Chap. XIII. A trade mark may consist of words,' but they must be specific and distinctive in their meaning, that is, they must point to and distinguish the goods as being those of a particular producer and of no one else. Name becomes publici juris. Expired patent. But a word or words which originally constituted a trade mark, to the exclusive use of which a particular trader or his successors in trade may have been entitled, may subsequently become the denomination of the commodity itself, and no longer be a representation that the article is the manufacture of any particular person; as in the case of "Harvey's Sauce," which was originally the name of a sauce made by a particular individual, but became publici juris, that is to say, all the world were entitled to call the sauce they made "Harvey's Sauce," if they pleased." The test whether a word which was originally a trade mark has become publici juris has been said to be "whether the use of it by other persons is still calculated to deceive the public; whether it may still have the effect of inducing the public to buy goods not made by the original owner of the trade mark as if they were his goods."2 So, where an article has been patented, but the patent has expired, a proper name applied to the patented article may come to be the name of the article, and not a mark or sign indicating the manufacturer. It may have been usually applied to goods made by a particular person, not because they are of his make, but because he, as having taken out a patent, could alone make them; and he cannot prolong his monopoly by asserting an exclusive right to a trade mark in the name of the thing which was the subject of the patent.5 But, though a person cannot claim the exclusive right to the use of a word which is, or has come to be, merely descriptive of the nature of the article, yet he can prevent others from using the name in such a way as to produce a belief that their goods are of his production. 1 Subject to the effect of the Trade Marks Act, post, p. 214. 2 Per Mellish, L. J., Ford v. Foster, 7 Ch. 628; Reddaway v. Bentham Co., [1892] 2 Q. B. 639; Re Arbenz, 35 Ch. D. 248; National Starch Co. v. Munn's Co., [1894] A. C. 275. 3 As the "Singer" sewing machine: see Singer Co. v. Wilson, 2 Ch. D. 434; 3 App. Cas. 376; Singer Co. v. Loog, Trade mark A trade mark may be used to denote not only manufactured Chap. XIII. goods, but even a natural product (e.g., a mineral water), where no person other than the owner of the trade mark has the means of procuring that product, so that the mark indicates him as the person who supplies it.1 A trade mark, properly so called, must be in some way attached to the article sold. It may be affixed to or impressed upon the goods themselves by means of a stamp or brand or adhesive label, or it may be made to accompany the goods by being impressed on or made to adhere to an envelope or case containing the goods, or it may be worked into the material or be some peculiar form of the material itself, as in a case where it consisted of a heading of certain coloured lines in the hem or fringe of cloth. In all these cases it is intended to show that the goods are produced or sold by some particular person. Here, again, a difference is to be noted between the use of a trade mark and that of a mere trade name not affixed to particular goods, in that the mark accompanies the goods into whosesoever hands they come, whereas, if A. sells goods, calling them or invoicing them by a name which causes the immediate purchaser, C., to suppose them to be goods produced by B., but which is not affixed to the goods, it does not follow that persons who buy the goods from C. will also be deceived as to the origin of the goods. Further, the right to a trade mark exists only in connection with the particular species of manufacture or vendible commodity to which it has been applied by the person asserting the right.3 If he has used it, for example, only on carriages, that would not prevent a manufacturer of woollen goods from putting it as a trade mark upon woollen goods, for "there is no exclusive ownership of the symbols which constitute a trade mark apart from the use for natural products. Trade mark affixed to goods. must be Goods of same description. Co. v. Powell, [1897] A. C. 710, 717; 26 Ch. D. 288, 296: and of Cotton, 1 Sebastian on T. M., 4; Re Apolli- 2 See Singer Co. v. Wilson, 2 Ch. D. 3 Ainsworth v. Walmisley, 1 Eq. 518. 4 1 Chap. XIII. or application of them"; "a trade mark consists in the exclu sive right to the use of some name or symbol as applied to a particular manufacture or vendible commodity," and consequently the use of the same mark in connection with a different article is not an infringement of such right. Names of persons as 3 The name of a person or firm may be a trade mark; but the trade marks. right to the exclusive use of such a mark exists only as against persons bearing a different name, and cannot be maintained as against a person or firm bearing the same name and using it bonâ fide without fraud for trade purposes. But it is otherwise if he uses his own name with such additions as to deceive the public into the belief that his wares are those of another trader. The test has been said to be whether he uses the name honestly and fairly in the ordinary prosecution of his business, or dishonestly, to palm off his own commodity as the production of another." Function of a trade mark. Whether in a trade The function of a trade mark may be regarded as two-fold, for it not only serves to secure to the producer the custom of persons who desire to purchase his goods, but it also indicates to a purchaser that he may take it as a guarantee that the goods came from the particular producer whose goods he desires to obtain, and the protection of the public from imposition is recognised as one of the objects of trade mark law. It was at one time said that there cannot be property in a trade mark, and that the ground of the jurisdiction, both at law and in equity, was the fraud of the defendant. It is true that there cannot be said to be an absolute kind of property in a trade mark,8 for, as we have before observed, there is no exclusive right to the mark universally in the abstract, i.e., apart from its use in connection with a particular species of goods. But the dicta which are to be found in the cases, to the effect that there is no property 1 Per Ld. Westbury, C., Leather Cloth Co. v. American Co., 4 De G. J. & S. 142; Somerville v. Schembri, 12 App. Cas. 453. Per Westbury, C., Hall v. Barrows, 4 De G. J. & S. 150, 158; Ainsworth v. Walmisley, 1 Eq. 518. 3 Burgess v. Burgess, 3 De G. M. & G. 896; Turton v. Turton, 42 Ch. D. 128; Tussaud v. Tussaud, 44 Ch. D. 678; Saunders v. Sun Co., [1894] 1 Ch. 537; Valentine's Meat Juice v. Valentine Extract, 48 W. R. 127; Kerly, T. M., 500 et seq. 4 Holloway v. Holloway, 13 Beav. 209. See Sebastian, T. M., 25. 6 Massam v. Thorley's Cattle Food Co., 14 Ch. D. 748, 755. 7 Ld. Langdale, in Perry v. Truefitt, 6 Beav. 66; Wood, V.-C., in Collins v. Brown, 3 K. & J. 423. 8 Wood, V.-C., in Farina v. Silverlock, 1 K. & J. 515. in a trade mark, must be understood to mean no more than this;1 Chap. XIII. and it has been laid down that "the true principle would seem to be that the jurisdiction of the Court" (by which the jurisdiction in equity appears to be intended) "in the protection given to trade marks rests upon property"; that the right to a trade mark, being one which is protected by the Court, and which may be bought and sold, is, in that sense of the word, "property." 2 Lord Blackburn treats it as having been established, before the Trade Marks Act of 1875, that when a person had used a mark on his goods, so as to distinguish them from the goods of any other person, he had a property in that mark to such an extent as to entitle him to an injunction to prevent any other person from continuing to use on other goods (of a similar kind) a mark so similar to his mark as in fact to mislead the public into taking them for those of the person who owned the mark; that this was on the ground that the right to use the mark was his property, and that therefore it was not necessary for the purpose of prevention (i.e., in order to obtain an injunction) to prove fraud or an intention to mislead. "I think," he said,5 "that at least from the time of Millington v. Fox, decided by L. C. Cottenham in 1838, to Wotherspoon v. Currie, decided by this House in 1872, it has been considered that, for the purpose of preventing infringement, the exclusive right to use a trade mark was a right of property." Lord Cairns pointed out that there are many cases in which a trade mark has been used not merely improperly, but fraudulently, and where this fraudulent use has been adverted to and made the ground of decision; "but," said his lordship, "I wish to state in the most distinct manner that, in my opinion, fraud is not necessary to be averred or proved in order to obtain protection for a trade mark. . . . . A man may take the trade mark of another ignorantly, not knowing it was the trade mark of the other; or he may take it in the belief, mistaken, but sincerely entertained, that 1 Ld. Westbury, C., in Hall v. Barrows, 4 De G. J. & S. 150, 158. Ld. Westbury, C., Leather Cloth Co. V. American Co., 4 De G. J. & S. 137, 142. See per Ld. Cranworth, in S. C., 11 H. L. C. 523, 533, 534. 3 Wood, V.-C., in Ainsworth v. Walmisley, 1 Eq. 518. *Orr-Ewing v. Registrar of T. M., 4 App. Cas. 479, 494; but see per Ld. 5 Orr-Ewing v. Registrar of T. M., 63 My. & Cr. 338; 45 R. R. 271. See the remarks of Cotton, L. J., on this case in Proctor v. Bayley, 42 Ch. D. 400. 7 L. R. 5 H. L. 508. Chap. XIII. in the manner in which he is taking it he is within the law and doing nothing which the law forbids; or he may take it knowing it is the trade mark of his neighbour, and intending and desiring to injure his neighbour by so doing. But in all these cases it is the same act that is done, and in all these cases the injury to the plaintiff is just the same. The action of the Court must depend on the right of the plaintiff and the injury done to that right. What the motive of the defendant may be, the Court has very imperfect means of knowing. If he was ignorant of the plaintiff's rights in the first instance, he is, as soon as he becomes acquainted with them and perseveres in infringing upon them, as culpable as if he had originally known them."1 Distinction between law and equity. It was remarked by Wood, V.-C.,2 that, though the Court would grant an injunction where no evil intent could be attributed to the defendant, yet even in such a case the ground of the interference is still fraud, because, while a Court of law might think a defendant not liable to an action for an act done absente animo malo, a Court of equity may, quite consistently with this, hold that, if he continue to do the act, he will commit a fraud, and therefore in reality the jurisdiction does rest on the equity of preventing one person from committing a fraud on another. 3 It must, however, be observed that though, for purposes of equitable relief by way of injunction, the question whether the defendant had any intention, by using the mark, to pass off his goods as those of the plaintiff, or even whether he knew that he was using a mark which belonged to the plaintiff, is immaterial,* yet in an action at law for damages the plaintiff must prove fraud, or at least knowledge on the part of the defendant, and in equity, if he asks for an account of profits or for damages, he can obtain this relief only in respect of user continued by the defendant after he became aware of the plaintiff's rights, or at least knew that the 1 Singer Co. v. Wilson, 3 App. Cas. 376, 391, and see per Ld. O'Hagan, ib. 396, and the judgment (cited ib. 392, by Ld. Cairns), of Wood, V.-C., in Welch v. Knott, 4 K. & J. 747. And see per Bacon, V.-C., in Singer Co. v. Loog, 18 Ch. D. 403. 2 Leather Co. v. American Leather Co., 1 H. & M. 287. 3 Somerville v. Schembri, 12 App. Cas. 453; Reddaway v. Bentham, [1892] 2 Q. B. 639. 4 See per Jessel, M.R., Singer Co. v Wilson, 2 Ch. D. 442. * See per Ld. Blackburn, Singer Co. v. Loog, 8 App. Cas. 29-32; see per James, L. J., in Mitchell v. Henry, 15 Ch. D. 181, 191; Reddaway v. Bentham Co., [1892] 2 Q. B. 639; Bourne v. Swan, [1903] 1 Ch. 211. 6 Edelsten v. Edelsten, 1 De G. J. & S. 185, 199, per Ld. Westbury, C. See Cartier v. Carlile, 31 Beav. 292; Moet v. Couston, 33 Beav. 578. |