In Drewry on The Law and Practice of Injunctions, Supplement, Part II., c. iv., p. 53, the principle upon which injunctions are granted to restrain the imitation of trade marks long exclusively used by a particular trader, so as to connect his name or trading concern with the reputation acquired in the market by the goods bearing the particular mark, is said to be expressed by Lord Langdale M. R. in Perry v. Truefitt (a); and a passage from his Lordship's judgment is cited, in which he says, "I own it does not seem to me that a man can acquire a property merely in a name or mark; but, whether he has or has not a property in the name or the mark, I have no doubt that another has not the right to use that name or mark for the purposes of deception, and in order to attract to himself that course of trade, or that custom, which, without that improper act, wouid have flowed to the person who first used, or was alone in the habit of using the particular name or mark." [Hill J. Does Mr. Drewry refer to Millington v. Fox (b), in which Lord Chancellor Cottenham granted the injunction prayed for, and said: "It does not appear to me that there was any fraudulent intention in the use of the marks. That circumstance, however, does not deprive the plaintiffs of their right to the exclusive use of those names; and therefore" "the case is so made out as to entitle the plaintiffs to have the injunction made perpetual."?] Yes. At p. 55, Mr. Drewry says, "It will be observed, that," "in Perry v. Truefitt (a),” "Lord Langdale took occasion pointedly to advert to the doctrine of Millington v. Fox (b), and to express his opinion, that an exclusive right of property cannot be (a) 6 Beav. 66. 73. (b) 3 Myl. & Cr. 338. 352. 1861. DIXON V. FAWCUS. acquired in a name or mark." Mr. Drewry then cites as follows, from Lord Langdale's judgment (a): "The case of Millington v. Fox (b) seems to have gone this length, that the deception need not be intentional, and that a man, though not intending any injury to another, shall not be allowed to adopt the marks by which the goods of another are designated, if the effect of adopting them would be to prejudice the trade of such other person. I am not aware that any previous case carried the principle to that extent." Mr. Drewry adds: "The writer believes that there is not any case since Perry v. Truefitt (c) and Day v. Croft (d), carrying the principle so far as it was carried in Millington v. Fox (b)." [Hill J. Although, in Perry v. Truefitt (c), Lord Langdale refused the injunction, he by no means overruled Millington v. Fox (b). Hindmarch, contrà, here referred to Blofield v. Payne (e).] In Farina v. Silverlock (f) Lord Chancellor Cranworth dissolved an injunction which Wood V.C. had granted (g) against the printing and sale by the defendant of labels similar to those in use by the plaintiff to designate a particular article as made by him; until the plaintiff, who alleged that the labels were used for a fraudulent purpose, should have established his case by an action at law. [Hill J. In that case it was shewn that, in very many instances, labels the same as or similar to those used by the plaintiff might be sold for a legitimate purpose; and there was no proof of actual fraud by the defendant. The Lord Chancellor, moreover, differed from Wood V. C. rather as to the facts than as to the law.] The protection, in equity, of the right to the exclusive use of a trade mark, is of modern origin. In Blanchard v. Hill (a) the plaintiff moved for an injunction to restrain the defendant from using the Mogul stamp on his cards, suggesting the sole right to be in the plaintiff, he having appropriated the stamp to himself, conformably to the charter granted to The Card Makers' Company by King Charles the First. Lord Hardwicke, however, refused the injunction, and said that he knew no instance of restraining one trader from making use of the same mark with another. At the present day, when the jurisdiction of equity is admitted, there is no sufficient reason for saying that that Court will afford greater protection to the right to the exclusive use of a trade mark than can be obtained at law; or that it will hold an innocent counterfeiter responsible for the infringement of such a right. Lastly, the costs incurred by the now plaintiff, in the Chancery suit brought against him by Ramsay, are not, in any view of the case, recoverable as damages from the now defendant; Malden v. Fyson (b), Broom v. Hall (c), Collins v. Cave (d). [Crompton J. referred to Collen v. Wright (e).] Hindmarch, contrà, was not called upon. (COCKBURN C. J. was absent; and Wightman J. left the Court before the close of the argument.) (a) 2 Atk. 484. (b) 11 Q. B. 292. 1861. DIXON V. FAWCUS. (c) 7 C. B. N. S. 503. (d) 4 H. & N. 225. (e) 7 E. & B. 301. Judgment affirmed in the Exchequer Chamber, 8 E. & B. 647. 1861. DIXON v. FAWCUS. CROMPTON J. I am of opinion that our judgment must be for the plaintiff. Millington v. Fox (a), a case of the highest authority, shews that a Court of equity will grant a perpetual injunction against the use, by one tradesman, of the trade marks of another, although such marks have been so used in ignorance of their being any person's property, and under the belief that they were mere technical terms: the only doubt expressed by Lord Cottenham was as to the right of the plaintiffs in that case to costs. That decision, though it has been questioned in subsequent cases, has never been overruled; and is binding in this Court. Even in Farina v. Silverlock (b) Lord Chancellor Cranworth says, "Once arrive at the point that the use of this label is an infringement of the plaintiff's right, and I quite agree with what the Vice Chancellor has laid down, for this Court would stop anybody from selling an article which should enable the perpetration of that fraud, just as it would stop the use of the label itself." It would seem, therefore, that the mere fact of the sale by one person of an article marked with the trade mark of another is sufficient of itself, in equity, apart from the intention of the seller, to constitute fraud, and entitle the other to an injunction, on proof (which was wanting in Farina v. Silverlock (b)) that the sale is an infringement of the right of the other. Upon the remaining point, I am not prepared to say that, if the natural consequence of the defendant's acts has been to plunge the now plaintiff into a Chancery suit, the latter may not recover against the former, as damages in an action at law, the costs of that suit, whatever the result of it might have been. HILL J. I am of the same opinion. The facts alleged in the declaration, which must be taken to be true, are (a) 3 Myl. & Cr. 338. 1861. DIXON V. FAWCUS. |