intent to defraud, be guilty of an offence.

(2) Any person who sells, or exposes for, or has in his possession
for, sale or any purpose of trade or manufacture, any goods or things
to which any forged trade mark or false trade description is applied, or
to which any trade mark or mark so nearly resembling a trade mark as to
be calculated to deceive is falsely applied, as the case may be, shall,
unless he proves--

(a)that, having taken all reasonable precautions against
committing an offence against this Ordinance, he had, at the
tinie of the commission of the alleged offence, no reason to
suspect the genuineness of the trade mark, mark, or trade
description ; and

(b)that, on demand made by or on behalf of the prosecutor, he
gave all the information in his power with respect to the
persons from whom he obtained such goods or things; or

(c) that otherwise he had acted innocently, be guilty of an
offence.

(3) Any person who is guilty of an offence against this Ordinance
shall be liable

(a)on conviction before the Supreme Court, to imprisonment for
two years, and to a fine of ten thousand dollars; and

(b)on summary conviction, to imprisonment for six months, or
to a fine of five thousand dollars; and

(c)in any case, to forfeit every chattel, article, instrument, or
thing by means of or in relation to which the offence has
been committed.

(4) The court or magistrate before which or whorn any person is
convicted under this section may order any forfeited articles to be
destroyed or otherwise disposed of as the court or magistrate thinks
fit.





(5) A person charged with an offence under this section before a
magistrate shall, on appearing before stich magistrate and before the
charge is gone into, be asked whether he wishes to be tried on
indictment before the Supreme Court, and, if he requires to be so tried,
be committed for trial and be so tried accordingly.

4. A person shall be deemed to forge a trade mark who either-

(a)without the assent of the proprietor of the trade mark, makes
that trade mark or a mark so nearly resembling that trade mark
as to be calculated to deceive; or

(b)falsifies any genuine trade mark, whether by alteration,
addition, effacement, or otherwise,

and any trade mark or mark so made or falsified is in this Ordinance
referred to as a forged trade mark : Provided that, in any prosecution for
forging a trade mark, the burden of proving the assent of the proprietor
shall lie on the defendant.

5. (1) A person shall be deemed to apply a trade mark or mark or
trade description to goods who-

(a) applies it to the goods themselves; or

(b)applies it to any covering, label, reel, or other thing in or with
which the goods are sold or exposed or had in possession
for any purpose of sale, trade, or manufacture; or

(c)places, encloses, or annexes any goods which are sold or
exposed or had in possession for any purpose of sale, trade,
or manufacture, in, with, or to any covering, label, reel, or
other thing to which a trade mark or trade description has
been applied; or

(d)makes in any affidavit, declaration or writing any statement
to the effect that a trade mark or trade description is
applicable to the goods; or

(e)uses a trade mark or mark or trade description in any manner
calculated to lead to the belief that the goods in connexion
with which it is used are designated or described by that
trade mark or mark or trade description.





(2) 'covering' includes' any stopper, cask, bottle, vessel, box,
cover, capsule, case, frame, or wrapper; and 'label' includes any band
or ticket.

(3) A trade mark or mark or trade description shall be deemed to
be applied whether it is woven, impressed, or otherwise worked into,
or annexed, or affixed to the goods, or to any covering, label, reel, or
other thing.

(4) A person shall be deemed falsely to apply to goods a trade
mark: or mark who, without the assent of the proprietor of a trade mark,
applies such trade mark or a mark so nearly resembling it as to be
calculated to deceive, but in any prosecution for falsely applying a
trade mark or mark to goods the burden of proving the assent of the
proprietor shall lie on the defendant.

6. Where a defendant is charged with making any die, block,
machine, or other instrument for the purpose of forging, or being used
for forging, a trade mark, or with falsely applying to goods any trade
mark or any mark so nearly resembling a trade mark as to be calculated
to deceive, or with applying to goods any false trade description, or
causing any of the things mentioned in this section to be done, and
proves

(a)that, in the ordinary course of his business, he is employed,
on behalf of other persons, to make dies, blocks, machines,
or other instruments for making, or being used in making,
trade marks, or, as the case may be, to apply marks or
descriptions to goods, and that in the case which is the
subject of the charge he was so employed by some person
resident in the Colony, and was not interested in the goods
by way of profit or commission dependent on the sale of the
goods; and

(b)that he took reasonable precautions against committing the
offence charged; and

(c)that he had, at the time of the commission of the alleged
offence, no reason to suspect the genuineness of the trade
mark, mark or trade description ; and

(d)that he gave to the prosecutor all the information in his
power with respect to the persons on whose behalf the trade
mark, mark, or trade description was applied,





he shall be discharged from the prosecution, but shall be liable to pay
the costs incurred by the prosecutor, unless he has given due notice to
him that lie will rely on the above defence.

7. (1) Where a watch case has there on any words or marks which
constitute, or are by common repute considered as constituting, a
description of the country in which the watch was made, and the watch
bears no description of the Country where it was made, those words or
marks shall prinia facie be deemed to be a description of that country
within the meaning of this Ordinance, and the provisions of this
Ordinance with respect to goods to which a false trade description has
been applied, and with respect to selling, or exposing for, or having in
possession for, sale or a purpose of trade or manufacture, goods with
a false trade description shall apply accordingly.

(2) For the purposes of this section, 'watch' means all that
portion of a watch which is not the watch case.

8. In any information, indictment, pleading, proceeding, or document,
in which any trade mark or forged trade mark is intended to be
mentioned, it shall be sufficient, without further description and without
any copy or facsimile, to state that trade mark or forged trade mark to be
a trade mark or forged trade mark.

9. In any prosecution for an offence against this Ordinance-

(a)a defendant and his wife or her husband, as the case may be,
may, if the defendant thinks fit, be called as a witness, and, if
called, shall be sworn and examined, and may be cross-
examined and re-examined, in like manner as any other
witness; and

(b)in the case of imported,goods, evidence of the port of
shipment shall be prima facie evidence of the place or
country in which the goods were made or produced.

10. Any person who, being within the Colony, procures, counsels,
aids, abets, or is accessory to the commission, without the Colony, of
any act, which, if committed in the Colony, would under this Ordinance
be a misdemeanor, shall





be guilty of that misdemeanor as a principal, and be liable to be
proceeded against, tried and convicted in the Colony as if the
misdemeanor had been there committed.

11. (1) Where, on any information or complaint laid
for an offence against this Ordinance, a magistrate has issued
either a summons requiring the defendant charged by such
information or complaint to appear to answer to the same,
or has issued a warrant for the arrest of such defendant, and
either the said magistrate, on or after issuing the summons
or warrant, or any other magistrate, is satisfied by information
upon oath that there is reasonable cause to suspect that any
goods or things by means of or in relation to which such
offence has been committed are in any house or premises of
the defendant, or otherwise in his possession or under his
control in any place, such magistrate may issue a warrant,
by virtue of which it shall be lawful for any police officer
named or referred to in the warrant to enter such house,
premises, or place at any reasonable time me by day, and there
to search for and seize and take away those goods or things;
and any goods or things seized under any such warrant shall
be brought before a magistrate for the purpose of its being
determined whether the same are or are not liable to
forfeiture under This Ordinance.

(2) If the owner of any goods or things which, if the
owner thereof had been convicted, would be liable to forfeiture
under this Ordinance is unknown or cannot be found in the
Colony, an information or complaint may be laid or made
for the purpose only of enforcing such forfeiture, and a
magistrate may cause notice to be advertised stating that,
unless cause is shown to the contrary at the time and place
named in the notice, such goods or things will be forfeited;
and at such time and place the magistrate, unless the owner
or any person on his behalf, or other person interested in the
goods or things, shows cause to the contrary, may order such
goods or things or any of them to be forfeited.

(3) Any goods or things forfeited under this section, or under any
other provision of this Ordinance, may be destroyed or otherwise
disposed of in such manner as the court or magistrate by which or
whom the same are forfeited may direct; and the court or magistrate
may, out of any proceeds which may be realized by the disposition of
such





goods or things (all trade rnarks and trade descriptions being first
obliterated), award to any innocent party any loss which he may have
innocently sustained in dealing with such goods.

12. On any prosecution under this Ordinance, the court or
magistrate may order costs to be paid to the defendant by the
prosecutor or to the prosecutor by the defendant, having regard to the
information given by and the conduct of the defendant and prosecutor
respectively.

13. No prosecution for an offence against this Ordinance shall be
commenced after the expiration of three years next after the
commission of the offence, or one year next after the first discovery
thereof by the prosecuior, whichever expiration first happens.

14. Whereas it is expedient to make further provision for
prohibiting the importation of goods which, if sold, would be liable to
forfeiture under this Ordinance

(a) all such goods, and also all goods of foreign manufacture
bearing any name or trade mark being or
purporting to be the narne or trade mark of any
manufacturer, dealer, or trader in the United
Kingdom, unless stich name or trade mark is
accompanied by a definite indication of the country
in which the goods were made or produced, are
hereby probibited to be imported into the Colony,
and if any such goods are imported or brought into
the Colony contrary to the prohibition herein
contained, such goods shall be forfeited and may be
destroyed or otherwise disposed of as the Director
of Commerce and Industry may direct;

(b) before detaining any such goods, or taking any
further proceedings with a view to the forfeiture
thereof under this Ordinance, the Director of
Commerce and Industry may require the regulations
under this section, whether as to information,
security, conditions, or other matters, to be complied
with, and may satisfy himself in accordance with
those regulations that the goods are such as are
probibited by this section to be imported;

(c) (i) where any such goods bearing any such name

or trade mark as aforesaid are imported into the
Colony, and the Director of Commerce and Industry





is, upon representations made to him, satisfied that the use
of the name or trade mark is fraudulent, the Director of
Commerce and Industry may also require the importer of the
goods, or his agent, to produce any documents in his
possession relating to the goods and to furnish information
as to the name and address of the person by whom the
goods were consigned to the Colony and the name and
address of the person to whom the goods were sent in the
Colony ; and, if the importer or his agent fails within fourteen
days to comply with any such requirement, he shall on
surninary conviction be liable to a fine of one thousand
dollars;

(ii) any information obtained from the importer of the
goods or his agent under sub-paragraph (i), or from any
other source may be communicated by the Director of Comm-
erce and Industry to any person whose name or trade mark
is alleged to have been used or infringed;

(d)it shall be lawful for the Governor in Council to make
regulations, either general or special, respecting the
detention and forfeiture of goods the importation of which is
proliibited by this section, and the conditions, if any, to be
fulfilled before such detention and forfeiture, and may by
such regulations determine the information, notices, and
security to be given, and the evidence requisite for any of
the purposes of this section, and the mode of verification of
such evidence;

(e)where there is on any goods a name which is identical with
or a colourable imitation of the name of a place in the United
Kingdom, that name, unless accompanied by the narne of the
country in which such place is situate, shall be treated for
the purposes of this section as if it were the name of a place
in the United Kingdom;

(f)the regulations may apply to all goods the importation of
which is prohibited by this section, or different regulations
may be made respecting different classes of such goods or
of offences in relation to such goods;

(g)the regulations may provide for the informant reimbursing
the Director of Commerce and Industry all





expenses and damages incurred in respect of any

detention made on his information, and any proceedings
consequent on such detention.

15. On the sale or in the contract for the sale of any goods to
which a trade mark or mark or trade description has been applied, the
vendor shall be deemed to warrant that the mark is a genuine trade mark
and not forged or falsely applied, or that the trade description is not a
false trade description within the meaning of this Ordinance, unless the
contrary is expressed in some writing signed by or on behalf of the
vendor and delivered at the time of the sale or contract to and accepted
by the vendee.

16. Where, at the commencement of this Ordinance, a trade
description is lawfully and generally applied to goods of a particular
class, or manufactured by a particular method, to indicate the particular
class or method of manufacture of such goods, the provisions of this
Ordinance with respect to false descriptions shall not apply to such
trade description when so applied : Provided that where such trade
description includes the name of a place or country, and is calculated to
mislead as to the place or country where the goods to which it is
applied were actually made or produced, and the goods are not actually
made or produced in that place or country, this section shall not apply
unless there is added to the trade description, immediately before or
after the name of that place or country, in an equally conspicuous
manner with that name, the name of the place or country in which the
goods were actually made or produced, with a statement that they were
made or produced there.

17. (1) This Ordinance shall not exempt any person from any action
or other proceeding which might, but for the provisions of this
Ordinance, be brought against him.

(2) Nothing in this Ordinance shall entitle any person to refuse to
make a complete discovery or to answer any question or interrogatory
in any action, but such discovery or answer shall not be admissible in
evidence against such person in any prosecution for an offence
against this Ordinance.

(3) Nothing in this Ordinance shall be construed so as to render
liable to any prosecution or punishment any servant





of a master resident in the Colony who bona fide acts in obedience
to the instructions of such master, and who, on demand made by or on
behalf of the prosecutor, has given full information as to his master.

18. Any person who falsely represents that any goods are made
by a person holding a Royal Warrant, or for the service of His Majesty
or any of the Royal Family, or any Government department, colonial or
otherwise, shall upon summary conviction be liable to a fine of one
hundred dollars.

19. (1) The Governor in Council may make regulations providing
that in cases appearing to affect the general interests of the Colony, or
of a section of the community, or of a trade, the prosecution of
offences under this Ordinance shall be undertaken by the Crown or by
any public officer, and prescribing the conditions on which such
prosecutions are to be undertaken.

(2) Nothing in this section shall affect the power of any person or
authority to undertake prosecutions otherwise than under the said
regulations.
Originally 15 of 1890. Fraser 4 of 1890. 8 of 1938. 22 of 1950. Short title. Interpretation. 50 & 51 Vict. C. 28, s. 3. 8 of 1938, s. 2. [s. 2 cont.] (5 Edw. 7, c. 15.) (7 Edw. 7, c. 29.) Offences as to trade marks and trade descriptions. [cf. 50 & 51 Vict. C. 28, s. 2.] 22 of 1950, Schedule. [s. 3 cont.] Forging trade mark. 50 & 51 Vict. C. 28, s. 4. Applying mark or description. 50 & 51 Vict. C. 28, s. 5. Exemption of certain person employed in ordinary course of business. 50 & 51 Vict. C. 28, s. 6. [s. 6 cont.] Application of the Ordinance to watches. 50 & 51 Vict. C. 28, s. 7. Description of trade mark in pleading. 50 & 51 Vict. C. 28, s. 9. Rules as to evidence. 50 & 51 Vict. C. 28, s. 10. Punishment of accessory. 50 & 51 Vict. C. 28, s. 11. Issue of and proceedings on search warrant. 50 & 51 Vict. C. 28, s. 12. [s. 11 cont.] Costs of defence or prosecution. 50 & 51 Vict. C. 28, s. 14. Limitation of prosecution. 50 & 51 Vict. C. 28, s. 15. Prohibition of importation of goods liable to forfeiture. 50 & 51 Vict. C. 28, s. 16. 1 & 2 Geo. 5, c. 31, ss. 1 & 2. [s. 14 cont.] Implied warranty on sale of marked goods. 50 & 51 Vict. C. 28, s. 17. Provisions of the Ordinance as to false description not to apply in certain cases. 50 & 51 Vict. C. 28, s. 18. Savings. 50 & 51 Vict. C. 28, s. 19. False representation as to Royal Warrant, etc. 50 & 51 Vict. C. 28, s. 20. Regulations as to official prosecutions. 54 & 55 Vict. C. 15, s. 2.

Originally 15 of 1890. Fraser 4 of 1890. 8 of 1938. 22 of 1950. Short title. Interpretation. 50 & 51 Vict. C. 28, s. 3. 8 of 1938, s. 2. [s. 2 cont.] (5 Edw. 7, c. 15.) (7 Edw. 7, c. 29.) Offences as to trade marks and trade descriptions. [cf. 50 & 51 Vict. C. 28, s. 2.] 22 of 1950, Schedule. [s. 3 cont.] Forging trade mark. 50 & 51 Vict. C. 28, s. 4. Applying mark or description. 50 & 51 Vict. C. 28, s. 5. Exemption of certain person employed in ordinary course of business. 50 & 51 Vict. C. 28, s. 6. [s. 6 cont.] Application of the Ordinance to watches. 50 & 51 Vict. C. 28, s. 7. Description of trade mark in pleading. 50 & 51 Vict. C. 28, s. 9. Rules as to evidence. 50 & 51 Vict. C. 28, s. 10. Punishment of accessory. 50 & 51 Vict. C. 28, s. 11. Issue of and proceedings on search warrant. 50 & 51 Vict. C. 28, s. 12. [s. 11 cont.] Costs of defence or prosecution. 50 & 51 Vict. C. 28, s. 14. Limitation of prosecution. 50 & 51 Vict. C. 28, s. 15. Prohibition of importation of goods liable to forfeiture. 50 & 51 Vict. C. 28, s. 16. 1 & 2 Geo. 5, c. 31, ss. 1 & 2. [s. 14 cont.] Implied warranty on sale of marked goods. 50 & 51 Vict. C. 28, s. 17. Provisions of the Ordinance as to false description not to apply in certain cases. 50 & 51 Vict. C. 28, s. 18. Savings. 50 & 51 Vict. C. 28, s. 19. False representation as to Royal Warrant, etc. 50 & 51 Vict. C. 28, s. 20. Regulations as to official prosecutions. 54 & 55 Vict. C. 15, s. 2.

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