Deception of ultimate purchaser. Innocent infringement. Common law rule. Equity rule. It is not necessary, however, that it should be shown that there was any likelihood of deception towards the immediate purchasers. A trade-mark or description is calculated to deceive if it is sent forth attached to or impressed on the goods in such a manner as is likely to mislead those members of the general public who may become the ultimate purchasers. A manufacturer must not only beware of deceiving his own customers; he must not put into their hands that which may become an instrument of deception to others (a). It is no answer to a complaint of misrepresentation to say that an observant person who made careful examination would not be misled. The test is the impression likely to be produced on the casual and unwary customer (b). It remains still a doubtful point whether an action for damages will lie for the infringement of a trade-mark, unless where the defendant has acted with knowledge of the plaintiff's claim. The Courts of Common Law originally made no distinction between cases of infringement of a trade-mark and ordinary cases of fraudulent imitation of a trade name or description. In both alike it was considered that the intent to deceive was an essential element of the wrongful act. In Crawshay v. Thompson (c) the defendants had used a trade-mark resembling that of the plaintiff, and on their attention being called to the matter had refused to desist. It was held that the plaintiff must prove, not merely that the defendant's trade-mark was so like his own as to be calculated to deceive, but that the defendants had used it with the intention of supplanting him, and that the mere fact that the defendants were aware of the resemblance did not necessarily give him a cause of action. Where fraud was once proved the plaintiff was entitled to a verdict, even though he did not prove any actual damage. His right, it was said, was necessarily injured (d). The Courts of Equity intervened by injunction to prohibit the (a) Wotherspoon v. Currie, L. R. 5 H. L. 508; Johnston v. Orr-Ewing, 7 App. Cas. 219. (b) Per Lord Selborne, Singer Manufacturing Co. v. Loog, 8 App. Cas. p. 18. See Hookham v. Pottage, L. R. 8 Ch. 91; cp. Civil Service Supply Association v. Dean, 13 Ch. D. 512. (c) 4 M. & G. 357. (d) Blofield v. Payne, 4 B. & Ad. 410. continuance of any conduct or practice, whether by infringement of trade-mark or otherwise, which was likely to deceive the public, and thus unfairly divert to one trader the custom intended for another (a). They also, in all cases where fraud had been practised, would make the offending party refund the profits which he had made by reason of his fraud. But in cases of infringement of trade-mark it was said that the rule went further, and that, even where the imitation was innocent and unintentional, the party could not only be restrained as to the future, but made to pay compensation as to the past. In Millington v. Fox (b), which for the first time laid down the rule that a non-fraudulent infringement must be restrained by injunction, it seems to have been assumed as a corollary that in such a case an account of the profit made by reason of the infringement might be ordered. In a later case it was said that if a man had made use of another's trade-mark, although he had acted innocently at the time, yet when the mistake was discovered, he ought to be made to refund profits which had in fact been made at the expense of another's right. "If he seeks to keep in his pocket profits which he has made by representing, however innocently, that his goods are another person's, after he has been told of the fact, it is fraud" (c). It is, however, one thing to say that a man shall not be permitted to carry on a practice when once its unfairness has been pointed out to him, another to make him pay damages for that which he did while his ignorance continued. In Edelsten v. Edelsten (d) Lord Westbury, while granting an injunction to restrain an infringement of a trade-mark, refused to grant an inquiry as to the profits made by the defendant through the infringement previously to his attention having been directed to it. This express authority has never been overruled. In the later case of Reddaway v. Bentham Hemp-Spinning Co. (e) it was assumed by Smith, L.J., that fraud was essential to a claim for damages. The ground on which it is said that damages may be given for an infringement of a trade-mark without proof of fraud, or even of 91. (a) Hookham v. Pottage, L. R. 8 Ch. (b) 3 My. & Cr. 338. (c) Per Page-Wood, V.-C., M'Andrew v. Bassett, 33 L. J. Ch. p. 564. This seems hardly consistent with the deci- In what sense a trade-mark a property. knowledge, is that the right, being exclusive in its nature, is a right of property, and that where a right of property is infringed the motive or knowledge of the infringing party are immaterial (a). It cannot, however, be said to be a universally true proposition that a damage to the subject-matter of a right is an injury to the right itself. A trade-mark is no doubt in many respects a property. An injury to it is not a mere personal wrong, but in case of death will pass to the personal representative (b). It is both by the general law and statute capable of assignment; not, however, as a separate subject-matter, but only in connection with a business (c). But a trade name, which has never been said to be property, exactly speaking, is assignable in the same way (d). It is besides not strictly true that the right is exclusive. A man might have a trade-mark good as against A. and not good as against B. (e). The right moreover is not against all infringement, but against all infringement calculated to deceive (f). A trade-mark, therefore, although it may be a property, is property in a peculiar sense, and it does not seem a necessary consequence that an infringement should be treated on the same principle as a trespass to land or goods. The Registration Acts, although they do not profess to alter the nature of the right in a trade-mark, do nevertheless make it more definite and exclusive. Whether this fact has any bearing on the question of the liability for innocent infringement does not seem to have been considered. The registration of a trade-mark will at any rate interpose an additional difficulty in the way of persons who endeavour to plead their ignorance of its existence. CHAPTER XXII. OFFICERS OF JUSTICE. ministerial OFFICERS of Courts of Justice act either judicially or minis- Judicial and terially. A judicial act is one which involves the exercise of a acts. discretion; in which something has to be heard and decided. A ministerial act is one which the law points out as necessary to be done under the circumstances, without leaving any choice of alternative courses. Every purely formal step in a legal process, and everything which is necessary to carry into execution what has been judicially decided, is ministerial. It is not always easy to exactly distinguish between the two classes of acts. If application is made to a magistrate to issue a distress warrant against a defaulting ratepayer, he has jurisdiction to inquire as to whether the rate has been duly made and published, and as to whether it has been paid, but if satisfied on these points, he is bound to issue his warrant, and cannot deal with any question of rateability. The issuing of the warrant, therefore, is a ministerial act, though the preliminary inquiry is a judicial act (a). On this analogy it was sought in Linford v. Fitzroy (b) to recover damages against a magistrate in an action for unreasonably refusing to take bail in a case of misdemeanor; and it was contended that, though the magistrate might have a judicial discretion as to the sufficiency of the bail tendered, yet when this preliminary condition was satisfied his duty became simply ministerial. The Court, however, held the duty could not be thus split and divided, and that it must be treated as purely judicial. In Garnett v. Ferrand (c) it was held that a coroner in ordering a person to be excluded from his court was acting judicially (d). (a) See below, p. 641. (b) 13 Q. B. 240. (c) 6 B. & C. 611. (d) See, too, as to the distinction Judicial acts. Different kinds of courts. Abuse and absence of jurisdiction distinguished. And first as to judicial acts. Responsibility depends not upor the particular office which the party holds, but upon the function which he performed on the occasion in question. Different notions on this subject seem to have prevailed formerly. Thus Holt, C.J., in De Groenvelt v. Burwell, says: "Commissioners of bankrupts may commit a man for refusing to be examined concerning the estate of the bankrupt, but they are not judges, and their proceedings are traversable" (a). But in Doswell v. Impey (b) it was held that such commissioners were entitled to the full protection of the judicial position (c). Subordinate officers of courts of justice, many of whose duties are ministerial, frequently act judicially as well, and on the other hand magistrates, who are the judges of courts of summary jurisdiction, have also certain ministerial functions. In considering the responsibility for judicial acts it is necessary to bear in mind, first, the distinction between courts of record and courts not of record, and, secondly, between the Supreme Court and courts of limited jurisdiction. Courts of record include the supreme as well as various inferior courts. The essential feature of such courts is that their proceedings can be proved only by their own official record, and that their judges possess the power to punish for contempt of court. Judges of the Supreme Court may punish for contempt wherever committed. Judges of inferior courts of record can only deal with contempt in the face of the court itself (d). Judges not of record have no judicial power in respect of contempts as such, though they may direct the removal of persons disturbing their proceedings. If an act purporting to be judicial is alleged as a legal wrong, the plaintiff may seek to establish his case in two ways; first, on between a judicial and ministerial act, (a) Lord Raym. p. 467. (b) 1 B. & C. 163, overruling Miller v. Seare, 2 W. Bl. 1141. (c) So also the General Council of Medical Education appear to be acting judicially in investigating a charge of infamous conduct in a professional respect brought against a medical practitioner; Allbutt v. The General Council of Medical Education and Registration, 23 Q. B. D. 400. (d) Reg. v. Lefroy, L. R. 8 Q. B. 134. As to county courts, see 51 & 52 Vict c. 43, s. 162. |