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torts:trade-mark-property-mark

Passing Off: Trade-mark and Property-mark

A trade mark is some symbol, consisting in general of a picture, label, word, or words, which is applied or attached to a trader's goods so as to distinguish them from the similar goods of other traders, and to identify them as his goods, or as those of his successors in the business in which they are produced or put forward for sale.1) To constitute a mark a trade-mark, it must have been adopted as a symbol devised to distinguish a particular class of goods as the goods of that class manufactured or selected by a particular manufacturer or merchant.2)

A mark used for denoting that goods are the manufacture or merchandise of a particular person is called a trade-mark3); and a mark used for denoting that movable property belongs to a particular person is called a property mark.4) The distinction between a trade-mark and a property-mark is, that the former denotes the manufacture or quality of the goods to which it is attached, and the latter denotes the ownership of them; or more briefly, the former concerns the goods themselves, the latter the proprietor of them.

When one knowing that goods are not made by a particular trader sells them as and for the goods of that trader, he does that which injures that trader.5) No man is entitled to represent his goods as being the goods of another man; and no man is permitted to use any mark, sign or symbol, device or means, whereby without making a direct false representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to some body else who is the ultimate customer. The right of exclusive user of a name is not an absolute and unqualified right which would entitle the owner to prevent another person from using it under all circumstances. It is only when the use of the name deceives or is reasonably likely to deceive the public that it can be interfered with or prevented. The same limitation must apply to the right of exclusive user of a number. To constitute an infringement it is not enough to show a mere possibility of deception. There must be a reasonable probability of purchasers being deceived.6)

Trade-marks have been divided into two classes: local, denoting where the goods were manufactured; and personal or those which denote the person who manufactures them7); but to these may be added a third class, which may be called symbolical trade-marks, as, for instance, the figure of a crown, an elephant; a fourth class, when fancy names are used to distinguish the goods8); and there is a fifth class, where the mark may be more or less compounded of all, or some of the other classes.9)

Property in a trade-mark cannot be acquired before the vendible articles bearing the name have actually been put upon the market for the purposes of sale.10)

Importer's trademark

A distinctive mark may be adopted by a person who is not the manufacturer, but the importer of the goods, and he will acquire the property in that mark as indicating that all goods which bear it have been imported by him. The circumstance that he has only imported them into one market does not deprive him of his property in the mark in other markets.11) An importer can only protect a trade-mark representing his own reputation and the advantages accruing therefrom, but not the trade-mark of another, a manufacturer or producer. He is not in the legal sense aggrieved at any use of the trade-mark which belongs not to himself but to the producer. An importer can only protect marks indicating importation by him. If his importation is not indicated by the mark but otherwise, as for instance by the style and name under which he trades as importer, he cannot sue to restrain the use of the marks and can only sue if his trade name and style were deceitfully assumed by a rival.12)

Determination of the right

The right of the proprietor is determined if the mark ceases to be distinctive and becomes publici juris, for instance, by general piracy13); by being used by the proprietor for spurious goods14); by becoming the name of the goods, and so merely descriptive15); or if it is abandoned.16)

Infringement of a trademark

The use of a mark so similar as to lead or be likely to lead purchasers to buy the goods marked therewith under the impression that they are the goods of the original manufacturer whose mark they bear, is an infringement of that mark17), although the marks are so different that any one seeing them side by side will not be misled.18) Actual physical resemblance of the two marks is not to be the sole question for consideration.19) The question is whether there is such a resemblance as was either intended, or is calculated to deceive ordinary persons, so as to induce them to purchase defendant's goods under the supposition that they are goods of the plaintiff; if so, no special damage need be proved.20) The test is the impression likely to be produced on the casual and unwary customer.21) It is enough if one of the designs is an obvious imitation of the other. The eye must be the judge and the questions must be determined by placing the designs side by side and asking whether they are the same or whether the one is an obvious imitation of the other, and differences in detail will not make an obvious imitation the less an infringement.22)

There are three classes of cases in which the Court gives relief:

  1. To those of imitation of the entire trade-marks about which no question could arise.
  2. To imitation so nearly resembling the original as to be colourable though not fraudulently so.23) It is quite possible for a label no part of which is a copy of another label to be a colourable imitation of that other label, and to be so like it in general appearance as to be likely to deceive purchasers.24) What one has to look at, in cases of colourable imitation of trade-marks, is not whether a critical and astute purchaser seeing the two labels side by side would be able to detect the difference, but whether the distinctive and characteristic symbol is the same in both cases so that one is likely to be taken for the other. It is immaterial whether there are slight differences which could be detected on a close scrutiny. Trade-marks appeal for the most part to the illiterate classes who are unable read or would be unlikely to spell out the descriptions round the borders.25)
  3. To a class of cases where the entire original was not very closely copied. If the goods of a manufacturer have, from the mark or device he has used, become known in the market by a particular name, the adoption by a rival trader of any mark which will cause his goods to bear the same name in the market may be as much a violation of the rights of that rival as the actual copy of the device.26) No action or suit in respect of improper use of a trade name or a trade-mark can be maintained unless there is a false representation.27) If the same mark is applied to a different kind of article it is not an infringement.28)

At Common law the question is whether or not the assumption of the mark is or is not calculated to deceive the the public. If it is, then the defendant will be restrained from continuing the use of the mark; for, having learned that it is deceptive in fact, perseverance in its use would become fraudulent in intent. A right to damages would necessitate proof of fraudulent intent before action is brought. According to the statutory right a person can restrain another without reference to the question whether or not the goods are sold under such circumstances as to pass them off as the goods of the plaintiff.29)

In an action for infringement of a trade-mark where the infringement is not an actual copy of the mark, the plaintiff must prove actual deception or probability of deception.30)

For the purposes of a civil remedy, the invasion is none the less, though the false trade-mark is used unwittingly or innocently31), but for criminal liability the invasion must be intentional in the sense of fraudulent; for a use of the same mark, even knowingly, but under an honest belief of a right to use it, would not be criminal.

The plaintiff had adopted, as his trade-mark, the figure of an ox on the frank of which were printed the words “Durham,” the name of the plaintiff being printed above the word “Durham” and the word “Mustard” below. The defendants, who were also mustard manufacturers, used a similar ox, but without the words “Durham” and “Mustard,” but haying the name “Taylor” printed below. Held, that the defendants mark was so similar as to be likely to deceive intending purchasers.32)

Where the inventor of a sauce sold it in wrappers whereon it was called “The Original Reading sauce,” and the defendant brought out a sauce which he called “Chandler's Original Reading sauce,” he was restrained from doing so for the future.33)

If A and B purchase the same article in bulk from the same manufacturer, and A places it on the market in a special wrapper which has become well-known in the trade, B will be restrained from using a similar wrapper.34)

Where a trade-mark of a firm selling condensed milk consisted partly of a figure of a dairy-maid, but the word “Dairy-maid” was not used on the mark, nevertheless people commonly called it the “Dairy-maid” brand, it was held an infringement to sell condensed milk under a trade-mark using the word “Dairy-maid,” but not the figure.35)

The words “Parchment Bank” as applied to a note paper, are descriptive ; so also, the words “Painkiller” have been held merely descriptive of the quality of a patent medicine, and not special and distinctive.36)

In Eno v. Dunn, Lord Herschell said : “If it were proposed so to employ the words 'Fruit Salt' that no reasonable person could suppose that they had reference to the appellant's preparation, such a use would be perfectly unobjectionable. I think it is enough to say that I am not satisfied that there would be no reasonable danger of the public being so deceived.” The word ' Bovril ' as applied to beef extracts is a fancy word. A word is not incapable o£ registration as a trade-mark merely because it is a geographical name if its primary meaning is something different.37)

Indian cases

In a suit brought by the plaintiff to restrain the defendants from using an imitation of the plaintiff's trade-mark, it was held that if the imitation of the plaintiff's marks generally, or the use of the number 2008 in particular, would be calculated to deceive or mislead the public, the defendants ought to be restrained from such use or imitation, and that under the circumstances the use of their marks by the defendants would be calculated to deceive the public into the belief that they are purchasing goods imported by the plaintiffs.38)

Where the defendant adopted a new label, different in some respects from the picture on the plaintiffs' label and with new surroundings to none of which taken separately did the plaintiffs object but they complained that in its general effect the new label was so similar to their trade-mark as to amount to a colourable imitation thereof, and to be likely to deceive purchasers. Held, that the defendants were entitled to an injunction against the defendants. The question in a case of this description is not what would be the effect on brokers or even dealers in Bombay, but how the label would be likely to strike incautious or unwary purchasers, such as are to be found more particularly in the mofussil.39)

The plaintiff, an ink seller, who had not taken out any patent for a specialty in ink sued for and obtained an injunction, against defendant who was also dealing in the same trade from using a colourable imitation of his label, which he claimed to have had registered as his trade-mark in the Trademarks Branch of the Patent Office in London. The defendant's label had an almost identical appearance, but the name of the firm was different and the wording altered. Held, that an injunction ought not to have been granted. The use of a similar label by a person under his own name does not show any design on his part to pass off his article as that of another unless fraud on his part is proved. The colour and size of a label cannot be regarded as a constituent part of a trade-mark.40) No trader importing goods can lawfully adopt a trademark which is calculated to cause his goods to bear in the market the same name as those of a rival trader.41)

Damages

The measure of damages which can be recovered in the case of a pirated trade-mark is not yet settled by authority. It is, however, clear that the plaintiff can recover for the loss of profit which he can prove to have arisen directly from the defendant's wrongful conduct in pirating his trade-mark.

Loss of profits can be caused evidently in two ways:

  1. By diminishing the amount of the goods sold by the plaintiff, by taking away his customers, or ousting him from the usual market, or in some similar way.
  2. By causing the goods actually sold by the plaintiff to be sold at a diminished price.

If the loss of profits can be directly traced to the action of the defendant, there is no reason why he should not be liable for loss caused in the latter way as well as in the former. There would seem to be no difference in principle. In the latter case, the reduction in the price of the goods sold would be the measure of the loss of the plaintiff. If the plaintiff were working at an extremely small profit, such reduction in price would cause him not loss of profit, but actual loss out of pocket. Here, again, there is no distinction, in principle, between the two classes of loss.42)

It has been decided that special damage, by loss of custom or otherwise, must be proved, where a trade-mark has been used; and it cannot be assumed that the goods sold by the defendant would have been sold by the plaintiff, but for the defendant's unlawful use of his trade-mark.43) But the plaintiff is, at least, entitled to nominal damages even when he has been unable to prove any particular amount of loss. His custom is any how diminished to an undetermined extent by other goods being sold as his, though they may be as good as his and so his reputation may not be hurt; and hence in such a case it would not be wrong to give substantial damages. Compensation may be fixed either by taking an account of such wrongful sales, or by a lump sum as damages. The damages may not be altogether capable of calculation, as the measure may be the loss of sale to the plaintiff, and the injury done to the reputation of his business or merchandise. If the plaintiff be able to prove any general loss of custom, it may be right to consider also the demand for such goods, and the length of time during which defendant has misused the mark, and to give substantial, or where there has been a fraudulent misuse, exemplary damages.

Where the infringement of the plaintiff's trade-mark by the defendants caused a loss of profit to the plaintiffs, not by diminishing the amount of goods sold by the plaintiff or by taking away their customers or ousting them from their usual market, but by causing the goods actually sold by the plaintiffs to be sold at a, diminished price; it was held that the defendants were liable for the loss sustained by the plaintiffs, and that the amount of the reduction in the price of the goods sold was the measure of damages.44)

Injunction

To justify an injunction it is not necessary to adduce instances in which deception has occurred, the law is content with proof of acts likely to deceive.45) A trade-mark in India is a species of property in respect of which an injunction may issue.

A person who uses a label which is a deliberate combination of other registered labels with a view to represent and sell his wares as the wares of others, cannot be allowed to take out an injunction restraining some other person from imitating his label.46)

1)
Leather Cloth Co. v. American Leather Cloth Co.
2) , 11)
Lavergne v. Hooper
3)
IPC section 478
4)
IPC section 479
5) , 21)
Singer Manu. Co. v. Loog
6)
Barlow v. Govindram
7)
Hall v. Barrows
8)
Braham v. Bustard
9)
The Leather Cloth Company v. The American Leather cloth Company
10)
Maxwell v. Hogg
12)
Heiniger v. Droz
13)
Ford v. Foster
14)
Wood v. Lambert
15)
Lenolium Manu. Co. v. Nairn
16)
Monson v. Bochen
17)
Cape v. Evans
18) , 26)
Sexio v. Provezende
19)
Croft v. Day
20)
Rogers v. Navill
22)
John Harper & Co. v. Wright & Butler &. Co.
23)
Millington v. Fox
24) , 39)
Badische v. Manekji
25)
Sassoon v. Damodar
27)
Singer Manu. Co. v. Wilson
28)
Collins v. Brown
29)
Mitchell v. Henry
30)
Lambert v. Goodbody
31)
Graham & Co. v. Kerr Dods
32)
Harrison v. Taylor
33)
Cox v. Chandler
34)
Knott v. Marshall
35)
Anglo Swiss Co. v. Metcalfe
36)
Perry v. Harboard
37)
In re Magnolia Metal Co.
38)
Ralli v. Fleming
40)
Muhammad Ishaq v. Alif Khan
41)
Taylor v. Virasami
42) , 44)
The Manekji Petit Manufacturing Co. Ltd. v. The Mahalaxmi Spinning and Weaving Co. Ltd.
43)
Leather Cloth Company v. Hirschfield
45)
Jay v. Ladler
46)
Abdul v. Mahommedally


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