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ART II.-TRADE MARKS.
[From the Monthly Law Magazine for December, 1840.]

LoRD HARDwicke, in a case before him, is reported to have said, “Every particular trader has some particular mark or stamp; but I do not know any instance of granting an injunction here, to restrain one trader from using the same mark with another, and I think it would be of mischievous consequence to do it.”' Notwithstanding this opinion of so learned a judge, we find a variety of instances in later times, in which injunctions have, under such circumstances, been granted. Lord Hardwicke, however, does not deny that there are cases in which an action at law would lie, and he alludes to the case referred to in arguments cited by Mr. Justice Dodderidge, in Popham, 151, where it was held that an action at law could lie against a clothworker for using the same mark as another in the same trade. But his lordship thus remarks, that “it was not the single act of making use of the mark that was sufficient to maintain the action, but the doing it with a fraudulent design to put off bad cloths by this means, and to draw away customers from the other clothier; and there is no difference between a tradesman's putting up the same sign, and making use of the same mark with another of the trade.” In the case, however, before Lord Hardwicke, it was not necessary to determine so broad a question; and we shall see that, in the subsequent cases, his lordship's view has not been followed. It also appears that the right of protection does not depend on the wilful fraud of the defendant, but that a person innocently using the marks of the plaintiff may be restrained from so doing. The ground for not granting the injunction in the case before lord Hardwicke was the fact, that the plaintiff had not made out his title to the mark in question. It was on this ground, and on this alone, that the injunction was refused; for if, as lord Hardwicke admits, an action at law may in some cases arise, then it follows, from the principles of equity, that the court of chancery will, on such a case being made out as would support an action at law, interfere to prevent irreparable injury, and also by granting an account, give that relief for which damages at law could not, in many instances, afford an adequate compensation in reference to the injury received. But the right at law, and a very strong case, must be fully made out before a court of equity will interfere in the first instance. The lord chancellor, in Motley v. Downham,' said, “the court, when it interferes in cases of this sort, is exercising a jurisdiction on a legal right; and although sometimes, in a strong case, it interferes in the first instance by injunction, yet, in a general way, it puts the party upon asserting his right by trying it in an action at law. If it does not do this, it permits the plaintiff, notwithstanding the suit, to bring an action. In both cases the court is only acting in aid of, and is only ancillary to, the legal right. I can hardly conceive a case in which the court will at once interfere by injunction, and prevent the defendant from disputing the plaintiff’s legal title.” In that case, the injunction had been granted in the first instance in the court below, but no provision had been made for permitting the right to be tried at law. The first thing to be shewn is the legal title. Thus, where the plaintiff's father prepared and sold a medicine, called “Dr. Johnson's Yellow Ointment,” for which no patent had been taken out, and the plaintiff, after his father's death, continued to sell the same, and the defendant sold the medicine with the same mark; lord Mansfield said, “If the defendant had sold a medicine of his own under the plaintiff's name or mark, there would be a fraud for which an action would lie; but here both plaintiff and defendant use the name of the original inventor, and no evidence was given of the defendant's having sold it as if prepared by the plaintiff." The mere fact of the plaintiff’s father having been the inventor and vendor of this medicine gave no right to the son to claim any property in the medicine or the mark, and the only ground upon which such an action could be maintained would be the fact, that the defendant sold it as if prepared by the plaintiff. In fact, this is the ground in all questions of this nature. It appears from the concluding part of lord Mansfield's judgment, though it is not stated in the body of the case, that there was no patent, nor were there any letters of administration, —thus implying, that, under these circumstances, the plaintiff had acquired no better right to the medicine and the mark than the defendant. They were both using a mark and selling a medicine which belonged as much to one as the other; but if either had attempted to sell the medicine with such marks and in such a manner as to lead the purchasers to imagine it was prepared by the other of them, then an action would lie. A similar doctrine was held also in another case, — where the plaintiff, whose name was Sykes, marked his shot-belts with the words “Sykes's Patent,” and it appeared that the plaintiff had taken out a patent which had been held invalid on the ground of a defect in the specification. The defendant's name was also Sykes; and it was proved that he marked his shot-belts in a similar manner, and that mistakes were made among the retail dealers, though not among the wholesale dealers, whom alone the defendant

* Blanchard v. Hill, 2 Atk. 484.

* 3 Myl. & Cr. 1.

* Singleton v. Bolton, 3 Doug. 293.

supplied. The question then left to the jury was, “whether the defendant adopted the mark in question for the purpose of inducing the public to suppose that the articles were not manufactured by him, but by the plaintiff.'” A verdict was found for the plaintiff, which was afterwards held good by the whole court. Here we see, that although the plaintiff had no property whatever in the invention, and although every other person was entitled to vend it, yet that the attempt to sell it as if manufactured by the plaintiff was actionable. This distinction must be borne in mind. It appears also that the mere attempt is sufficient to maintain the action, and no special damage need be proved.” These appear to be the principal cases at law on this subject, and the court of chancery, on questions of this nature, acts upon the same principles; though, unless the case be very strong indeed, it never precludes the right from bebeing tried at law, if the defendant desire it.” A court of equity, nevertheless, will not recognise any property in a particular invention which is not the subject of letters patent, and will grant no assistance to a party claiming such right as the inventor or manufacturer. Thus, where J. S. was for many years proprietor of a preparation called “Welno's Vegetable Syrup,” which he had purchased for a large sum of money, and bequeathed to the plaintiffs, and the defendant, who was a discharged servant of the plaintiffs, advertised and sold a medicine under the same name, and which he stated to be the same in composition and quality as the plaintiffs', the bill appears to have proceeded solely on the ground that the plaintiffs had the sole property in the medicine; and on demurrer, the vice-chancellor, sir John Leach, held that, under these circumstances, the plaintiffs had no monopoly in the medicine; and he went on to say, “the violation of right here does not fall within the cases in which the court has restrained a fraudulent attempt by one man to invade another's property; to appropriate the benefit of a valuable interest in the nature of good-will, consisting in the character of his trade or production established by individual merit, — the other representing himself to be the same person, and his trade or production the same, as in Hogg v. Kirby.' He here sells not the same medicine, but a medicine of the same kind, of as good quality, and this he has a perfect right to do.” “ Unless this were so, every inventor would gain a monopoly in his production, which might last without limitation as to him, and be in reality superior to a patent. Every invention, unless protected by patent, according to the policy of the laws of this kingdom, is, therefore, open to be used and taken advantage of by the public at large; the only restraint being — that no one shall represent that which he sells or manufactures to be the same article as that sold or manufactured by another, and this restraint appears from the above principles to be equally applicable to all parties, and not for the benefit of the first inventor or manufacturer. The placing of any particular mark or device upon any article for sale, by a trader, amounts in fact to the same thing as placing that trader's name upon it; and to do so fraudulently is, in effect, writing one man's name upon another man's goods. In Blofield v. Payne,'a manufacturer of metallic hones maintained an action against another manufacturer of the same article, who had imitated his envelopes; and in Day v. Day, mentioned in Eden on Injunctions, p. 314, a manufacturer of blacking was restrained from imitating those employed by the plaintiff. Where, however, A, the inventor of a

* Sykes v. Sykes, 3 B. & C. 541. * Blofield v. Payne, 4 B. & Ad.410. * Motley v. Downham, 3 M. & C. 1.

* 8 Wes. 215. This case was a question of copyright relating to the right to carry on a Magazine published periodically.

* Canham v. Jones, 2 Wes. & B. 218. * 4 Bar. & Ad. 410. WOL, XXW.-NO, L. 18

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