Trade-mark in United Kingdom

Meaning of Trade-mark

The following is an old definition of Trade-mark [1]: A mark by which one’s wares are known in trade. A word, mark, or device adopted by a manufacturer or vendor to distinguish his production from other productions of the same article. Every one is at liberty to affix to a product of his own manufacture any Symbol or device, not previously appropriated, which will distinguish it from articles of the same general nature manufactured or sold by others, and thus secure to himself the benefits of increased sale by reason of any excellence he may have given the product. The symbol or device thus becomes a sign to the public of the origin of the goods, and an assurance that they are the genuine article of the original producer. But letters or figures, which indicate quality merely, and which cannot indicate, by their own meaning or by association, origin or ownership, cannot be appropriated: as, for example, ” A. 0. A. ticking.” May consist of a name, a device, or a peculiar arrangement of words, lines, or figures, in the form of a label, which has been adopted and used by a person in his business to designate goods of a particular kind manufactured by him, and which no other person has an equal right to use. Nuihbers arbitrarily chosen will be protected as trade-marks, unless they are already in use by another person and known to the trade. Words or devices may be adopted as trade-marks which are not the original inventions of him who adopts them. Property in them has little analogy to that in copyrights or in patents for inventions. Words in common use, with some exceptions, may be adopted, if, at the time, they are not employed to designate the same, or like articles. The office of a trade-mark is to point out distinctively the origin, or ownership of the article. Unless the mark so points to the origin or ownership, neither can he who first adopted it be injured by any appropriation of it by others nor can the public be deceived. No one can use exclusively a trade-mark or trade-name which would practically give him a monopoly in the sale of any goods other than those produced or made by himself; otherwise the public would be injured, for competition would be destroyed. Neither can a generic name, nor a name merely descriptive o? an article of trade, its qualities, ingredients, or characteristics, be employed as a trade- mark and the exclusive use be protected. Not can geographical names, designating districts of the country, be so appropriated: they cannot point to a personal origin or ownership; besides, their appropriation would result in mischievous monopolies. Hence, no one can exclusively use the expressions ” Pennsylvania wheat,” “Kentucky hemp,” “Virginia tobacco,” “Lackawanna coal,” “Brooklyn white lead,” or “Akron cement.” It is only when the adoption or imitation of any such geographical name amounts to a false representation that there is any title to relief. A combination of words from a foreign language, in order to designate merchandise as of a certain standard and uniformity of quality, may be protected as a trade-mark. A party is not, in general, entitled to the exclusive use of a name, merely as such, without more. Instead of that he cannot have such a right, even in his own name, as against another person of the same name, unless the latter uses a form of stamp or label so like that used by the complaining party as to represent that the goods of the former are of the latter’s manufacture. There is general consensus of opinion that the use of a personal name in a fair, honest, and ordinary business manner cannot be prevented, even if damage results therefrom. The cases in which uses have been regulated exhibit a conscious, intentional, fraudulent misrepresentation, or such a combined use of the name with other marks, characters, figures, or form and arrangement of circulars, advertisements, etc., its amounts to a false representation, in which latter case only the combination has been enjoined. No person can appropriate to himself exclusively any word or expression properly descriptive of an article, its qualities or ingredients. Whether a name is descriptive or arbitrary depends upon the circumstances of each case. The exclusive right to any authorized trade-mark has long been recognized by common law, the chancery courts, and State statutes. It is a property right, for the violation of which damages may be recovered, and the continuance of the violation enjoined. The whole system of trade-mark property, and the remedies for its protection, existed before any act of Congress providing for the registration of trade-marks in the patent-office. A trade-mark is neither an invention, a discovery, nor a writing. At common law the exclusive right to it grew out of its use, not from its mere adoption. It is sipiply founded on priority of appropriation. Like the great body of the rights of person and of property, property in trade-marks rests on the laws of the States. If an act of Congress can be extended, as a regulation of commerce, to trade- marks, it must be limited to their use in ” commerce with foreign nations, and among the several States, and with the Indian tribes. ” The legislation of August 14, 1876 (19 St. L. 141), is not a regulation thus limited, but embraces all commerce, including that between citizens of the same State, and, since it cannot be confined to such commerce as is subject to the control of Congress, it is void for want of constitutional authority. The act of Congress of March 3, 1881, provides, sec. 1, that: “Owners of trade-marks used in commerce with foreign nations, or with the Indian tribes, provided such owners shall be domiciled in the United States, or located in any foreign country, or tribes which by treaty, convention or law, affords similar privileges to citizens of the United States, may obtain registration of such trade-marks (1) by causing to be recorded in the patent-office a statement specifying the name, domicil, location, and citizenship of the party applying; the class of merchandise and the particular description of goods comprised in such class to which the particular trade-mark has been appropriated; a description of the trade-mark itself, with fac similes thereof, a statement of the mode in which the same is applied and affixed to goods, and the length of time during which the trade-mark has been used; (2) by paymg into the treasury of the United States the sum of twenty -five dollars, and complying with such regulations as may be prescribed by the commissioner of patents.” Sec. 2. ” That the application prescribed in the foregoing section must, in order to create any right in favor of the party filing it, be accompanied by a written declaration verified by the person, or by a member of a firm, or by an officer of a corporation applying, to the effect that such party has at the time a right to the use of the trade-mark to be registered, and that no other person, firm, or corporation has the right to such use, either in the identical forniv or in any, such near resemblance thereto as might be calculated to deceive; that such trade-mark is used, in commerce with foreign nations or Indiantribes, as above, indicated; and that the description and fac similes presented for registry truly represent the trade-mark sought to be registered.” Sec. 3. “That the time of the receipt of any such application shall be noted and recorded. But no alleged trade-mark shall be registered unless the same appears to be lawfully used as such by the applicant in foreign commerce or commerce with Indian tribes as above mentioned or is within the provision of a treaty, convention, or declaration with a foreign power; nor which is merely the name of the applicant; nor which is identical with a registered or known trade-mark owned by another and appropriate to the same plass of merchandise, or which so nearly resembles some other person’s lawful trade-mark as to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers. In an application for registration the commissioner of patents shall decide the presumptive lawfulness of claim to the alleged trade-mark: and in any dispute between an applicant and a previous registrant, or between applicants, he shall follow, so far as the same may be applicable, the practice of cburts of equity of the United States in analogous cases.” Sec; 4. Certificates of registry are issued in the name of the United States, under the seal of the department of the interior, and signed by the commissioner of patents. Copies of trade-marks, statements, and certificates of registry are evidence in suits. Sec. 5. A certificate of registry shall remain in force for thirty years from its date; except as to trade-marks protected under the laws of a foreign country for a shorter period, in wiiich case the certificate shall cease to have force here at the time the mark ceases to be exclusive property elsewhere. Within six months prior to the end of the first thirty years, registration may be renewed on the same tenns, and for a like period. Sec. 6. Applicants are entitled to credit for fees paid under former acts. Sec. 7. ” Registration of a. trade-mark shall be prima facie evidence of ownership. Any person who shall reproduce, counterfeit, copy or colorably imitate any trade-mark registered under this act and affix the same to merchandise of substantially the same descriptive properties as those described in the registration, shall be liable to an action on the case for damages for the wrongful use of said trade- mark, at the suit of the owner thereof; and the party aggrieved shall also have his remedy according to the course of equity to enjoin the wrongful use of such trade-mark used in foreign commerce or commerce with Indian tribes, as aforesaid, and to recover compensation therefor in any court having jurisdiction over the person guilty of such wrongful act; and courts of the United States shall have original and appellate jurisdiction in such cases without regard to the amount in controversy.” Sec. 8. ” No action shall be maintained under the provisions of this act in any case when the trade-mark is used in any unlawful business, or upon any article injurious in itself, or which mark has been used with the design of deceiving the public in the purchase of merchandise, or under any certificate ot registry fraudulently obtained.” Sec. 9. Any person who procures the registry of a trade-mark by any false or fraudulent representation or means shall be liable to pay any damages sustained in consequence, to the injured party, by an action on the case. Sec. 10. The act does not give cognizance to any court of the United States in a suit between citizens of the same State “unless the trade-mark is Used on goods intended to be transported to a foreign country, or in lawful commercial intercourse .with an Indian tribe.” Sec. 12. The commissioner of patents is authorized to make rules and regulations for the transfer of rights to trade- marks. Sec. 13. ” Citizens and residents of this country wishing the protection of trade-marks in any foreign country; the laws of which require registration here as a condition precedent to getting such protection there, may register their trade-marks for that purpose as is above allowed to foreigners, and have certificate thereof from the patent-office.” The act of August 5, 1882, provides that nothing contained in the foregoing act ” shall prevent the registry of any lawful trade-mark rightfully Used by the applicant in foreign commerce or with Indian tribes at the time of the passage of said act.” Search-warrants for counterfeit dies, plates, trade- marks, colorable imitations, labels, wrappers, empty cases, bottles, etc., upon oath of knowledge or belief that the same are in the possession of any person for deception and fraud, or that originally genuine trade- marks are not so defaced or destroyed as to prevent fraudulent use, are issuable by a judge of the district or circuit court, or a commissioner of a circuit court. Further proceedings are as under the law relating to search-warrants, q. v. After proof made, the articles seized are to be destroyed. A trade-mark is an entirety, and incapable of exclusive use at different places by more than one independent proprietor. Right thereto is forfeited, if deceptively used to designate a spurious article. Relief is given for infringement upon the ground that one man is not allowed to offer his goods for sale, representing them as the manufacture of another. Two marks are substantially the same when the resemblance is such as to deceive ordinary purchasers, giving such attention as people usually give, and to cause them to purchase one manufacture supposing it to be the other. To constitute an infringement, exact similitude is not required. If the form, marks, contents, words, or the special arrangement of the same, or the general appearance of the alleged infringer’s device, is such as would be likely to mislead one in the ordinary course of purchasing the goods, and induce him to suppose that he was purchasing the genuine article, the similitude is such as entitles the injured party to equitable protection, if he takes reasonable measures to assert his rights, and to prevent their continued invasion.1^ ” Cellonite ” is enough lilte ” celluloid” to mislead the ordinary purcheiser. The fact that a registered word becomes a common appellative cannot impair rights acquired in it. Others may use the word to designate the product, but not as a trade-mark. The owner of a trade-mark which is afflxed to articles manufactured at his establishment may, in selling the latter, transfer to the purchaser the right to use the trade- mark. A partnership trade-mark is part of the good-will and an asset of the firm, salable, on dissolution, like any other asset. After dissolution, either partner may continue to use the mark, unless he has divested himself of such right. But neither, except by agreement, can use the name of the other. As an abstract right, apart from the article manufactured, it cannot be sold, for the transfer would be productive of fraud upon the public; but in connection with the article produced, it may be bought and sold like other property, individual or partnership. Where consent by the owner (a former partner) to the use of his trade-mark by another (a new partner) is to be inferred from his knowledge and silence merely, “it lasts no longer than the silence from which it springs; it is, in reality, no more than a revocable license.”^6

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Notes and References

1. Concept of Trade-mark provided by the Anderson Dictionary of Law (1889)