Applying a Mark and a Trade Description

In one line

Before the Act can punish anyone for a false mark it must say what applying a mark means, and section 101 gives five ways of doing it, only the first of which involves touching the goods.

Why Chapter XII begins here

The offences in sections 103 and 104 all turn on a mark or a description being APPLIED to goods or services. Without a definition, "applied" would mean stamped on, and every counterfeiter would escape by putting the mark on the carton instead.

So section 101 is a deeming provision, and section 102 is another, and the offences follow only after both are in place.

Note first that "trade mark" itself means something different in this chapter. Section 2(1)(zb)(i) provides that in relation to Chapter XII, other than section 107, "trade mark" means a registered trade mark or a mark used in relation to goods or services for the purpose of indicating a connection in the course of trade between the goods or services and some person having the right as proprietor to use it. The permitted user drops out of the definition, and an unregistered mark used as a trade mark is included.

So Chapter XII protects unregistered marks too. That is a point students routinely miss.

The provision

Section 101(1): "A person shall be DEEMED TO APPLY a trade mark or mark or trade description to goods or services who:

(a) APPLIES IT TO THE GOODS THEMSELVES or uses it in relation to services; or

(b) applies it to ANY PACKAGE in or with which the goods are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or manufacture; or

(c) PLACES, ENCLOSES OR ANNEXES any goods which are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or manufacture, IN OR WITH ANY PACKAGE OR OTHER THING to which a trade mark or mark or trade description has been applied; or

(d) USES a trade mark or mark or trade description IN ANY MANNER REASONABLY LIKELY TO LEAD TO THE BELIEF that the goods or services in connection with which it is used are designated or described by that trade mark or mark or trade description; or

(e) in relation to the goods or services uses a trade mark or trade description in any SIGN, ADVERTISEMENT, INVOICE, CATALOGUE, BUSINESS LETTER, BUSINESS PAPER, PRICE LIST OR OTHER COMMERCIAL DOCUMENT and GOODS ARE DELIVERED OR SERVICES ARE RENDERED to a person IN PURSUANCE OF A REQUEST OR ORDER MADE BY REFERENCE to the trade mark or trade description as so used."

Section 101(2): "A trade mark or mark or trade description shall be deemed to be applied to goods WHETHER IT IS WOVEN IN, IMPRESSED ON, OR OTHERWISE WORKED INTO, OR ANNEXED OR AFFIXED TO, the goods or to any package or other thing."