From communication to thing: historical aspects of the conceptualisation of trade marks as property

1. From communication to thing: historical aspects of the conceptualisation of trade marks as property Lionel Bently.

2. Starting Point • Contemporary criticism of expansion of trade marks • Explaining expansion: the power of ‘property’ eg Glynn Lunney, ‘Trademark Monopolies’ (1999) 48 Emory LJ 367; Mark Lemley, ‘The Death of Common Sense’ 108 Yale LJ 1687

3. Early History of Protection of Traders Against Misrepresentations in Trade • Common Law action for deceit – trace back to JG v Samford (1618) – Mansfield CJ notebooks • Equitable Action in Support – Day v. Day (1816)

4. Equitable Action • Lord Langdale MR Knott v Morgan (1836), Perry v Truefitt (1842), Croft v Day (1843) Not property but based on fraud • Page-Wood VC (1853-1867) But….Millington v Fox (1839) Lord Cottenham LC (action available against innocent traders)

5. The Shift to Property • The campaign for a Trade Mark Registry 1859 onwards. 1862 Registration Bill would make personal property Select Committee 1862. Merchandize Marks Act 1862: criminalisation but no registry.

6. The Shift to Property: Lord Westbury LC • Edelsten v Edelsten, Hall v Barrows, Leather Cloth • “a trade mark consists in the exclusive right to the use of some name or symbol as applied to a particular manufacturer or vendible commodity”: “such exclusive right is property.” • Imposition on the public – the communicative aspect of trade marks – was “the test of the invasion by the Defendant of the Plaintiff’s right of property”… “but the true ground of this Court’s jurisdiction is property…”

7. Property Approach Confirmed (1) • Leather Cloth in HL Westbury LC preferred over Page-Wood V-C’s fraud theory • Wotherspoon v Currie (1872) HL

8. Property Approach Confirmed (2) • Responses of Commentators E.g. Frank Mantel Adams (1874) “there can be no doubt at the present day that the true ground for interference of a court of equity for the protection of a trade mark is, with respect to the plaintiff, property and the protection of property.” • Trade Marks Registration Act 1875 E. M. Daniel, The Trade Mark Registration Act 1875 (1876) had “established in the most solemn manner the right of property of this description”

9. The Effects of Property • Surprisingly (?) limited e.g. (i) no change in principle that no remedy if claimant’s mark itself contained a misrepresentation e.g (ii) attempts to use property to expand rights rebuffed in Singer cases Eg (iii) no question of liability for use on different goods

10. Lessons from History…. • Are contemporaries over-estimating the significance of property in language as a factor leading to expansion? (Robert Bone (2004) 90 Va L Rev 2099) • Or was the property label handled differently in the late nineteenth century?

11. Why the Property Label Lacked Power • Scepticism: ‘a mere question of nomenclature’ (Page-Wood VC); ‘a point of legal science’ • Not as formalist as many (eg Bone, ‘Hunting Goodwill’ (2006) BULR) assume • Property in analytic jurisprudence but not normative jurisprudence…