Page: 375↓
By section 1 of the Patents, Designs, and Trade-Marks Act 1888, amending the Patents, Designs, and Trade-Marks Act 1883, it was enacted (1) that after 1st July 1889 no person should describe himself as a patent agent unless registered as such in pursuance of the Act; (2) that the Board of Trade should from time to time “make such general rules as are in the opinion of the Board required for giving effect to this section,” and the provisions of section 101 of the principal Act should apply to all rules so made; (3) “provided that every person who proves, to the satisfaction of the Board of Trade, that prior to the passing of this Act he had been bona fide practising as a patent agent, shall be entitled to be registered as a patent agent in pursuance of this Act.”
Section 101 of the Act of 1883, inter alia, provides that any rules made in pursuance of it shall be laid before both Houses of Parliament, and that if either House of Parliament should, within 40 days after the rules had been laid before them, resolve that the rules ought to be annulled, the same should be of no effect after the date of such resolution.
The Board of Trade, in virtue of the powers thus conferred, issued certain rules providing inter alia that an annual fee of £3, 3s. should be paid by every registered patent agent, and that the name of any patent agent not paying such fee should be removed from the register. These rules were laid before Parliament and not objected to.
Thereafter a person who had proved, to the satisfaction of the Board of Trade that he had practised bona fide as a patent agent prior to the passing of the Act of 1888, and who had been registered as a patent agent, refused to pay the annual registration fee.
The keepers of the register thereupon removed his name from the register, and as he continued to describe himself as a patent agent they brought an action of interdict to stop him from doing so.
Held that the rules were ultra vires of the Board of Trade, and that as the defender had been improperly struck off the register, the application for interdict should be dismissed.
By section 101 of the Patents, Designs, and Trade Marks Act 1883 (46 and 47 Vict. cap. 57) it is enacted—(1) The Board of Trade may from time to time make such general rules and do such things as they think expedient, subject to the provisions of this Act, (a) For regulating the practice of registration under this Act … “(4) Any rules made in pursuance of this section shall be laid before both Houses of Parliament, if Parliament be in session at the time of making thereof, or if not, then as soon as practicable after the beginning of the then next session of Parliament, and they shall also be advertised twice in the official journal to be issued by the Comptroller. (5) If either House of Parliament, within the next forty days after any rules have been laid before such House, resolve that such rules, or any of them, ought to be annulled, the same shall, after the date of such resolution, be of no effect, without prejudice to the validity of anything done in the meantime under such rules or rule, or to the making of any new rules or rule.” The Patents, Designs, and Trade-Marks Act 1888 (51 and 52 Vict. c. 50), which was passed to amend the Patents, Designs, and Trade Marks Act 1883 (46 and 47 Vict. c. 57), contains in section 1, sub-sections 1 to 5, the following provisions with regard to the registration of agents for obtaining patents in the United Kingdom:—“(1) After the 1st day of July 1889 a person shall not be entitled to describe himself as a patent agent, whether by advertisement, by description on his place of business, by any document issued by him, or otherwise, unless he is registered as a patent agent in pursuance of this Act. (2) The Board of Trade shall, as soon as may be after the passing of this Act, and may from time to
Page: 376↓
time, make such general rules as are, in the opinion of the Board, required for giving effect to this section; and the provisions of section 101 of the principal Act shall apply to all rules so made, as if they were made in pursuance of that section. (3) Provided that every person who proves, to the satisfaction of the Board of Trade, that prior to the passing of this Act he had been bona fide practising as a patent agent, shall be entitled to be registered as a patent agent in pursuance of this Act. (4) If any person knowingly describes himself as a patent agent in contravention of this section, he shall be liable, on summary conviction, to a fine not exceeding £20. (5) In this section ‘patent agent’ means exclusively an agent for obtaining patents in the United Kingdom.” On 11th June 1889 the Board of Trademade and published certain regulations known as “The Register of Patent Agents' Rules 1889.” The said rules inter alia provide as follows—“1. A register shall be kept by the Institute of Patent Agents, subject to the provisions of these rules and to the orders of the Board of Trade, for the registration of patent agents in pursuance of Act. 2. The register shall contain in one list all patent agents who are registered under the Act and these rules. … 3. The Institute shall cause a correct copy of the register to be once every year printed under their direction, and published and placed on sale. … A copy of the register for the time being purporting to be so printed and published shall be admissible as evidence of all matters stated therein, and the absence of the name of any person from the register shall be evidence, until the contrary is made to appear, that such person is not registered in pursuance of the Act. 4. The Institute shall appoint a registrar who shall keep the register in accordance with the provisions of the Act and these rules, and subject thereto shall act under the directions of the Institute and the Board of Trade. 5. A person who is desirous of being registered in pursuance of the Act on the ground that prior to the passing of the Act he had been bona fide practising as a patent agent, shall produce or transmit to the Board of Trade a statutory declaration in the form 2 in Appendix A; provided that the Board of Trade may, in any case in which they shall think fit, require further or other proof that the person had prior to the passing of the Act been bona fide practising as a patent agent. Upon the receipt of such statutory declaration, or of such further or other proof to their satisfaction as the case may be, the Board of Trade shall transmit to the registrar a certificate that the person therein named is entitled to be registered in pursuance of the Act, and the registrar shall on the receipt of such certificate cause the name of such person to be entered in the register. 13. If any registered person shall not within one month from the day on which his annual registration fee becomes payable, pay such fee, the registrar may send to such registered person, to his registered address, a notice requiring him, on or before a day to be named in the notice, to pay his annual registration fee; and if such registered patent agent shall not within one month from the day named in such notice pay the registration fee so due from him, the registrar may erase his name from the register; provided that the name of a person erased from the register under this rule may be restored to the register by direction of the Institute or the Board of Trade on payment by such person of the fee or fees due from him, together with such further sum of money, not exceeding in amount the annual registration fee, as the Institute or the Board of Trade (as the case may be) may in each particular case direct. 17. (2) The Board of Trade may in any case in which they think fit restore to the register any name or entry erased therefrom, either without fee, or on payment of such fee, not exceeding the registration fee, as the Board of Trade may from time to time fix, and the registrar shall restore the name accordingly. 26. The fees set forth in the Appendix C to these rules shall be paid in respect of the several matters, and at the times and in the manner therein mentioned.
Appendix C referred to in the said rules is in the following terms;—
Nature of Fee.
When to be paid.
To whom to be paid.
Amount.
For registration of name of patent agent who had been bonâ fide in practice prior to the passing of the Act
On application and before registratration
To the Registrar at the Institute
£ 5 5 0
For registration of name of any person other than as above
Do.
Do.
5 5 0
Annual fee to be paid by every registered patent agent
On or before November 30 of each year, in respect of the year commencing January 1st following
Do.
3 3 0
On entry of a candidate for the final qualifying examination
At time of entering name
Do.
2 2 0
Rules 19 to 25, both inclusive, contain provisions as to appeals to the Board of Trade at the instance of any person aggrieved by any order, direction, or refusal of the Institute or registrar.
For some time prior to 1888 Joseph Lockwood, engraver and artist, 263 Argyle Street, Glasgow, had been bona fide practising as a patent agent. A statutory declaration in the form prescribed by rule 5 was transmitted by him to the Board of Trade, and they transmitted to the registrar a certificate that Mr Lockwood was entitled to be registered in pursuance of the Act. The registrar accordingly caused Mr Lockwood's name to be entered in the register.
On 5th January 1891 the registrar wrote Mr Lockwood that his annual registration fee of £3, 3s. for the year 1891, “due according to ‘The Register of Patent Agents Rules 1889’ on or before November 30 of each year, in respect of the year commencing January 1 following,” had not yet been paid, and that if it was not paid within a month from 18th January his name would be erased
Page: 377↓
from the register. No fee was paid by Mr Lockwood, and on 23rd February 1891 his name was erased from the register. Mr Lockwood notwithstanding continued to carry on business in his office at 263 Argyle Street, Glasgow, as an agent for obtaining patents in the United Kingdom, and repeatedly acted as such, and continued to describe himself as such on his signboard, in advertisements, and in provisional and complete specifications, and in other documents sent by him to the Patent Office as agent for the different inventors for whom he was obtaining patents.
In 1891 the Institute of Patent Agents referred to in the “The Register of Patent Agents Rules 1889” was dissolved and ceased to exist, and in place thereof the Chartered Institute of Patent Agents was constituted and incorporated by royal charter dated 11th August 1891, for the purpose inter alia of promoting the education, status, and training of patent agents, and of maintaining a high standard of rectitude and professional conduct and knowledge. The Board of Trade thereafter made and published further rules dated 18th November 1891, and coming into operation on 19th November 1891, whereby inter alia all the duties and powers of the Institute of Patent Agents under “The Register of Patent Agents Rules 1889’ were transferred to and vested in the Chartered Institute of Patent Agents, and the latter body were directed in the month of February in each year, and at such other times as they might think desirable, to cause a correct copy of the register to be printed under their direction and placed on sale.
On 27th April 1892 The Chartered Institute of Patent Agents, and James Yate Vernon Johnson, George Macaulay Cruickshank, and Wallace Fairweather, registered patent agents, carrying on business as patent agents in Glasgow, raised an action against Mr Lockwood to have it declared “that the defender is not registered as a patent agent in pursuance of the Patents Designs, and Trade-Marks Act 1888, and that the defender is not entitled to describe himself as a patent agent, whether by advertisement, by description of his place of business, by any document issued by him, or otherwise, so long as he is not registered as a patent agent in pursuance of said Act,” and to have him interdicted from” deribing himself as a patent agent, or agent for obtaining patents in the United Kingdom”
In the condescendence the pursuers averred that the defender “described himself, and intended to describe himself and hold himself out to the public, as an agent for obtaining patents in the United Kingdom, although he was not registered as a patent agent in terms of the statute, and knew that he was not entitled to describe himself in the manner referred to. The pursuers are aggrieved and prejudiced by this unwarrantable conduct on the part of the defender, and as complaints which have been made to him by the Chartered Institute of Patent Agents have been without effect, the pursuers have found it necessary to bring the present proceedings in their own interest and in the interest of the profession and the public, for the purpose of having the defender's disqualification declared, and the statutory prohibition judicially enforced against him.”
The pursuers pleaded, inter alia—“(1) the pursuers are entitled to obtain decree of declarator and interdict as concluded for, in respect—(a) that the defender is not registered as a patent agent in terms of the Patents, Designs, and Trade-Marks Act 1888, and relative rules; (b) the defender unwarrantably persists in describing himself as a patent agent, contrary to the provisions of the said statute and relative rules. (3) The defender's name was properly and validly erased from the register in terms of the said rules. Separatim, the defender not having taken the remedies provided by the rules regarding the removal of his name, is not entitled to challenge the same in this action.”
The defender pleaded, inter alia—“(1) No title to sue. (2) The action is incompetent, in respect that if any breach of the Statute 51 and 52 Victoria, chapter 50, has been committed, the sole remedy is by summary prosecution under section 1, sub-section 4 thereof. (4) In respect that the defender has been duly registered as a patent agent in pursuance of the Act 51 and 52 Victoria, chapter 50, he is entitled to absolvitor, with expenses. (5) The rules founded on are ultra vires of the Board of Trade, as acting under said statute, and cannot be enforced at the instance of the pursuers.”
On 4th August 1892 the Lord Ordinary ( Low) repelled the defences and declared and interdicted in terms of the conclusions of the summons.
“ Opinion.—By section 1, sub-section 1, of the Patents, Designs, and Trade-Marks Act of 1888 it is provided—‘After the 1st day of July 1889 a person shall not be entitled to describe himself as a patent agent, whether by advertisement, by description on his place of business, by any document issued by him, or otherwise, unless he is registered as a patent agent in pursuance of this Act.’
It is admitted that the defender's name is not on the register of patent agents, and he does not dispute that he describes himself as a patent agent, within the meaning of the section which I have quoted, although he does not admit the accuracy of the description given by the pursuers of his signboard and door-plate.
The defender therefore falls under the prohibition in the statute. He is not entitled to describe himself as a patent agent, and in doing so he acts contrary to law.
The defender however pleads, 1st, that the pursuers have no title to raise the question; 2nd, that the action is incompetent; 3d, that he was duly registered as a patent agent, but that his name was improperly struck off the register.
I. The pursuers are the Chartered Institute of Patent Agents, incorporated by royal charter, and three registered patent agents carrying on business in Glasgow, where the defender also practises.
I am of opinion that both sets of pursuers have a sufficient title to sue.
Page: 378↓
The objects of the Institute as stated in their charter are, inter alia—(1) To form a representative body of the patent agents of the United Kingdom for the purpose of promoting improvements in the Patent Laws and in the regulations under which they are administered; (2) to frame and establish rules for the observance of patent agents in all matters appertaining to their professional practice; and (3) to maintain a high standard of rectitude and professional conduct and knowledge, and generally to do all things incidental or conducive to the above objects, or any of them.
Now, I think that the prohibition in the Act that a person shall not describe himself as a patent agent unless he is registered is an enactment intended for the protection of the public; and that being the case, I am of opinion that the Institute, being incorporated by royal charter for the objects which I have described, has a good title, acting both in the interests of the profession and of the public, to enforce the prohibition, unless the statute has provided exclusive means whereby it is to be enforced—a point which I shall consider under the plea of incompetency.
The interest of the individual pursuers appears to me to be clear. They are patent agents practising in Glasgow, and have an interest to prevent illegal competition with them.
II. The plea of incompetency is founded upon sub-section 4 of section 1 of the Act of 1888, which provides—‘If any person knowingly describes himself to be a patent agent in contravention of this section, he shall be liable on summary conviction to a fine not exceeding £20.’
The defender's contention is that the Act having provided the remedy of fine upon summary conviction, all other proceedings founded upon sub-section 1 are excluded. I cannot accept that view. I am of opinion that as sub-section 1 imposes an absolute disability, and renders it illegal for a person to describe himself as a patent agent unless he is on the register, the fact that a breach of the sub-section is made an offence punishable by fine does not prevent anyone having a sufficient interest founding upon the sub-section and enforcing the disability.
III. The third point raises a question of greater difficulty. Sub-section 2 of section I of the Act provides that the Board of Trade shall make such general rules as are, in the opinion of the Board, required for giving effect to the section. Sub-section 3 provides ‘that every person who proves to the satisfaction of the Board of Trade that prior to the passing of the Act he had been bona fide practising as a patent agent, shall be entitled to be registered as a patent agent in pursuance of this Act.’
Under the powers conferred upon them by the Act, the Board of Trade made rules in regard to the register of patent agents. They provided that the register should be kept by the pursuers, the Institute of Patent Agents, and that no person who was not at the passing of the Act bona fide practising as a patent agent should be registered unless he passed certain examinations. In regard to a person practising as an agent at the passing of the Act, it was provided that he should transmit to the board a declaration in a form appended to the rules, and give such other or further proof as the Board of Trade might think fit, that he had been, prior to the passing of the Act bona fide practising as a patent agent.
The rules also provided for the payment of certain fees. A registration fee of five guineas was provided in every case, and also an annual fee of three guineas for every registered patent agent. There was also a fee of two guineas payable on the entry of a candidate for the final qualifying examination.
It was also provided in the rules that if a registered person failed within a certain time to pay his ‘annual registration fee,’ the registrar should erase his name from the register. It was further provided that the Board of Trade might restore to the register any name erased from it, and an appeal was given to the Board against ‘any order, direction, or refusal of the institute or the register.’
The defender was a person bona fide practising as a patent agent at the passing of the Act, and his name was duly entered in the register. He appears to have paid the registration fee without demur. He, however, subsequently refused to pay the annual registration fee, and accordingly his name was erased from the register.
The defender's case is that under the Act (section 1, sub-section 3) he had an absolute right to be on the register, and that the Board of Trade had no power to make it a condition of his having the benefit of that right that he should pay an annual fee. The defender admits that the Board of Trade had power to establish a register, and to make rules as to the evidence to be supplied by a person practising at the passing of the Act as a patent agent, or as to the qualifications of persons who were not then in practice, and matters of that description, but he maintained that the Board of Trade had no power to impose a tax, in the shape of an annual fee, without express statutory authority.
It seems to me that for the purposes of this case no distinction can be drawn between the fee to be paid on registration and the annual registration fee to be paid subsequently.
A good deal was said about the annual fee being unreasonable, but if the Board of Trade had power to impose fees at all, I do not think that I can go into nice distinctions as to the relative reasonableness of the one fee and of the other. It does not appear to me that there is necessarily anything unreasonable in the annual fee, and I have not before me the various considerations upon the one side and upon the other which would require to be weighed in order to judge of the reasonableness of the fees. I must assume, on the other hand, that the Board of Trade had full information, and gave full weight to the considerations upon either side. The only question
Page: 379↓
The defender contended that when the Legislature intends that fees shall be exigible it invariably fixes the fees, or gives express power to those who are authorised to make rules or bye-laws to do so. I think that the general rule at all events is in accordance with the defender's contention. It would not be difficult to refer to a number of statutes in which fees are fixed or power given to fix fees, and I do not know of a single case in which it has been held that those to whom the making of bye-laws was delegated had power to impose fees without special authority.
The defender also founded upon provisions as to fees contained in the Patents, Designs, and Trade-Marks Acts. The Act of 1888 is an Act amending the principal Act of 1883, and it is provided that all the Patent Acts may be cited collectively as the Patents, Designs, and Trade-Marks Acts, 1883 to 1888.
In the Act of 1883 express provision is made for fees—in section 24 as regards part II. of the Act, which refers to patents; in section 56 as regards part III. of the Act, which refers to designs; and in section 80 as regards part IV. of the Act, which refers to trade-marks. Further, in part V. of the Act, which contains ‘general’ provisions, it is provided by the 83rd section (1) that the Board of Trade may appoint certain officers and clerks; and (2) that ‘the salaries of these officers and clerks shall be appointed by the Board of Trade, with the concurrence of the Treasury, and the same and the other expenses of the execution of this Act shall be paid out of money provided by Parliament.’
The defender's argument was, that seeing that the principal Act expressly provided for fees when the Legislature intended that they should be exigible, it must be assumed that as the amending Act said nothing about fees, it was not intended to give power to levy them. Further, the general provision in the 83rd section of the principal Act, that ‘the other expenses of the execution of this Act shall be paid out of money provided by Parliament,’ showed the source from which money required for any purpose of the Act not otherwise provided for was to come.
These arguments are not without force, and it is necessary to see what are the considerations in favour of the opposite view.
I think that it must be conceded that from the nature of the case the natural thing would have been for the Legislature to give the Board of Trade power to provide for fees. The Board had to establish a register, and where there is a register there is, as a rule, registration fees. Again, the Board required to make rules for the ascertainment of the qualifications of persons (other than those practising at the passing of the Act) desiring to be enrolled as patent agents, and the natural way of doing that, and the way actually adopted by the Board, was to make provision for examinations. Examinations, however, invariably, or almost invariably, involve fees. Indeed, I have great difficulty in seeing how the Board of Trade could make a complete scheme upon the lines usually followed in such cases for the institution, regulation, and maintenance of a register without making provisions as to fees.
Further, in order to frame a complete scheme, it seems to me that the Board had inevitably to deal with matters in regard to which it might be urged that special powers were required just as much as in the case of fees. For example, I find that the Board made provision for the erasure from the register of the name of a person found to their satisfaction to have been guilty of disgraceful professional conduct. I do not think that it can be doubted that that is a very proper and reasonable rule, but a patent agent practising at the passing of the Act might say, ‘The Act gave me an absolute right to have my name entered in the register, and it did not give to the Board of Trade authority to determine that under certain circumstances I should be deprived of the right.’
The Act of 1888 provides that the provision of section 101 of the principal Act (1883) shall apply to the rules to be made by the Board of Trade, as if they were made in pursuance of that section. Now, the 101st section of the 1883 Act, inter alia, provides—[ His Lordship read sub-sections 4 and 5].
There was therefore the most ample opportunity given for anyone to object to any of the rules made by the Board, and for the revision of these rules by either House of Parliament. I therefore think that it must be assumed that the remit made in the Act to the Board of Trade to frame rules was designedly conceived in the widest and most general terms in order that the Board—whom the Legislature had selected as the body most competent to frame the rules—might in the first instance have an absolutely free hand to frame such a scheme as might be best fitted to carry out the intention of the Legislature.
In such circumstances I am of opinion that before the Court would be justified in disregarding and holding as null a rule made by the Board and laid before Parliament, it would require to be shown either that the rule was actually repugnant to the Act, or that it was outwith what upon any reasonable interpretation of the Act could be included in the remit to the Board. In my opinion none of these can be shown here.
In regard to the defender's argument upon the provisions of the Act of 1883, I may say, in the first place, that I greatly doubt if the general provision in the 83rd section as to the expenses of the execution of the Act can be held to cover such matters as the incidental expenses of the register to be instituted by the Board of Trade and the examination of candidates for registration. In the second place, the fact that registration fees and the like are specially provided for in the principal Act appears to me to be rather against than in favour
Page: 380↓
The defenders further argued that even if the Board of Trade had power to impose fees, they had no power to make erasure from the register the penalty for non-payment of fees. I do not think that the argument is well founded. If the Board were entitled to impose a fee, I think that they were also entitled to impose some penalty for non-payment of the fee. If the Board had power to impose a fee upon the entry being first made in the register, it seems to me to be clear that they were entitled to enact that if the fee was not paid the name should not be entered in the register. In the same way, I think that if they had power to impose the annual fee, they had also power to erase the name from the register for non-payment of that fee, because that was the natural and appropriate remedy for failure to pay.
I do not know of any decided case which can be said to rule the present, but I may refer to the case of Hall v. Nixon 10 Q.B. 152, which seems applicable at all events to the last two points to which I have referred.
In that case the local board in a burgh was authorised by Act of Parliament to make bye-laws with respect, inter alia, to the construction of buildings. By one of the bye-laws it was provided that certain notices should be given to the board by any person intending to erect a new building; and it was further provided that anyone who erected a building without giving the required notices should be liable to a penalty of 40s. The local board brought proceedings before the Justices against a person who, they alleged, had built in contravention of the rule as to notices. The Justices expressed the opinion that the local board had no power to make a byelaw constituting the failure to give notices an offence. A case was then taken to the Court of Queen's Bench, and it was there held that it was within the power of the local board to impose the penalty, although no express power was given to them to do so by the Act. The Court proceeded upon the ground that the rule as to notices was plainly within the power of the local board, and that the power to make that rule necessarily involved the power of providing an appropriate penalty for its enforcement. Mr Justice Lush also founded upon the fact that a previous Act of Parliament (which had been repealed by the Act under which the rules in question were made) had authorised a pecuniary penalty for failure to give similar notices.
Upon the whole matter I am of opinion (1) that the pursuers have a title to prevent a person not upon the register holding himself out as a patent agent; (2) that the defender's name not being upon the register of patent agents, it is illegal for him to describe himself as a patent agent; and (3) that the defender has not stated any relevant defence to the action.
I shall therefore give decree in terms of the conclusions of the summons, with expenses.”
The defender reclaimed, and argued—(1) No Title to Sue—The pursuers were in no different position from members of the general public. No right of the society was encroached, and no power was conferred on the society either by the statute or by their charter to bring a civil action for this alleged wrong— The District Fishery Board v. Robertson, November 16, 1887, 15 R. 40. (2) The Action was Incompetent—The statute had provided a punishment for contravention of section 4. That was the only remedy that could be enforced. If the defender was doing what the statute declared he should not do, he could only be prevented by the procedure provided by the Act— Wolverhampton New Waterworks Company v. Hawkesford, April 1859, 28 L.J., C.P., opinion of Justice Willis, 246; Rex v. Robinson, June 22, 1759, 2 Burrow, opinion of Lord Mansfield, 803. (3) The Rules were ultra vires of the Board of Trade—The rules must be made in pursuance of the Act. Under the present rules the statute was contradicted in express terms, for the statute said that old patent agents were entitled to be put on the register without qualification, and therefore the imposition of an entrance fee and an annual subscription was repugnant to the construction of the statute, and not in pursuance of the Act. Besides, this was not a register kept in terms of the Patent Act of 1883, sec. 23. Section 83 makes provision for payment of the expense incurred in the execution of the Act out of money provided by Parliament. This register was not kept in conformity with sections 88, 89, 90, and 102 of the Act. It was ultra vires of anyone to impose a tax or impost without direct statutory authority, and there was none in this case. No tax could be imposed by implication. Parliament could not delegate its legislative powers, and it was always open to the Court to say whether rules made under the authority of statute were designed to give effect to the Act or were repugnant thereto— Eastburn v. Wood, July 14, 1892, 19 R. (J.C.) 100; ex parte Davies, June 10, 1872, L.R., 7 Ch. App. 526; Bailey v. Williamson, January 22, 1873, L.R., 8 Q.B., opinion of Justice Blackburn 128; The Queen v. Sankey, March 7, 1878, L.R., 3 Q.B.D. 379; Reid v. Harvey, March 3 1880, L.R., 5 QBD 184; Dale's case, January 27, 1881, L.R., 6 QBD 376; ex parte Walker, February 22, 1883, L.R. 22 Ch D 813; ex parte Willey, March 15, 1883, L.R. 23 Ch D 118; ex parte Foreman, January 17, 1887, L.R., 18 Q.B.D. 393; in re Stainton ex parte The Board of Trade. June 13, 1887, L.R., 19 Q.B.D. 182; Slattery v. Naylor, March 24, 1883, L.R., 13 App Cas 446.
Argued for pursuers and respondents—(1) They had a Good Title to Sue—Such an incorporation as this had a good title to sue— Incorporation of Law Agents v. Clark, December 3, 1886, 14 R. 161. The action
Page: 381↓
At advising—
Now, the question is, whether it can be be said that a rule for establishing a tax of that kind, nominally called a registration fee, but truly to meet the expense of an institute and a library, is a rule for giving effect to sub-section 1 of the Act. It certainly seems at first sight to be outside the giving effect to section 1 altogether. But of couse if a power existed under the statute to make such a rule, and if the rule by lying before Parliament for the statutory period has got the effect of statute, then there may be a difficulty in the way of any patent agent getting rid of it, because the rule is made by the Board of Trade, which is the body empowered by the Act to make the rules, and the Board of Trade being a public department, it may be that a rule made by the Board of Trade, if properly made—I mean to say if technically properly made—could not be interfered with, however extravagant or however absurd it was, and however oppressive it was, except upon application to Parliament to get it set aside by a new enactment. And therefore I think it is necessary to turn to the clauses and sub-sections of this Act in order to see whether that power existed under the Act.
The first sub-section of the first section of the Act is the sub-section which authorises the making of a register, and forbids anyone to describe himself as a patent agent who is not upon that register; and the 2nd sub-section is the sub-section which gives the power as regards these rules. It provides that “the Board of Trade shall, as soon as may be after the passing of this Act, and may from time to time, make such general rules as are in the opinion of the Board required for giving effect to this section; and the provisions of section 101 of the principal Act” (that is, the Act of 1883) “shall apply to all rules so made, as if they were made in pursuance of that section,” namely, section 101. Now, there are two things plain upon the face of that sub-section. The first is that there is no power to make rules except for the purpose of giving effect to this section, and the section relates to the registration of patent
Page: 382↓
The next question is, even supposing that by this Act of Parliament power was given to impose fees upon patent agents as a condition of their being allowed to be placed upon the register, whether in the exercise of that power they could keep an old patent agent who proved that he was such in terms of the Act off the register if he did not pay these fees? Now, on examining both the Act under the rules, I find that the conditions are very clearly prescribed on which a person who has been bona fide practising as a patent agent, is entitled to be put upon the register. The proviso clause is this, “Every person who proves to the satisfaction of the Board of Trade that prior to the passing of this Act he had been bona fide practising as a patent agent, shall be entitled to be registered as a patent agent in pursuance of this Act.” Now, without going to the rules for a moment, just take that clause as it stands. He satisfies the Board of Trade that he is a patent agent, and has been practising as such before the passing of this Act, and having satisfied the Board of Trade, he says—“I am entitled to be placed on the register.” But they say, “Oh no, you are not entitled to be placed upon the register; certain rules have been made by which, although the Act says that you are entitled to be placed on the register, having that qualification, you are not entitled to be placed upon the register, but you must pay down five guineas or you will not get on the register at all.” Now, it seems rather a strong proposition that a gentleman whom the Act declares is entitled to be placed upon the register is to be kept off the register because he will not pay down a sum of money. And curiously enough, when we come to the rules, it does not seem to have entered into the mind of anybody when framing these rules that the patent agent had anything more to do than to carry out that proviso, and accordingly No. 5 of the rules is in these terms—“A person who is desirous of being registered in pursuance of the Act, on the ground that prior to the passing of the Act he had been bona fide practising as a patent agent, shall produce or transmit to the Board of Trade a statutory declaration” in a certain form; and the Board of Trade is authorised to require such proofs as they think proper, besides the statutory declaration, and “upon the receipt of such statutory declaration, or of such further or other proof to their satisfaction, as the case may be, the Board of Trade shall transmit to the registrar a certificate that the person named therein is entitled to be registered in pursuance of the Act, and the registrar shall, on the receipt of such certificate cause the name of such person to be entered in the register.” The procedure, therefore, is this, that the patent agent goes to the Board of Trade, and satisfies them that he has the qualification; the Board of Trade then acts, not the man himself; he makes no application, he has nothing further to do than to satisfy the Board of Trade, and having satisfied the Board of Trade, the Board of Trade then intimate to the registrar that he is a patent agent entitled to be put on under sub-section
Page: 383↓
Page: 384↓
Page: 385↓
On the question whether the rules now before us are within the authority of the Board of Trade under the statutory power given to them to frame rules, I agree with your Lordships. I think the rules are ultra vires of the Board of Trade. The rules which the Board of Trade were authorised to issue were rules to give effect to the first section of the Act of 1888, and that first section, at least in its primary provision, is one for the purpose of establishing a register of patent agents. The Act, however, goes on to say that the rules which are issued by the Board of Trade under the authority so conferred upon them shall have the same effect as if they had been rules issued and made under the 101st section of the Act of 1883, of which the Act of 1888 is an amending statute. Under section 101 of the Act of 1883 it is provided that rules made under that statute and under that section of it shall have the same effect as if they were contained in the Act itself. Now, if these rules were within the powers of the Board of Trade, I think they would have, in respect of that provision, the force of statute, in the sense not merely that they were issued under statutory authority, but that they were themselves parts of the statute. If that were so, I should not hold myself entitled to review or consider whether the rules that we have before us were proper or expedient, or indeed to take any notice of them further than this, that they were to be enforced by us as parts of an Act of Parliament, but being of opinion with your Lordships that we are quite entitled to look at the rules issued, and consider and determine whether these rules are within the statutory power under which they profess to be issued or not, I come to be of opinion with your Lordships that they are outwith the powers of the statute. The power conferred upon the Board of Trade by the Act of 1888 is simply to issue rules for the purpose of carrying out the first sub-section of section 1, and that is to provide for the institution of a register of patent agents. I think the rules before us go far beyond that. They have established not only rules to be observed for the admission of persons to the register, but they have instituted rules which regard the condition on which names there mentioned shall be retained on the register, and have introduced provisions such as the deletion of the name from the register in respect of the non-compliance by any person there registered with the particular rules which the Board of Trade have issued. But the important and serious point in the rules is this, that they have imposed an impost or tax upon all persons not merely in reference to the registration of their names, but also with reference to the continuance of the names upon the register, and that, I think, is equally beyond the power of the Board of Trade; it is, as one of your Lordships has described it, an impost—a tax—a payment for a licence to enable a certain person to carry on a certain profession. Now, I am not aware of any case in which a power to fix an impost or tax of this kind has ever been recognised as conferred by implication of an Act of Parliament, and unless the statute imposes the tax itself, or gave direct and unqualified and explicit authority to some other power to fix that tax, I think no such tax can] be validly imposed. If the tax had been validly imposed—I mean if it had been held that the tax of an entrance fee or a continuance fee had been within the view of the Board of Trade—I should not have felt myself entitled, from the considerations to which I have already adverted, to consider whether the tax was too big or too little, nor indeed to consider the application of the tax—how it was to be distributed or to what it was to be given. But I think these considerations are excluded altogether when one reaches the conclusion which I have already reached, namely, that the imposing of any tax of this kind is beyond the power of the Board of Trade, and therefore I quite agree with your Lordships that that is sufficient to enable us to decide this case contrary to the views which the Lord Ordinary has adopted. But I think it is not without importance to notice that under the section which gives the Board of Trade authority to issue rules there is a proviso or qualification in the third sub-section of the first section of the Act of 1888 which directly applies in this case, for it provides that every person who shall have been for three years prior to the passing of this Act bona fide practising as a patent agent shall be entitled to registration under this Act. The Board of Trade have come forward and said that shall not be so; he shall only be entitled to registration provided he pays a certain sum of money. Now, I think that is introducing a clause and a qualification of the clause which the Board of Trade in pursuance of their right to issue rules have no power whatever to impose; and upon the ground therefore that the rules are ultra vires of the Board of Trade's power, and further,
Page: 386↓
The
The Court recalled the interlocutor reclaimed against, and assoilzied the defender from the conclusions of the action.
Counsel for Pursuers— Graham Murray, Q.C.— Salvesen. Agents— Davidson & Syme, W.S.
Counsel for Defenders— Ure— Younger. Agents— Dove & Lockhart, S.S.C.