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courts noticed that the false representation which is made by SECT. 1. putting another man's trade mark, or the trade name of another manufacturer, on the goods which the wrongdoer sells, is calculated to do an injury not only to the person to whom the false or fraudulent representation is made, but to the manufacturer whose trade mark is imitated. Then the common law courts extended that doctrine one step further; first, if I recollect rightly, in the case of Sykes v. Sykes (K. B. 1824, 3 B. & Cr. 541 ; 5 D. & R. 292; 3 L. J. K. B. 46). There it was held that although the representation was perfectly true as between the original vendor and the original purchaser, in this sense, that the original purchaser knew perfectly well who was the real manufacturer of the goods, and so was not deceived into believing that he had bought goods manufactured by another person; yet if the trade mark was put on the goods for the purpose of enabling that purchaser, when he came to sell the goods, to deceive any one of the public into thinking that he was purchasing the goods of the manufacturer to whom the trade mark properly belonged, then that was equally a deception, a selling of goods with a false representation, which would give the original user of the trade mark a right of action:" per Mellish, L.J., in Singer Manufacturing Co. v. Wilson, C. A. 1876, 2 Ch. D. 453; 45 L. J. Ch. 490; 34 L. T. N. S. 863; 24 W. R. 1026.
It will be noticed that under the old practice at common law "proof of fraud on the part of the defendant is of the essence of the action :" per Westbury, L.C., in Edelsten v. Edelsten, 1863, I De G. J. & S. 185; 9 Jur. N. S. 479; 7 L. T. N. S. 768; 11 W. R. 328; see also Singleton v. Bolton, K. B. 1783, 3 Doug. 293; Crawshay v. Thompson, C. P. 1842, 4 Man. & G. 357; 11 L. J. C. P. 301; Rodgers v. Nowill, C. P. 1847, 5 C. B. 109; 17 L. J. C. P. 52. See, as to the later practice, sects. 21 and 22.
The courts of equity, however, extended the right to protection further, and held that "it was quite immaterial that the maker of the goods to which the mark was affixed did not know that it was a trade mark, and had not the slightest intention of defrauding anybody. He must not put as a mark on goods, even though he intends to establish it as his own trade mark, that which is the known trade mark of other people, and he would be restrained by injunction though he thought he himself had invented the
trade mark, and bonâ fide intended it to designate goods of his
In short, a trade mark came to be regarded in equity as a kind of property, and it was held "that the jurisdiction of the court in the protection of trade marks rests upon property, and that the court interferes by injunction because that is the only mode by which such property can be effectually protected:" per Westbury, L.C., in Leather Cloth Co. v. American Leather Cloth Co., 1863, 4 De G. J. & S. 137; 33 L. J. Ch. 199; 10 Jur. N. S. 81; 9 L. T. N. S. 558; 12 W. R. 289; see also Millington v. Fox, Cottenham, L.C., 1838, 3 My. & Cr. 338; Clement v. Maddick, Stuart, V.-C., 1859, 1 Giff. 98; 5 Jur. N. S. 592; Edelsten v. Edelsten, Westbury, L.C., 1863, 1 De G. J. & S. 185; 9 Jur. N. S. 479; 7 L. T. N. S. 768; 11 W. R. 328; Hall v. Barrows, Westbury, L.C., 1863, 4 De G. J. & S. 150; 33 L. J. Ch. 204; 9 L. T. N. S. 561; 12 W. R. 322; Singer Manufacturing Co. v. Wilson, ubi supra.
As to protection by injunction, see sect. 21.
From the above observations regarding the growth of the jurisdiction of the courts of equity, it will be gathered there is a well-established principle, "that a manufacturer is not entitled to sell his goods under the false representation that they are made by a rival manufacturer," and that of the numerous cases which come within this rule there is a distinct class consisting of those 66 cases where the goods manufactured are distinguished by some description or device in some way or other affixed to the article sold. It may be, as I said before, description-that is, it may consist of a name or names, or a lengthy description consisting of names with superadded words, and that description may be either affixed to or impressed upon the goods themselves by means of a stamp or an adhesive label, or it may be made to accompany the goods by being impressed or made to adhere to an
envelope or case containing the goods;" per Jessel, M.R., in SECT. 1. Singer Manufacturing Co. v. Wilson, ubi supra.
These are cases of trade mark properly so called, and they are distinguishable inasmuch as all that a plaintiff seeking an injunction has to do is to show that
(i.) He has a good title to the trade mark.
(ii.) The trade mark has been imitated. He has not to show any fraudulent intention on the part of the defendant; it is enough to show that the trade mark has been taken, and " a trade mark to be taken need not be exactly copied; it need not be copied even with slight variations; but it must be a substantial portion of the trade mark; it has sometimes been called the material portion, but that means the same thing :" per Jessel, M.R., in Singer Manufacturing Co. v. Wilson, ubi supra; and as to the "essential particular" of a trade mark, see Act of 1883, sect. 64. As to what will constitute imitation, see sect. 5, p. 15.
Although no authoritative definition was extant of the kind of mark which would be such a trade mark as to secure to its proprietor the advantages of the jurisdiction above described, yet it was essential that it should be (i.) distinctive: see Act of 1883, sect. 64, post; and (ii.) attached to an article actually in the market. See M'Andrew v. Bassett, Westbury, L.C., 1864, 4 De G. J. & S. 380; 33 L. J. Ch. 566; 10 Jur. N. S. 550; 10 L. T. N. S. 442; 12 W. R. 777; and per Cairns, L.J., in Maxwell v. Hogg, 1867, L. R. 2 Ch. 307; 36 L. J. Ch. 433; 16 L. T. N. S. 130; 15 W. R. 467 ; and per Jessel, M.R., in Singer Manufacturing Co. v. Wilson, ubi supra.
The above definition in the Merchandise Marks Act contains a description of such trade marks as entitle their proprietors to the benefit of the Act, but beyond this it does not affect the law as stated above. See per Bacon, V.-C., in Ford v. Foster, 1872, L. R. 7 Ch. 616; 27 L. T. N. S. 222; 20 W. R. 311.
The Act of 1883, sect. 64, contains another definition of such marks as are registrable thereunder, and sect. 77 makes registration under that Act in the case of trade marks so registrable, and a refusal by the Comptroller to register in the case of any other trade mark in use prior to 1875, a condition precedent to any proceeding to prevent, or to recover damages for infringe
It may be mentioned here that the protection given by the courts of equity in trade mark cases, although there is no proof of fraud, has been extended also to some cases of trade name. "A name may be so appropriated by user as to come to mean the goods of the plaintiffs, though it is not, and never was, impressed on the goods or on the packages in which they are contained, so as to be a trade mark properly so called, or within the recent statutes. Where it is established that such a trade name bears that meaning, I think the use of that name, or one so nearly resembling it as to be likely to deceive, as applicable to goods not the plaintiff's, may be the means of passing off those goods as and for the plaintiff's just as much as the use of a trade mark; and I think the law (so far as not altered by legislation) is the same:" per Blackburn in Singer Manufacturing Co. v. Loog, H. L. 1882, 8 App. Cas. 32; 52 L. J. Ch. 481; 48 L. T. N. S. 3; 31 W. R. 325; and per Cairns, L.C., in Singer Manufacturing Co. v. Wilson, H. L. 1877, 3 App. Cas. 389; 47 L. J. Ch. 481; 38 L. T. N. S. 305; 26 W. R. 664; and see sect. 64 of the Act of 1883.
Acquisition of Trade Marks.-It has been stated above that a trade mark, properly so called, must be attached in some way to an article which is actually for sale in the market. In other words, a mark, prior to the passing of the Registration Acts, did not become a trade mark, properly so called, unless it was used publicly, so that property in it might be acquired by common repute see M'Andrew v. Bassett, Westbury, L.C., 1864; 4 De G. J. & S. 380; 33 L. J. Ch. 566; 10 Jur. N. S. 550; 10 L. T. N. S. 442; 12 W. R. 777; and per Lord Blackburn in Orr-Ewing v. Registrar of Trade Marks, 1878, 4 App. Cas. 479.
It would appear essential that the user should be in this country: In re Münch's Application, Chitty, J., 1883, 50 L. T. N. S. 12; In re Riviere's Trade Mark, C. A. 1884, 26 Ch. D. 48; 53 L. J. Ch. 578; 50 L. T. N. S. 763 ; 32 W. R. 390; In re Leonard and Ellis' Trade Mark, C. A. 1884, 26 Ch. 288; 53 L. J. Ch. 603; 51 L. T. N. S. 35.
But it is not material, provided the user be in Great Britain, that the person claiming property in the mark should be a British subject: Collins v. Cowen, Wood, V.-C., 1857, 3 K. & J. 428; 3 Jur. N. S. 929; 29 L. T. 245 ; 30 L. T. 62; 5 W. R. 676; Collins
Co. v. Reeves, Stuart, V.-C., 1858, 28 L. J. Ch. 56; 4 Jur. N. S. SECT. I. 865; 33 L. T. 101; 6 W. R. 717; Cartier v. Westhead, Wood, V.-C., 1861, Seb. Dig. No. 199; Cartier v. Carlile, Romilly, M.R., 1862, 31 Beav. 292; 8 Jur. N. S. 183; and see Mouson v. Boehm, Chitty, J., 1884, 26 Ch. D. 398; 53 L. J. Ch. 932; 50 L. T. N. S. 784; 32 W. R. 612; In re Heaton's Trade Mark, Kay, J., 1884, 27 Ch. D. 570; 53 L. J. Ch. 959; 51 L. T. N. S. 220; 32 R. 951.
Nor was the length of the user material; for property in a mark affixed or applied by way of stamp to a particular vendible article, exists the moment the article goes into the market so distinguished, and there obtains acceptance and reputation whereby the mark gets currency as an indication of superior quality or of some other circumstance which renders the article so marked acceptable to the public: per Westbury, L.C., in M'Andrew v. Bassett, 1864, 4 De G. J. & S. 380; 33 L. J. Ch. 566; 10 Jur. N. S. 550; 10 L. T. N. S. 442; 12 W. R. 777; see also per Romilly, M.R., in Hall v. Barrows, 1863, 32 L. J. Ch. 548; 9 Jur. N. S. 483; 8 L. T. N. S. 227; 11 W. R. 525; per Malins, V.-C., in Lee v. Haley, 1869, 21 L. T. N. S. 546; 18 W. R. 181; and per Hall, V.-C., in Cope v. Evans, 1874, L. R. 18 Eq. 138; 30 L. T. N. S. 292; 22 W. R. 453.
Briefly, then, the sole mode in which property in a trade mark could be acquired prior to the passing of the Registration Acts was user in connection with an article actually on sale in Great Britain. Now, in addition to this mode of acquisition, registration by sect. 75 of the Act of 1883 is rendered equivalent to such user: see per Lord Blackburn in Orr-Ewing v. Registrar of Trade Marks, 1878, 4 App. Cas. 479; 48 L. J. Ch. 707; 41 L. T. N. S. 239; 28 W. R. 17.
Designs. The only Act now in force relating to the registration of designs is the Patents, Designs, and Trade Marks Act, 1883 (46 & 47 Vict., c. 57). It is enacted by sect. 51 of that Act as follows:
"Before delivery on sale of any articles to which a registered design has been applied, the proprietor of the design shall cause each such article to be marked with the prescribed mark or with the prescribed word or words or figures denoting that the design is registered; and if he fails to do so the copyright in the design