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On the other hand, if the plaintiff allege fraud and deception by the defendant, it is no defence that the simulated article is of equal quality with that manufactured by the plaintiff. Taylor v. Carpenter, 2 Sand. Ch. 603; Partridge v. Menck, ib. 622; Coats v. Holbrook, ib. 586. In Taylor v. Carpenter and in Coats v. Holbrook the protection of a court of equity was given to aliens. 'So far as the subject-matter of the suit was concerned," said the Chancellor, “there is no difference between citizens and aliens." Upon the question of infringement, Mr. Senator Spencer, formerly Chief Justice, said: The right claimed by the complainant does not partake in any considerable, if in any, degree of the nature and character of a patent or copyright, as urged by the counsel for the defendant. He is at full liberty to manufacture and vend the same kind of thread to any extent he pleases, and whenever he chooses. He is only required to depend for his success upon his own character and fame."

In short, the question in these cases is not whether the plaintiff was the original inventor or proprieter of the article made by him, and upon which he now puts his trade-mark, or whether the article made and sold by the defendant under the former's trade-mark is an article of the same quality or value. The courts proceed upon the ground that the plaintiff has a valuable interest in the good-will of his trade or business; and that, having appropriated to himself a particular label, or sign, or trade-mark, indicating to those who wish to give him their patronage that the article is manufactured or sold by him, or that he carries on business at a particular place, he is entitled to protection against any attempts to pirate

upon his trade. Partridge v. Menck, 2 Sandf. Ch. 622, 625, Walworth, Ch.; Newman v. Alvord, 51 N. Y. 189; Amoskeag Manuf. Co. v. Spear, 2 Sandf. 599.

In Newman v. Alvord, supra, the plaintiff had taken the name of the locality of his business, “Akron," as the chief part of his trade-mark; and it was contended by the defendants, who had adopted the same name, that, since the name was of a locality, the plaintiffs could have no exclusive right to it, so as to enable them to obtain an injunction for its infringement. But the court held that it was not necessary for the plaintiffs to have an absolutely exclusive right; the defendants had by deception sold his goods as those of the plaintiff, and that was sufficient to entitle the plaintiff to relief. (That one can acquire a trademark in the name of a locality, the following cases were cited: Congress & E. Spring Co. v. High Rock Congress Spring Co., 45 N. Y. 291; Seixo v. Provezende, Law R. 1 Ch. 192; Lee v. Haley, Law R. 5 Ch. 155; Wotherspoon v. Currie, Law R. 5 H. L. 508. Brooklyn White Lead Co. v. Masury, 25 Barb. 417; and Delaware & H. Canal Co. v. Clark, 13 Wall. 311, were distinguished. See also Candee v. Deere, 54 Ill. 439.)

To obtain an injunction in chancery against the use of a trade-mark closely resembling the plaintiff's, it seems not to be necessary to allege that the defendant appropriated the plaintiff's mark knowingly, and with the intention to have his goods pass for the plaintiff's. Millington v. Fox, 3 Mylne & C. 338; Cartier v. Carlile, 31 Beav. 292; Edelsten v. Edelsten, 1 De Gex, J. & S. 185; Dale v. Smithson, 12 Abb. Pr. 237; Coffeen v. Brunton, 4

McLean, 516. But see Perry v. Truefitt, 6 Beav. 66; Drewry, Injunctions, part 2, c. 4, p. 53, contra. See also Dixon v. Fawcus. 3 El. & E. 537, 546; Farina v. Silverlock, 6 De Gex, M. & G. 214, 222. But the court will not decree an account of profits and damages before knowledge of the plaintiff's rights. Edelsten v. Edelsten, 1 De Gex, J. & S. 185. See Millington v. Fox, supra; Burgess v. Hills, 26 Beav. 244.

Where the mark employed by the defendant is not the same as that used by the plaintiff, an allegation is necessary to the effect that the defendant's mark bears so close a resemblance to the plaintiff's as to be calculated to deceive. Crawshay v. Thompson, supra; Gillott v. Esterbrook, 48 N. Y. 374; Partridge v. Menck, 2 Sandf. Ch. 622. This in fact would seem to be the proper allegation in all cases where the defendant has not used the plaintiff's own stamp or device; for except in that case the mark used by the defendant can only resemble that of the plaintiff.

In order to entitle the plaintiff to substantial damages, there must also be proof of actual deception; for without this the plaintiff is not injured. But a general ailegation of injury is sufficient to entitle the plaintiff to a recovery. Rodgers v. Nowill, supra; Marsh v. Billings. See Coats v. Holbrook, 2 Sandf. Ch. 586, 597, where the court held it no defence that the defendants may have told the jobbers to whom they sold that the goods were imitation; for it was not to be presumed that the jobbers and retailers would be so honest.

Where the defendant obtains and uses the plaintiff's stamp for making the mark, or where he uses the plaintiff's label, without his consent, an action

will lie without proof of damage. Blofeld v. Payne, 4 Barn. & Ad. 410.

As to notice, it appeared in Crawshay v. Thompson that the plaintiff had complained to the defendants of their use of the stamp in question, designating it as "a palpable fraud." The defendants replied that they had used the mark for many years, and that they had a right to do so. The statement that they had used the mark for many years was not true; but it was shown that the mark had been adopted by them in the execution of orders from foreign countries. The plaintiff now contended that the failure to respect the notice given the defendants concerning the use of the mark adopted by them gave him a right of action. But the court held otherwise, in the absence of proof of an intention to deceive. "It appears to me," said Coltman, J., "that an intention to deceive is a necessary ingredient in this case. The intention is for the jury; and fraud must be made out by proof of an intention existing in the mind of the party, that the iron should pass as the iron of the plaintiff. If there was such a similarity as might impose on ordinary persons, and it was shown that the defendants were aware of the resemblance, and that it was calculated to mislead, the plaintiff would have been entitled to the verdict, for the intention to deceive would have been manifest." Referring directly to the matter of notice, he said that the notice was equivocal. If it meant that the defendants must have known that injury would necessarily result to the plaintiff from the continued use of the mark, it would give some color to the plaintiff's position. But he thought that was not the case, and that it was only a circumstance which with the whole case was properly left to the

jury. By this the learned judge seems to have meant that the notice given, and the reply and action of the defendants, were circumstances bearing on the allegation of intent to injure the plaintiff; and that they were not necessarily proof of such intent. Maule, J., said: "If a party is merely told that by continuing to do a certain thing he may deceive others, and he continues to do the thing without any intention to produce that effect, I do not think that an action will lie against him; at any rate, certainly not in this form of declaration." Creswell, J. "What is the notice here? It is to the effect that the defendants were using a mark similar to that used by the plaintiff. But such a notice is not equivalent to knowledge, as the defendants might dispute the resemblance; or they might admit the resemblance, and yet insist that they had no intention of passing off their goods as the plaintiff's."

It may be remarked upon the doctrine of Sykes v. Sykes, first, that a declaration alleging that goods were sold by the defendant for the purpose of being resold as and for the plaintiff's goods (a mark being used, intended and calculated to deceive) would be good. The court in Sykes v. Sykes said that proof of this kind was variation from the allegation of the declaration that the defendant had sold the goods as and for the plaintiff's. And it may be added that though the defendant in such case do not himself sell the goods as and for the plaintiff's,

no

he still closely imitates the plaintiff's trade-mark for the purpose of deceiving the public and obtaining the plaintiff's trade. And these, we have seen, are the elements of this action. If the defendant, to screen himself, procures or aids others to dispose of his goods as the goods of the plaintiff, that will bring him within the rule in Crawshay v. Thompson, since it shows an intention to injure the plaintiff.

Secondly, it would seem to follow that it is not necessary to prove that the defendant has sold the goods, if he has put them into the hands of others who have sold them. And this is confirmed by cases like Pasley v. Freeman. It is not necessary in those cases, as we have seen, that the defendant should have obtained an advantage in order to make him liable for a false representation.

It should be remarked that the act of Congress concerning trade-marks, whatever protection it gives which was not afforded before, takes away no rights of parties at the common law. See Brown, Trade-marks, pp. 232, 233.

It is proper to add, before concluding the subject of deceit, that cases of slander of title and fraudulent trademarks are only examples of actions where the representation was made to third persons. There are doubtless many other cases of the kind where an action of deceit can be brought by the party of whom the false statement was made. See, for example, Benton v. Pratt, 2 Wend. 385.