Wm. Rogers Mfg. Co. v. Simpson. until the time that goods made by the defendant were put upon the market, since which time said goods have generally been known in the trade as Wm. Rogers goods.' This case is in this respect like that of Orr, Ewing & Co. v. Johnson, L. R., 13 Ch. Div., 434, in which the plaintiffs, dealers in yarn which they exported to India, had a ticket containing, among other things, two elephants, which ticket had given the yarn. several names by which it was sold and familiarly known, one being the "two elephant goods." The defendants, who had for some years sold yarns bearing a ticket containing, among other things, one elephant, began to export similar yarn to the same market, and placed upon it a ticket containing two elephants, but in several other respects different from the ticket of the plaintiffs, and the defendant's elephants themselves were in several particulars unlike those used by the plaintiffs. In an action by the plaintiffs for an injunction to restrain the defendants from infringing their rights it was held (1) That if the goods of a trader have acquired in the market a name derived from a part of the trade-mark which he affixes to them, a rival trader is not entitled to use a ticket which is likely to lead to the application of the same name to his goods, even though that name is not the only name by which the goods of the first trader have been known, or though it has always been used in conjunction. with some other word. (2) That though it was not probable that English purchasers or Indian dealers would be deceived, it was not improbable that the ultimate purchasers in India would be, in consequence of defendant's ticket being calculated to obtain the same name of "Bhe Hothe," or "two elephant," as the plaintiffs'. (3) That it was not necessary to prove any fraudulent intention on the part of the defendants. (4) That the two elephants forming a material and substantial part of the plaintiffs' trade-mark having been taken by the defendants, the burden was upon them to disprove the probability of deception, and not upon the plaintiffs to prove it." Justice FRY said: "It appears to me that there is a great deal of evidence, to which I attach weight, to show that these goods are sold largely by Wm. Rogers Mfg. Co. v. Simpson. name, and that although the first dealers no doubt look at the tickets, yet that the ultimate purchasers and the purchasers from the dealers in Bombay, probably do not look at the tickets, and at any rate are liable to be deceived by the name by which the goods are sold." In another part of his judgment the same justice quotes from the case of Edelsten v. Edelsten, 1 DeG., J. & S., 202, in which Lord WESTBURY observed upon the fact that the goods derived their trade-name from that particular part of the ticket, and says"I think therefore that when the defendants did take these two elephants they took that which was a material and substantial part of the plaintiffs' ticket. Now what is the result of that? It appears to me that the result of this is, it throws upon the defendants the burden of proving that their ticket did not deceive the purchaser so that they would believe that the defendants' goods were the plaintiffs' goods,' and continues, quoting JAMES, L. J., in Ford v. Foster, L. R., 7 Ch., 623, to the same effect, and O'HAGAN, L. J, in Singer Machine Mfg. Co. v. Wilson, L. R., 3 App. Cas., 395, "If one man will use a name, the use of which has been validly appropriated by another, he ought to use it under such circumstances and with such sufficient precaution that the reasonable probability of error should be avoided, notwithstanding the want of care and caution which is so commonly exhibited in the course of human affairs." This language of O'HAGAN, L. J., has been quoted with approval by the courts of highest authority both in England and America, and has been lately adopted by this court in Williams v. Brooks, supra. The defendants appealed, and in the Court of Appeal COTTON, L. J., said (13 Ch. Div., 457), "Then we come to the question, is the use of this ticket, on goods. exported by the defendants, calculated to lead to their goods being mistaken for those of the plaintiffs, or I may add to lead to their goods being sold under the name under which the plaintiffs' goods had frequently been sold, because that is really the same thimg? *** The conclusion at which I have arrived is this, that the defendants either originally adopted that ticket with knowledge of the facts, from which Wm. Rogers Mfg. Co. v. Simpson. the intention to mislead must be imputed to them, or at all. events, if that is not so, that they persisted in the desire to continue to use that ticket when they did know the facts from which it was probable that the ticket, if used, would deceive. Therefore, in my opinion, the judgment of Mr. Justice FRY is right, and must be affirmed." On subsequent appeal to the House of Lords, WATSON, L. J., said: "Apart from all questions as to bona fides or mala fides of the appellants, I am disposed to hold that the circumstances to which I adverted afford sufficient ground for an injunction against the appellants. When a prominent and substantial part of a long and well-known trade-mark, denoting the manufacture of a particular firm, appears as the prominent and substantial part of the new trade-mark of a rival, it seems reasonable to anticipate that the goods of the latter may be mistaken for and sold as the manufacture of the firm to which the other trade-mark belongs." L. R., 7 App. Cas., 231. In the case of Seixo v. Provezende, L. R., 1 Ch., 192, the plaintiff and defendant used marks the similarity of which consisted solely in the use of the word Seixo, which was the name of the plaintiff's vineyard, and by which the defendants claimed that their vineyard was also called. But Lord Chancellor CRANWORTH said that, even assuming that to be true, it did not justify the defendants in adopting a device or brand, the probable effect of which was to mislead the public, and added: "I do not consider actual physical resemblance to be the sole question for consideration. If the goods of a manufacturer have, from the mark or device he has used, become known in the market by a particular name, I think that the adoption by a rival trader of any mark which will cause his goods to bear the same name in the market may be as much a violation of the rights of that rival as the actual copy of his device." Here the defendants, knowing the plaintiff's goods to have been distinguished for years as "Wm. Rogers goods," and knowing that the stamp proposed to be used would cause their goods to be known in the market by the same name, contracted with a Wm. Rogers, for the purpose of availing themselves of the name Wm. Rogers Wm. Rogers Mfg. Co. v. Simpson. as a pretended trade-mark upon a portion of their flat ware. Their goods have become known as "Wm. Rogers goods," and "the effect of the use of his name was soon manifest in the increased and increasing sale of their goods." Fourth. The defendant's infringement is not to be justified or excused by reason of the contract between the defendant and William Rogers. Let us state the defendant's claim under this head as it really is when stripped of its dress and viewed in its nakedness. It is this: The plaintiff alleges and proves that the defendant has so imitated the plaintiff's trade-mark that goods bearing the defendant's simulated stamp will be readily taken by some purchasers who wish to buy the plaintiff's goods. The defendant replies that he has a right to so imitate the plaintiff's trademark because he has hired William Rogers, the son of his father, who possesses in a greater or less degree the skill of his father, to supervise his, the defendant's, manufacture, and he produces the deceptive imitation only by putting on his, the defendant's, goods the name of the man he has employed to supervise. Or the proposition may be concisely stated thus: If one has a trade-mark of which a personal name forms a part, his rival in business may pirate that trade-mark, provided he employs in his factory a superintendent who happens to possess the same name. The statement of the claim is its sufficient answer. No attendant circumstances can help out its inherent absurdity. It is the goods of Simpson, Hall, Miller & Co. that bear this deceptive imitation. They are in no sense the goods of William Rogers. He has no interest in them, direct or contingent. He neither makes nor sells them; he is an overseer, a supervisor; that and nothing more. If a man uses his own name as a stamp upon his own goods in a legitimate business way with no extrinsic deception it may be the doctrine of this court in Rogers & Bro. v. Rogers that he cannot be enjoined, though his goods are thereby passed as the goods of another; but it does not follow that a manufacturer may put the name of another on his goods and thus pass them as the goods of some one else in the market. Under no imagina Wm. Rogers Mfg. Co. v. Simpson. ble circumstances will a defendant be permitted thus to use another name as a stamp. The limit in this direction is certainly reached in the doctrine that a man may use his own name in his own business, whatever the result may be, so long as he intends no fraud. There is a shoreless and bottomless pit between that statement and the claim that a man may use another's name in his own business, or that a man may use his own name in another's business, no matter what the results may be. It has sometimes been argued that Meriden Britannia Co. v. Parker, 39 Conn., 450, justifies the theory that there can be a trade-mark the title to which depends upon supervision. No such doctrine is to be found in that or any other case. The reference to supervision is only to answer the defendant's claim that when the Meriden Britannia Company said to the public that the goods stamped "1847 Rogers Bros. A1" were manufactured by Rogers Bros., it was not such a material misrepresentation as disentitled the plaintiff to relief, because in fact and in truth the Rogers Bros., or some of them, supervised the manufacture of the goods. To assume that supervision may be the foundation of title to a trade-mark, and to attempt to jump from that to the assumption that supervision may be a justification of infringement, requires a wonderful amount of confidence. Trade-marks do not pass by inheritance. If they did, they would not pass to the eldest son alone. William Rogers inherited no trade-mark from his father. He cannot sell, for he does not own, his father's reputation; for the same reason, if for no other, he can not use or sell his father's name. If he has skill in the business which his father pursued, that skill may justly be the ground of compensation by his employer, but cannot be used by his employer or by himself to deceive others. The question is not whether, there being no other and prior trade-mark containing the words "Wm. Rogers" in the field, Simpson, Hall, Miller & Co. might under its contract with William. Rogers put his name on its goods and thus acquire a good trade-mark as against new comers. Probably under the authority of Meriden Britannia Co. v. Parker it could, but |