196 F. 957 | S.D.N.Y. | 1912
The following is a sketch of the trade-mark in controversy:
The bill also alleges unfair competition by the defendants in the use upon their products, an electroplated or silver-plated ware, of the following representation:
The use of such mark by the defendants in connection with the sale of their products is not denied. The principal defenses are: (1) That the three symbols — the lion passant, the anchor, and the old English letter G — in juxtaposition, form an English hall-mark, and therefore cannot be adopted in this country as a valid trade-mark; (2) that complainant’s marks arc not used to indicate the origin or ownership of the articles to which they are affixed, but for the purpose of identifying the class or quality; (3) that a trade-mark consisting of a combination of the figures and letter G in suit is a violation of the treaties between Great. Britain and the United States; and (4) noninfringement.
The defenses in their entirety are not only novel, but extremely interesting, and are asserted by counsel for the defendants with vigorous elaboration. But, in the view taken of this case, the principal question arising on the merits is whether the complainant has the legal right to enforce its asserted common-law trade-mark claimed to have been exclusively applied by it first to articles of standard coin silver, and, since 1868, to those of sterling quality. Had the complainant the right, for the purpose of designating silver ware of a certain grade, to adopt and use the three symbols — the lion passant, the anchor, and the capital letter G — which were the fac simile of a prior British hall-mark of the Birmingham Assay Office? Before dwelling upon the evidence contained in a voluminous record, the general rttle may be stated that any one has the unquestionable right to make his merchantable commodities known to the purchasing public by attaching thereto a name, mark, or device not previously used by another on commodities of the same general kind or description. Such device must be for the purpose of enabling the user .to impart to his salable article, to which it is affixed, an unmistakable charac
The claim of the defendants that the trade-mark was really adopted to identify the class or quality of the silver ware, and not its ownership or origin, is not substantiated by the evidepce. Therefore I conceive that the crucial questions arising from the alleged infringement of the trade-mark are: (1) Whether its adaptation as early as 1859, as appears by the proofs, and continuous use in this country by the complainant down to the present time, were in - fact an appropriation of a British hall-mark or the essential parts thereof, and therefore not subject to a valid trade-mark; and (2) whether such hall-mark at the time of its simulation by complainant had achieved a reputation in this country such as would mislead the public when buying complainant’s silver ware into believing it was buying hallmarked ware.
A temporary injunction was granted herein by Judge Lacombe (176 Fed. 927) restraining the .defendants from using the trade-mark in controversy. The application was heard and considered upon a record which was not materially different from that which is now before this court, save perhaps for the interposition of the British government, the arguments submitted by it, and the refusal by the Patent Office to register complainant’s trade-mark — matters to which reference will later be made in this opinion. In granting the injunction, Judge Lacombe in broad terms expressed the opinion that a manufacturer or dealer in silver ware in the United States is not precluded from adopting as a trade-mark an impression made up of three marks or symbols by the fact that placed side by side they would indicate to a buyer of English silver ware that the article so-marked was sterling ware made in the city of Birmingham in 1831. The learned court said that when the dealer “has used the particular combination on his ware made in this country, for upwards of 40 years, and the same has been accepted by the trade as his identifying mark, without imitation by any one, he is entitled to an injunction at least until final hearing.”
In Kaiserbrauerei, Beck & Co. v. J. & P. Baltz Brewing Co. (C. C.) 71 Fed. 695, Judge Dallas decided that a mark of identity affixed to a vendible article, which could not be lawfully appropriated for such purpose in a foreign country, could nevertheless be properly appropriated and used as a valid trade-mark in the United States. The Circuit Court of Appeals for the Third Circuit, affirming such decision (74 Fed. 222, 20 C. C. A. 402), held that the provision in the treaty with Germany that its citizens living in the United States shall receive the same protection as native citizens in matters of trade
The evidence conclusively establishes that from the time the mark was first used it was the intention of the complainant’s predecessors to make their silver ware of coin and sterling standards favorably known to the public by their trade-mark — the lion, the anchor, and the letter G — and that in this intention they have been successful. That the lion passant, when used as a trade-mark in England or elsewhere, is expressive of superior workmanship or superior quality, and that the anchor is known in England to represent the place of manufacture, and that the hall-mark is protected in England by statute — are not enough to deprive the complainant of the right to use such features, in combina! ion with the old English letter G, as its trade-mark in this country. Sight should not be lost of the fact that such adoption occurred many years since at a time when it may fairly be presumed the Birmingham hall-mark was little known in the United States. It has several times been held by the federal courts that a trade-mark used abroad may be adopted by one in this country in connection with a similar article provided its adoption was in good faith. Richter v. Anchor Remedy Co. (C. C.) 52 Fed. 455. And though British hall-marks are not strictly trade-marks, this rule is thought analogous.
The Circuit Court of Appeals, affirming Richter v. Anchor Remedy Co., 59 Fed. 577, 8 C. C. A. 220, held that sale to a limited extent in this country by a foreign manufacturer did not amount to such use or publicity as would indicate an intention to adopt as a trademark the marks upon die articles sold. Thus it would appear that any limited number of sales in this country, before or since complainant’s adaptation, of hall-marked silver ware assayed in Birmingham, did not absolutely deprive it of the right to use a similar emblem upon its vendible wares. Hence the principal questions are whether the complainant originated the trade-mark in this country, the place where the articles are manufactured and sold, a.nd whether, after Ine exclusive use thereof by the complainant for a period of time sufficiently long to give the goods so marked a reputation for fineness or quality, the defendants by their imitation infringed the same.
It is not clearly shown that silver ware hall-marked at Birmingham had been imported into this country, or that such hall-mark was distinctively known at the time complainant first stamped the three emblems upon its goods. Indeed, the proofs are that such combined emblems are understood in this country as a badge affirming that the wares .are the handiwork of the Gorham Manufacturing Company. The evidence does not disclose the importation into this country of a sufficiently large quantity of silver ware bearing the insignia of the Birmingham Assay Office to affect the complainant in the prior right to the use of its trade-mark as against another citizen of this country who wrongfully simulates the same and affixes it to an inferior grade of silver ware. While it is true that the said hall-mark
Further discussion of the right of the complainant to simulate the Birmingham hall-mark for identifying its products makes it desirable that I should here state that the British government by consul amicus curiae has submitted an able brief in opposition to the claims of the complainant, in which it is requested that it be determined by the judgment of this court that neither of the parties to this litigation can lawfully acquire trade-mark rights in the emblems of the lion passant, the anchor, and the letter G, on the ground that such insignia is the hall-mark of the Birmingham Assay Office. The importance of this question thus presented is not underestimated, and, indeed, so impressed by it was the Commissioner of Patents that he reconsidered the application by complainant for registration of the trademark and held it to be a simulation of the insignia of the British government which public policy required should be refused registration. The decision of the Commissioner of Patents is entitled to the careful thought which I have given it, but I am not persuaded by his reasoning that the trade-mark in controversy is invalid. This action is not based on any registration rights under the federal statute, but is brought by virtue of common-law rights — rights obtained because of the uninterrupted use of the mark for many years by the complainant in connection with its business, and because of rights prescriptive in their nature and superior to those of other citizens of this country in the said trade-mark, or, indeed, as the record stands, superior even to the rights previously obtained by another under the laws of England. The English statute relating to hall-marks cannot be given extraterritorial effect to bar a trade-mark adopted in this country and known to the trade as designating particular products of the complainant. McLoughlin v. Raphael Tuck Co., 191 U. S. 267, 24 Sup. Ct. 105, 48 L. Ed. 178; Baglin v. Cusenier Co., 221 U. S. 580, 31 Sup. Ct. 669, 55 L. Ed. 863; Kaiserbrauerei, Beck & Co. v. J. & P. Baltz Brewing Co., supra. And in applying the rule of nonextra-terriforial effect I may with propriety quote the words of Mr. Justice Hughes in the recently decided case of Ferris v. Frohman, 223 U. S. 424, 32 Sup. Ct. 263, 56 L. Ed. -, that:
There is no “indication of a purpose to incapacitate British citizens from holding their intellectual products secure from interference in other jurisdictions in accordance with the principies of common law.”
It .next appears that the claim of complainant to an exclusive right in the trade-mark in suit was not sustained in an action brought in the Exchequer Court of Canada against Ellis & Co., and it is insisted by defendants that the principle upon which that case was decided applies here. It was not, however, determined in that case that the use of complainant’s trade-mark in Canada was unlawful, nor was it held that the statutes of England as to hall-marking, standing alone,
Other questions have been argued; but, in view of the foregoing, they need not be substantially passed upon. The complainant is entitled to a decree as prayed for in the bill, with costs.