Trade-marks. A trade-mark is the name or mark under which any one trades. It is a mode of connecting certain goods in the mind of the public with a particular manufacturer or seller; and its function is to give to a purchaser a satisfactory assurance of the make and quality of the article he is buying. A trade-mark is the property of the person legally adopting it, and he has a right—antecedent to and independent of the various trade-mark acts—to prevent any one else from using it to his prejudice.
Water-marks on paper, dating from the 14th century, are among the oldest trade-marks. Trade-marks appear to have become a prominent feature in the industrial life of England in the early part of the 18th century. The law relating to them has pursued the following course of development. (1) At first no right of property in a trade-mark was recognised, and only the actual, fraudulent, and injurious use by one person of the mark of another was restrained and punished. This rule, which originally prevailed both at common law and in equity, was inspired by the old judicial dislike of patent privileges and the failure to see the essential difference between a patent and a trade-mark. (2) In 1838, however, in the case of Millington v. Fox (3 My. and Cr. 338) Lord Chancellor Cottenham granted a perpetual injunction against the defendant, although no intentional fraud was established. Since that time the Court of Chancery has uniformly interfered to prevent the infringement of trade-marks on the principle of protecting property alone, and it has not been necessary for the plaintiff to prove that the defendant invaded his rights intentionally. (3) The Courts of Common Law did not imitate the wise liberality of the Court of Chancery, and down to 1873 proof of fraud on the part of an infringer was of the essence of a common-law action for damages. The Judicature Act of 1873 provided, however, that in any conflict between the rules of law and of equity the latter should thenceforth prevail; and if actions of infringement were still tried in the Queen's Bench Division, there can be little doubt that the equitable rule would be applied, and proof of fraud dispensed with. (4) But under the judicature acts and the rules of the supreme court trade-mark cases are brought in the Chancery division, so that the former variance between the Courts of Common Law and the Court of Chancery has now only a historic interest and importance. The owner of a trade-mark that is being infringed usually applies for an interlocutory injunction to restrain the immediate infringement, and at the same time brings an action in which he claims (a) a perpetual injunction, and (b) an account of the profits made by the infringer, or damages in lieu thereof. The fraudulent imitator of a trade-mark may be indicted for false pretences, but not for forgery. See, however, Merchandise Marks (infra).
The Registration of Trade-marks.—At common law a trade-mark could be acquired only by actual user; it must have been 'so applied in the market as to indicate to purchasers that the goods to which it was attached were the manufacture of a particular firm.' By the Trade-marks Registration Act, 1875, a Register of Trade-marks was established at the Office of the Commissioner of Patents (now the Patent Office), and it was provided that the registration of a trade-mark should thenceforth be equivalent to public user. This provision is in substance repeated in the Patents Acts, 1883-88, by which the registration of trade-marks is now regulated. The registration of a person as proprietor of a trade-mark is prima facie, and after five years is conclusive, evidence of his right to the exclusive use of the said mark (subject to the provisions of the acts); and no person can institute proceedings for infringement unless the mark alleged to be infringed has been registered, or—in the case of marks in use prior to the Act of 1875—has been declared by the certificate of the Comp- troller-general to be non-registrable. For the purposes of the acts a trade-mark must contain at least one of the following essential particulars: (a) a name of an individual or firm printed, impressed, or woven in some particular and distinctive manner; or (b) a written signature or copy of a written signature of the individual or firm applying for registration thereof as a trade-mark; or (c) a distinctive device, mark, brand, heading, label, or ticket; or (d) an invented word or words; or (e) a word or words having no reference to the character or quality of the goods, and not being a geographical name. There may be added to any one or more of these 'essential particulars' any letters, words, or figures, or combination thereof; but the applicant for registration of any such additional matter must in his application state the essential particulars of his trade-mark and disclaim any right to the exclusive use of the added matter. But a person need not disclaim his own name or the foreign equivalent thereof; and any special and distinctive word or words, letter, figure, or combination thereof used separately and as a trade-mark prior to the Act of 1875 is still registrable. A trade-mark when registered may be assigned and transmitted, but only in connection with the goodwill of the business concerned in the particular goods or classes of goods for which it has been registered, and is determinable with that goodwill. The provisions for the rectification of the Register noticed in the article PATENTS apply mutatis mutandis to trade-marks. The 'International Convention for the Protection of Industrial Property'—the history of which is given in the same article—also extends to trade-marks. Under that convention an applicant for registration of a trade-mark in any one of the contracting states may obtain protection in any of the other contracting states by application there within three or, in the case of countries beyond the seas, four months from the date of the first application. The subsequent application is antedated to the date of the first, and is consequently not defeated as otherwise it might have been by prior user in the protected interval. In the United States there is a good deal of difference between the laws of the various states on this subject.
Merchandise Marks.—Under the Merchandise Marks Acts, 1887-94, which apply to England, Scotland, and Ireland, every person that (a) forges, (b) falsely applies to goods, (c) makes, disposes of, or has in his possession any instrument for forging any trade-mark, or (d) applies any false trade description to goods is liable, on conviction on indictment, to a maximum period of two years' imprisonment, and on summary conviction to a maximum term of four months' imprisonment with hard labour, or a fine of £20, for the first offence, and in the case of a second or subsequent offence to a term not exceeding six months with hard labour, or a fine of £50. Any person aggrieved by the decision of a court of summary jurisdiction may appeal to quarter sessions. It is a competent defence to a prosecution under the act that the defendant took all reasonable precautions against committing the offence, and gave on demand by, or on behalf of, the prosecutor all the information in his power, or otherwise acted innocently. The limitation for proceedings under this act is the expiration of the three years next after the commission, or the one year next after the discovery of the alleged offence, whichever shall first happen. A conviction under this act does not relieve the defendant from liability to civil proceedings.
See works by W. H. Browne (2d ed. Boston, 1885), R. S. Mushet (1887), L. B. Sebastian (3d ed. 1890), J. S. Salaman (1891); and Lawson on the Patents, Designs, and Trade Marks Acts (Patent Office Inquiry, 1887).