TITLE XVII. PATENTS. The feasibility of an international patent law is questioned in the Transactions of the British National Association for Promotion of Social Science, 1862, p. 884; 1861, p. 804. ARTICLE 477. Protection of patents. Protection of patents. 477. The same protection which any nation extends to its own members, or to inventions, designs, or discoveries made within its limits, shall be extended upon the same terms and conditions to members of the other antions, and to inventions, designs or discoveries made in any of the other nations, except that, to secure for a work already patented in one nation protection in another, the time for registering it in the latter may be limited to three months. TITLE XVIII. TRADE-MARKS. ARTICLE 478. What may be appropriated. 480. Registry of foreign trade-mark. 481. Declaration. 482. Offices where registry is to be made. 483. Equal privileges of foreigners. What may be appropriated. 478. One who produces or deals' in a particular thing,' may appropriate to the exclusive' use of himself, and his successors in interest, as a trade-mark, within any nation party to this Code, any name, form. or symbol which has not been so appropriated by another in such nation,' to designate the origin or ownership thereof. But this Title does not authorize the exclusive appropriation of that which is merely either, 1. A name already enjoyed by another person, firm or corporation ; or, 2. A common or proper name already in use to designate the thing, or any of its qualities, or its destination; or, 3. An arbitrary sign, not signifying origin or ownership.' A dealer is entitled to protection, though he be not a manufacturer. Taylor v. Carpenter, 2 Sandford's Ch. (New York) Rep., 603. A product of nature, such as the waters of a mineral spring, named and dealt in by the plaintiff, is within the principles of the law of trademarks. The Congress & Empire Spring Co. v. High Rock Congress Spring Co., New York Court of Appeals, April, 1871, 10 Abbott's Pr. (New York) Rep., (N. S.,) 349. The doctrine of trade-marks is founded on the necessity of protection for business interests. The mere assumption of a family name, without any connection with trade, is not the subject of a civil action by the English law. Du Boulay v. Du Boulay, 2 Law Rep., Privy Council, 430 17 Weekly Rep., 594; 38 Law Journal, Privy Council, 35; 6 Moore's Privy Council Cases, (N. S.,) 31. Nor can one who does not produce, or deal in, an article invoke the law of trade-marks to prevent the producer of, or dealer in, it from using the name of the former. Such a grievance is rather in the nature of defamation. Clark v. Freeman, 12 Jurist, 149; 17 Law Journal, Ch., 142. * The title of a newspaper is within the principle. Matsell v. Flanagan, 2 Abbott's Pr. (New York) Rep., (N. S.,) 459; Stephens v. De Conto, 4 Id., 47. And the principle may have a local application to a particular business; e. g., to the title of a hotel. Howard v. Henriques, 3 Sandford's (New York) Rep., 725; Deitz v. Lamb, 6 Robertson's (New York) Rep., 537. 3 In Lemoine v. Ganton, (2 E. D. Smith, 343,) it was held that, after a manufacturer had changed his trade-mark, he was still entitled to enjoin the sale by others of goods put up by them under the trade-mark which he had discontinued, thus falsely purporting to be of his manufacture. 4 The right to use a trade-mark is assignable, even when the mark is a personal one, unless it be so purely personal as to import that the thing is the manufacture of a particular person. Berry v. Bedford, 10 Jur. (N. S.,) 503; 33 L. J. Chanc., 465; 12 W. R., 727; 10 L. T., (N. S.,) 470. In such a case the assignee's use would be deceptive, and therefore would not be protected. Leather Cloth Co. v. American Leather Co., 11 Jur., (N. S.,) 513; 35 L. J. Chanc., 53; 13 W. R., 873; 12 Law Times, (N. S.,) 742; 11 House of Lords Cas., 523. See Article 479. The right to use the trade-mark passes, by operation of law, by an assignment of the business: thus, a sale of a mineral spring, without expressly including the good-will, or the right to use particular marks, carries to the purchaser the right to use the name of the spring adopted by the former proprietors as a trade mark. The Congress & Empire Spring Co. v. High Rock Congress Spring Co., 10 Abbott's Pr. (New York) Rep., (N. S.,) 349. See, also, Hudson v. Osborne, 39 Law Jour. Chanc., 79. 5 The use is protected only in the places where the trade-mark is used by the plaintiff before it is used by others. Corwin v. Daly, 7 Bosworth, (New York) Rep., 222. 6 Act of Congress, July 8, 1870, § 79; Faber v. Faber, 49 Barbour, 357; S. C., 3 Abb. Pr., (N. S.,) 115. And see Burgess v. Burgess, 3 De G. M. & G., 896; 17 Jur., 292; 22 L. J. Chanc., 675; Schweitzer v. Atkins, 37 Law Jour. Chanc., 847; 16 Weekly Rep., 1080; 19 Law Times, (N. S.,) 6. Collins Co. v. Brown, 3 Kay & Johns., 428; 3 Jurist, (N. S.,) 929; Amos keng Manufacturing Co. v. Spear, 2 Sandf., 599; Fetridge v. Wells, 4 Abb. Pr., 144. The effect of this qualification will be, in accordance with the English and American decisions, that the prior use or appropriation of any name or sign of either of these classes can only be protected in the case of foreign trade-marks, when accompanied by a mark sufficient to distinguish its origin or ownership from the same name or sign when lawfully used by other persons; and then it is only the combined mark that is protected. Exceptions. 479. Article 478 does not apply to any unlawful business, or to any material which is injurious in itself, or to any trade-mark which has been fraudulently obtained, or which is used with the design of deceiving the public in the purchase or use of any material. Act of Congress of the United States concerning patents, &c., July 8, 1870, Art. 84, U. S. Stat. at L., vol. 16; Leather Cloth Co. v. American Leather Cloth Co., 11 Jur., (N. S.,) 513; 35 L. J., Chanc., 53; 13 W. R., 873; 12 L. T., (N. S.,) 742; 11 H. L. Cas., 523; Hobbs v. Francais, 19 How. Pr., 567. It was held in Curtis e. Bryan, (36 How. Pr., 33,) that the principles upon which courts have refused to protect a trade-mark which involved a deception upon the public, do not extend to cases where the deception alleged is not in the trade-mark itself, but in advertisements used to advance the sales of the article; but the provision of the act of Congress of the United States, mentioned above, seems to refuse protection in such a case. The use of the word "patent," however, on goods not actually patented, but which by long usage are known by that name in the trade, is not such a misrepresentation as deprives the user of protection. Marshall v. Ross, 8 L. R. Eq., 651; 17 W. R., 1086; Stewart v. Smithson, 1 Hilton, 119. Registry of foreign trade-mark. 480. To enjoy the protection afforded by this Title, in any nation other than that in which the claimant is domiciled, the trade-mark must be registered in such nation, with a statement of the following particulars: 1. The name of the party who desires the protection of the trade-mark, and his residence and place of business; 2. The class of merchandise, and the particular description of goods comprised in such class, for which the trade-mark has been or is intended to be appropriated; 3. A description of the trade-mark itself, with a facsimile thereof, and the mode in which it has been or is intended to be applied and used; and, 4. The length of time, if any, during which the trade-mark has been used. Act of Congress of the United States, July 8, 1870, § 77. This leaves it to each nation to protect domestic trade-marks to such extent as may be deemed suitable. Thus, in France, certain tradesmen in particular cities enjoy the exclusive use of a mark peculiar to articles of their trade produced in that city. Declaration. 481. There must also be filed in the same office with the registry, a declaration, under the oath of the party or his agent, to the effect that the claimant has a right to the use of the same in such nation, and that no other person or corporation has a right to its use there; and that the description and fac-simile presented for registry are true. Offices where registry is to be made. 482. The registry of trade-marks under this title, in each nation, is to be made in the offices of the chief secretary of state for the interior or home department, and in such others as shall from time to time be designated by the legislative authority of the nation. In the HANSEATIC CITIES, the tribunal of commerce is designated as the place of registry. Treaty of commerce and navigation between France and the Free Cities of Lubeck Bremen and Hamburg, March 4, 1865, Art. XXIV.. (9 De Clercq, 187, 195.) In the NETHERLANDS, two copies in the registry of the tribunal of the arrondissement at Amsterdam. Treaty of commerce and navigation between France and the Netherlands, July 7, 1865, Art. XXIV., (9 De Clercq, 337, 343.) In AUSTRIA, two copies in the chamber of commerce of Vienna. Treaty of commerce between France and Austria, December 11, 1866, Art. XII., (9 De Clercq, 646, 649.) In the Grand Duchy of BADEN, "au bureau bailliage de la ville du Carlsruhe." Convention between France and the Grand Duchy of Baden, July 2, 1857, Art. II., (7 De Clercq, 298.) In RUSSIA, in the department of manufactures and internal commerce, at St. Petersburg. Treaty of commerce and navigation between France and Russia, Art. XXII., (7 De Clercq, 278, 286.) |