Title in unregis

mark.

acquired in two ways, namely, by registration under the tered trade Act, and also independently of the Act, i.e., without registration. With respect to the latter contention, if an article has been placed in the market, in connection with a particular symbol which has become so well known as to lead the public dealing in the article to connect the symbol with that particular article, and if, moreover, the goods so marked have acquired such a reputation as to lead people to ask for them with the mark affixed, then, provided such mark is not copied from another already used in the trade, and is not itself calculated to deceive the public, it is further submitted that the proprietor of the mark is just as much entitled to it as he would be to any other description of property; and if this is so, he might commence proceedings to prevent or to recover damages for the infringement of his mark at any time, the only essential being that he should before action have registered it (if capable of registration) under the Act (see sect. 77; Wheeler v. Johnston, 3 Ir. Rep. Ch. Div. 284).

CHAPTER X.

ON THE INFRINGEMENT OF TRADE MARKS.

In every question involving a suspicion of infringement, Title of the plaintiff. reference is, in the first instance, made to the title of the plaintiff, for if he has no exclusive right either by himself or jointly with others-the defendant not being one of them to that which he has been deprived of, his action will necessarily fail.

Thus where three persons entered into an arrangement for the manufacture, exportation, and sale of certain goods, to bear a distinctive device or mark, it was held that this in reality gave a character to the goods in the export of which the several parties were interested, and that the particular design contained something which represented the interest, more or less, which each of the three several parties had in the goods so exported. So long as the purpose for which the mark was invented continued, such mark was joint property, and when the parties ceased to carry on the particular adventure it could not be said that any of them had an exclusive right to it (Robinson v. Finlay; Ward v. Robinson, L. R. 9 Ch. D. 487).

So also, where the inventor of a new substance gave to it a name and took out a patent for his invention, this did not in itself entitle him to the exclusive use of that name after the expiration of the patent (Linoleum Manufacturing Co. v. Nairn, L. R. 7 Ch. D. 834).

Where a trade mark was registered in the sole name of one of the members of a partnership firm, it was decided

Trade

mark consisting of

a name.

that on the death of the registered proprietor, the proper method was for the surviving members of the partnership to take an assignment from the personal representatives of the deceased partner (Re Farina, 44 L. T. Rep. (N. S.) 99 (note)); during the lifetime of such partner, however, an application might have been made to the court for the rectification of the register, by cancelling the name of the registered proprietor and registering the names of all the partners trading under the style of the firm (Re Rust, 44 L. T. Rep. (N. S.) 98 (note)). This, however, cannot be done when the registration is the result of the wrongful act of the party registered, and in this case the only remedy is to apply to have the entry expunged, and then to make a fresh application for registration (Re Lawrence, ibid. (note) ).

The mere fact of a trade mark having been registered under the Act is no guarantee that such mark is valid, and the defendant may, if so advised, plead that it is bad; that it does not contain the necessary elements. For instance, a trade mark consisting of a name, must indicate the plaintiff more than a multitude of other persons, or no action will lie for the infringement of it (Leather Cloth Co. v. American Leather Cloth Co., 1 Hem. & M. 290, and see Beard v. Turner, 13 L. T. (N. S.) 746) ; and where a name, though not descriptive, does not serve to distinguish the person using it from other persons who use or are entitled to use it, it cannot be the subject of a valid trade mark (Butty v. Hill, 1 Hem. & M. 264 ; 11 W. R. 745); it is otherwise, however, where the class of persons so entitled is necessarily very limited (Dent v. Turpin, 2 J. & H. 139; Hine v. Lurt, 10 Jur. 106; Southorn v. Reynolds, 12 L. T. (N. S.) 75). Every person has of course a right to use his own name, and cannot be restrained from using it by the fact that some other person bearing the same name has previously

used it in connection with the same class of goods (Burgess v. Burgess, 3 De G. M. & G. 896); but where a person is selling goods under a particular name, and another person not having that name is using it, it may be presumed that he so uses it to represent the goods sold by himself as the goods of the person whose name he so uses (ibid.), and this is likewise the ground upon which the courts interfere in all cases of disputes between parties having the same name, for if it can be proved that the defendant is taking advantage of the similarity of names to palm off his goods as the goods of the plaintiff he will be restrained from the use even of his own name (Holloway v. Holloway, 13 Beav. 209; Taylor v. Taylor, 23 L. J. Ch. 255; Dent v. Turpin, 2 J. & H. 139; Schweitzer v. Atkins, 16 W. R. 1080; and see Sykes v. Sykes, 3 B. & C. 541; Foot v. Lea, 13 Ir. Eq. 490). And so the court has restrained persons from using their own names (even apart from a trade mark), in such a manner as to represent their goods to be the goods of another, although that other was only the successor of the original maker and had a different. name (Croft v. Day, 7 Beav. 84; and see Rodgers v. Nowill, 3 De G. M. & G. 614; Churton v. Douglas, Johns. 174). Where the name of the original inventor is the trade mark in question, and that has in process of time become the name of the thing sold, such name will be protected as a trade mark (Leather Cloth Co. v. American Leather Cloth Co., 1 H. & M. 271; 33 L. J. Ch. 199; 11 H. L. Cas. 523; Bury v. Bedford, 32 L. J. Ch. 741; 33 L. J. Ch. 465; but see the remarks of Lord Blackburn in Singer Machine Manufacturers v. Wilson, 3 App. Cas. 400); in an action on the case at Common Law it is submitted that it will be necessary to prove that the commodity in question was sold "as and for" the plaintiff's preparation (Singleton v. Bolton, 3 Doug. 293).

The name selected as a trade mark, need not be the name of the actual manufacturer of the goods to which it is attached, for the mark may in process of time become the property of a person who has purchased the goodwill of the business (46 & 47 Vict. c. 57, s. 70, and refer also to Shipwright v. Clements, 19 W. R. 599; Cotton v. Gillard, 44 L. J. Ch. 90), and whose name may consequently be quite different from that of the original manufacturer.

The mere fact of a name standing alone will not of itself be any objection, nor can such a name be considered as an arbitrary or fancy name, provided that it has or has had connection with that of the manufacturer (Dent v. Turpin, 2 J. & H. 139; Dixon v. Fawcus, 3 Ell. & Ell. 537), or selector (Hirsch v. Jonas, 3 Ch. D. 584); but a name may also be used with any letters, words, or figures, or combination thereof (46 & 17 Vict. c. 57, s. 64; and refer also to Collins Co. v. Brown, 3 K. & J. 423; Same v. Cowen, 3 K. & J. 428; Rodgers v. Nowill, 6 Hare, 325); and it is obvious that the presumption of fraud in the event of infringement, would be as proportionately great as the registered device is unusual and peculiar.

Where an unpatented article was manufactured and described by the name applied to it by the original inventor, it was held that such name might be used simpliciter after his death, though not in his lifetime, in those cases where the name had become publici juris, and was the inventor's own name (James v. James, L. R. 13 Eq. 421, and see Massam v. Thorley's Cattle Food Co., L. R. 14 Ch. D. 748). This, however, does not justify the person so using it article other than a genuine one, or in leading the public to suppose that his preparation is the manufacture of the successors in business of the original discoverer, nor

in putting off any