is in its nature a contract between two nations, not a legislative act. It does not generally effect, of itself, the object to be accomplished, especially so far as its operation is infraterritorial; but it is carried into execution by the sovereign power of the respective parties to the instrument. . . . When the terms of the stipulation import a contract when either of the parties engages to perform a particular act-the treaty addresses itself to the political, not to the judicial, department; and the legislature must execute the contract before it can become a rule for the court.''** So that when, in 1889, the attorney-general of the United States was called on to decide as to the effect of senatorial confir mation - the president of the United States having in 1887 proclaimed adherence to the convention and protocol of 1883- he based his opinion on the opinion just quoted, stating in effect that the treaty is a reciprocal one. "Every party covenants to grant to the subjects and citizens of the other parties certain special rights, in consideration of the like special rights to its subjects and citizens. It is a contract operative in the future infraterritorially. It is, therefore, not selfexecuting, but requires legislation to render it effective for the modification of existing laws."" Consequently, unless congress shall have legislated in the matter, the United States must resort to independent treaties, or conventions, in the matter of international registration." INFRINGEMENT 15. General Principles. - Where a trade-mark belonging to a person and used on certain articles of merchandise is used by another on articles of the same class, there is infringement of the former's trade-mark, and he is entitled to relief through the medium of the proper court. The first appropriator of a name or device pointing to his ownership = 462 Pet. (U. S.) 314 (1829), by Marshall, C. J. 47 Browne Trade-Marks, Pref. to Supp. to 2d Ed., p. v., citing Opinions Atty -Gen. U. S., 1889, p. 253. 48 Ibid., p. vi. is injured whenever another adopts the same name or device for similar articles, because such adoption is in effect representing falsely that the productions of the latter are those of the former."" Imitating the marks used in connection with an article already on the market is regarded as attempting to pass off spurious goods on the public as the real article. In the United States, this is called unfair competition; in England, passing off; and in France, concurrence deloyale. The courts will always restrain unfair competition in trade. The ground upon which such relief is granted rests upon principle, either that the means used are dishonest, or that, by imitation of name or device, there is a tendency to create confusion in the trade, and enable the seller to pass off upon the unwary his goods as those of another, and thereby deceive the purchaser; or that, by false representation, it is intended to mislead the public, and to induce them to accept a spurious article in the place of one they have been accustomed to use.5° A distinction is made in the class of cases where there is unfair competition in trade and infringement of technical trade-marks, which consists principally in the proof required. The right of the owner of a technical trade-mark to relief rests not on the intention of the infringer, nor on his knowledge of the fact of infringement; intent will be presumed in such case. But where a label or style of package is imitated, creating unfair competition, an intent to deceive the public and to steal the market of the owner of the original article must be established by evidence of actual deception. Proof that the dealer offers the imitated article for sale as the genuine article, even though but a single sale is proved, is sufficient to sustain an injunction against a continuance of the wrong." Whether a trade-mark be infringed or not may be determined by the court by basing its conclusions on a comparison of the registered device with the alleged infringing one; the 49 13 Wall. (U. S.) 311 (1872). 5190 N. Y. 457 (1882). 5083 Fed. Rep. 33 (1897); 13 Ch. Div. (Eng.) 434 (1879); 138 N. Y. 244 (1893). testimony of witnesses as to likeness is not necessary." This suggests an inquiry into the extent of similarity between two trade-marks to justify a court in declaring one an infringement of the other. It may be stated as a rule that, if the resemblance be such as to deceive ordinary customers exercising ordinary care when purchasing, the trademarks will be deemed to be substantially the same, but, in determining the resemblance, the device is not alone. regarded; the article itself upon which the device is placed is also examined. Exact similarity is not required to constitute an infringement. There may be an infringement without it, if the similarity be sufficient to convey a false impression to the public mind, and, as before stated, it be of a character to mislead and deceive the ordinary purchaser exercising ordinary care and caution in such matters." 16. Infringement of Trade Names.-Questions of infringement of trade names are decided upon the same principles of law as are applicable to trade-marks. As has been stated, the trade name of a firm, a corporate name, and the name of a publication are species of property of the same nature as trade-marks, and will be protected in like manner. In the case of the name of a publication, it is held that there is neither honesty nor honorable competition in adopting for a similar purpose a name used by another, if it be employed in such a manner that the public may be imposed upon; and such a result must follow if the simulation be so successful that one article or creation is purchased or accepted for another. The courts hold to the view that, while one has no exclusive right to the name which he has adopted for his paper, the enforcement of the doctrine that trade-marks shall not be simulated does not depend entirely upon the alleged invasion of individual rights, but as well upon the broad principle that the public are entitled to protection from the use of previously appropriated names or symbols in such manner as may deceive, by inducing or 5256 Fed. Rep. 830 (1893). 53 20 Fed. Rep. 883 (1884); 14 Wall. (U.S.) 511 (1871); 101 U. S. 64 (1879). leading to the purchase of one thing for another." As before stated, the name of a newspaper is a trade-mark." Generally, where, a trade-mark consists of a name, anything will be held to be an infringement of it which has sufficiently the same appearance to cause one name to be mistaken for another, or which has the same sound when used to describe the article. The trade-mark name of an article is generally the essential feature of the mark by which the goods are known and designated, and an infringement will be held to exist where the name is employed by another, although the other indicia of package and labels may be different." The mere probabilities of deception justify the remedy by injunction." If a trade-mark be simulated in such a way as probably to deceive customers, the piracy will be checked." Thus, it is held that the trade-mark "Moxie" in the combination name "Moxie Nerve Food," is infringed by a similar use of the word "Noxie," the decision being based on the purpose of the use of the word "Noxie," which, it was assumed, was to deceive the public, because the imitation of the word "Moxie" on the labels, bottles, and wrappers of the complainant were imitated to such a degree to merit the granting of an injunction." On the other hand, where the owners of the trade-mark "Weber, New York," sought to restrain certain persons from putting the name "Webster, New York" on their pianos, an injunction was refused because in the court's opinion the name "Webster" was not likely to deceive."" PROCEDURE IN INFRINGEMENT 17. In the United States, prior to the enactment of the federal statutes now known as the national trade-mark law, there existed no satisfactory federal legislation in reference to trade-marks, and particularly of a criminal remedy for 542 Abb. Pr. N. S. (N. Y.) 459 (1867). 552 Brewst. (Pa.) 339 (1869). 56 Am. & Eng. Encyc. Law (1st Ed.), Vol. 26, p. 416. 574 McLean (U. S.) 516 (1849). 59 33 Fed. Rep. 248 (1888). 60 13 N. Y. Supp. 338 (1891). infringement of a trade-mark registered under federal statutes. Many of the states had adopted trade-mark laws differing so much in their provisions that it led to the passage of the federal statutes which now govern matters pertaining to trade-marks. Some of the state statutes provide registration and some do not; some provide for a criminal remedy; some do not."1 One of the federal statutes - the act of 1876-provided a criminal remedy for the infringement of trade-marks registered under federal legislation. Judicial interpretation of the statute of 1876 declared it inoperative and void on the ground that, with the previous statute of 1870, which had been declared unconstitutional and void, they formed prac tically one statute, and the penal statute of 1876 fell with the statute of 1870. Both enactments were declared unconstitutional and void, because their legislation was not limited to trade-marks used in commerce with foreign nations, or among the several states, or with Indian tribes." Therefore, it seems that since the statute of 1881, under which trademarks are at present regulated, failed to reenact the statute of 1876, which is declared inoperative, there really exists no operative federal statute that provides a criminal remedy for infringement, and the criminal remedies provided by state laws, where such exist, are the only ones in existence in the United States. It is seldom, however, that such a remedy is invoked in the United States, the remedy by injunction by courts of equity being the most usual recourse of all who are injured by infringement. But there is provided, by the statute of 1881, an action to recover damages for the wrongful use of any registered trade-mark. In England, the Merchandise Marks Act, 1887, consolidated and amended the law of offenses relating to trademarks and trade descriptions, repealing the act of 1862 and replacing it by fuller provisions. It is now an offense in England to forge a trade-mark, to falsely apply to goods. any trade-marks, or any mark so nearly resembling a = 61 Am. & Eng. Encyc. Law (1st Ed.), 62 40 Fed. Rep. 250 (1889); 100 U. S. 82 Vol. 26, pp. 368-369. (1879). |