Trade Mark Licensing and the Bostitch Decision

DOIhttp://doi.org/10.1111/j.1468-2230.1966.tb01126.x
Publication Date01 Jul 1966
AuthorLeslie W. Melville
TRADE MARK
LICENSING
AND
THE
BOSTITCEI
DECISION
SPEAK IN^
generally,
a
trade mark may represent two aspects of the
good+ll of
a
business:
it
may represent
a
distinctive origin of the
goods to which
it
is applied
or
in relation to which
it
is used,
or
it
may represent
a
particular standard of quality of those
goods.
It
may, of course, represent both. Its legal significance at common
law finds expression
in
the action of passing4 in which,
if
a
plaintiff
satisfies the court that
a
particular mark is his mark and distinctive
of
his
goods only, he can obtain legal remedies
in
the form of
an
injunction and damages against some other trader who applies
a
confusingly similar mark
to
his goods, being
goods
of the same
description
as
those of the plaintiff.
It
must follow that in
a
society with
a
fairly simple structure con-
sisting of small manufacturers,
a
trade mark would
soon
lose
its
value if one manufacturer allowed another one to we the same mark.
Distinctiveness would have been lost and, unless one manufacturer
had control over the quality of goods to which the mark was applied
by the other manufacturer,
it
would
soon
lose any significance
as
a
standard of quality. But with thd growth of industry
in
complexity
and size, and the emergence of joint stock companies and the pr+
liferation of sub-contracting for major projects, the concept that
a
trade mark could be applied only to goods actually manufactured
or
selected by the owner of the trade mark ceased to represent satis-
factorily the true industrial position. Nevertheless,
no
ingrained was
the idea that
a
trade mark must represent one particular manu-
facturer and
no
other that
it
took
a
long time
after
the need for
some relaxation of that rule arose before the law provided for
a
system
of
the licensing of trade marks under suitable control.
And
when it did come
it
apparently was intended to operate only in
relation to registered trade marks.
The system of registration of trade marks starts,
in
the United
Kingdom, in
1875.
It$
purpose was, of course, to make
it
easier
for
a
manufacturer to prove that
a
particular mark was
his
without
having to go to.the trouble and expense of calling
a
long line
of
witnesses to show that they associated
a
particular mark with
a
particular manufacturer and
no
one else. By this means, instead of
having to bring
an
action
for
“passing-off,”
a
manufacturer who
bad succeeded
in
registering
his
mark could bring
an
action for
infringement of that registration &d the rights conferred by it, and
all he had to prove was that he was the registered proprietor
of
the
mark and that the defendant had infringed that mark, whereupon
he would be able to claim the legal remedies appropriate
on
the
facts. The law was re-enacted and consolidated in
1908,
but
no
876

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