manded a license from the defendant firm. Defendants declare also that they are willing to prove the aforesaid facts by expert opinion.

The defendant party then proceeds to state that the objective and subjective conditions, which are required in order that a patent may be declared withdrawn according to paragraph 27 of the Patent Law, do not exist in the present case. Defendants go on to say that the objective prerequisites are wanting because it is evident from the reasons now given that neither users nor producers are interested in the working of the patented invention, and that the subjective prerequisites are wanting because the failure to carry out the working of this invention is due to the fact that the Austrian industry is prejudiced against the subject-matter of the patent in controversy, that is to say, a fact for which defendants are, in no wise, responsible.

For the reasons aforesaid, defendants pray that the petition for withdrawal be dismissed with costs.

However, in case this petition should not be dismissed, then the term, which must be granted for an adequate working of the invention according to paragraph 27, section 2, of the Patent Law, be appointed so as to allow all technical preparations to be made, within such period which are required for carrying out the patented process. Considering now that defendants possess no chemical plant in Austria and that they would therefore have to erect such plant, a term of not less than one year and a half should be granted to this purpose.

In reply to the plea submitted by defendants, plaintiffs added, in the course of oral proceedings, the following statements to their bill of complaint:

It is admitted by plaintiffs that the patent in issue relates to a process of producing intermediate products for the manufacture of coal-tar colors. It is denied, however, that the coal-tar color industry is carried on in Austria only on a very small scale; the contrary must rather be maintained. The plaintiffs declare then that, if opponents allege that other methods are also known for preparing said intermediate products, it is to be observed, in answer to such allegation, that the process described in the contested patent is especially adapted to its purpose. The complainant firm says further that the petition for withdrawal is justified on the ground that, although a positive action is required by the provisions of paragraph 27 of the Patent Law, defendants have not complied with such requirement as regards their patented invention. In conclusion the plaintiffs pray that no period of excessive length be appointed for the term provided for an adequate working of the patented invention, it being contended by the plaintiffs that, otherwise, the effect of the action for withdrawal would become illusory.

In support of the assertions made in its written answer, the defendant firm avers, in the course of oral proceedings, that, according to paragraph 27 of the Patent Law, the working of a patent can be required only when there exists a public interest and that the interest of but one single party constitutes no sufficient ground on which to base a petition for withdrawal.

Reasons of the Decision:

The defendant concern admits that it has not worked heretofore the patented invention in the country. In order to explain such failure to carry out the working, defendants state merely that, according to their knowledge, there existed in Austria, to this time, no demand for the products of their patented process; but they produce no evidence whatever of any action on their part to work the contested patent in Austria in conformity with the provisions of paragraph 27 of the

Patent Law. On the contrary, the ground here taken by the defendant party is that they were under no obligation at all to attend to the working. In support of this view it is averred that the public interest did not require the working in the country and that, in view of the absence of all demand for the product obtained by the patented process and owing to the prejudice of the home industry against said product, defendants should not be held responsible for the failure to carry out the practical execution of their invention.

This view taken by the owners of the patent in controversy that there existed no legal obligation imposing on them the duty to work their invention is not sustained by the Annulment Department for the reasons which follow:

In paragraph 27 of the Patent Law two cases are provided where a patent may be withdrawn. In the first case specified in this paragraph, which is supposed to be the regular case, the withdrawal cannot take place before the end of three years from the date of publication of the granted patent; however in the second case, which is represented as an exceptional case, the withdrawal is not made dependent upon this restriction of time. Indeed, it is evident that the preliminary conditions for this case must be more rigorous than those for the first-named case. Consequently it is impossible that those preliminary conditions on the ground of which a patent may be withdrawn in the second case, should be demanded as basis for a withdrawal under those conditions governing the first case. The law says explicitly that a patent may already be withdrawn in this first case. "If the patentee or his successors neglect to work the invention or have it worked in the country to an adequate extent or to do all that is necessary to secure such working." The law says further that, in such a case, the withdrawal cannot take place before the end of three years from the date of publication of the granted patent in the Patent Journal. No further conditions are provided for this normal case of withdrawal. That case where a patent can be withdrawn even before the expiration of the aforesaid three years is only considered in the next passage of paragraph 27, and that without any reference to the preceding part. This passage contains also the special preliminary conditions provided for the case in question, including the prerequisite that the public interest demands the working also in the country.

Consequently, the only way the patentee would be able to oppose effectively any request for withdrawal presented after the expiration of three years from the date of publication of the granted patent, is to prove, at least, that he has done all that is necessary to secure adequate working in the country. The fact that such working has not been carried into effect can only be excused if all efforts made by the patentee in order to effect said working are frustrated by insurmountable obstacles, that is to say, such obstacles as it is impossible to overcome, notwithstanding patentee's earnest efforts.

As regards the fact that the owners of the patent in issue offer in their answer and also in course of the oral proceedings, to furnish evidence proving their allegation that there existed not only no demand on the part of the Austrian industry for the working of the patented process, but rather a prejudice against the products of said process, it is to be observed in reply to this offer that it was impossible to consider such evidence. In fact, the law prescribes a positive act to be performed by patentee in order to secure the working of a granted patent, if at all possible. The patentee's initiative, his efforts, have to show whether or not there is any demand for the subject-matter of a patent, or for a process or its products. It is the owner of a patent who has to inquire after or, if possible, to create the demand, and the patentee is also expected to make, at least, efforts in this direction. Only in case it should become evident that such efforts are in vain and if the patentee should

desire to show, in the course of the proceedings for withdrawal, the earnestness of his intentions, only then he might refer to and produce evidence in proof of the fact that, notwithstanding all his earnest efforts, there has not only been no demand on the part of the home industry for the products of his process, but that there existed rather some prejudice against said products.

Suppose that, if the patentee were to act in a wholly passive manner, a fact which has actually been established in the present case, and suppose, further, that this fact were to be admitted in the proceedings for withdrawal and that the evidence resulting therefrom be then considered sufficient to excuse patentee's failure to carry into effect the working of his invention, in such a case the Patent Office would fail entirely to require that there be exerted on patentee's part that personal activity demanded from him by the law which provides that he should do all that is necessary to secure the working of his patent.

This motion for withdrawal has therefore to be sustained.

According to paragraph 27, section 2, of the Patent Law, the withdrawal of a patent must be preceded by a notice advising the impending withdrawal and appointing a suitable term for an adequate working of the invention. The withdrawal of the patent in controversy was therefore pronounced but conditionally.*

In appointing the term allowed for working this patent the Annulment Department considered the fact—and the same fact is also admitted by defendants in their answer that a sufficient term should be granted for making all the technical preparations required for working the patented process. However there is no requirement of law providing that the term appointed to this purpose be so ample as to enable the defendant firm to erect a special plant, to equip it and to put it in operation. There is no doubt but that the preparations for working this process can also be made, at the outset, in rented localities. Even though the working of the patented process should not yield, at first, the same profits which might be derived if said process were to be worked properly in an organized and regular manner in a plant especially erected for this purpose, patentees must ascribe this fact to their own former inactivity without which there would never have been any necessity to decide upon giving notice of impending withdrawal and appointing a fixed term for the working.

Consequently the term of nine months was deemed sufficient for working this

patent.

In determining the amount of costs according to paragraph 77 of the Patent Law, the fact was taken into consideration that, even were it to be supposed that all requirements of working will be satisfied within the prolonged term and the patent will therefore remain in force, even then the plaintiffs would have to be considered as the party prevailing hitherto in this case, and the right to demand reimbursement of costs which plaintiffs have acquired can therefore not be affected by circumstances occurring subsequent to the decision.

After the expiration of the above term, proceedings shall be continued. Against this decision the party considering itself injured by same can enter an appeal to the Patent Court according to paragraph 87 of the Patent Law. Such appeal must be made in writing in the Patent Office within 30 days after the delivery of the decision and must be supported by reasons.

*The decision reads as follows:

The patent in issue shall be withdrawn if the invention protected by said patent is not worked in the country to an adequate extent within a term of nine months, reckoning from that date when this decision becomes valid.

Within this term patentees are bound to produce evidence showing that the working is carried out to an adequate extent.

Great Britain.

TRADE MARKS.-Act of August 11, 1905.

The measure referred to in our August issue (p. 1295) received Royal assent on the 11th of August, and will take effect April 1, 1906.

We are indebted to Mr. Reginald W. Barker, of London, for a summary of the main provisions of the act which we reprint here, followed by the text of the act.

The Trade Marks Act, which was passed last week and comes into operation next year, will make a new and most useful era in commercial legislation.

One of the first points which arrest attention is the sensible definition of a Trade Mark: "It shall mean a Mark used or proposed to be used upon or in connexion with goods for the purpose of indicating that they are the goods of the proprietor of such Trade Mark by virtue of manufacture, selection, certification, dealing with, or offering for sale."

Hitherto it was necessary to use a Trade Mark on the goods or on the wrapper containing them. Under the new law it may be used in connexion with goods, that is by show cards, posters on the hoardings, circulars or by advertisements. Such pictorial embellishments are largely employed to attract public attention and to indicate various goods. The registered proprietor may be anyone practically who handles the goods. Hitherto Trade Marks have been held exclusively by manufacturers and merchants. Now the buyer who selects and the expert who certifies the goods may register their brands.

The Comptroller-General of Patents, Designs and Trade Marks is appointed the Registrar of Trade Marks, and in any proceedings before him has power, with the consent of the parties, to require the attendance of witnesses, take evidence on oath, award costs, and be in the same position in all respects as an Official Referee of the Supreme Court.

What is a registrable Trade Mark, has always been a vexed question and a fruitful source of litigation. Section 9 enlarges the scope of registration as follows:

"A registrable Trade Mark must contain or consist of at least one of the following essential particulars :

(1) The name of a company, individual, or firm represented in a special or particular manner;

(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 name or a surname;

(5) Any other distinctive mark, but a name, signature, or word or words, other 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, be deemed a distinctive mark;

"Provided always that any special or distinctive word or words, letter, numeral, or combination of letters or numerals used as a Trade Mark by the applicant or his predecessors in business before the thirteenth day of August, one thousand eight hundred and seventy-five, which has continued to be used (either in its original form or with additions or alterations not substantially affecting the identity of the same) down to the date of the application for registration shall be registrable as a Trade Mark under this Act.

"For the purposes of this section 'distinctive' shall mean adapted to distinguish the goods of the proprietor of the Trade Mark from those of other persons.

"In determining whether a Trade Mark is so adapted, the tribunal may, in the case of a Trade Mark in actual use, take into consideration the extent to which such user has rendered such Trade Mark in fact distinctive for the goods with respect to which it is registered or proposed to be registered."

A company will now for the first time be allowed to register its name if represented in a special or particular manner. This is an improvement on "particular and distinctive manner" in the present Act. The registration of the signature of the applicant's predecessor is also a useful innovation, as it enables a joint stock company to register its founder's signature as a new mark. Words having indirect reference to the character or quality of the goods will now be registered. This would appear to cover "Electric" velveteen, "Tower" tea, "Beatrice" shoes, and similar names which have been held not to be fancy words. Geographical names and surnames also, which have been excluded under the present law will now be registrable, if their ordinary signification is not a geographical name or a surname. Hitherto many good Trade Marks have been refused registration because they were found among the names in the Gazetteers and Directories which include "Abbey,” "Brook," "Palmer," "Silver," and "Golden" among thousands of common names.

Any other distinctive mark can be registered. This is very broad as, under section 3, a Mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof.

The registration of Associated Trade Marks is another important and useful provision. It enables an applicant to register the essential features of a label as separate Trade Marks, and the user of the whole label shall be deemed to be a user of such separate Trade Marks.

A new feature is contained in section 41, which enacts that registration shall, after seven years, be taken to be valid IN ALL RESPECTS, unless obtained by fraud or calculated to deceive, or contrary to law and morality.

No proceedings to prevent infringement or recover damages in respect of an unregistered Trade Mark can be instituted unless the Mark was in use before August 13th, 1875, and has been refused registration under the new Act.

TRADE MARKS ACT, 1905.

[5 EDW. 7.]

CHAPTER 15.

An Act to consolidate and amend the Law relating to Trade Marks.

[11th August, 1905.]

Be it enacted by the King's most Excellent Majesty, by and with the advice and consent of the Lords Spiritual and Temporal, and Commons, in this present Parliament assembled, and by the authority of the same, as follows:

Short Title.

I. This Act may be cited as the Trade Marks Act, 1905.

Commencement of Act.

2. This Act shall, save as otherwise expressly provided, come into operation on the first day of April one thousand nine hundred and six.