| Cal. | Jul 1, 1865
This is a suit in equity for an injunction to restrain the defendant from pirating the plaintiff’s trade mark, and for the recovery of damages for a violation of the plaintiff’s trade mark property.'
The defendant’s demurrer to the complaint was sustained, and the only question presented on the appeal is whether the statute of 1863, concerning trade marks, repealed or abrogated the remedies afforded by the common law in trade mark cases. The plaintiff does not allege a compliance with the provisions of the statute. He contends that the remedies given by the statute are cumulative to those which a party was entitled to at common law, and the defendant insists that the statute forms a “ complete scheme ” in respect to trade marks, and thereby repeals the common law rules relating to the same subject matter.
Right, to a trade marie at common law.
Any name, symbol, letter, figure or device adopted by the persons manufacturing or selling goods, and used and put upon such goods to distinguish them from those manufactured or sold by others, and employed so often and for such a length of time, as to raise the presumption that the public would know that it was used to indicate ownership of the goods in the person manufacturing or selling them, constitutes his trade mark. His right to the trade mark accrues to him from its adoption and use for the purpose of designating the particular goods he manufactures or sells,-and although it has no value
Act of 1863 concerning trade marks.
Does not the Act of 1863, instead of constituting a “complete scheme” for the acquisition and protection of property in trade marks, rather proceed on the theory that this species of property did exist, and might thereafter be acquired, under the rules of the common law, and provide that those securing such right according to the provisions of the Act, might have a further or more efficient protection than those who failed to avail themselves of the statute, and relied upon the common law remedies ?
The first section, so far as it is applicable to a case of the nature of the present one, provides that when a person who has complied with section two of this Act uses any peculiar name or other trade mark in any manner attached to or connected with any article manufactured by him, to designate it as such, it shall be unlawful for any other person, without the consent of the former, to use said trade mark or name for the purpose of representing any article to have been manufactured “ by the person rightfully using such trade mark or name.” The second section provides that “ any person wishing to secure the exclusive use of any such trade mark or name, under the provisions of this Act, shall file his claim to the same, and a copy or description of such trade mark or name with the Secretary of State.” It is provided by section three, that the Secretary of State shall keep a record of trade marks and names filed with him; and by section four it is provided that persons violating the provisions of section one shall be deemed guilty of a misdemeanor, punishable by fine and imprisonment, and shall be liable to an action for damages.
Section five declares the counterfeiting of such,trade mark or name a misdemeanor, and provides for its punishment. Section six prohibits the use of such trade mark or name for the
Section nine is an affirmance of the common law, and declares that the person who has first adopted and used a trade mark, “ whether within or beyond the limits of this State, shall be considered its original owner, with full right of property, and entitled to the same protection by suits at law ” as in the case of other personal property.
The defendant’s construction of the section, which would
Common law remedies for invasion of trade marks.
At common law, the remedies for invasions of trade mark property were an action at law for the recovery of damages, and an injunction, in which case pecuniary compensation might be incidentally awarded. Several of the States have, by statute, added a criminal prosecution as a further remedy or protection. The remedies at common law, are still left by our statutes in those cases where the trade mark has not been registered according to the Act, for not only is the right of property recognized and affirmed as it existed at common law, and the common law remedies are not taken away, but the protection afforded by suits at law and bills for injunctions is expressly conceded. Those provisions add nothing to the rights previously possessed by the owner of the trade mark,
On the other hand, those owning trade marks, who have filed their claims and affidavits, and paid the fees, have the protection accorded to the other class of cases, and have also that arising from the criminal prosecutions, with penalties, upon conviction, of more than usual severity.
We do not fully agree with counsel for either party in his construction of the Act in respect to its relation to and effect upon the common law remedies. The remedies provided by the Act, at least those applicable to registered trade marks, are not culmulative to those possessed at common law, but in that respect provision is made by the Act for a new case; nor do we think the Act forms a “ complete scheme ” of itself, in the sense that counsel regards it, as requiring all trade marks to be registered under the Act, to entitle them to protection; though it may be regarded as a “ complete scheme,” in the respect that it grants certain remedies in cases of registered trade marks, and expressly reserves to the owners in other cases the usual remedies enjoyed at common law.
Judgment reversed, and the cause remanded, with directions to the Court below to overrule the demurrer.