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Opinion of the Court.
In Cheavin v. Walker, 5 Ch. Div. 850, (1877,) it was held that the trade-mark or label of the defendant, which fully stated that a filter to which it was attached, upon which the patent had expired, was made by him, did not infringe the trade-mark or label of the complainant, who had succeeded to the rights of the original patentee. In the Court of Appeals James, L. J., said (p. 863):
"It is clear that on the expiration of this patent it was open to all the world to manufacture the article which had been patented; that is the consideration which the inventor gives for the patent; the invention becomes then entirely publici juris. The plaintiff, and also the defendants, had a right to tell the world that they were making the article according to the expired patent, and both parties have done this. It is impossible to allow a man to prolong his monopoly by trying to turn a description of the article into a trademark. Whatever is mere description is open to all the world. In the present case the plaintiff's label was nothing more than a description, and he cannot, therefore, have protection for it as a trade-mark.”
Bagalley, L. J., said (p. 865):
"The Vice-Chancellor thought that the words 'Cheavin's patent' were calculated to deceive the public. But 'Cheavin's patent' is a correct description of the principle according to which the article was made, and there follows a distinct statement that it was manufactured by Walker, Brightman & Co. Therefore on this ground also the case made by the plaintiff's claim fails."
In Linoleum Mfg. Co. v. Nairn, 7 Ch. Div. 834, (1878,) where the right to the exclusive use of the word "Linoleum" was asserted, the substance to which the name was attached having been covered by patents which had expired, Fry, J., said (p. 836):
"In the first place, the plaintiffs have alleged, and Mr. Walton has sworn, that having invented a new substance, namely, the solidified or oxidized oil, he gave to it the name of 'Linoleum,' and it does not appear that any other name has ever been given to this substance. It appears that the
Opinion of the Court.
defendants are now minded to make, as it is admitted they may make, that substance. I want to know what they are to call it. That is a question I have asked, but I have received no answer; and for this simple reason, that no answer could be given, except that they must invent a new name. I do not take that to be the law. I think that if Linoleum ' means a substance which may be made by the defendants, the defendants may sell it by the name which that substance bears.
"In my opinion it would be extremely difficult for a person who has been by right of some monopoly the sole manufacturer of a new article, and has given a new name to the new article, meaning that new article and nothing more, to claim that the name is to be attributed to his manufacture alone after his competitors are at liberty to make the same article.”
As the article manufactured by the defendant was clearly marked with the source of manufacture, the case was not one requiring the enforcement of the duty to designate the origin of the manufacture, but the court also said (p. 837):
"If I found they were attempting to use that name in connection with other parts of the trade-mark, so as to make it appear that the oxidized oil made by the defendants was made by the plaintiffs, of course the case would be entirely different.
"It appears to me, therefore, that there has been neither infringement of any essential part of the plaintiffs' trade-mark nor any attempt on the part of the defendants to represent the goods which they intended to sell as goods made by the plaintiffs." (p. 838.)
Nor is there anything in the Scotch case of the Singer Mfg. Co. v. Kimball & Morton, 11 Ct. Sess. 3d s. 267, or the English cases of Singer Machine Manufacturers v. Wilson, 3 App. Cas. 376; 2 Ch. Div. 434; and Singer Mfg. Co. v. Loog, 8 App. Cas. 15, and 18 Ch. Div. 395; which in any way contravenes the doctrines heretofore stated. In the Kimball case, the fact that there had been no patents in England was expressly referred to, the court finding that for many years prior to 1870 machines like Singer machines had been manu
Opinion of the Court.
factured under various names in England and Scotland by other parties than the Singer Company. It was upon these facts that the court based the right of the Singer Company to an exclusive trade-mark in the name. Indeed, Lord Ardmillon (p. 276) expressly declared that he regarded the facts, above stated, as distinguishing the case from the Shakespear case, supra.
This distinction is also true of Singer Mfg. Co. v. Wilson, and Singer Mfg. Co. v. Loog. In neither was there a claim of a generic description as a consequence of a monopoly, and it becomes, therefore, needless to review these cases at length. It may, however, be said that both these cases recognize the right of a party in his advertising matter to state that his machines were constructed upon the Singer system or model.
The contention advanced by the complainant that his right to the exclusive use in the name "Singer," after the expiration of the patents, although that name became the generic description of the machines during the monopoly, is in accord with the law of France, is without foundation. On the contrary, the French writers and courts recognize the doctrine to be substantially like that which is enforced in America and England. Braun, Marques de Fabrique, sec. 68, p. 232,
"The question is not whether an inventor can attribute to his patented invention a particular designation which remains the exclusive property of the patentee by the same title and for as long a time as the invention itself. This is evident, for without this right existing in the patentee his patent would be in certain respects illusory. But at the expiration of the patent does the designation fall into the public domain with the patented invention? Does the patented thing lose the right to be solely individualized in favor of the inventor by the designation which up to that time has served as its mark. Three theories present themselves."
After fully stating these three different points of view the author adds:
"To resume, the three systems may be formulated as follows: 1st. The designation of the thing patented becomes
Opinion of the Court.
public property on the expiration of the patent. 2d. The patentee retains in every case the sole use to the designation, after the expiration of his monopoly, if he had deposited the name" (as a legal trade-mark) "before the expiration of the patent. 3d. The designation continues to belong to the patentee in every case but one, if the name given to the product has become the only and necessary designation of the patented article. We think there can be no hesitation in pronouncing in favor of the third proposition, except, however, that it requires to be completed by a second exception, which is that the name is also public property if in the interval which has elapsed between the expiration of the patent and the deposit of the trade-mark the inventor has allowed the designation to become public property."
Pouillet, Brevets d'Invention, Nos. 327, 328, pp. 278, 279, reviews the opinions of the commentators and the decisions of the courts as follows:
"The expiration of a patent has for its natural effect to permit every one to make and sell the object patented; and it has also for effect to authorize every one to sell it by the designation given it by the inventor, but upon the condition in every case not, in so doing, to carry on unfair competition in business" (Concurrence De Loyal) "against him. Without this, say Pecard & Olin, the monopoly would be indefinitely prolonged, because, in commerce one could not recognize the thing produced by the invention under any other designation than that given during the life of the patent. However, the question is not without difficulty, when the name of the inventor enters into the designation of the product, . . in such case the courts should not allow third persons to employ the name of the inventor, but with extreme caution and by taking the most rigorous measures to prevent a confusion as to the origin of the product, of which it would be very easy to abuse. It has been adjudged conformably to these principles, (Paris, 20th of January, 1844, Trib. comm.; Seine, 22d of December, 1853, Trib. comm.; Seine, 28th of July, 1853.) 1st. That the denomination under which a patented article is designated by the inventor falls into the public domain at
Opinion of the Court.
the same time as the invention, at least when this denomination has been drawn from common language and does not reproduce the name of the inventor himself, nevertheless the right to announce the product under the same denomination affixed to it by the inventor, does not go to the extent of allowing its sale with the plates or stamps or metallic paper, or tickets, or the manner of securing it, or the envelopes or form or color analogous to that used in such a way as to cause appearances of deception. (Nancy, 7th of July, 1854, Verly, Sir., 1855, 2 vol. 581.) 2d. That when an invention falls into the public domain, it enters with the name which the inventor has given it, and he cannot prevent a person from employing this designation; thus, the inventor of the 'harmonium' was not allowed after the expiration of his patent to prevent others from making this instrument and selling it under the name which had been given to it. (Paris, 30th December, 1859, Pattaille, 1859, 414.) 3d. That the patented invention falling into the public domain can be advertised and sold by the designation given to it by the inventor, even when the name of this last person figures therein. If by usage and by the act of the inventor his name has become the necessary element to designate the product, it is essential, however, that the competitors of the inventor avoid all confusion which can induce the public into error as to the origin of the products." (Cassation, 31st of January, 1860, Charpentier.)
The same author again says:
"In principle, a surname is inalienable and each one keeps the imprescriptible ownership in it. We know, however, that when the name of the inventor has become the designation of the thing patented, it belongs to every one, at the expiration of the patent, to make use of this designation." (Pouillet, Brevets d'Invention, sec. 329, p. 280.)
The French decision mainly relied on, by the plaintiff in error, is that relating to the use of the surname Bully in a toilet preparation known as the "Vinegar of Bully," but the facts upon which the case was decided are misapprehended. In that case the sole question was whether the surname "Bully" had been either expressly or tacitly dedicated, by