OF THE INFRINGEMENT OF A RIGHT TO A TRADE-MARK.

The [seventh] section provides, that any person or corporation who shall reproduce, counterfeit, copy, or [colorably] imitate" a recorded trade-mark shall be liable to an action for damages, and the party aggrieved shall also have his remedy in equity. The [third] section prohibits the commissioner from receiving and recording a mark "which so nearly resembles" a recorded trademark, "as to be likely to [cause confusion or mistake in the mind of the public or to deceive purchasers"].

Any forgery of this mark, or any imitation of it, which would naturally deceive the community into the belief that they were buying what they were not buying, would be a violation of the trade-mark thus forged or imitated. (x) 1

business they were continuing. ViceChancellor Shadwell said that it was possible that the representatives of some of the deceased partners might have an interest in the trade-mark, as he considered that the right to use a trade-mark was in the nature of a personal chattel, but that, at all events, the plaintiffs had sufficient right to bring forward this case.

(x) Amoskeag Co. v. Spear, 2 Sandf. Ch. 607; Rogers v. Nowill, 5 Man. Gr. & Sc. 109; Coffeen v. Brunton, 4 McLean, 516; Holloway v. Holloway, 13 Beav. 213; Matsell v. Flanagan, 2 Abb. Pr. N. s. 407; Williams v. Spence, 25 How. Pr. 366; Franks v. Weaver, 10 Beav. 297; Seizo v. Provezende, Eng. Eq. Rep. 1 Ch. Ap. 192; McCartney v. Gamhart, 45 Mo. 593; Palmer v. Harris, 60 Penn. St. 156; Filley v. Fassett, 44 Mo. 168; Lockwood v. Bostwick, 2 Daly, 521; Boardman v. Meriden Britannia Co., 35 Conn. 402; Rowley v. Houghton, 2 Brews. 303; Cotton v. Thomas, 2 Brews. 308. But it is not sufficient that the public may mistake the goods of one manufacture for those of another, if the mistake arises solely from the resemblance of names or marks which both have an equal right to use. “A trade-mark," says Judge Duer, "is frequently designed to convey information as to several distinct and independent facts, and therefore contains separate words, marks, or signs, applicable to each;

1

thus indicating not only the origin or ownership of the article or fabric to which it is attached, but its appropriate name, the mode or process of its manufacture, and its peculiar or relative quality. It is certain, however, that the use, by another manufacturer, of the words or signs indicative only of these circumstances, may yet have the effect of misleading the public as to the true origin of the goods; but it would be unreasonable to suppose that he is, therefore, precluded from using them as an expression of the facts which they really signify, and which may be just as true in relation to his goods as to those of another. Purchasers may be deceived; they may buy the goods of one person as those of another, but they are not deceived by a false representation; they are deceived because certain words or signs suggest a meaning to their minds which they do not in reality bear, and were not designed to convey." Amoskeag Co. v. Spear, 2 Sandf. S. C. 599; Stokes v. Landgraff, 17 Barb. 608; Gillott v. Esterbrook, 47 Barb. 464; 17 Eng. L. & Eq. 257. It has been held, that one who has received a prize-medal for the excellence of his wares, cannot prevent another from placing the words "prize-medal upon his goods, though the latter has obtained no such medal. Batty v. Hill, 1 Hem. & M. 264.

1 A court of equity will not restrain a defendant from the use of a label, on the ground that it infringes the plaintiff's trade-mark, unless the form of the printed words, the words themselves, and the figures, lines, and devices, are so similar that any person,

It is seldom that this violation is effected by a complete forgery, or by a perfect imitation. But if the imitation be such in degree and character,-perhaps by a close imitation of the true trademark in its most salient and obvious features, and with a difference in its subordinate and less noticeable characteristics, it is not the less a violation; and its character would indicate the fraudulent

design of the user. Hence it is certain that the imitation * 257 bv may be imperfect * and colorable only, and yet be a violation of a right. (y) And in one case it was so held, where the imitation consisted in the use of one word only, the remainder of the original trade-mark being quite different from that of the imitation which was restrained by injunction. (2)

with such reasonable care and observation as the public generally are capable of using and may be expected to exercise, would mistake the one for the other. Gilman v. Hunnewell, 122 Mass. 139. And where the similarity is so great as to deceive incautious purchasers, it is not necessary to show that any one has actually been misled. Johnston v. Orr Ewing, 7 A. C. 219. Evidence of one sale of an imitation will justify an injunction, though the defendant at the date of the application has none of the article in his store. Low v. Hart, 90 N. Y. 457. Where, however, the defendant had agreed not to use in a particular place a former trade-mark, under which he had carried on business, it was held, in an action to restrain him from so using, that it was no defence that its use by the plaintiff would mislead the public. Grow v. Seligman, 47 Mich. 607. — K.

Two questions, however, may rise and have arisen under this. A man, believing that his goods have all the excellence of certain other goods of high esteem in the market, may wish to say

that his goods are as excellent as those of the other *257 bw maker. He may lawfully say this; and if this is all he says, even if he says what is not true, his conduct is no such violation of another's right to be protected by the law of trade-marks. He may desire to say this impressively, and to draw attention to the comparison, and for that purpose use enough of the other's mark, or of an imitation, to show what it is he claims to equal or surpass. And if he so says this, and with such addition of his own name or other designation as shall indicate that he himself and not the other makes the goods he offers, he violates no right. (a) The essential question always is, Does he honestly exhibit himself as the maker of the goods? or does he only pretend to do this, and do it in such a way as to mislead the public into the mistake of supposing the man makes them who owns and uses the trade-mark lawfully, but does not in fact make these goods? It is precisely the attempt to shelter the violator in this way, and under this pretence, which gives rise to most of the colorable imitations of trade-marks. And there is no doubt that a man may, in this way, make a fraudulent use of his own name. (b) (x)

No certain line can be drawn * 257 bx

mark which the defendant placed upon the pens made by him, and the use of this was restrained by an injunction.

(a) Canham v. Jones, 2 Ves. & B. 218; The Merrimac Man. Co. v. Garner, 2 Abb. Pr. 318; Flavel v. Harrison, 19 Eng. L. & Eq. 15. See also Burgess v. Burgess, 17 Eng. L. & Eq. 257; Wolfe v. Goulard, 18 How. Pr. 64; Perry v. Truefitt, 6 Beav.

66.

But where the defendant's label rep resented his goods as equal to those of the plaintiff, but the words "equal to" were printed in very small letters, an injunction was granted. Day v. Binning, 1 Cooper, Ch. Rep. 489. So Glenny v. Smith, 11 Jur. N. s. 964. So where the terms of the comparison were such as to lead to the inference that the defendant's goods were prepared by the plaintiff. Franks v. Weaver, 10 Beav. 297. Where there is a fraudulent imitation of the plaintiff's trade-mark, it is no defence that the defendant's goods are equal in quality to those made by the plaintiff. Blofield v. Payne, 4 B. & Ad. 410; Taylor v. Carpen

(r) Every man has a right to use his own name in his business, but if there are

ter, 2 Sandf. Ch. 603; 2 Wood. & M. 1; Partridge v. Menck, 2 Sandf. Ch. 622.

(b) In Croft v. Day, 7 Beav. 84, Lord Langdale says: "The defendant has a right to carry on the business of a blacking manufacturer honestly and fairly; he has a right to the use of his own name. I will not do anything to debar him from the use of that, or any other name, calculated to benefit himself in an honest way; but I must prevent him from using it in such a way as to deceive and defraud the public, and obtain for himself, at the expense of the plaintiffs, an undue and improper advantage." So Sykes v. Sykes, 3 B. & C. 541; Holloway v. Holloway, 13 Beav. 213; Clark v. Clark, 25 Barb. 76; Howe v. Howe Man. Co., 50 Barb. 236. On the other hand, where both parties bear the same name, but no fraudulent representations are made, even though a loss result to one of the parties from this similarity of name, he is without a remedy. It is a case of damnum absque injuria. Burgess v. Burgess, 17 Eng. L.

other names which are the same or similar, he cannot mislead the public and injure a

But this

here. It is a question of fact rather than of law. question always is, Is the mark or designation complained of, such as would naturally mislead a customer by the false and simulated appearance of the article he buys?

If it would cause this deception, another question arises: Must this deception be intentional, and therefore fraudulent? It is not difficult to suppose that one who makes certain goods may

& Eq. 257; Faber v. Faber, 3 Abb. Pr. N. S. 115; s. c. 49 Barb. 357. But one cannot use another's name as a trademark, under cover of having a workman of the same name in his employ, or by virtue of an arrangement with a third party bearing the same name, but having no interest in the business. Rodgers v. Nowill, 5 Man. Gr. & Sc. 109, 6 Hare, 325; Croft v. Day, 7 Beav. 84; Southorn v. Reynolds, 12 L. T. Rep. N. s. 75. In Ames v. King, 2 Gray, 379, the plaintiff was a manufacturer of shovels, and marked his goods with his own name, O. Ames; but it was averred in the bill that the letter O. was frequently effaced in the process of manufacture, and that the shovels were known in the market simply

previously existing business without some distinguishing identification. Higgins Co. v. Higgins Soap Co., 144 N. Y. 462, 39 N. E. 490; Singer Manuf. Co. v. June Manuf. Co., 163 Ú. S. 169, 16 S. Ct. 1002, 41 L. Ed. 118; Walter Baker Co. v. Walter Baker, 87 Fed. 209; Church & Dwight Co. v. Russ, 99 Fed. 276; Thomas G. Plant Co. v. May Co., 100 Fed. 72; Haftung v. Paster Kneipp Med. Co., 27 U. S. App. 351; Watkins v. Landon, 52 Minn. 389, 54 N. W. 193. See Reddaway v. Banham, [1896] A. C. 199; Cash v. Cash, 82 L. T. 655, [1902] W. N. 32; Valentine Meat Juice Co. v. Valentine Extract Co., 83 L. T. 259; Jameson v. Dublin Distillers Co., [1900] 1 I. R. 43.

A partnership or corporate name may also be used as a trade-mark; and a corporation may thus use another name, though not as a corporate name, if the same name is not allowed by statute to different corporations. Burchell v. Wilde, [1900] 1 Ch. 551; Elgin Butter Co. v. Elgin Creamery Co., 155 Ill. 127, 40 N. E. 616; Hygeia Water Ice Co. v. New York Hygeia Ice Co., 140 N. Y. 94, 35 N. E. 417; Int'l Trust Co. v. Int'l Loan & Trust Co., 153 Mass. 271, 26 N. E. 693; Southern Medical College ». Thompson, 92 Ga. 564, 18 S. E. 430; 32 Am. L. Rev. 781.

There can be no valid trade-mark in a

public name, or one that is common

as Ames's. The defendant had stamped shovels of his own manufacture with the name Ames; but in his answer he averred on oath that he had done so not to represent them as the plaintiff's goods, but at the request of one E. B. Ames, by whom they had been ordered. Under the statutes of Massachusetts, the Supreme Court had then no general jurisdiction in cases of fraud, and their jurisdiction in matter was derived solely from the provisions of chap. 197 of the Acts of 1852, which required proof of fraudulently representing the goods of one as actually made by another; and, as this was denied on oath, and the case came to a hearing on bill and answer alone, an injunction was refused. See p. *257 bm, n. 1

the

property, or in the name of another who is a political leader or master in his profession. Saxlehner v. Eisner & M. Co., 179 U. S. 19, 21 S. Ct. 7, 45 L. Ed. 60; Blakely v Sousa, 197 Penn. St. 305, 47 Atl. 286; Skinner v. Oakes, 10 Mo. App. 45. The use of the name and likeness of a deceased person, though not a public character, will not be restrained, when it is not libellous, as a label for cigars, because such use offends his family. Atkinson v. John E. Doherty & Co., 121 Mich. 372, 80 N. W.

285.

The vital question in all cases of infringement is, in equity, essentially ethical, involving both deception towards the trusting and uncritical public, and unfair competition and fraudulent impairment of the plaintiff's trade. Pillsbury v. Pills bury-Washburn F. M. Co., 64 Fed. 841; Dadirrian v. Yacubian, 98 Fed. 872; Charles E. Hires Co. v. Consumers' Co., 100 Fed. 809; American Washboard Co. v. Saginaw Manuf. Co., 103 Fed. 281; Gorham Manuf. Co. v. Emery, &c. Co., 104 Fed. 243; Steward v. F. G. Stewart Co., 91 Fed. 243; Sterling Remedy Co. v. Spermine Medical Co., 112 Fed. 1000; Hagen v. Beth, 118 Cal. 330, 50 Pac. 425; Dover Stamping Co. v. Fellows, 163 Mass. 191, 40 N. E. 105, 47 Am. St. Rep. 448, 28 L. R. A. 448; Rubel v. Allegretti Chocolate Cream Co., 76 Ill. App. 581.

affix to them a mark which is already understood as indicating that they have peculiar merit, without intending to deceive any one as to their manufacture. The authorities, and we think the better reason, would lead to the conclusion, that if this be a deception in fact, though not in intent, the law should protect the public against it. (c)

We apprehend, however, that a distinction would be drawn, which, so far as the authorities go, would seem to be warranted by them. It is this. In our next section, it will

* be seen that the owner and user of a trade-mark, if it *257 by be violated, may proceed against the violator in equity or at law in equity, to restrain and prevent this violation of his right; at law, to obtain damages therefor. If he proceeds in equity, he should obtain the relief of injunction, although the violation did not intend deception. But if he resorts to law to obtain damages, it may well become a material question whether the defendant was honest, intending neither harm to him or deception of the public, or fraudulent and intending both. It would be a question which we should say would bear more upon the amount of damages than upon the verdict itself; or, if the case were in equity, upon the question of costs. (d)

How far an imitation must go to be regarded as a violation of a right, may depend upon the question how far the courts will go in protecting the public from deception, and where they will stop, leaving purchasers to take care of themselves. There is no positive rule, and perhaps never can be, which will always answer this question In some case the test is said to be, Is the imitation calculated to mislead the unwary? (e) But what is meant

(e) In equity it is not necessary that the acts of the defendant be done with fraudulent intent. Millington v. Fox, 3 My. & Cr. 338, Ainsworth v. Walmsley, Eng. Eq Rep. 1 Eq. Cas. 518; Burgess v. Hills, 26 Beav. 244; Edelston v. Edelston, 9 Jur N. s. 479; Cartier v. Carlile, 8 Jur. N. s. 183; Amoskeag Man. Co. v. Spear, 2 Sandf. S. C. 608; Coates v. Holbrook, 2 Sandf. Ch. 586; Coffeen v. Brunton, 4 McLean, 516; Messerole v. Tynberg, 36 How. Pr. 14, 4 Abb. Pr. N. s. 410; Dale v. Smithson, 12 Abb. Pr. 237. This has been doubted in a few cases; and in Corwin v. Daly, 7 Bosw 222, it is even said to be one of the "two principles steadily adhered to in all the cases in equity, that the intent to pass off the goods of the defendant as those of the plaintiff must exist;" and this is asserted also in the Merrimac Man. Co. v. Garner,

2 Abb. Pr. 318. But the contrary opinion
is now firmly established both on principle
and authority. At law the rule is dif
ferent. There the remedy is by an action
on the case for deceit, and an intent to
deceive is of the gist of the action. Craw-
shay v. Thompson, 4 Man. & Gr. 357;
Sykes v. Sykes, 3 B. & C. 541; Rodgers
v. Nowill, 5 Man. Gr. & Sc. 108; Edelston
v. Edelston, 9 Jur. N. s. 479; Farina v.
Silverlock, 1 K. & J. 509.
Where the use

of another's trade-mark is made a statute
offence, the sale of spurious goods by one
ignorant of the fact does not render him
liable to the penalty. Rudderow v. Hunt-
ington, 3 Sandf. S. C. 252.

(d) See note (o), infra.

(e) Crawshay v. Thompson, 4 Man. & Gr. 363; Edleston v. Vick, 23 Eng. L. & Eq. 51; Swift v. Dey, 4 Robt. 611; but the decision of Judge Robertson in this last