cial Cede. The order of the commission can be enforced only by the circuit court of appeals. Of course the discontinuance of the acts complained of does not avert the necessity for the "cease" order.24 "26 § 174. The elements whereon jurisdiction must be predicated. Lord Chancellor Brady, in the Irish High Court of Chancery, in 1893, speaking of trademark causes, said: "In such suits, in order to found the jurisdiction of this court, there must be established, first, the existence of the trademark: next, the fact of an imitation, whether a direct imitation, or one with such variations that the court must regard them as merely colorable; and thirdly, the fact that the imitations were made without license, or anything that this court could regard as acquiescence in their use." 25 Mr. Sebastian refers to the remark of Vice-Chancellor Bacon, in England, that "the law of Scotland does not in this respect differ from the law of England" 26 (referring to trademarks), as establishing, in conjunction with the above dicta of the learned Irish chancellor, the fact that the jurisdictional principles in the three kingdoms are the same.27 The Supreme Court of New York has held it error to dismiss a complaint upon the pleadings and the opening of counsel where the complaint showed the ownership of a tobacco sample ticket used in trade by the plaintiffs, and the wrongful use of an imitation thereof by the defendants.28 For reasons discussed elsewhere, it is not necessary to confer jurisdiction that it be alleged that any one has in fact been misled or deceived by the use of the simulated mark. But the pleadings must be drawn to suit the exigencies of the case; and where the facts plainly showed that the simulated mark did not and could not deceive either the jobber or retailer, and the fraud, if any, was upon the ultimate purchaser, the consumer, it was proper to aver the fact that the infringement was calculated to deceive the consumer, 29 and 24-Juvenile Shoe Co. v. Fed. Trade Com., 289 Fed. Rep. 57, 59, C. C. A. 9. 25-Kinahan v. Bolton, 15 Ir. Ch. 75-79. See also Thedford Medicine Co. v. Curry, 96 Ga. 89. 26-Singer Mfg. Co. v. Loog (3). L. R. 18 Ch. D. 395-404. 27-Sebastian, Trademarks (4th Ed.), 170. 28-Linde v. Bensel, 22 Hun, (29 N. Y. Sup. Ct.), 601. 29-Drummond Tobacco Co. V. Tinsley Tobacco Co., 52 Mo. App. 10, 25. The court adds: "The consumer of the particular article is to be considered almost exclusively in determining the question of infringement, because, in the case of an attempted deception, he is substantially the only party likely to it is probably always a better course to aver that the imitation is calculated to deceive the ultimate purchaser. The real and simulated marks should be submitted with the bill of complaint or accurately described in appropriate terms, the main test of the alleged resemblance being inspection by the court; 30 with the qualification that the resemblance need not be such as to deceive persons seeing the two marks side by side.31 § 175. The parties plaintiff.—The action to protect a trademark may be brought by its owner or a licensee.32 The better rule appears to be that the owner of the trademark or tradename is a necessary party. Thus the exclusive consignees of goods bearing trademarks belonging to a foreign consignor were held not entitled to maintain suit for infringement without bringing in the consignor as a party plaintiff; 33 although the owner of a tradename which he had assigned the right to use for a term of years was adjudged capable of maintaining an action for injunction against its infringement without joining his assignees.34 Trusts, constructive, implied or expressed, may arise,35 in which case the name of the trustee would be necessary in all suits at law affecting the legal title to the trademark, and it would be his duty at all times to protect be deceived." Citing Sykes v. Sykes, 3 B. & Cr. 541; Farina v. Silverlock, 1 K. & J. 509; Rose v. Loftus, 47 L. J. Ch. 576; Singer Mfg. Co. v. Loog (3), 18 Ch. D. 395-412. 30-Drummond Tobacco Co. v. Tinsley Tobacco Co., 52 Mo. App. 10, 26. 31-McCann v. Anthony, 21 Mo. App. 83; Drummond Tobacco Co. v. Tinsley Tobacco Co., 52 Mo. App. 10. 32-Kidd v. Johnson, 100 U. S. 617; 25 L. Ed. 769; Kidd v. Mills, 5 Off. Gaz. 337. Where there is an exclusive licensee he must be made a party, or no injunction can issue Wallach v. Wigmore, 87 Fed. Rep. 469. 33-Richards v. Butcher, 62 L. T. 867. 34-Warwick Tyre Co. v. New Motor Co. (1910), 1 Ch. 248. 35-In re Mitchell, L. R. 28 Ch. D. 666. Thus where the use of a trademark is improperly obtained by one member of a partnership for his own use, he being bound to obtain it for the partnership, he is held to be the trustee of the mark for the benefit of the firm. Weston V. Ketcham, 39 N. Y. Sup. Ct. 54. Compare Ex parte Lawrence Bros., 44 L. T. N. S. 98; 29 W. R. 392; In re Rust, 29 W. R. 393; In re Farina, 29 W. R. 391; The three cases last named are cases in which one partner registered a mark in his own name by mistake. and defend the title or allow his name to be used for that purpose, under the established principles of law affecting trusts.36 It is not necessary that all the parties having an interest in a trademark join as parties plaintiff. Thus, Vice-Chancellor Shadwell held that surviving partners could maintain an action for an infringement of the firm's trademarks, notwithstanding the fact that the personal representatives of a deceased partner might have some interest in them.37 Parties having distinct interests in the devices embodied in an infringing label may join as complainants in equity.38 Individuals and corporations having a common interest may join as parties complainant in a bill in equity to restrain an unfair competition in trade. Thus in one case we find seven corporations located in the city of Minneapolis joined in a bill to restrain the fraudulent use of names peculiar to their business and locality, by a dealer in Chicago,39 and the owners of two separate "Blue Lick Water" springs in Kentucky joined in a bill to restrain the use of the words "Blue Lick Water" by a third party who had no right to their use. 40 During the period of administration the personal representative of the deceased owner of a trademark holds the mark, as we have seen, although it has been held in one case that it may pass without administration, 41 Where there is an administrator, it is his duty to defend the trademark from infringement, and he can recover all accrued profits and damages from the infringer, as actions to restrain infringement 36-Perry, Trusts (4th ed.), § 520. 37-Hine v. Lart, 10 Jur. 106; Seb. 80. 38-Jewish Colonization Assn. V. Solomon, 125 Fed. Rep. 994, 995. 39-Pillsbury - Washburn Flour Mills Co. v. Eagle, 30 C. C. A. 386; 86 Fed. Rep. 608. See also Gravel Roofers' Exchange v. Turnbull, 64 Off. Gaz. 441. 40-Northcutt v. Turney, 101 Ky. 314; 41 S. W. Rep. 21. See also Society of Accountants v. Corpora and recover profits and damages are held not to come within the rule actio personalis moritur cum persona.42 The owner of real estate and improvements thereon may have such a right in a trademark used to identify the products of his tenants as to entitle him to prevent his tenants from using the mark after they have removed to other premises. 43 One who has an exclusive right to use a trademark for a limited time may maintain a suit for infringement.44 Upon the dissolution of a copartnership, "either member may use the devices or symbols, unless he has divested himself of the right." 45 Where copartners dissolve partnership, each retaining the right to use the trademarks of the firm, each can assert his right to the exclusive use of such trademarks as to all persons except his associates in ownership. 46 But in all cases where the right to a trademark is vested severally in two or more persons, either of them will be enjoined from advertising or claiming that he is the "sole proprietor," 47 or that his is the "only genuine" article. +8 And where title is so held, either of the parties entitled to its use may alone maintain a suit in equity against an infringer.49 42-Woerner, Administration, $299; Oakey v. Dalton, L. R. 35 Ch. D. 700; 35 W. R. 709; Hatchard v. Mege, L. R. 18 Q. B. D. 771; Giblett v. Read, 9 Mod. 459; Croft v. Day, 7 Beav. 84. 43-Atlantic Milling Co. v. Robinson, 20 Fed. Rep. 217; Armstrong v. Kleinhaus, 82 Ky. 803; Harper v. Pearson, 3 L. T. N. S. 547; Carmichael v. Latimer, 11 R. I. 395; Motley v. Downman, 3 My. & Cr. 1; Dickson v. McMaster, 18 Ir. Jur. 202. 44-One who has by contract a right to furnish articles bearing a tradename ("Official American League" base ball), may maintain an action for infringement in his name; the decree of injunc tion will be limited in duration to own 48 the period of the contract. A. J. Reach Co. v. Simmons Hdw. Co., 155 Mo. App. 412; 135 S. W. Rep. 503. 45-Patterson, J., in Baldwin v. Von Micheroux, 25 N. Y. Supp. 857. To the same effect see Huwer v. Dannenhoffer, 82 N. Y. 499; Hazard v. Caswell, 93 N. Y. 259. 46-New York Cement Co. V. Coplay Cement Co., 45 Fed. Rep. 212. 47-International Silver Co. V. Simeon L. & George H. Rogers Co., 110 Fed. Rep. 955. 48-Fish Bros. Wagon Co. V. Fish Bros. Mfg. Co., 87 Fed. Rep. 203. 49-Dent v. Turpin, 30 L. J. Ch. 495; Seb. 196. § 176. The parties defendant. We have seen in a previous chapter that the liability for injunction against infringement extends to the manufacturer of dies from which counterfeits of the mark are to be made; and it may accurately be said that every one who deals with the simulated trademark or the means of producing it will be restrained in equity. In a case where a temporary injunction had been granted against a person since deceased, without opposition, and the defendant in his life-time had never moved to vacate it, it was held in New York that the cause would not be continued as against the administratrix of the defendant, because it was not shown that the defendant had acquired any rights in the litigation or that any prejudice would result to the estate by not continuing the action.50 The question who may be parties defendant involves necessarily a discussion of some of the principles applied by the courts in infringement proceedings. Where the plaintiff, the sole owner of a mineral spring, leased it to one who adopted a name to indicate its waters, the concessionaire was enjoined at the instance of the owner from applying the name so used to water from another spring; 51 and in a case where the owner of a spring granted concessions to another conveying the selling privileges in certain countries, the concessionaire was enjoined from interfering with the sale in those countries of water from the spring sold through parties other than the concessionaire.52 A manufacturer may delegate the right to use his trademark to sales merchants, giving them that right only so long as they buy goods. of the class to which the trademark belongs, from him. Upon their ceasing to so purchase their goods they will be enjoined from the use of the mark.53 A firm of shippers of merchandise who applied the name "The Keystone Line" to vessels they did not own, but of which they had the exclusive management in loading and unloading, were held to have acquired such an exclusive right 50-Republic of Peru v. Reeves, 40 N. Y. Sup. Ct. 316. 51-Hill v. Lockwood, 32 Fed. Rep. 389. 52-Apollinaris Co. (Ltd.) V. Scherer, 23 Blatchf. 459; 27 Fed. 53-In re Riviere, 53 L. T. N. S. 237. See also Lavergne v. Hooper, Ind. L. R. 8 Mad. 149. |