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Index
Introduction
Antiquity
Middle Ages
Pre-Statutory English Experience
Conclusion
HHC:
Index and titling added |
Introduction
The first comprehensive text concerning the law relating to
trademarks defines its subject as “. . . the name, symbol,
figure, letter, form or device, adopted and used, by a
manufacturer, or merchant, in order to designate the goods
that he manufactures, or sells, and distinguish them from
those manufactured or sold by another; to the end that they
may be known in the market, as his, and thus enable him to
secure such profits as result from a reputation for superior
skill, industry or enterprise.” [1] Most studies concerning
the use of trademarks state that the recognition thereof
begins with the dictum concerning the infringement of a
clothier’s mark during the reign of Elizabeth I, uttered by
King’s Bench judge Dodderidge in Southern v. How. [2] Upton
goes so far as to report that “property in trade marks,
exclusive and absolute, has existed and been recognized…
from the earliest days of our recorded jurisprudence.” [3]
But that is merely a scratch upon the surface of trademark
history; few human institutions can boast a more respectable
antiquity. Trademark usage dates from the times of our very
earliest recorded knowledge.
This paper will attempt to examine (1) the use of trademarks
or their functional equivalents in ancient times, (2) the
vast amounts of Middle Age guild and municipal legislation
dealing with trademarks and the penalties exacted for their
infringement, and (3) the origins and development of modern
trademark jurisprudence in both common law and Chancery
courts up until the last quarter of the nineteenth century
when the Anglo-American legal system promulgated statutes
regulating the judicial protection of trademarks, the
spirit, if not the letter, of such enactments serving as the
basis upon which the law today is discerned.
The need for trademarks is a product of man’s complex
commercial society. [4] In a world which traded
face-to-face, the
* Student at
the Wharton School, University of Pennsylvania.
551
purchaser of a commodity dealt directly with the producer,
and a trademark was not used because it was not necessary
for the continuation of successful commerce. The satisfied
purchaser would simply return to the same market place and
trade with the same individual to purchase again the article
desired; the locality of the trading place became the
essential means of identification and the seat of good will.
However, as soon as a particular maker, by the excellence
of his manufacture acquired a reputation outside of his
immediate locality, in order to visualize and perpetuate
that reputation he adopted and used a mark to distinguish
his product from others. This maintained the identity of
the manufacturer’s product through the hands of the
middleman. [5] If the market is extensive and the goods are
sold generally, a means of product/producer identification
to the ultimate purchaser is essential; unless the quality
of the product is good, no producer will care to identify it
as his. This functional aspect is the essence of the above
definition of trademark. As stated precisely by Lord
Justice James, “No man is entitled to represent his goods as
being the goods of another man.” [6]
Thus the importance of any industry and the quality of the
goods it produces can accurately be gauged by the extent to
which trademarks are affixed to the goods which that
industry manufactures. Our examination must therefore begin
with the first of man’s goods which enjoyed extensive
markets, the pottery of antiquity.
Antiquity
Techniques necessary for the manufacture of pottery were
perfected about five thousand years ago; the earliest
pottery of discernable origin was produced during the reign
of Chinese Emperor Hoang-To, approximately 2700 B.C., some
twelve centuries before the introduction of ceramics to
Europe. [7] These Chinese pots exhibit two types of marks:
the name of the period’s Emperor and/or the name of the
maker or place of origin. It was probably the Hindus who
were responsible for the beginnings of European pottery;
substantial commerce between the subcontinent and Asia Minor
between 1200-1300 B.C. has been demonstrated by the many
emblems affixed to Hindu merchandise found throughout the
eastern Mediterranean region. These marks were often simple
picture symbols of the craft, rather than personal or
imperial designations.
Excavations of temples at Nineveh and throughout Egypt have
produced common building bricks bearing names which are
reported to be those of the manufacturers. These name-marks
552
were often accompanied by intricate pictures which are
supposedly designatory of the brick’s maker. [8]
Nebuchadnezzar had his name stamped on every brick of his
palace. [9] It has been suggested that during this period
bricks were best for use in construction only after they had
dried for some two to five years, and that they could not be
used in a building until after the age of the brick had been
attested to by a local magistrate who marked them with his
seal of approval. [10]
Greek pottery commonly displays pictures representing the
adventures of classical heroes, but there also appears a
mark on the base of the pots believed to signify the origin
of the product. Few examples of Grecian sculpture lack the
inscription of the sculptor’s name. On decorated pieces,
the name of the decorator is also included. [11] Kohler
reports that beside the maker’s name, cup handles for the
use at the Ceramicus of Athens often displayed abstract
trademarks in the form of figures of Mercury’s staffs, oil
jugs, bees and lions’s heads. [12] The Bible presents
several instances of trademark use. [13] During Solomon’s
reign, the Temple and other structures were constructed by
Phoenician skilled builders; the quarry mechanics who
prepared the stone for these projects painted unique signs
of origin on the stone blocks in vermillion paint to prove
their claim to wages.
Roman products were also marked with various inscriptions.
Italian stonecutters’ marks are displayed on the ancient
Roman city walls, on the buildings of the Palatine, and on
the walls of Pompeii. However, marked stone was used
especially in the more ordinary constructions. They are not
found on the materials of the more pretentious and artistic
buildings such as the Colosseum, the Forum or the gates and
bridges of Rome. [14] During the Roman Republic pottery was
often marked with the date of the manufacture alone,
sometimes including the initials or name of the period’s
consul or the product’s maker. The Empire saw the extension
of mark usage on ceramics to include the name of the owners
of estates where the kilns were located, the owners or
lessees of factories, and the freedmen or slaves in charge
of the production. It has been suggested that these
trademarks indicate a governmental regulation whereby faulty
workmanship might be punished and the source of
responsibility for inferior goods absolutely established.
[15] Roman lamps bear numerous inscriptions: simple
trademarks; the name of maker or place where made; date of
manufacture; dedication to deities; acclamations used at
public games and events; or just plain facts. The
fabrication of these
553
lamps has been attributed to slave manufacture as indicated
by the presence of only one name. These slaves’ names
generally occur in the genitive, the word officina
(workshop or factory) being understood. One rare piece is
inscribed “Diogenes fecit” and several finds exhibit
the abbreviation f. (for “fecit”; “he made”) after
the slave’s name. [16] Compilations include over six
thousand different identification seals and designs used on
Roman ceramics. These marks were also employed for
advertising purposes. Fortis oil-burning lamps, which
appear to have been very popular during the fifth century in
Rome, bear such inscriptions as VTERE (“use this”)
and EME (“Buy me”). [17]
Roman mark usage was not, however, confined to pottery and
stone. Trademarks have been found on lead pipe, marble,
glassware, bronze instruments, gold and silverware, knives
and other iron articles, and gems. [18] The bread of Pompeii
was stamped with designating seals. Attesting to the
trade-locale extension theory of trademark importance as
propounded earlier in this paper are the customs of the
Roman oculists. As the market for their eye salves
penetrated the entire known world, the oculists often
stamped the dry salve cakes with the name of the physician,
the formula of the substance and the directions for proper
use. They placed similar labels upon the earthen vessels
containing liquid medications. The famous cheeses of
Etruscan Luna were marked with a picture of that city.
Perhaps the most important commodity to the ancient Romans,
wine, was subject to extensive trademark use, the jugs often
describing the origin of the grapes, the manufacturer of the
wine, and the date of the wine’s pressing. [19] The Roman
citizen was well acquainted with signs for inns and shops.
The famous sign of the Elephant Inn of Pompeii said: “Hos
pitium hic locator triclinium cum tribus lectis et cum (modis)”
(“an inn with a dining room and with three comfortable
couches”). [20]
Daniels states that the highly developed commercial law of
ancient Rome made available to the purchaser of fraudulently
marked goods a civil law action. [21] If such laws did exist
they have never been definitively reported. Kohler
describes trademark control as being extra-legal. Of this
legal omission he says :
All of this shows us a side of Roman commercial life which
is often overlooked by legal historians; Roman commercial
relations, although resting on different principles, were
not, in their results, as different from our own as has been
generally supposed; the Roman world in the time of the
empire
554
was
penetrated by the same general impulses of trade as today.
These manufacturers’ marks are no singularity; they are
connected with the same system of marking that is known in
modern trade.
… the whole institution in ancient times was no exception;
that it was an institution of the first rank, and one which
covered the whole territory of the ancient civilized world.
It is, however, doubtful whether this institution of
commerce ever became a system of established law, and
whether it did not rely upon commercial honesty and
integrity rather than upon the law.
… That no trace of such an action is found in the
commentaries of the Roman jurists is not surprising
considering the fragmentary condition of those commentaries
at present, especially as it is certain, from existing
writings and inscriptions, that there were many legal
institutions of the Roman Empire, concerning which we have
no juristic commentaries. Jurists and schools of jurists
have their prejudices, and there are institutions which have
been favored or neglected in juristic commentaries, for
purely artificial reasons. A nation is always richer in
legal institutions than is indicated by its legal and
judicial writings, however full and complete they may be.
[22]
Middle Ages
During the Dark Ages following the fall of the Roman Empire,
the use of trademarks disappeared from practically all
manufactures as the importance of broad trade markets
slackened. The reduction in trademarks was, however, of
much greater magnitude than the market-extension thesis
might predict; this phenomenon is unexplained by the
scholars of trademark history. [23] The only exception to
this decline was the great increase in the marking of sword
blades. On the tangs of Norse swords found in the mosses of
Schleswig are commonly inscribed the names of the armorers.
[24]
However, when the great upsurge of trade during the Middle
Ages occurred, it was accompanied by very large quantities
of guild and municipal legislation regulating the use of
marks. Political conditions in Medieval Europe had a
powerful influence on the use of trademarks - the
disintegration of the feudal system, the establishment of
the Hanseatic League in northern Germany for the protection
of sea-trade, the rise of the free cities which were
sovereign and self-directing, and most important, the
formation throughout Europe of the great trade and craft
guilds. All of these factors had a substantial share in
developing a system of trade supervision and trademarking
which was both discriminat-
555
ing and complex. Inter-urban rivalry was naturally further
increased by the civic pride of the municipalities which had
grown strong and self-conscious through their several
successes in asserting their rights against former rulers.
[25] The quality of the wares produced within the city’s
limits was to them a matter that called for regulation.
These influences led to the establishment of a standard
quality for local products and the use of the municipal mark
(usually the coat of arms of the municipality) on all goods
made within its boundaries.
An even more potent force in trade than the municipal
authority were the trade and craft guilds which sprang up
throughout England and Europe from the eleventh to
thirteenth centuries. The guild began in most instances as
an organized protest against usurpation and aggression,
whether by magistrates, rulers or outlaws. The guild
movement was basically confined to the towns. In its
adherence to the obligations of charity and brotherhood and
its love of ritual, the guild movement suggests a Masonic
order; in its care for the spiritual welfare of its members
and its insistence upon religious forms, it fulfilled some
of the duties of the church; in its strict regulation of the
conduct and dealings of its members and its not uncommon
exercise of municipal and police authority, it sometimes
usurped functions of government; and in its oversight and
direction of the trade activities of its adherents, it
resembles a present-day trade union although its scope was
much broader. [26]
These guilds took root in the working and trade classes.
This gave rise to two distinct organizations, the trade
guild whose members were merchants and the craft guild
composed of craftsmen. Each of these types of guilds
promulgated regulations to control the activities of its
members. By compelling the worker to use his mark, the
guilds thus strengthened their control of the trade. [27] As
a rule, when one became a master craftsmen, he was required
to choose a mark, obliged to use it on all goods he
produced, and to retain it his entire life. Use of a mark
was obligatory, part of the duty to the community, and
demanded by the strict social order of craft guilds of the
Middle Ages. [28]
It was common practice during the Middle Ages to mark upon
artistic productions the name, monogram or device of the
artist or workman. A decree of the Council of Nuremberg in
1512 states:
Whereas, a certain foreigner, who sells engravings
under the Council Chamber has, among others, certain ones
bearing the signature of Albrecht Durer,
556
Now, therefore, it is ordered that he shall obliterate all
such signatures, and keep no more such engravings in future,
and if he shall neglect so to do, he shall be brought before
the Council for fraud. [29]
Lucien-Brun, in his classic work on the subject of
trademarks, states that in France trademarks were regarded
as property and protected against infringement by civil
remedies. [30] As early as the thirteenth century, copying
of valuable marks became so common and injurious that
infringement was made a misdemeanor, in some cases even a
felony, and was punished in the barbarous manner of the
times.
Examples of such Middle Age legislation abound. The Elector
of Palatine in the fourteenth century pronounced an edict
stating that the sale of spurious wine was a most outrageous
form of deceit, and punishing by hanging any innkeeper who
sold ordinary wine as Rudesheimer. [31] Charles V in 1544
directed his attention to Flemish tapestries demanding that
“any master workman who makes or causes to be made any such
tapestry, shall work upon one end and upon the bottom of the
said tapestry a mark or symbol, and such signs as the city
may require; that it may be known by the said marks of what
city and of what master the said tapestry is a product.”
[32] Kohler reports [33] that “an edict of the magistrates
of Brussels, 1525, established a system of protection for
the originators of new tapestry designs; and in 1528 another
edict required that each piece of a certain size should
bear, on one side, the mark of the maker, and on the other,
that of the city.” A royal edict of Charles IX in 1564 put
imitators of marks in the same category as counterfeiters
who were capitally punished. Statutes protecting the
drapers of Carcassone (1666) imposed the penalty of pillory
on infringers. Punishment was established for imitators of
the marks of the goldsmiths in 1376, the weavers in the
1400’s, and the calenders in 1518. [34] These acts, we are
told, were non-general in nature; for some trades,
infringement of a trademark was a felony and in others it
was only a civil -wrong. [35] In 1266, the English
Parliament enacted a law stating: “Every baker shall have a
mark of his own for each sort of bread in order that
would-be customers should know what kind of bread they were
being offered.” [36] In France at least as early as the
fourteenth century, each workman had his mark, with which he
was required by law to mark all of his products. This
trademark usage was not optional, but rather obligatory, for
purposes of showing who was responsible for the
557
work. There was also a public stamping after an inspection
and approval.
In 1366 it was decreed that no London silversmith should
sell wrought silver of less than sterling fineness the mark
of every such smith was to be made known to the wardens of
the craft. Lead seals (which date from the fourteenth
century) have been found at Charlton, the early center of
the English woolen industry, and it is suggested that these
seals were used in the identification of bales of wool. [37]
There also are evidences in Scots law concerning trademarks.
In an Act of 1487 entitled “The binde of Salmond, and
measure thereof,” it is prescribed that every burgh shall
have, in addition to hoop irons serving to bind and measure
barrels containing salmon, “a burning iron to marke the
samin, under the paine of escheit of the barrel un-marked.”
[38] Similar edicts, decrees and town-council legislation
concerning trademark infringement are cited ad infinitum
in every responsible study of this segment of legal history.
The use of trademarks by printers was an inevitable
consequence of conditions which resulted from an absence of
any notion of property in literary work. The first book
published under a printer’s mark was Psalterium Latinum
printed in Mayence by Johann Fust and Peter Schoffer in
August, 1457. It is interesting to note that the third
appearance of a printer’s mark (in 1470) was a counterfeit
of Fust and Schoffer’s original mark. [39]
For many years after the invention of the printing press, a
void existed in the law corresponding to modern copyright
regulation. There were few original contributions to
literature. Books of the day consisted almost entirely of
Greek and Latin classics and the writings of the fathers of
the Church. The end sought by publication was not
originality but accuracy. Some printers acquired a great
reputation for the considerable accuracy of their texts;
monograms of various kinds were employed to identify as
theirs the books that they published. Thus the dolphin and
anchor of Aldus, the representation of a printing press of
Badius and the monogram of Caxton are familiar examples of
publisher’s marks. [40]
Inasmuch as the law afforded no copyright protection,
publishers pirated not only the full literary contents of a
work, but also the trademark of the original publisher. In
the Preface to Aldus’s publication of Livy in 1518, there is
written:
Lastly, I must draw the attention of the student to the fact
that some Florentine printers, seeing that they could not
558
equal our diligence in correcting and printing, have
resorted to their usual artifices. To Aldus’s
Institutiones Grammaticae, printed in our offices, they
have affixed our well known sign of the Dolphin wound round
the Anchor. But they have so managed that any person who is
in the least acquainted with the books of our production,
cannot fail to observe that this is an impudent fraud. For
the head of the Dolphin is turned to the left, whereas that
of ours is well known to be turned to the right.’[41]
Such warnings appeared to be a common practice. Benedict
Hector of Bologna in “Justinus et Florus” warns:
“Purchaser, give heed when you wish to buy books issued from
my printing office. Look at my sign, which is represented
on the title-page, and you can never be mistaken. For some
evil-disposed printers have affixed my name to their
uncorrected and faulty works, in order to secure a better
sale for them.” [42] Jacobus Badius of Paris faced the same
pirating competitors as did his Italian counterparts: “We
beg the reader to notice the sign, for there are men who
have adopted some title, and the name of Badius, and so
filch our labour.” [43] Literary and publishers’ mark piracy
became so prevalent that the Milanese Printer’s Guild
declared that “No printer or dealer must use for his sign a
token identical with or closely similar to that already in
use with an authorized printer or dealer.” [44] That
printers’ marks were regarded as valuable property is
evidenced by the lengthy procedures established in many
printers’ wills to transfer such marks to their heirs.
The hazards of navigation during the Middle Ages made the
use of a private mark of especial value to those merchants
whose trade extended beyond the seas. Merchants’ marks were
registered, and certificates issued attesting to mark
ownership. In the event that goods were lost on a sea
voyage and subsequently recovered, it was often necessary to
determine the identity of the lost goods by the merchants’
marks affixed to them.
A trade book from the City of Danzig of 1420 bears in its
margin the marks of a large number of merchants, including
several from Amsterdam, England and Genoa. Guild books of
the merchants of Liibeck, the principal city of the
Hanseatic League, gives beside the name of its members, the
mark of each.[45] In 1418 the town council of Hamburg wrote
to Lege, in order to get possession of boats held at
Dordrecht with their cargoes, the property of certain
citizens of Hamburg; in proving claim to the goods, the
document cited forty-three merchants together with their
marks,
559
which it is said, were found upon the merchandise making up
the cargo. [46]
Throughout Europe numerous so-called marks of control or
guarantee were affixed by local authorities to certify that
the goods bearing them were of a prescribed quality
standard. These were used in connection with other marks,
and correspond closely to modern inspectors’ stamps on meat,
dairy and other perishable commodities. Such control marks
were concerned more with regulating the size, weight, price
or quality of the product, rather than identifying the
individual maker, except to point out on whom the fault lay
should the standard not be met. [47] Not uncommon either
during the Middle Ages were regional marks applied to
products of a whole district, in distinction to those of a
particular town or guild.
There appears an amazing similarity between Middle Age
trademark legislation and modern trademark law. Kohler
quotes a Statute of Parma which he claims is “more
compact and adequate than the Trade Mark Act of the United
States”: [48]
A chapter for the protection of guilds and artisans in this
state, and to prevent many frauds which are or may be
committed upon them; - that no persons in the trade or guild
shall use the mark of any other person in such trade or
guild, nor place such mark, or a similar one, upon knives or
swords; and if any person in such guild has continuously
used a mark upon knives, swords, or other steel or iron
articles for ten years, and any other person is found to
have used, within one or two years, the same mark or an
imitation thereof,… whether stamped or formed in any other
way, the latter shall not in future be allowed to use such
mark upon knives, swords, or other steel or iron articles,
under penalty of ten pounds of Parma for each and every
offense, and that regardless of any compromise or award of
arbitrators which may have been made. Tenth session, 1282,
Aug. 28. [49]
Similar legislation appeared in France, Italy, Germany and
England. [50]
In the Guild Statute of Liibeck it was declared in 1547 that
bakers were required to put a mark on their bread with a
sign “which shall continue to be the property of the house,
so long as it is continued as a bakery.” The Act also
provided for the registration of all bread bakers’ marks in
a book as public notice of ownership. The asset value of a
trademark was recognized by a provision that, just as a
business belongs to the house and is transferred
560
with it, so the mark belongs to the business and passes to
successors. [51]
The modern day parallel of this doctrine was explained in a
decision of Mr. Justice Field: [52]
When the trade-mark is affixed to articles manufactured at a
particular establishment and acquires a special reputation
in connection with the place of manufacture, and that
establishment is transferred whether by contract or
operation of law to others, the right to the use of the
trade-mark may be lawfully transferred with it. Its
subsequent use by the person to whom the establishment is
transferred is considered as only indicating that the goods
to which it is affixed are manufactured at the same place
and are of the same character as those to which the mark was
attached by its original designer.
The holder of a registered trademark was “not to lend his
mark to anyone whatever, to keep an open shop, etc.” Any
lending of marks was declared to be a violation of good
faith and of the public ordinances in relation to
trademarks. [52] The prohibition against loaning trademarks
(i.e., naked trademark licenses) is also a vital part of our
present law, as evidenced by a pronouncement of Justice
Smith: [54]
If the legislature and the courts are thus sedulous to
protect the rights of individuals in respect to their
inventions, labels, and devices, it would seem to be implied
that such individuals should not themselves attempt to allow
any imposition upon the public by false and fraudulent use
of such labels, devices, or names, or inventions, for the
sale of spurious or simulated articles.
But if it be a crime to counterfeit labels, words, or
devices previously appropriated to distinguish property, or
to vend goods thus stamped, without disclosing the fact to
the purchaser, it is equally an offence against the spirit
of the law, equally injurious to trade and commerce and
equally an imposition upon the public, to palm off spurious
goods under cover of genuine labels and devices. Contracts
to do this are clearly against public policy and should not
be upheld and enforced by the courts.
Much of modern trademark law and many common law rules
concerning trademarks are found in surprisingly similar form
in the medieval guild regulations, municipal ordinances, and
royal decrees. In the introduction to Lucien-Brun’s Les
Marques de
561
Fabrique et de
Commerce
it is noted that “The general rules were almost the same
then as now.” [55] It is believed that no knowledge of these
older statutory provisions was possessed by the legislators
and judges who applied modern trademark law. This
reappearance of such similar doctrine can only be accounted
for on the theory that similar commercial conditions have
necessitated similar measures of protection and required
similar legal institutions.
The first reference to trademarks in the King’s Bench is an
“irrelevant reminiscent dictum” [56]first reported in 1656
to have been pronounced in the case of Southern v. How
by Dodderidge, J. concerning a Common Pleas action for
infringement of a clothier’s mark. The reasons for the
inclusion of the dictum are obscure and the very fact of its
utterance is barely established by the five extant and
conflicting reports of the case. [57]
Despite the fact that Dodderidge’s reminiscence (whatever it
was) was a pure dictum, and despite the conflict of evidence
as to what the dictum actually was, Southern v. How
appears to have acquired considerable weight as authority
for the proposition that the unauthorized use of a trademark
is unlawful and may be subject to an action in deceit. It
is classified as propounding that theory in many
abridgements and digests. [58] English courts have
unequivocally relied upon the authority of Southern v.
How to establish the antiquity of their jurisdiction to
prevent trademark piracy. [59]
Nevertheless, several text-writers on trademarks have been
quite content to regard the law as practically the creation
of the nineteenth century. Thus in his treatise, Hopkins
states :
We walk in almost absolute darkness along these dim historic
trails. On every hand are signs that show the coming
importance of trademarks. But Rome is to reach her zenith
and her debacle, the Middle Ages are to intervene, the new
world beyond the Atlantic is to be discovered, modern Europe
is to be reorganized by states and peoples before we again
reach traces of the use of identifying marks in trade. Even
then, the laws of trademarks will not come into existence
until generations of traders have come and gone. The
history of the law of trademarks is pretty accurately at our
service. [60]
Why such commentators have failed to take account of the
historical evidence is of course a matter of conjecture and
beyond the scope of this article.
562
However, until a report of the case referred to in
Southern v. How is found its dictum can only be employed
to support Pound’s complaint against the courts and
text-writers by whom “a principle was found latent in some
meagrely reported, ambiguous and fragmentary pronouncement
of a mediaeval court which had culminated in the latest
decisions of English and American courts.” [61] Southern
v. How thus proves a “most fragile link between the
Middle Ages and the modern commercial law of trademarks. At
any rate a careful investigation has not disclosed any
contemporary reliance thereon or indeed any reference
thereto.” [62] It appears that to a great degree trademarks
remained the concern of the guilds and companies rather than
the common law courts. Schechter, discussing these
pre-common-law origins of trademark jurisprudence, states:
In addition to the law developed by the gilds and companies
or, as Stubbs has aptly termed such law, “gild
jurisprudence,’ [3. W. Stubbs, Constitutional History of
England (4th ed.) iii, p. 592] we have seen germs of
modern trade-mark law in statute law and also in the
conciliar law, i.e. the law developed by the King’s Council
and the Star Chamber. All three of these sources of modern
trade-mark law, and especially “gild jurisprudence,” had by
the seventeenth century, made contributions to trade-mark
law of much greater significance than that of the common law
itself. [63]
The problem thus arises of determining the connecting link
in the development of trademark law between the guild,
statute, and conciliar law and the common law. The simplest
solution to this problem is Seligman’s theory that “the gild
rules were… only part and parcel of the common laws, and
not merely the independent work of the crafts themselves.”
[64] The question as to the extent of the autonomy and
separate judicial authority of the guilds is still a mooted
one, [65] upon which no theory of the contiguity of
trademark law can be predicted. Even if guild law should be
regarded as a form or phase of the common law, there still
remains to be determined the actual point of contact between
the fragmentary law of trademarks as developed in the guilds
and the modern common law and equitable doctrine of
trademark law. With the endeavors of the Tudors and the
Stuarts to organize both external and internal trade came
also the effort by the Crown to repress, through the Privy
Council and the Star Chamber, various forms of commercial
fraud, including the infringement of trademarks. The study
of the clothing and cutlery trades of
563
England exhibit that the Star Chamber and Privy Council as
well as the Crown itself by royal proclamation repeatedly
intervened, in the sixteenth and seventeenth centuries, to
protect individual and collective marks. [66] Despite the
various tendencies toward the crystallization of the modern
concepts of the trademark and trademark law, it was not
until the beginnings of the eighteenth century that lawyers
(or at any rate law-writers and lexicographers) were
evidently beginning to think at all in general terms of
trademarks and when they did so, their definitions of
trademarks indicate a still very considerable uncertainty on
their part as to the exact function of a mark and as to the
basis of complaint for the misuse of a mark.
Giles Jacob in 1723 in his New Law Dictionary says
that a “mark of goods… is what ascertains the Property or
Goodness thereof &c. And if one Man shall use the Mark of
another, to the intent to do him Damage, Action upon the
Case lieth. 2 Cro. 471.” The second volume of Blackstone’s
Commentaries (1766) contains no reference whatever to
the subject of trademarks in his discussion (Book II, Ch.
XXVI) of “Titles of Things Personal by Occupancy” although
among the “things personal” there enumerated are patents and
copyrights. The slight degree of national economic
significance acquired by trademarks prior to the middle of
the nineteenth century accounts for much of the tardiness in
the growth of modern trademark law both in England and the
United States. Closely following the Industrial Revolution
came a tremendous expansion, not only in the means of
production and distribution, but proportionately, in the
advertising of goods, in which process trademarks for the
first time acquired a national and not merely a local
significance. In the United States as in England trademarks
did not acquire importance as assets of value in the
commerce of the nation until the second half of the
nineteenth century. [67]
In the first case of its type, Lord Hardwicke in
Blanchard v. Hill [68] denied exclusive trademark
protection :
Every particular trader has some particular Mark or stamp,
but I do not know of any instance of granting an injunction
here to restrain one trader from using the same mark with
another and I think it would be of mischievous consequences
to do it…
The language of sections of this judgment suggests that if
the defendant had used the mark with a fraudulent design to
pass
564
off inferior goods by that means, or to draw away customers
from the owners of the mark, he might have granted the
injunction. [69] Although Blanchard v. Hill was
described a century later by an English judge “as a leading
case on the subject,” [70] and the reasoning of Lord
Hardwicke as “the true foundation of the jurisdiction in
these cases,” [71] it appears to have created no
contemporary comment (adverse or otherwise) and has either
been ignored or repudiated by Anglo-American courts of law
and equity for the past century.
In 1777 there was tried before Lord Mansfield in the Court
of King’s Bench a case then described as “remarkable… and
the first of its kind,” [72] Carbrier v. Anderson, in
which a verdict of one hundred pounds was awarded to
plaintiff under a Statute of William III for the
defendant’s putting Carbrier’s name on five watches made by
the defendant. [73] It is not surprising therefore that in
1783, in the case of Singelton v. Bolton, where the
issue of trademark piracy at Common law was touched upon,
Lord Mansfield held that “if the defendant had sold a
medicine of his own under the plaintiff’s name or mark,
there would be fraud for which an action would lie.” [74]
It is regrettable that in the first instance of the issuance
of an injunction restraining trademark infringement, Day
v. Day, [75] there appears no record of the reasoning of
the Lord Chancellor, Lord Eldon, the case being merely noted
by Eden in the 1821 edition of his work On Injunctions.
[76] The first reported case squarely involving the
protection of trademarks by an English common law court did
not come until 1824 when Chief Justice Abbott in Sykes v.
Sykes [77] appears to have regarded the law as settled
and the citation of authorities consequently unnecessary:
It was established most clearly that the defendants marked
the goods manufactured by them with the words “Sykes’
Patent” in order to denote that they were the genuine
manufacture of the plaintiff; and although they did not
themselves sell them as goods of the plaintiff’s
manufacture, yet they sold them to retail dealers for the
express purpose of being resold as goods of the plaintiff’s
manufacture. I think that is substantially the same thing,
and that we ought not to disturb the verdict (for the
plaintiff).
In 1833 the Court of King’s Bench in Blofeld v. Payne
[78] stated that it was not necessary for the plaintiff, in
an action for damages at common law, to prove that the goods
sold by the infringer were
565
inferior to those to which the mark in question might
rightly be applied, or to prove that he had suffered special
damage by the defendant’s acts. In the case of
Millington v. Fox [79] the Lord Chancellor, Lord
Cottenham, (without citing any authorities and ignoring
Blanchard v. Rill) held that equity would enjoin
trademark infringement even though such infringement was
without intent to defraud and in ignorance of plaintiff’s
ownership of the trademark involved. This decision led by
obvious deduction to the recognition of a right of property
arising from the use of a trademark. [60] Thereafter
protection of trademarks in equity became based upon a
theory of property rights. No such theory was accepted in
the common law courts, and in them fraud remained an
essential ingredient of a cause of action for the
infringement of a trademark down to the date of the
amalgamation effected by the Judicature Acts.
The origin of the movement for trademark protection in
America appears to have some connection with the sail-cloth
or cotton duck industries of Massachusetts. That
competition in the manufacture of sail-cloth was accompanied
by the infringement of trademarks is evident from an Act of
the General Court (February 3, 1789) incorporating “The
Beverly Cotton Manufactory,” Section 5 of which provided:
That all goods which may be manufactured by the said
Corporation, shall have a label of lead affixed to the one
end thereof, which shall have the same impression with the
seal of the said Corporation and that if any person shall
knowingly use a like seal or label with that used by said
Corporation, with a view of vending or disposing thereof,
every person so offending shall forfeit and pay treble the
value of such goods, to be used for and recovered for the
use of the said Corporation, by action of debt, in any court
of record proper to try the same. [81]
By 1791 an echo of the need for the protection of trademarks
of sail-cloth is to be found in a petition of Samuel Breck
and other Boston sail makers to the Second Congress asking
that they be given the exclusive right to use certain marks
for designating the sail-cloth of their manufacture. This
request was reported on by Thomas Jefferson in a
communication:
Dec. 9, 1791
The Secretary of State…Reports, That it would, in his
opinion, contribute to fidelity in the execution of manufac-
566
tures, to secure to every manufactory, an exclusive right to
some mark on its wares, proper to itself.
That this shall be done by general laws extending equal
rights to every case to which the authority of the
Legislature should be competent…
And that this may be done by permitting the owner of every
manufactory to enter in the record of the court of the
district wherein his manufactory is, the name with which he
chooses to mark or designate his wares, and rendering it
penal to others to put the same mark on any other wares.
[82]
In a letter from a Philadelphia manufacturer printed in the
Columbia Centinel of Boston on December 24, 1791, it
was stated:
… And although this offence is one of the most heinous
against the manufactures and commerce of this country, being
absolutely a species of forgery, and meriting condign
punishment, yet there is not one of the states in which
impositions and frauds of this nature are properly guarded
against, as much as is necessary, and the publick good
requires. Hence when a person thus injured, discovers and
brings to publick notice the aggressor, he can obtain no
redress adequate to the magnitude of the injury he has
sustained, although he may go to enormous expense and deal
of trouble in the business, as well as a waste of time, and
after all is perhaps allowed by a jury, moderate damages by
no means equivalent to the loss sustained, much less does it
prove a salutory remedy against future offences of the like
nature.
A general act of Congress obviating these difficulties, and
providing for the prevention of offences of this kind, and
for the due punishment of the perpetrators of such infamy
and baseness, experience daily convinces me would be of
universal utility, and is a very desirable thing in this
country.
This statement says that the statutory provision for
trademark protection was necessary because the remedy of
damages, which was the only remedy afforded by the common
law, was ineffective. It indicates that there must have
been a certain amount of litigation in the state courts in
the early nineteenth century. There appears, however, to
have been insufficient demand at this time to warrant
enactment of these recommendations. It is nevertheless
surprising that the first reported case of trademark
infringement in the United States did not come before a
state court of record until 1837. [83] It was not until 1844
that the first case was brought before a United States
Court. [84] In this original federal decision,
567
Judge Story, in granting an injunction, said: “I do not
quote cases to establish the principle above stated. They
are very familiar to the profession; and are not now
susceptible to any judicial doubt.” [85]
In England there was no parliamentary consideration
concerning trademark regulation of a broad and general
nature until 1862. [86] The statute then enacted [87] did
not provide for the registration of trademarks, but merely
made the counterfeiting of these marks a penal offense. It
was not until 1875 that the ignorance and indifference of
Parliament in this matter of registration was finally
overcome and the first British trademark registration
statute enacted. [88] In 1870 the first United States
statute providing for the registration of trademarks was
passed, [89] that statute being held unconstitutional. [90]
A similar statute was reenacted in 1876 with the
objectionable features of the earlier law eliminated. [9]
A typical statement of the early reaction of the American
courts toward trademark piracy is contained in the
authoritative opinion of Justice Duer of the Superior Court
of New York in Amoskeag Manufacturing Company v. Spear
decided in 1849.
When we consider the nature of the wrong that is committed
when the right of an owner of a trademark is invaded, the
necessity for the interposition of a court of equity becomes
still more apparent. He who affixes to his own goods an
imitation of an original trademark, by which those of
another are distinguished and owned, seeks, by deceiving the
public, to divert and appropriate to his own use, the profit
to which the superior skill and enterprise of the other had
given him a prior and exclusive title. He endeavors, by a
false representation, to effect a dishonest purpose; he
commits a fraud upon the public and upon the true owner of
the trademark. The purchaser has imposed upon him an
article that he never meant to buy, and the owner is robbed
of the fruits of the reputation that he had successfully
labored to earn. In his case there is a fraud coupled with
damage, and a court of equity in refusing to restrain the
wrongdoer by an injunction, would violate the principles
upon which a large portion of its jurisdiction is founded
and abjure the exercise of its most important functions, the
suppression of fraud and the prevention of the mischief that
otherwise may prove to be irreparable. [92]
With the merger of law and equity in both England and the
United States and also in view of the fact that injunctive
relief is more
568
effective than pecuniary reparation, the repression of
trademark infringement has in recent years fallen more and
more within the scope of equity and the rules governing
relief in such cases have accordingly been those of equity
rather than law. The law as it stands today is explained in
the comments of Mr. Justice Pitney discussing the principles
by which courts should be governed in the adjudication of
cases involving trademark infringement and unfair
competition:
The redress that is accorded in trademark cases is based
upon the party’s right to be protected in the good-will of a
trade or business. The primary and proper function of a
trademark is to identify the origin or ownership of the
article to which it is affixed… Courts afford redress or
relief upon the ground that a party has a valuable interest
in the good-will of his trade or business, and in the
trademarks adopted to maintain and extend it. The essence
of the wrong consists in the sale of the goods of one
manufacturer or vendor for those of another. [93]
The law relating to the regulation of trademarks is a mirror
upon which is reflected the commercial maturity of a
system’s political and economic development. As Mr. Justice
Cardozo has written: [94] “Life casts the moulds of conduct,
which will some day become fixed as law. Law preserves the
moulds which have taken form and shape from life.”
FOOTNOTES
Note the following related articles, in addition to those
cited within this article: Leon E. Daniels, Words Worth
Millions - Their Origin and Ancestry, 23 TMR Bull 183
(1928); Harrison Elliott, Watermark Held Unlikely to Have
Cryptic Meanings, 37 TMR 211 (1947) and Gerald
Ruston, On the Origin of Trademarks, 45 TMR 127
(1955).
1. Francis H. Upton, A Treatise on the Law of Trade
Marks, with a Digest and Review of the English and American
Authorities 9 (1860). Modern codifiers of trademark law
have simplified this to “any word, name, symbol, or device
or any combination thereof adopted and used by a person to
identify goods made or sold by him and to distinguish them
from goods made or sold by others.” Section 1(A) of the
Model State Trademark Bill as presented in The United
States Trademark Association, State Trademark Registration
Manual with Model Bill, page 56 (1966). “[A]ny word,
name, symbol, or device or any combination thereof adopted
and used by a manufacturer or merchant to identify his goods
and distinguish them from those manufactured or sold by
others.” Section 45 of the Lanham Act; 15 USC 1127.
2. See discussion infra at page 562ff and note 57.
Popham 144; J. Bridgeman 125; Cro Jac 469; 2 Rolle 5; 2
Rolle 29. See explanation of the disagreement among these
several reports, infra note 57.
3. Upton, supra note 1, at 10.
4. Edward S. Rogers, Good Will, Trade-Marks, and Unfair
Trading 33 (1914).
5. David Caplan and Gregory Stewart, British Trade Marks
& Symbols: A Short History and a Contemporary Selection
11 (1966).
6. Singer Manufacturing Company v. Loog (1880), 18 Ch
D 395, 412.
569
7. Abraham S. Greenberg, The Ancient Lineage of Trade-Marks,
33 J Pat Off Soc’y 876, 878 (December, 1951).
8. Samuel Birch, History of Ancient Pottery: Egyptian,
Assyrian, Greek, Etruscan, and Roman 12, 17 (1873).
9. Greenberg, supra note 7, at 877.
10. Edward S. Rogers, Some Historical Matter Concerning
Trade-Marks, IX Mich L Rev, 29 (Number 1, 1910).
11. Id at 30.
12. Joseph Kohler, Das Becht des Markenschutzes
(1884), as reported in Rogers, supra note 10, at 30
and also Birch, supra note 8, at 322, 335.
13. See for example: I Kings 6, 7, 8; Deuteronomy
6:8, 9; Genesis 30:33.
14. Leon E. Daniels, The History of the Trade-Mark, 7 TMR
Bull 239, 245 (1911).
15. Daphne Robert Leeds, Trademarks-Our American Concept, 46
TMR 1451, 1452 (1956).
16. Birch, supra note 8, at 519.
17. Bernard Rudofsky, Notes on Early Trademarks and Related
Matters, in Egbert Jacobson (ed), Seven Designers Look at
Trademark Design 9 (1952).
18. Geoffrey, Roman Pottery Marks (1886), as described in
Rogers, supra note 10, at 31.
19. Rogers, supra note 10, at 31.
20. Jacob Larwood and John Camden Hotten, The History of
Signboards From the Earliest Times to the Present Day 2
(1866).
21. Daniels, supra note 14, 7 TMR Bull at 246.
22. Kohler, supra note 12, at 38, 39, 41.
23. Leeds, supra note 15, 46 TMR at 1451.
24. Rogers, supra note 10, at 31.
25. Daniels, supra note 14, 7 TMR Bull at 247.
26. Id. at 248.
27. Rogers, supra note 10, at 36.
28. Kohler, supra note 12, at 46-48.
29. George Haven Putman, II Books and Their Makers During
the Middle Ages 409 (1897).
30. Joseph Lucien-Brun, Les Marques de Fabrique et de
Commerce, Introduction (1895).
31. Report of M. de Marafy to the Congress of Industrial
Property 83 (1878) as quoted in Rogers, supra
note 10, at 33.
32. Lucien-Brun, supra note 30.
33. Kohler, supra note 12, at 50.
34. Rogers, supra note 10, at 34.
35. Lucien-Brun, supra note 30.
36. Greenberg, supra note 7, at 881.
37. Ibid.
38. W. C. Fairweather, Early Scots Law on Trade-Marks, 36
TMR Bull 45 (1941).
39. Rudofsky, supra note 17, at 21-22.
40. Rogers, supra note 10, at 35.
41. Kohler, supra note 12, at 41.
42. Rogers, supra note 10, at 36.
43. Larwood and Hotten, supra note 20, at 6-7.
44. Putnam, supra note 29, I at 453.
45. Daniels, supra note 14, 7 TMR Bull 249-50.
46. Lucien-Brun, supra note 30.
47. Leon E. Daniels, Trade-Marks-Their Origin and
Development, 36 TMR Bull 58, 59 (1941).
48. As quoted in Rogers, supra note 10, at 37.
49. The reason for the ten-year provision (regarded as a
dangerous innovation when it was introduced into the English
Trade Marks Act of 1875, and from there in modified
form, into the United States Statute of February 20, 1905;
called the “old mark” section of the English law and the
“ten-year proviso” of the United States law) is that it is
safe to assume that a mark after a period of ten years of
continuous use serves to identify the origin of the goods to
which it is affixed. Compare Section 2(f) of the Lanham
Act; 15 USC 1052.
50. E.g., Stat 4 Edw IV, c 1; I Rich III, c 8 (II
Statutes of the Realm, 404, 486), which referred to
these marks as a sign of police regulation.
51. Kohler, supra note 12, at 46-48.
52. Kidd v. Johnson, 100 US 617 (1879).
53. Kohler, supra note 12, at 48.
54. Bloss and Adams v. Bloomer (1857), 23 Barb 604
(NY Sup Ct).
570
55. Supra note 30.
56. Frank I. Schechter, The Historical Foundations of the
Law Relating to Trade-Marks 1, 6 (1925).
57. Southern v. How was a King’s Bench action for the
sale of counterfeit jewels by the plaintiff to the defendant
through the defendant’s servant. The case, which was first
reported in Popham’s Reports published in 1656 (and
stated therein as having been decided at the Trinity Term,
15 Jac I) had no relation whatever to trademark law, but the
report nevertheless states on page 144: “Doderidge (sic)
said, that 22 Eliz the action upon the ease was brought in
the Common Pleas by a clothier, that whereas he had gained
great reputation for his making of his cloth by reason
whereof he had great utterance to his benefit and profit,
and that he used to set his mark on his cloth whereby it
should be known to be his cloth: and another clothier,
observing it, used the same mark to his ill-made cloth on
purpose to deceive him, and it was resolved that the action
did well lie.” This report of Southern v. How, while
appearing in Popham’s Reports was not actually
reported by Popham himself, but was included in the volume
among “Some Remarkable Cases Reported by Learned Pens since
his death.”
The next report of Southern v. How was published in
1659 in J. Bridgeman’s Reports, which on page 125
ascribes this case to the Hilary Term, 13 Jac I, and makes
no mention of Dodderidge’s dictum.
Also in 1659 Croke’s Reports (Cro Jac 469) sets the
Hilary Term, 15 Jac I, as the date of the ease, and contains
an entirely different version of Dodderidge’s dictum
concerning the case of the clothier, squarely stating the
action to have been brought not by the clothier whose mark
had been misused, but rather by the defrauded purchaser:
“Dodderidge cited a case to be adjudged 33 Eliz in the
Common Pleas: a clothier of Gloucestershire sold very good
cloth, so that in London, if they saw any cloth of his mark,
they would buy it without searching thereof ; and another
who made ill cloth put his mark upon it without his privity;
and an action upon the case was brought by him who bought
the cloth, for this deceit; and adjudged maintainable.”
Volume II of Rolle’s Reports published in 1676
contains two conflicting accounts of Southern v. How.
The first of these (2 Rolle 5) reports the case as having
been decided 15 Jac I, Hilary Term, and like J. Bridgeman’s
Report makes no mention of Dodderidge’s dictum.
The second report (2 Rolle 28) ascribes the ease to 16 Jac
I, Trinity Term and is obscure as to just who was bringing
the action against the infringing clothier, but believes it
was the vendee.
58. See: I Nelson’s Abridgement 38, 17; 3 Bacon’s
Abridgement 560 (K) (3d ed.) ; I Viner’s Abridgement
574 (2d ed) ; I Comyn’s Digest 166: Action Upon the
Case for a Deceit: 2 Kent’s Commentaries 446, note b
(7th ed).
59. Schechter, supra note 56, at 9.
60. Hopkins, Trademarks, Trade Names and Unfair
Competition 2 (4th ed 1924), as quoted in Schechter,
supra note 56, at 11.
61. Roscoe Pound, Interpretations of Legal History 28
(1923).
62. Schechter, supra note 56, at 123-24.
63. Id at 125.
64. E. R. A. Seligman, Two Chapters on the Mediaeval Guilds
of England in American Economic Assn publications,
Volume 2, Number 5, page 76 (1887).
65. Conflicting views on this point are presented in Austin
P. Evans, The Problem of Control in Medieval Industry, XXXVI
Political Science Quarterly 603 (1921).
66. Schechter, supra note 56, at 126.
67. Id at 130.
68. 2 Atk 484 (1742).
69. T. A. Blanco White, Kerly’s Law of Trade Marks and
Trade Names 1, 2 (9th ed 1966).
70. Wood, V. C. in Farina v. Silverlock (1855), 24
Law Journal Ch N. X. 632, quoted in Schechter, supra
note 56, at 136.
71. Wood, V. C. in Collins Company v. Brown (1857), 3
K & J 423, 428, as quoted in Schechter, supra note
56, at 136 fn 5.
72. St. James Chronicle, December 4, 1771, as quoted
in Schechter, supra note 56, at 137.
73. Atkyns and Overall, Some Account of the Worshipful
Company of Clock-makers of the City of London 259, as
quoted in Schechter, supra note 56, at 137.
74. 3 Doug 293 (1783).
75. (1816). See Robert H. Eden, Treatise on the Law of
Injunctions 226, fn (e) (1822).
76. 314 (1821), as reported in White, supra note 69,
at 2.
77. (1824) 3B &C 541.
571
78. (1833) B & Ad 410.
79. (1838) 3 Myl & Cr 338.
80. White, supra note 69, at 4.
81. Massachusetts Private and Special Laws, 1789, e
43, 1, 226 (1805), as quoted in Schechter, supra note
56, at 130-31.
82. Jefferson’s Complete Works, Washington, 1854,
VII, 563, reported in the Report of the Commissioners
Appointed to Revise the Statutes Relating to Patents, Trade
and Other Marks, and Trade and Commercial Names, Under Act
of Congress Approved June 4, 1898, Washington, 1902.
Hereafter referred to as the “Report of the Commissioners.”
Quoted in Schechter, supra note 56, at 131-32.
83. Thompson v. Winchester, Supreme Court of
Massachusetts 1837, 19 Pick 214; reported in Report of the
Commissioners, supra note 81, at 93. Quoted in
Schechter, supra note 56, at 132-33.
84. Taylor v. Carpenter, United States Circuit Court,
District of Massachusetts, 3 Story 458; in Report of the
Commissioners, supra note 81, at 93.
85. Id at 3 Story 464.
86. Schechter, supra note 56, at 139.
87. 25 and 26 Viet e 88.
88. 38 and 39 Viet 6 91.
89. 16 Stat L 198.
90. Trade Mark Cases, 100 US 82 (1879).
91. 19 Stat L 141.
92. 2 Sandi (NY) Super 599, 605-06 (1849).
93. Hanover Milling Company v. Metcalf, 240 US 403,
412-13 (1915).
94. Benjamin H. Cardozo, The Nature of the Judicial
Process 64 (1922).
572