Chap. IX. Trade name of article. during the continuance of the patent alone made and sold the substance by that name, he is not entitled to the exclusive use of the name after the patent has expired (a). A rival trader who makes the article is at liberty to describe and advertise it in his circulars and price-lists by the name by which it is properly known in the trade, provided he does so honestly and in such a manner as not to induce a purchaser to believe that he is buying goods made by the original trader who invented the name (b). A trade name may, however, be so appropriated by user as to come to mean the goods of a particular person, though it is not and never was impressed on the goods or the packages in which they are contained so as to be a trade mark properly so called or within the Statute. Where it is established that such a trade name bears that meaning, the use of that name or of one so nearly resembling it as to be likely to deceive as applicable to goods, not the plaintiff's, may be the means of passing off those goods as and for the plaintiff's just as much as the use of a trade mark (c). But where a name or word was originally or has become descriptive of the article to which it is attached, so that while indicating what the article is, it does not connect that article with any particular manufacturer, and there has been no such appropriation by user or reputation as to cause that word to mean in the market the goods of any particular manufacturer, the word cannot be protected as a trade name (d). A manufacturer of a patented article may, however, have a trade mark not descriptive of the patented article, so as to be entitled to the exclusive use of that mark after the patent has (a) Linoleum Manufacturing Co. (b) Ford v. Foster, 7 Ch. 628; Leonard and Ellis's Trade Mark, 26 (c) Singer Manufacturing Co. v. Loog, 8 App. Ca. 32, per Lord Blackburn. (d) Schove v. Schminke, 33 C. D. 547; Borthwick v. Evening Post, 37 C. D. 449; Goodfellow v. Prince, 35 C. D. 19; Re Arbenz, ib. 248. expired; for instance, if he had impressed on the patented article a griffin or some other device (e). The rule that when an article has acquired a name by which it is known in the market a manufacturer or trader may make and describe it by such name, applies of course only to cases where the inventor of the name is not possessed of a patent, or where, if he has possessed a patent, that patent has expired. If any one during the existence of a patent applies the name which the patentee has given to an article, not an infringement of the patent, he will be restrained by injunction, on the ground of the false representation that what he was selling was the patented article (ƒ). Chap. IX trade mark. A trade mark cannot be assigned or devolve in gross; an Assignment of assignment therefore is inoperative if the assignor has no goodwill to assign (g). Upon the sale of a business the right to both trade marks and trade names used in the business passes with the goodwill of the business to the successors of the firm that originally established them, without any express mention being made of them in the deed of assignment (h), unless a contrary intention appears (i). A trade mark, when registered, can be assigned and transferred only in connection with the goodwill of the business concerned in the particular goods or classes of goods for which it has been registered, and is determinable with that goodwill (k). If the trade mark which has been assigned be in respect of an entire class of articles but the articles dealt with in the business which has been assigned form part only of the class, the assignee is not entitled to the exclusive user of the trade mark, but only to the user of it for the particular class of articles in connection with which it has been actually used (1). (e) Re Palmer's Trade Mark, 24 C. D. 521, per Lindley, L. J. See Re Hayward's Trade Mark, 54 L. J. Ch. 1003. (f) Re Palmer's Trade Mark, 24 C. D. 520, per Cotton, L. J. (g) See Harness' Trade Mark, 17 R. P. C. 40. (h) Bury v. Bedford, 4 D. J. & S. K.I. 372; Shipwright v. Clements, 19 W. (i) Rogers' Trade Mark, 12 R. (k) 46 & 47 Vict. c. 57, s. 70. See Re Welcome's Trade Mark, 32 C. D. 213. (1) Re Edward's Trade Mark, 30 C. D. 455. 22 Chap. IX. Right to trade name on assignment of goodwill of business. Rights of partner in trade marks. A man who has assigned the goodwill of a business may, unless precluded by covenant, set up the same business in the immediate neighbourhood, and may publish or advertise the fact of his having done so, but he may not trade under the old name, or solicit his old customers (m); and he has no right to use the trade marks which were the marks of that business (n), or by the use of the name or title of the firm to represent himself as carrying on the business which he has sold (o). So if the trustee in bankruptcy of a trader sells the goodwill and trade marks of the bankrupt's business, the bankrupt has no right to continue to use the marks (p) or to represent that he is still carrying on the business, but he is not a grantor so as to be bound by the rule not to solicit customers as laid down in Trego v. Hunt (g). The purchaser of a business though he is entitled in the absence of any special contract in the deed of assignment, to the use of the trade name of the business (r), must not use it in such a way as to lead ordinary persons to believe that the vendor is still carrying on the business (s). Upon the formation of a partnership firm, a trade mark, to which one of the partners may be entitled, becomes, in the absence of any stipulation to the contrary, part of the partnership property (t). So also where a new partner comes into the partnership firm, amongst other rights which he purchases by coming into the firm is the right to use the trade name or trade marks belonging to the firm (u). (m) Vernon v. Hallam, 34 C. D. 748; Trego v. Hunt, (1896) A. C. 7; Jennings v. Jennings, (1898) 1 Ch. 378. (n) Bury v. Bedford, 4 D. J. & S. 373; Shipwright v. Clements, 19 W. R. 599. (0) Churton v. Douglas, John, 174; Hudson v. Osborne, 39 L. J. Ch. 79. (p) Hudson v. Osborne, 39 L. J. Ch. 79; Hammond v. Brunker, 9 R. P. C. 301. (9) Walker v. Mottram, 19 C. D. 355. (r) Levy v. Walker, 10 C. D. 448, per James, L. J. (8) Chatteris v. Isaacson, 56 L. T. 177; cf. Townsend v. Jarman, (1900) 2 Ch. 698. (t) Bury v. Bedford, 4 D. J. & S. 374. (u) Singer Manufacturing Co. v. Wilson, 2 C. D. 455, per Mellish, L. J. The right to the use of a particular designation or partnership style passes, on the death of a partner, to the surviving partners or partner (r). On the death of a surviving partner, it passes to his personal representatives (y). On the dissolution of a partnership, in the absence of special agreement, the trade marks of the firm are part of its assets and are saleable as such with the goodwill (2); but it seems that each of the partners is at liberty to make use of the trade name of the firm and of its trade marks, provided he can and does do so in such a way as to avoid deceiving the public or casting any risk or liability upon his late partners (a). Chap. IX. A publisher or author has either in the title of his work or Right of an author or pubin the application of his name to the work, or in the particular lisher in the marks which designate it, a species of property similar to that title of his work which a trader has in his trade mark, and may like a trader claim the protection of the Court against such a use or imitation of the name, marks, or designation, as is likely in the opinion of the Court to be a cause of damage to him in respect of that property; but there is no copyright in such titles (b). So also the proprietor of a newspaper has a right to prevent any other person from adopting the same name for any other similar publication (c). But a publisher or newspaper proprietor who comes to the Court for an injunction to restrain any other person from taking the same name or title for any similar publication must be able to establish satisfactorily by distinct evidence that such name or title has come by general acceptance and reputation in the market to denote exclusively the work or newspaper published by him, so that purchasers when they buy the (x) Webster v. Webster, 3 Sw. 490 n.; Lewis v. Langdon, 7 Sim. 421. (y) Hine v. Lart, 10 Jur. 107. See Dent v. Turpin, 2 J. & H. 139. (z) Hall v. Barrows, 4 D. J. & S. 150. (a) Ib.; Hookham v. Pottage, 8 Ch. 91; Thynne v. Shore, 45 C. D. 577; Burchell v. Wilde, (1900) 1 Ch. 551. (b) Lord Byron v. Johnstone, 2 Mer. 29; Spottiswoode v. Clark, 2 Ph. 154; Chappell v. Davidson, 8 D. M. & G. 1; Maxwell v. Hogg, 2 Ch. 307; Dicks v. Yates, 18 C. D. 85. (c) Kelly v. Hutton, 3 Ch. 708; Walter v. Emmott, 54 L. J. Ch. 1059, W. N. (1885) 156. Chap. IX. Rights of an author or publisher in the articles or publication under that name or title believe they are buying the plaintiff's publication (). It is not always easy to define the exact moment at which the reputation is acquired, but unless it has been acquired, it cannot be said that any exclusive right to the use of the name has been acquired (e). Where the owner of a publication claims an injunction to restrain the issue of another publication with a similar name, he must show not only that the assumption of the name is calculated to deceive the public, but also that there is a probability of the plaintiff being injured thereby (ƒ). A man has a full right to publish a similar work under the same title as that of another, if the title is a mere hackneyed title of his work. phrase long in common use (g), or if he represents his work as distinct and original; but he may not without authority adver tise his own work as the continuation of another or as being in connection with another (). A man cannot by advertising his intention of publishing a periodical under a certain name and making preparations for issuing it acquire a right to the exclusive use of the name, the periodical not having appeared before the bringing of the action (i). The name of the editor is not a necessary part of the title of a journal. In the absence of any special contract to that effect, the Court will not restrain the owners of a journal from publishing it without the name of the editor (). Nor on the other hand will the Court restrain a publisher from publishing a book in a mutilated form nor from representing that the plaintiff is the author simply because it might injure the author's reputation (1). (d) Kelly v. Byles, 13 C. D. 682; Schove v. Schminke, 33 C. D. 546; Licensed Victuallers' Newspaper Co. v. Bingham, 38 C. D. 139 (C.A.). (e) Licensed Victuallers' Newspaper Co. v. Bingham, 38 C. D. 139 (C.A.). (f) Borthwick v. Evening Post, 37 C. D. 449. (y) Dicks v. Yates, 18 C. D. 85. (h) Hogg v. Kirby, 8 Ves. 215; Borthwick v. Evening Post, 37 C. D. 449. (i) Maxwell v. Hogy, 2 Ch. 307. (k) Crookes v. Petter, 6 Jur. N. S. 1131. (1) Lee v. Gibbings, 67 L. T. 263. |