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case, *

assertion or representation which is false, the Court will What the public looked to was, not the particular not interfere for the protection of such trade-mark. person who made the article, but the manufacture,

The jurisdiction of the Court in the protection of the continuity of the business. The representations trade-marks rests upon property. Fraud on the public contained in the trade-mark were true and accurate is the test of the invasion of the right of property in the at the time of their adoption, and might properly be trade-mark, but is not the ground of the Court's juris- continued, without making an alteration on every diction.

change that took place in the firm. If there were a There is no exclusive ownership of the symbols which continuity of the business, there was no fraud upon the constitute a trade-mark, apart from the use or applica- public, and the successors in business were entitled to tion of them; but the word "trade-markis the desig. the use of the mark, and to be protected in the exclunation of a mark or symbol when applied to a particular sive use of it. All that was asserted by the mark was, tendible commodity, and the exclusive right to make that the goods were the goods of that business, the such use or application is rightly called property. manufacture of that firm, which was originally Crocketts.

The application of the same symbol to another com- It was only the tanned leather cloth which was patented, modity is not an infringement of the right of property in and that was all that the mark asserted; any one the trade-mark.

could see for himself whether or not the cloth was This was an appeal from a decision of Vice-Chan. tanned, and if not tanned it was not represented as

patented. The article sold was in all material cellor Wood, reported 1 H. & M. 271 ; 2 N. R. 481.

features the manufacture of the Crocketts; and even The plaintiffs, as the assignees of The Crockett International Leather Cloth Company, which was formed if there were a verbal inaccuracy, there was no fraud,

when in fact the article was the genuine Crockett's for the purpose of continuing the business of a pre- Leather Cloth manufactured by the plaintiffs as the viously-existing American firm of J. R. & C. P.

successors in business of the Crocketts. Crockett & Co., used a trade mark which had been

[THE LORD CHANCELLOR referred to an American adopted by the International Company, and which was of the following form :- An American eagle,

Partridge v. Menck, How. App. Cas. 599, surmounted by the word “Excelsior” ; beneath the eagle

, the words “Crockett's & Co. Tanned Leather as to the refusal of protection to A. selling goods Cloth. Patented Jan. 24th, '56. J. R. & C. P. under the name of B., the original manufacturer.] Crockett, Manufacturers, 12 yds.” The whole en

Rolt, Q.C., and Fischer, for the defendants, the closed within a circular margin composed of the words

appellants. “Crockett International Leather Cloth Co., Newark, N. J. U. S. & West Ham, Essex, England.” The should be restrained from palming off on the public

Nothing was more legitimate than that persons initials in the periphery denoted New Jersey, United their own goods as being those of another ; but the States.

tendency of recent decisions had been to make the The patent of the 24th January, 1856, was for tanning Court the tool of quacks and empirics, instead of leather cloth; but the trade mark had from its first affording protection to honest traders in the use of adoption been applied to untanned, and therefore

honest trade-marks. It was of primary importance anpatented, goods, as well as to tanned goods; and that the Court should not extend its protection to any the patent had been suffered to expire.

one who, by the assertions contained in his trade-mark, The plaintiffs sought to restrain the defendants from

was deceiving the public by disseminating untruth. using a trade-mark which the plaintiffs regarded as a

The plaintiffs had no such right in Equity to the colourable imitation of that described above : and the trade mark as to entitle them to protection ; there was Vice-Chancellor granted an injunction. See the facts

no such similarity between the plaintiffs' and the deand arguments fully set forth in the reports of the

fendants' marks as would deceive any person using Court below.

ordinary care in a business transaction; and the Sir A. Cairns, Q.C., and Dickenson, for the plain- plaintiffs were disentitled to any relief they might tiffs, referred to

otherwise have been entitled to, by reason of the false Croft v. Day, 7 Beav. 232;

representations contained in their trade-mark. Churton v. Douglas, John. 174 ;

Was the Court prepared so far to ignore the principle, Millington v. Fox, 3 Myl. & Cr. 338;

that one man should not palm off his goods upon the Sykes v. Sykes, 3 B. & C. 541;

public as those of another, as to sanction the sale by a Knott v. Morgan, 2 Keen, 213;

living person of the right to use his name, not as and distinguished the present case from

assignee or successor, but as being the same person ? Hall v, Barrows, 1 N. R. 543 ; [s. c. on appeal, of course executors or administrators might use the ante, 259).

name of a deceased person for the purpose of winding They contended that the plaintiffs were the successors up the business, as in Croft v. Day; but surely a in business of the Crocketts, and as such were entitled living person got all he was entitled to if he received to the use of their name and of their trade-marks. the purchase-money for his business and the good-will thereof, and the purchaser got all he was entitled to if stances ceased to be literally accurate, was sufficient he described himself, not as A. B., but as C. D., the to protect defendants, who were endeavouring to successor of A. B. They subunitted that there was pass off their goods in the market as those of the great good sense in the doctrine enunciated in Part- plaintiffs. ridge v. Menck.

The trade-mark must be taken as a whole ; and so 21 DEC. 1863. taken, it represented that the article to which it was THE LORD CHANCELLOR said. — Upon a review of affixed was a tanned article, a patented article, and the numerous cases which had been decided in that that J. R. and C. P. Crockett were the manufacturers Court on the subject of trade-marks, there appeared to -each of which was a false representation in a material be some uncertainty and want of precision in the particular

language attributed to different Judges, as to the ground As to the argument that any one could see for on which a Court of Equity interfered to protect the himself that the leather cloth was not tanned, and enjoyment of a trade-mark, and also upon the question that therefore no one could be deceived, it was suf- whether the right to use a trade-mark admitted of ficient to observe that, consistently with the specifica- being sold and transferred by one man to another. At tion of the patent, the tanning might be one side only Law the remedy for piracy of a trade-mark was by an of the cloth, and that the side which was subsequently action on the case in the nature of a writ of deceit. covered with the composition which gave it the ap. That remédy was founded upon fraud, and it seemel pearance of leather ; consequently it was not apparent that originally an action was given not only to the trader to a purchaser whether he was buying the tanned or whose mark had been pirated, but also to the buyer in the untanned article.

the market, if he had been induced by fraud to buy Moreover, the statements contained in the plaintiffs' goods of an inferior quality. mark were untrue ab initio, for it was admitted that the

In Equity the right to give relief to the trader whose mark had from the outset been affixed to the untanned trade had been injured by the piracy appeared to have article, i. e. to nine-tenths of their whole manufacture ; been originally assumed by reason of the inadequacy of and since the patent was dated in 1856, after Messrs. the remedy at Law, and the necessity of protecting proCrockett had ceased to carry on their business, and the perty of that description by injunction. But although adoption of the mark was subsequent to the grant of the jurisdiction was now well settled, there was still the patent, the assertion “J. R. and C. P. Crockett, current in several recent cases language which seemed Manufacturers,” was also untrue ab initio.

to him to give an inaccurate statement of the true Lastly, the plaintiff's' patent was for tanned leather-ground on which it rested. In Croft v. Day (7 Bear. 88), cloth ; their trade-mark denoted the tanned and and in Perry v. Truefitt (6 Beav. 73), the late Lord patented leather-cloth, and was confined to that Langdale was reported to have used words which placed specific kind or quality of goods. The defendants' the jurisdiction of the Court to grant relief in cases of mark, on the contrary, denoted leather-cloth generally, the piracy of a trade-mark entirely upon the ground of a totally different thing; and so applying their mark the fraud that was committed when one man sold his to an article different from that to which the plaintiffs own goods as the goods of another; and that learned applied theirs, (even if the marks were precisely iden- Judge was reported to have said—“I own it does not tical) was not an infringement of the plaintiffs' right. seem to me that a man can acquire a property merely They also referred to

in a name or mark ;” and, in like manner, the learned Perry v. Truefitt, 6 Beav. 66 ;

Vice-Chancellor whose decision his Lordship was reviewPidding v. How, 8 Sim. 477 ;

ing, was reported to have said (1 H. & M. 287), “ All Thompson v. Crawshay, 4 M. & Gr. 357.

these cases of trade-marks therefore turn not upon &

question of property, but upon this—whether the act Sir H. Cairns, in reply.

of the defendant is such as to hold out his goods as the Assuming the contention of the defendants, as to the goods of the plaintiff.” But, with great respect, that statements of the plaintiffs' mark, to be valid, still the was not quite an accurate statement. statements were originally introduced bond fide, truth- First, the goods of one man might be sold as the fully, and without fraud ; that being so, there was no goods of another without giving to that other person fraud in continuing to use the mark, although such a right to complain, unless he sustained or was likely statements had, by lapse of time and change of external to sustain from the wrongful act some pecuniary las circumstances, ceased to be literally true. In sub- or damage. Thus in the case of Clark v. Freeman (11 stance there was no statement to the public beyond Beav. 112), the eminent physician, Sir James Clark, ap. this-that the article to which the mark was affixed plied for an injunction to restrain a chemist from pubwas the leather-cloth, the real genuine article, the same lishing and selling a quack medicine under the name article as manufactured by Crocketts. At any rate, of “Sir James Clarke's Consumption Pills ;" but the there was no authority for saying that the continuance Court refused to interfere, because it did not appear by the plaintiffs of statements, originally true and that Sir James Clark had sustained any pecuniary made bona fide, after they have by change of circum- injury.

Secondly, it was not requisite for the exercise of the mode by which such property could be effectually projurisdiction that there should be fraud or imposition tected. The same things were necessary to constitute practised by the defendants at all. The Court would a title to relief in Equity in the case of the infringement grant relief, although the defendant had no intention of the right to a trade-mark, as in the case of the of selling his own goods as the goods of the plaintiff, violation of any other right to property. First, the or of practising any fraud either on the plaintiff or the plaintiff

' must prove that he had an exclusive right to public. If the defendant adopted a mark in ignorance use some particular mark or symbol in connection of the plaintiff's exclusive right to it, and without with some manufacture or vendible commodity ; and, knowing that the symbols or words so adopted and secondly, that that mark or symbol had been adopted used were current as a trade-mark in the market, his or was used by the defendant so as to prejudice act, though innocently done, would be a sufficient the plaintiff's custom and injure him in his trade or ground for the interference of the Court, as was plain business. But when the owner of a trade-mark applied from the decision of Lord Cottenham in the case of for an injunction to restrain the defendant from Millington v. Fox, to which his Lordship entirely injuring his property by making false representations assented, and from the learned Vice-Chancellor's own to the public, it was essential that the plaintiff should opinion in the case of Welch v. Knott (4 K. & J. 747). not, in his trade-mark, or in the business connected Imposition upon the public, occasioned by one man with it, be himself guilty of any false or misleading selling his goods as the goods of another, could not be representatation ; for if the plaintiff made any matethe ground of private action or suit. In the language rial false statement in connection with the property of Lord Thurlow in Webster v. Webster (3 Sw. 490 n), which he sought to protect, he lost, and very justly, frand upon the public was no ground for the plaintiff his right to claim the assistance of a Court of Equity. resorting to a Court of Equity. It was indeed true, The question then arose, What amounts to a mathat unless the mark used by the defendant were terial false representation ? Supposing that a partnerapplied by him to goods of the same kind as the goods ship had been formed a century ago under a style or firm of the plaintiff, and were in itself such that it might composed of the names of the then partners, and that be, and was, mistaken in the market for the trade- the business had been continued by the admission mark of the plaintiff, Equity would not interfere, of new partners in an unbroken series of successive because there was no invasion of the plaintiff's right; partnerships trading under the same original style, and thus the mistake of the buyers in the market, although the names of the present partners were under which they in fact took the defendant's goods wholly different from those in the original firin, was as the goods of the plaintiff, that is to say, imposition it an imposition on the public that such persons should on the public, became the test of the property in continue to use the style or name of the original that trade-mark having been invaded and injured, partnership ? That question must be answered withbut was not the ground on which the Court rested its out any doubt in the negative : for it was competent jurisdiction.

by the law of England to a partnership to adopt any The representation which the defendant was supposed style or firm which did not involve a claim to incorto make, the his goods were the goods of another poration, or the assumption of what belonged to others; person, was not actually made otherwise than by his and the practice of the trading community in that appropriating and using the trade-mark which such respect was so common and general, that no misleading other person had an exclusive right to use in con. of the public could result from it. nection with the sale of some commodity; and if the But suppose an individual, or a firm, to have gained plaintiff had an exclusive right so to use any particular credit for a particular manufacture, and that the goods mark or symbol, it became his property for the pur- were marked or stamped in such a way as to denote that poses of such user, and the act of the defendant was they were made by such person or firin, and that the å violation of such right of property, corresponding stamp had gained currency and credit in the market with the piracy of a copyright, or the infringement of and become of great value, could such person or firm, & patent. His Lordship could not, therefore, assent on ceasing to carry on the business, sell and assign to the dictum that there was no property in a trade the right to use such name and mark to another firm mark. It was correct to say, that there was no carrying on the same business in a different place ? exclusive ownership of the symbols which constituted Suppose that a firm of A. B. & Company had been a trade-mark, apart from the use or application of clothiers in Wiltshire for fifty years, and that broadthem, but the word "trade-mark” was the designation cloth marked thus : "A. B. & Co., makers, Wilts,” of a mark or symbol when applied to a vendible com- had obtained a great reputation in the market, and that modity, and the exclusive right to make such user or A. B. & Co., on discontinuing business, sold and transapplication was rightly called property. The true ferred the right to use their name and mark to a firm principle, therefore, would seem to be, that the juris- of C. D. & Co., who were clothiers in Yorkshire, diction of the Court in the protection given to trade would the latter be protected by a Court of Equity in marks rested upon property, and that the Court their claim to the exclusive right to use the name interfered by injunction because that was the only and mark of A. B. & Co.? His Lordship was of opinion that no such protection could be given. It purpose of the present decision, that there was su was true that the name or the style of the firm much designed similarity as would induce the Court to might by long usage become) a mere trade-mark, grant an injunction if the plaintiffs' title were free and cease to convey any representation as to the from objection. maker or the place of manufacture ; but where any The Vice-Chancellor's words as reported (1 H. & symbol or label claimed as a trade-mark was so con. M. 289) were :-“I hold that the plaintiffs, having structed or worded as to make or contain a distinct purchased the business, are perfectly entitled to use assertion which was false, he thought no property the trade-mark formerly used by their vendors." could be claimed in it; or, in other words, the right Now the plaintiffs' label or trade-mark contained to the exclusive use of it could not be protected. The the following assertions or representations :-first, that sale of an article stamped with a false statement was the articles so stamped were the goods of the Crockett pro tanto an imposition upon the public; and therefore, International Leather-Cloth Company ; secondly, that in the case supposed, the plaintiff and the defendant they had been made or manufactured by J. R. &C. P. would be both in pari delicto, and relief would be Crockett; thirdly, that they were tanned leather-cloth; refused to the plaintiff, which was consistent with and, fourthly, that the articles were patented by the many decided cases.

patent obtained in January, 1856. Each of thosa Further, property in a trade-mark was, as had statements or representations was untrue, when already been observed, the right to the exclusive use of applied to the goods made and sold by the plaintifs. some mark, name, or symbol in connection with a Of those several untrue statements the most material particular manufacture, or vendible commodity ; con- were the false representations made by the plaintif' sequently, the use of the same mark in connection trade-mark that every piece of cloth so stamped with a different article was not an infringement of was tanned and was included in the patent of such right of property. If, therefore, the trade-mark January, 1856, which was a patent for tanning leather included in itself a clear and distinct description of the cloth ; whereas it was clear upon the evidence, that commodity to which it was affixed, it was not pirated the goods made and sold by the plaintiffs were not by the use of a mark, which, although in other re- tanned unless specially ordered to be so, and that, spects similar, did not contain or give the same to the great bulk of the plaintiffs manufacture, the description, and which was impressed upon an article words “tanned" and "patented” were unduly applied. which was not of the nature or quality so described. The Vice-Chancellor was reported to have said on this Those conclusions seemed to follow immediately from point, “ It seems to me that everybody who takes up an the principle to which a plaintiff seeking protection article of this kind knows whether it is tanned or not. for a trade-mark appealed. He desired to restrain the Therefore, when it said 'tanned leather-cloth patented defendant from selling his own goods as the goods of it cannot be made to represent that it is tanned." If another

person, but if, by the use of the trade-mark in those were the words of the Vice-Chancellor, his Honour question, the plaintiff himself was representing and meant to say that any buyer of ordinary discernment selling his goods as the goods of another, or if his would perceive that the cloth was not tanned, and, theretrade-mark gave a false description of the article, he fore, would not be deceived by the statement that it was violating the rule upon which he sought relief was. That was not, however, the fact; for the tanning against the defendant.

might have been applied on that side only which was Those observations seemed to apply to the case before covered by the composition. But he could not concede, the Court. The plaintiffs, from the date of their pur- as a rule either of morality or equity, that the plaintiffs chase from the International Leather-Cloth Company, were not answerable for a falsehood, because it might had carried on, and still carried on, near London, the be so gross and palpable that no one was likely to manufacture of leather-cloth, according to the process be deceived by it. If there were a wilfully false stateoriginally introduced by Crockett & Co.; and they had ment, he would not stop to inquire whether it was too constantly stamped on their goods of the first quality gross to mislead. the trade-mark previously adopted by the International The Vice-Chancellor put the case of Morrison's Company, and the right of user of which was assigned Pills, and concluded that the present manufacturers of by that company to the plaintiffs. In August, 1861, that medicine, though not bearing the name of Morri the defendants were incorporated for the purpose son, would be protected in the exclusive use of the of carrying on the manufacture and sale of leather appellation ; and rightly so; because the words "Mor cloth ; and they had used as a trade-mark, on goods rison’s Pills" had become the name of the thing sold, niade by them of the first quality, a stamp or label in the same manner as “James's Powder" was the name which certainly appeared to have been formed upon the of a celebrated medicine invented by Dr. James nearly model of the plaintiffs' trade-mark. They did not a century ago, and just as the words Mackintosh, make use of the word “ patented,” nor did they Brougham, and Wellington were the designations of call their leather-cloth “tanned.” But it was un- different articles. So, in the present case, the article necessary to pursue the inquiry as to difference or made or sold by the plaintiffs might be properly called identity, for his Lordship would assume, for the and sold by them as “Crockett's leather-cloth," for


that had become the proper designation of the manu- the Court must, nevertheless, be satisfied before granting facture.

an order of discharge, that the bankrupt has, either in The Vice-Chancellor was apprehensive that, if he Court or out of Court, rendered full and sufficient refused the plaintiffs relief, he must hold that where accounts. the name of a deceased partner was continued in the firm by his surviving partners, they would be

This was an appeal from a decision of his Honour guilty of a fraud upon the public.

Mr. Commissioner Perry, at Liverpool.

To continue the old style of a firm was a very different thing

In August, 1863, James Wilson and Walter Slater from making false representations with respect to

were jointly adjudicated bankrupts, and William Jones a rendible commodity in order to give it greater and four others, the appellants, were subsequently apvalue, and to create a greater demand for it in the pointed assignees. market. The plaintiffs imposed upon the public by

At an adjourned meeting of the creditors, held in selling goods, which were in reality made by them- pursuance of the Bankruptcy Act, 1861, section 110, selves, as being the goods of the Crockett International it was resolved, that the proceedings in bankruptcy Leather-Cloth Company, and as having been manufac. should be suspended, and the estate wound up under tured by Messrs. Crockett, who were the original in

a trust deed, the draft of which was then produced.

It conventors and manufacturers; and, further, they described Such deed was accordingly duly executed. their untanned goods as being tanned, and protected by stituted the assignees of the estate trustees of the the patent of January, 1856. Their request was to be estate of the bankrupts

, and made provision for the protected and, therefore, justified in continuing to administration of the same, but did not release the make those untrue statements to the public in order bankrupts from their liabilities. to secure a monopoly for their commodity. Thero

After the deed had been executed, the bankrupts

The trustees, being was a hornely phrase long current in this court, that applied for their discharge. a plaintiff must come into Equity with clear hands ;

dissatisfied with the accounts which the bankrupts that was not so with the present plaintiffs, whose had rendered, appeared for the purpose of opposing case was condemned by the principles to which they this application, and the Commissioner having decided

that they had not, either as assignees under the bank. His Lordship, therefore, with great respect, but ruptcy, nor as trustees under the deed, any locus standi, without hesitation, must reverse the decree of the they claimed to be heard as creditors of the estate. Vice-Chancellor, and dismiss the bill of the plaintiffs

. They were thereupon required to disclose the nature But

, as he did not approve of the conduct of the of the objection which they proposed to make, and defendants, he would dismiss it without costs.

their solicitor accordingly stated that they intended to

oppose the granting of the discharge on the ground Note. * – The case of Partridge v. Menck is referred that the bankrupts had, with intent to conceal the to as follows in Law's “Digest of American Cases true state of their affairs, wilfully omitted to keep relating to Patents for Inventions and Copyrights, and proper books of account. To this it was objected, on embracing also the American Cases in respect of Trade behalf of the bankrupts, that this offence, if commarks " (New York, 1862), p. 688 :

mitted, was an offence against the general body of "But where a person manufactures and sells an creditors, and not against any individual creditors in article under the name of the original manufacturer, particular, and that, therefore, the appellants could although he may have purchased of such one the secret not be heard in support of the objection. of his manner of preparing the article, and also the This objection was allowed by the Commissioner, right to use his name, he is not entitled to be pro- and no further opposition being made, the banktected."— Partridge v. Menck, How. App. Cas. 559, rupts obtained orders of discharge without having 561.–Per GARDINER, Senator.

passed their last examination, and without having “The privilege of deceiving the public for their own made, as alleged, a full discovery of their estate and benefit is not a legitimate subject of commerce, and affairs. therefore it makes no difference that complainant has purchased the right to use the name of the first pro

Bacon, Q.C., and North, for the trustees, the apprietor. A party asking Equity must come with clean pellants, contended, that even if the first two objechands."-Ib. 561.

tions were tenable, the third ought to have been

disallowed. They cited, Lord Chancellor. | Re Wilson and SLATER

The Bankruptcy Act, 1861, sects. 110, 158, 159, }

and also, as being in pari materia, sections 185–189; Ex parte JONES.

General Orders in Bankruptcy, 17 & 18. Bankruptcy Act, 1861, Section 110—Suspension

Daniel, Q.C., and De Gex for Slater. of ProceedingsBankrupt's Accounts. Where proceedings in bankruptcy are suspended,

Litlle, for Wilson. under the 110th section of the Bankruptcy Act, 1861, No reply was called for.

19 Dec. 1863.

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