Imágenes de páginas
PDF
EPUB

THE LOSS OF THE RIGHT TO A TRADEMARK'S USE.

$89. Laches.-There is no laches where a complainant is only waiting to get a sufficient quantity of evidence to secure a successful prosecution of the infringer, and of course none exists where the complainant has no knowledge of the fact of infringement; 2 and it has been distinctly held by the Federal Supreme Court that an injunction will not generally be refused on the ground of delay alone.3 Following that decision, it was said by Judge Nixon, in the United States Circuit Court in the District of New Jersey: "There has been large discussion of the question how far laches, in stopping the infringement of a trademark, will deprive a complainant of the benefits of a preliminary injunction. But that discussion has been put to rest, so far as this court is concerned, by the recent decision of the supreme court in the case of McLean v. Fleming,* where it was held that acquiescence of long standing was no bar to an injunction, although it precluded the party acquiescing from any right to an account for past profits."

[ocr errors]

The rule that laches which will be a bar to an accounting will not be a defense as against a prayer for injunctive relief, obtains in all cases of unfair competition, whether or not a technical trademark is involved."

1-Cave v. Myers, Seton (4th Ed.), 238; Lee v. Haley, 22 L. T. N. S. 251.

2-In re Farina, 27 W. R. 456; Seb. 642; Weldon v. Dick, L. R. 10 Ch. D. 247; 39 L. T. N. S. 467; Seb. 638; Taylor v. Carpenter (1), 3 Story, 458; Cox, 14; Seb. 78; Taylor v. Carpenter (2), 2 Wood. & M. 1; Cox, 32; 9 L. T. 514; Gilka v. Mihalovitch, 50 Fed. Rep. 427.

3-McLean v. Fleming, 96 U. S. 245; 24 L. Ed. 828.

4-Supra.

5-Consolidated Fruit Jar Co. v. Thomas, Cox, 665. And to the same effect see La Republique Francaise v. Schultz, 42 C. C. A. 233; 102 Fed. Rep. 153; Sanders v. Jacob, 20 Mo. App. 96; N.

K. Fairbank Co. v. Luckel, King & Cake Soap Co. (4), 116 Fed. Rep. 332; 54 C. C. A. 204; Oklahoma Producing & Ref. Co. v. Oklahoma Consolidated Prod. & Ref. Co. (Del.) 106 Atl. Rep. 38. Delay of eight years held not a bar to injunction, though a bar to accounting in Aunt Jemima Mills Co. v. Rigney & Co., 247 Fed. Rep. 407, 412 (C. C. A. 2). Note dissenting opinion of Learned Hand, J. That a delay of several months in bringing action, after discovery of the infringement, does not affect the plaintiff's remedy, see John Palmer Co. v. Palmer-McLellan Shoe Pack Co., 37 D. L. R. 201.

6-Worchester Brewing Corp. v. Reuter & Co., 84 C. C. A. 665; 157 Fed. Rep. 217, 219.

The rule has always been, however, that laches on the part of the owner of a trademark would be a bar to his application for a preliminary injunction. Judge Wallace stated the rule as follows: "Laches in prosecuting infringers has always been recognized as a sufficient reason for denying a preliminary injunction; sometimes, apparently, by way of discipline to a complainant who has manifested reluctance to burden himself with the expense and vexation of a lawsuit, and delayed legal proceedings until his patience was exhausted. When delay of the owner of a patent or trademark to prosecute infringers has been of a tendency to mislead the public or the defendant sought to be enjoined into a false security, and a sudden injunction would result injuriously, it ought not to be granted summarily, but the complainant should be left to his relief at final hearing.""

In cases of unfair competition, where no technical trademark is involved, a preliminary injunction has been denied where the defendant's goods had been sold openly for many years in the package complained of."

But in a later case the Court of Appeals of the Seventh Circuit has broadly applied the doctrine of McLean v. Fleming to a case of unfair competition; to which holding the contrary has been held.10 Knowledge by a plaintiff of a few instances of defendant's unfair competition will not be a bar to injunction.11

Laches which prevent recovery in one case, will not be a bar to another action of the same complainant against a subsequent infringer. Thus, in the "Hunyadi" cases, the complainant, the vendor of a Hungarian mineral water, was denied relief as to the use of the word "Hunyadi" against the vendor of water from another spring in Hungary, upon the ground of

7-Estes V. Worthington, 22 Fed. Rep. 822. To the same effect, see C. O. Burns Co. v. W. F. Burns Co., 118 Fed. Rep. 944; Havana Commercial Co. v. Nichols, 155 Fed. Rep. 302; Ward Baking Co. v. Oak Park Baking Co., 278 Fed. Rep. 627; Von Mumm v. Steinmetz, 137 Fed. Rep. 168; Wesson v. Galef, 286 Fed. Rep. 621, 626, where preliminary injunction granted after two years' delay. Judge Learned Hand raising the question whether laches can

[blocks in formation]

laches, fourteen different Ilungarian mineral waters having been marketed in the United States under the name "Hunyadi," and the complainant being estopped as to dealers in such Hungarian bitter waters by laches.12 Subsequently an American dealer entered the market with an artificial water to which he applied the mark "Hunyadi." In affirming a decree granting the injunction, Judge Grosscup said “appellant offers a manufactured water of whose contents the public has no knowledge, and at a cost ruinous to the importation of the genuine water. The supreme court never meant, in our judgment, to throw around such a competitor the protection of the estoppel indicated, or expose the public to a device under which they would drink the waters of Lake Michigan, doctored after appellant's recipe, in the belief that they were drinking the natural waters of Hungary." 13

§ 90. Laches and acquiescence distinguished. "Laches" and "acquiescence" are terms frequently used synonymously, or at least without due regard to their respective meanings. "Laches" imports a merely passive, while "acquiescence" implies an active assent.14 The Supreme Court of California has said, "Laches' would strictly seem to imply neglect to do that which ought to have been done; 'acquiescence' a resting satisfied with or submission to an existing state of things." 15

"Acquiescence-that is, assent-is tantamount to an agreement." 16 The Supreme Court of the United States, by Mr. Justice Swayne, has said: "Acquiescence and waiver are always questions of fact. There can be neither without knowledge. The terms import this foundation for such action. One can not waive or acquiesce in a wrong while ignorant that it has been committed. Current suspicion and rumor are not enough.

[blocks in formation]

There must be knowledge of facts which will enable the party to take effectual action." 17

§ 91. Acquiescence. The consent of a manufacturer to the use or imitation of his trademark by another may, perhaps, be justly inferred from his knowledge and silence; but such a consent, whether expressed or implied, when purely gratuitous, may certainly be withdrawn; and when implied, it lasts no longer than the silence from which it springs. It is, in reality, no more than a revocable license. The existence of the fact may be a proper subject of inquiry in taking an account of profits if such an account shall hereafter be decreed; but even the admission of the fact would furnish no reason for refusing an injunction." 18 This dictum of Judge Duer in Amoskeag Mfg. Co. v. Spear is so comprehensive as to warrant its extended quotation above given. While it was held by Vice-Chancellor Wood that a plaintiff's acquiescence in the defendant's use of his mark for two years after the plaintiff had seen it publicly exhibited would disentitle him to relief, 19 an injunction was granted in a case where a dissenting opinion shows that the essential feature of the mark had been used by others than plaintiff with his knowledge for more than twenty years.20 It has been held in a federal circuit court that acquiescence for a time equal to that prescribed in the statute of limitations must be shown.21 Acquiescence can not

be inferred and it is revocable if it could be.22

"In England the rule is stringent in trademark cases that lack of diligence in suing deprives the complainant in equity of the right either to an injunction or an account. Our courts are more liberal in this respect.

17-Pence v. Langdon, 99 U. S. 578-581; 25 L. Ed. 420. See also to the same effect, Allen v. McKeen, 1 Sumn. 276-314; Evans v. Smallcombe, L. R., 3 H. L. 249; Ramsden v. Dyson, L. R., 1 H. L. 129; Reed v. West, 47 Tex. 240.

18-Amoskeag Mfg. Co. v. Spear, 2 Sandf. S. C. 599; Cox, 87. The withdrawal of gratuitous permission to use one's name may be made at the pleasure of the party granting such permission. McCardel v. Peck, 28 How. Pr. 120.

19-Beard v. Turner, 13 L. T. R. N. S. 747 Cox, 717.

A long lapse of time will not

20-Gillott V. Esterbrook, 47 Barb. 455; Cox, 340. Dissent of Ingraham, J.

21-Taylor v. Carpenter (2), 2 Wood. & M. 1; Cox, 32. But "laches for even less than the statutory period of limitations, aided by other circumstances, will bar a right." Acheson, J., in Prince's Met. Paint Co. v. Prince Mfg. Co., 6 C. C. A. 647; 57 Fed. Rep. 938-944, where the plaintiff was held to be estopped by eight years' acquiescence.

22-Gillott v. Esterbrook, supra: Amoskeag Mfg. Co. v. Spear, supra:

deprive the owner of a trademark, of an injunction against an infringer, but a reasonable diligence is required of a complainant in asserting his rights, if he would hold a wrongdoer to an account for profits and damages. This rule, however, applies only to those cases where there has been an acquiescence after a knowledge of the infringement is brought home to the complainant."' 28

A plaintiff who has sold defendant seed from which the seed offered by defendant was grown, and who has assisted in the preparation of defendant's advertising matter, has been held to have acquiesced in defendant's competition.23a

§ 92. Caution notices to infringers as evidence of acquiescence. In a case of unfair competition, involving the number "303" applied to pens, a caution notice had been applied by the plaintiff for many years, warning the public against imitation of his pens. The court said, "we see, by his notice or 'caution,' that he knew that others, also, had used the same combination of numbers, for the purpose of defrauding him; but it does not appear that he had discovered any individual whom he could attack as an offender. Nor can I believe that

a 'caution' to the public against the fraudulent use of his device can be deemed an acquiescence in the use by others of the peculiar arrangement of numbers upon steel pens and packing boxes which the plaintiff had first adopted and used and which had come to be a designation of a particular and popular pen with the public.'

24

§ 93. Abandonment.-The consideration of laches and acquiescence leads us naturally to the subject of abandonment. The first form of abandonment is by disuse of the mark. "That the right to use a trademark may be lost by abandonment or disuse is too clear to need argument or the support of authority." 25 But the length of time during which the mark

Christy v. Murphy, 12 How. Pr. 77; Cox, 164; Seb. 137; Menendez v. Holt, 128 U. S. 514; 32 L. Ed. 526.

23-Nixon, J., in Sawyer v. Kellogg, 9 Fed. Rep. 601. Under peculiar circumstances a delay of four years has been held not to defeat the right to an accounting. Garrett & Co. v. Schmidt Wine Co., 256 Fed. Rep. 943.

"In suits based on unfair competition it is well settled that mere laches in the bringing of suit is not a bar to the injunctional fea

tures of a cause." Gates, J., in Zweck v. Aberdeen Laundry Co., 44 S. D. 176; 183 N. W. Rep. 118.

23a-R. L. Bennett & Sons v. Farmers' Seed & Gin Co., 288 Fed. Rep. 365, 367 (C. C. A. 5).

24-Leonard, J., in Gillott v. Esterbrook, 47 Barb. 455; Cox, Amer. Trademark Cases, 340, 363.

25-Hughes, J., in Blackwell v. Dibrell, Fed. Case No. 1475; 3 Hughes, 151; 14 Off. Gaz. 633; Price & Steuart, 39; Seb. 590; to the same effect, Laverne v. Hooper, Ind. L. R. 8 Mad. 149; Royal Bak

« AnteriorContinuar »