Odger's English Common Law

618 INFRINGEMENT OE PATENTS, COPYRIGHTS, &C.
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associated with, the goods manufactured by another. "We
have already dealt with cases in which a trader has an
undisputed and registered trade mark. Such a mark is his
absolute property, and he can at once stop any one else from
using it, however innocently. But there are many words
which either cannot be * or have not been registered as trade
marks, and which are yet well understood by the public to be
the designation of a particular class of goods made by or for
a particular person. For another to affix such a word to his
goods or to use it in his advertisements will be a tort, if hi&
so doing is calculated to mislead the trade or the public. If
he does so with the deliberate intention of misleading them,
he is liable to be restrained by an injunction and also to pay
damages. If, however, he had no such intention, he will not
be compelled to pay damages, but he will be restrained from
using such word or name in future ; for he now knows that
it is calculated to mislead. The mere fact that the name or
words which the defendant has adopted are not false as he
uses them, or that the plaintiff will, if he succeeds, have a
virtual monopoly in an exclusive designation which is not
capable of being registered as a trade mark, will be no>
excuse.
Where a manufacturer (X.) makes an article under a certain name so that
it comes to mean in the trade the article made by him and nothing else,
no trader is entitled to use that name in connection with his goods in a
manner calculated to mislead purchasers into the belief that his goods are
X.'s. This is so, although the name is in its primary meaning merely a.
description of the goods, and therefore might originally have been applied.
with equal justice to the goods of both manufacturers. 2
"A name may be so appropriated by user as to come to mean the goods
of the plaintiffs, though it is not, and never was, impressed on the goods,,
or on the packages in which they are contained, so as to be a trade mark,
properly so called, or within recent statutes. Where it is established that
such a trade name bears that meaning, I think the use of that name, or
one so nearly resembling it as to be likely to deceive, as applicable to goods
not the plaintiffs', may be the means of passing off those goods as and for
1 See Thompson v. Montgomery, [1891] A. C. 217 ; and ante, p. 425. A person is
liable to be sued in one and the same action both for the infringement of a trade mark
and in the alternative for passing off his goods as and for those of the plaintiff
Poulton v. Kelly (1904), 21 E. P. 0. 392.
2 Reddaway v. Banham, [1896] A. C. 199 ("Camel Hair Belting "), distinguished
in Cellular Clothing Co. v. Maxlon §• Murray, [1899] A. C. 326, and in British
Vacuum, Cleaner Co. v. New Vacuum Cleaner Co., [1907] 2 Ch. 312 ; and see Horlick's
Malted Milk Co. v. Summerskill (1916), 115 L. T. 843.
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