Wm. Rogers Mfg. Co. v. Simpson.

in the case at bar, he accompanies it by such distinguishing devices by way of prefix and suffix as that a consumer who will take note of the whole will not be misled. And if consumers who will take note of nothing but the name are misled, and there is consequent loss to either, it must be borne as the result of the act of taking a name as a trade-mark. If the first appropriator affixes such distinguishing marks, figures, symbols or words as he may lawfully subject to his exclusive use, the second may not use his name in connection with like marks, figures, symbols or words; nor with such as so closely resemble those of the first as that the association will probably mislead; nor make such use with intent to mislead. Rogers & Brother v. Rogers, 53 Conn., 121; Brown on Trade-Marks, (2d ed.) sec. 420.

In Burgesss v. Burgess, 3 D., M. & G., 896, Lord Justice TURNER said as follows: "I concur in the opinion that this motion should be refused with costs. No man can have any right to represent his goods as the goods of another person, but in applications of this kind it must be made out that the defendant is selling his goods as the goods of another. When a person is selling goods under a particular name, and another person, not having that name, is using it, it may be presumed that he so uses it to represent the goods sold by himself as the goods of the person whose name he uses; but when the defendant sells goods under his own. name, and it happens that the plaintiff has the same name, it does not follow that the defendant is selling his goods as the goods of the plaintiff. It is a question of evidence in each case whether there is a false representation or not." Of this, in Massam v. Thorley's Cattle Food Co., L. R., 14 Ch. Div., 748, JAMES, L. J., said as follows: "That I take to be an accurate statement of the law, and to have been adopted by the House of Lords in Wotherspoon v. Currie, L. R., 5 H. L., 508, in which the House of Lords differed from the view that I had taken in that case."

In Sebastian upon the Law of Trade-Marks, p. 25 et seq., it is said as follows: "The impossibility of a single manufacturer being allowed to arrogate to himself the exclusive use

Wm. Rogers Mfg. Co. v. Simpson.

of a name which he shares in common with many other persons is apparent; and from this circumstance the rule was deduced that while, as against persons bearing a different name, a manufacturer's right in his name trade-mark is absolute and exclusive, as against persons bearing the same name no such exclusive right can be set up. Thus in Dence v. Mason, Sebastian's Digest, 534, MALINS, V. C., held that during the continuance of the partnership between two persons named Mason and Brand, they could not be prevented from using the latter's name in their business, notwithstanding that it was well known in connection with a similar old established business; and the Court of Appeal held that the same would be the case if a new bona fide partnership should be formed. This rule must, however, be qualified by the statement that where a person uses his own name for the purpose of fraud, and satisfactory evidence of fraudulent intention can be produced, such unfair conduct will be restrained, even though the free use of the man's own name may be thereby hindered, and the criminal law also admits of the punishment of such fraudulent uses of a man's own A valuable statement of the law was made by Lord CRAIGHILL in the Scottish Court of Session, in Dunnachil v. Young & Sons, in which he said: The name of a person may be a trade-mark; there may be other manufacturers of goods of the same description, and the latter are not precluded from placing their own names on their goods by reason of the fact that this name has already become the trademark of another manufacturer. The only condition they must fulfil is, that the name as used by them shall be accompanied with something which shall be a distinction, if the bare name would lead to the deception of the public and the injury of the trader on whose goods the name first appeared as a trade mark.' And in the New York case of England v. The New York Publishing Co., 8 Daly, 375, DALY, C. J., said: The fact that a man has used his own name to designate the article he produces, and that the name has become valuable to him through the article becoming extensively known, gives him no right to exclude

name.

Wm. Rogers Mfg. Co. v. Simpson.

any other man of the same name from affixing his name upon the same kind of article, if he manufactures it. The test is, whether he uses the name honestly and fairly in the ordinary prosecution of his business, or dishonestly, to palm off his own commodity as the production of another." And on pp. 226 et seq. as follows:-"It was formerly sometimes supposed, and was held by the late Master of the Rolls and the Court of Appeal in Singer Manufacturing Co. v. Wilson, L. R., 2 Ch. Div., 234, that for an action to restrain the use of a trade-name to be successful fraud must be proved; on the ground that when a trade-mark was once affixed to the goods it passed with the goods from hand to hand, thus silently repeating to each successive purchaser the original misrepresentation of the original infringer, while the improper use of a name not affixed to the goods was not the necessary consequence of being in possession of marked goods, but was the individual act of each person who used it in respect of the goods; so that there might be held to be an infringement of a trade-mark when, in analogous circumstances, there would be no infringement of a trade-name. And when the case of Singer Manufacturing Co. v. Wilson, L. R., 3 App. Cas., 376, was remitted by the House of Lords to the Court of First Instance, on the ground of insufficiency of evidence, some of the law peers seem to have thought that different principles of law might possibly be applicable to trade-marks and trade-names. But Lord CAIRNS, Chancellor, said, "It may well be that if an imitated trade-mark is attached to the article manufactured, there will from that circumstance be the certainty that it will pass into every hand into which the article passes, and be thus a continuing and ever present representation with regard to it; but a representation made by advertisements that the articles sold at a particular shop are articles manufactured by A. B., (if that is the legitimate effect of the advertisements, which is a separate question,) must, in my opinion, be as injurious in principle, and may possibly be quite as injurious in operation, as the same representation made upon the articles themselves; and in Singer Manufac

Wm. Rogers Mfg. Co. v. Simpson.

turing Co. v. Loog, L. R., 8 App. Cases, 15, Lord BLACKBURN took the view that the law of trade-marks and trade-names, when not affected by legislation, was the same. Whether there is or is not property in a trade-name, as Lord BLACKBURN suggested, it is a fraud on the part of one person to attract to himself the custom intended for another, by a false representation, direct or indirect, that the business carried on by himself is identical with that of the other person by whose ability and exertions the name has acquired the reputation it possesses. The question is not whether the defendant's business is represented as being similar to the plaintiff's, but whether it is represented as being that very identical business. If such a false representation has been made, whatever may have been the motive of the persons making it, when proceedings are taken in consequence of it, all the court requires is to be satisfied that the names are so similar as to be calculated to produce confusion between the two-so calculated to do it that, when it is drawn to the attention of those adopting the name complained of that that would be the result, it is not honest for them to persevere in their intention, though originally the intention might not have been otherwise than honest."

The cited remark of Lord BLACKBURN was made by him in determining a case in which the defendant neither bore nor had acquired any right to use the name of "Singer," the distinctive and conspicuous portion of the plaintiff's trade-mark. Singer Mfg. Co. v. Loog, L. R., 8 App. Cases, 15; and such is the fact in Singer Mfg. Co. v. Wilson, L. R., 2 Ch. Div., 434; and we think we are correct when we say that the same fact pertains to all of the cases cited by Mr. Sebastian, and that neither the citations nor his comments concern cases where the question is between parties bearing the same name.

By the law applicable to the facts established by the finding, William Rogers, Jr., as a manufacturer of silver-plated ware, had the right to impress thereon the stamp complained of; had the right to contract with the defendant that it

Wm. Rogers Mfg. Co. v. Simpson.

should make the ware for him under his supervision, he to receive, stamp and sell it for himself; the defendant to receive a percentage of the profits for its labor and its capital; he a percentage for his skill, supervising labor and valuable reputation in the market-his capital. By the present contract the defendant furnishes machinery and materials; William Rogers, Jr., the supervising labor and skill, the valuable reputation and stamp, and defends the use of the latter; the defendant sells the ware, and receives payment therefor; the profits are divided. Under one mode he would sell, and take the risk of payment; under the other the defendant would sell and take that risk; the same rule for division of profits presumably would obtain under either mode. The law regarding substance more than form will not withhold from him in one of these modes what it would concede to him in the other. The law does not find in the mode in which he makes his skill, integrity and valuable reputation available as his capital, any sufficient reason for barring him from access to the public and from the resulting profits. Hiss kill and supervising labor have gone into the ware bearing the stamp complained of; it is equal in quality to that of the plaintiff; as between him and the plaintiff, the question being as to his right to go into the market with his own name, the putting of his supervising skill and labor into the work, with the reception of a share of resulting profits, constitutes him a manufacturer thereof in the eye of the law. It is not a legal prerequisite that all of the capital and all of the profits shall belong to him; consumers have the result of his skill and integrity; and to them that is all there is in the word. "manufacturer"; he determines the kind, form, quality and value of the ware; it is his creation; the defendant simply executes his commands. Indeed, it must be a matter of indifference to the plaintiff as to which of these modes of reaching the market he shall adopt. Therefore, passing by the form, and going directly to the substance, we take the case as if of record William Rogers, Jr., were defendant.