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Launched: 1998


Benjamin G. Paster*


Trademark Reporter 59,

1969, 551-572.

Compiler Press




Middle Ages

Pre-Statutory English Experience


HHC: Index and titling added


The first comprehensive text concerning the law relating to trademarks defines its subject as “. . . the name, symbol, figure, letter, form or device, adopted and used, by a manufacturer, or merchant, in order to designate the goods that he manufactures, or sells, and distinguish them from those manufactured or sold by another; to the end that they may be known in the market, as his, and thus enable him to secure such profits as result from a reputation for superior skill, industry or enterprise.” [1] Most studies concerning the use of trademarks state that the recognition thereof begins with the dictum concerning the infringement of a clothier’s mark during the reign of Elizabeth I, uttered by King’s Bench judge Dodderidge in Southern v. How. [2] Upton goes so far as to report that “property in trade marks, exclusive and absolute, has existed and been recognized… from the earliest days of our recorded jurisprudence.” [3] But that is merely a scratch upon the surface of trademark history; few human institutions can boast a more respectable antiquity.  Trademark usage dates from the times of our very earliest recorded knowledge.

This paper will attempt to examine (1) the use of trademarks or their functional equivalents in ancient times, (2) the vast amounts of Middle Age guild and municipal legislation dealing with trademarks and the penalties exacted for their infringement, and (3) the origins and development of modern trademark jurisprudence in both common law and Chancery courts up until the last quarter of the nineteenth century when the Anglo-American legal system promulgated statutes regulating the judicial protection of trademarks, the spirit, if not the letter, of such enactments serving as the basis upon which the law today is discerned.

The need for trademarks is a product of man’s complex commercial society. [4]  In a world which traded face-to-face, the

* Student at the Wharton School, University of Pennsylvania.


purchaser of a commodity dealt directly with the producer, and a trademark was not used because it was not necessary for the continuation of successful commerce.  The satisfied purchaser would simply return to the same market place and trade with the same individual to purchase again the article desired; the locality of the trading place became the essential means of identification and the seat of good will.  However, as soon as a particular maker, by the excellence of his manufacture acquired a reputation outside of his immediate locality, in order to visualize and perpetuate that reputation he adopted and used a mark to distinguish his product from others.  This maintained the identity of the manufacturer’s product through the hands of the middleman. [5] If the market is extensive and the goods are sold generally, a means of product/producer identification to the ultimate purchaser is essential; unless the quality of the product is good, no producer will care to identify it as his.  This functional aspect is the essence of the above definition of trademark.  As stated precisely by Lord Justice James, “No man is entitled to represent his goods as being the goods of another man.” [6]

Thus the importance of any industry and the quality of the goods it produces can accurately be gauged by the extent to which trademarks are affixed to the goods which that industry manufactures.  Our examination must therefore begin with the first of man’s goods which enjoyed extensive markets, the pottery of antiquity.



Techniques necessary for the manufacture of pottery were perfected about five thousand years ago; the earliest pottery of discernable origin was produced during the reign of Chinese Emperor Hoang-To, approximately 2700 B.C., some twelve centuries before the introduction of ceramics to Europe. [7] These Chinese pots exhibit two types of marks: the name of the period’s Emperor and/or the name of the maker or place of origin.  It was probably the Hindus who were responsible for the beginnings of European pottery; substantial commerce between the subcontinent and Asia Minor between 1200-1300 B.C. has been demonstrated by the many emblems affixed to Hindu merchandise found throughout the eastern Mediterranean region.  These marks were often simple picture symbols of the craft, rather than personal or imperial designations.

Excavations of temples at Nineveh and throughout Egypt have produced common building bricks bearing names which are reported to be those of the manufacturers.  These name-marks


were often accompanied by intricate pictures which are supposedly designatory of the brick’s maker. [8] Nebuchadnezzar had his name stamped on every brick of his palace. [9] It has been suggested that during this period bricks were best for use in construction only after they had dried for some two to five years, and that they could not be used in a building until after the age of the brick had been attested to by a local magistrate who marked them with his seal of approval. [10]

Greek pottery commonly displays pictures representing the adventures of classical heroes, but there also appears a mark on the base of the pots believed to signify the origin of the product.  Few examples of Grecian sculpture lack the inscription of the sculptor’s name.  On decorated pieces, the name of the decorator is also included. [11] Kohler reports that beside the maker’s name, cup handles for the use at the Ceramicus of Athens often displayed abstract trademarks in the form of figures of Mercury’s staffs, oil jugs, bees and lions’s heads. [12] The Bible presents several instances of trademark use. [13] During Solomon’s reign, the Temple and other structures were constructed by Phoenician skilled builders; the quarry mechanics who prepared the stone for these projects painted unique signs of origin on the stone blocks in vermillion paint to prove their claim to wages.

Roman products were also marked with various inscriptions.  Italian stonecutters’ marks are displayed on the ancient Roman city walls, on the buildings of the Palatine, and on the walls of Pompeii.  However, marked stone was used especially in the more ordinary constructions.  They are not found on the materials of the more pretentious and artistic buildings such as the Colosseum, the Forum or the gates and bridges of Rome. [14] During the Roman Republic pottery was often marked with the date of the manufacture alone, sometimes including the initials or name of the period’s consul or the product’s maker.  The Empire saw the extension of mark usage on ceramics to include the name of the owners of estates where the kilns were located, the owners or lessees of factories, and the freedmen or slaves in charge of the production.  It has been suggested that these trademarks indicate a governmental regulation whereby faulty workmanship might be punished and the source of responsibility for inferior goods absolutely established. [15] Roman lamps bear numerous inscriptions: simple trademarks; the name of maker or place where made; date of manufacture; dedication to deities; acclamations used at public games and events; or just plain facts.  The fabrication of these


lamps has been attributed to slave manufacture as indicated by the presence of only one name.  These slaves’ names generally occur in the genitive, the word officina (workshop or factory) being understood.  One rare piece is inscribed “Diogenes fecit” and several finds exhibit the abbreviation f. (for “fecit”; “he made”) after the slave’s name. [16] Compilations include over six thousand different identification seals and designs used on Roman ceramics.  These marks were also employed for advertising purposes.  Fortis oil-burning lamps, which appear to have been very popular during the fifth century in Rome, bear such inscriptions as VTERE (“use this”) and EME (“Buy me”). [17]

Roman mark usage was not, however, confined to pottery and stone.  Trademarks have been found on lead pipe, marble, glassware, bronze instruments, gold and silverware, knives and other iron articles, and gems. [18] The bread of Pompeii was stamped with designating seals.  Attesting to the trade-locale extension theory of trademark importance as propounded earlier in this paper are the customs of the Roman oculists.  As the market for their eye salves penetrated the entire known world, the oculists often stamped the dry salve cakes with the name of the physician, the formula of the substance and the directions for proper use.  They placed similar labels upon the earthen vessels containing liquid medications.  The famous cheeses of Etruscan Luna were marked with a picture of that city.  Perhaps the most important commodity to the ancient Romans, wine, was subject to extensive trademark use, the jugs often describing the origin of the grapes, the manufacturer of the wine, and the date of the wine’s pressing. [19] The Roman citizen was well acquainted with signs for inns and shops.  The famous sign of the Elephant Inn of Pompeii said: “Hos pitium hic locator triclinium cum tribus lectis et cum (modis)” (“an inn with a dining room and with three comfortable couches”). [20]

Daniels states that the highly developed commercial law of ancient Rome made available to the purchaser of fraudulently marked goods a civil law action. [21] If such laws did exist they have never been definitively reported.  Kohler describes trademark control as being extra-legal.  Of this legal omission he says :

All of this shows us a side of Roman commercial life which is often overlooked by legal historians; Roman commercial relations, although resting on different principles, were not, in their results, as different from our own as has been generally supposed; the Roman world in the time of the empire


Vol. 59 TMR                                                                                                         555

was penetrated by the same general impulses of trade as today.  These manufacturers’ marks are no singularity; they are connected with the same system of marking that is known in modern trade.

… the whole institution in ancient times was no exception; that it was an institution of the first rank, and one which covered the whole territory of the ancient civilized world.  It is, however, doubtful whether this institution of commerce ever became a system of established law, and whether it did not rely upon commercial honesty and integrity rather than upon the law.

… That no trace of such an action is found in the commentaries of the Roman jurists is not surprising considering the fragmentary condition of those commentaries at present, especially as it is certain, from existing writings and inscriptions, that there were many legal institutions of the Roman Empire, concerning which we have no juristic commentaries.  Jurists and schools of jurists have their prejudices, and there are institutions which have been favored or neglected in juristic commentaries, for purely artificial reasons.  A nation is always richer in legal institutions than is indicated by its legal and judicial writings, however full and complete they may be. [22]


Middle Ages

During the Dark Ages following the fall of the Roman Empire, the use of trademarks disappeared from practically all manufactures as the importance of broad trade markets slackened.  The reduction in trademarks was, however, of much greater magnitude than the market-extension thesis might predict; this phenomenon is unexplained by the scholars of trademark history. [23] The only exception to this decline was the great increase in the marking of sword blades.  On the tangs of Norse swords found in the mosses of Schleswig are commonly inscribed the names of the armorers. [24]

However, when the great upsurge of trade during the Middle Ages occurred, it was accompanied by very large quantities of guild and municipal legislation regulating the use of marks.  Political conditions in Medieval Europe had a powerful influence on the use of trademarks - the disintegration of the feudal system, the establishment of the Hanseatic League in northern Germany for the protection of sea-trade, the rise of the free cities which were sovereign and self-directing, and most important, the formation throughout Europe of the great trade and craft guilds.  All of these factors had a substantial share in developing a system of trade supervision and trademarking which was both discriminat-


ing and complex.  Inter-urban rivalry was naturally further increased by the civic pride of the municipalities which had grown strong and self-conscious through their several successes in asserting their rights against former rulers. [25] The quality of the wares produced within the city’s limits was to them a matter that called for regulation.  These influences led to the establishment of a standard quality for local products and the use of the municipal mark (usually the coat of arms of the municipality) on all goods made within its boundaries.

An even more potent force in trade than the municipal authority were the trade and craft guilds which sprang up throughout England and Europe from the eleventh to thirteenth centuries.  The guild began in most instances as an organized protest against usurpation and aggression, whether by magistrates, rulers or outlaws.  The guild movement was basically confined to the towns.  In its adherence to the obligations of charity and brotherhood and its love of ritual, the guild movement suggests a Masonic order; in its care for the spiritual welfare of its members and its insistence upon religious forms, it fulfilled some of the duties of the church; in its strict regulation of the conduct and dealings of its members and its not uncommon exercise of municipal and police authority, it sometimes usurped functions of government; and in its oversight and direction of the trade activities of its adherents, it resembles a present-day trade union although its scope was much broader. [26]

These guilds took root in the working and trade classes.  This gave rise to two distinct organizations, the trade guild whose members were merchants and the craft guild composed of craftsmen.  Each of these types of guilds promulgated regulations to control the activities of its members.  By compelling the worker to use his mark, the guilds thus strengthened their control of the trade. [27] As a rule, when one became a master craftsmen, he was required to choose a mark, obliged to use it on all goods he produced, and to retain it his entire life.  Use of a mark was obligatory, part of the duty to the community, and demanded by the strict social order of craft guilds of the Middle Ages. [28]

It was common practice during the Middle Ages to mark upon artistic productions the name, monogram or device of the artist or workman.  A decree of the Council of Nuremberg in 1512 states:

     Whereas, a certain foreigner, who sells engravings under the Council Chamber has, among others, certain ones bearing the signature of Albrecht Durer,


Now, therefore, it is ordered that he shall obliterate all such signatures, and keep no more such engravings in future, and if he shall neglect so to do, he shall be brought before the Council for fraud. [29]

Lucien-Brun, in his classic work on the subject of trademarks, states that in France trademarks were regarded as property and protected against infringement by civil remedies. [30] As early as the thirteenth century, copying of valuable marks became so common and injurious that infringement was made a misdemeanor, in some cases even a felony, and was punished in the barbarous manner of the times.

Examples of such Middle Age legislation abound.  The Elector of Palatine in the fourteenth century pronounced an edict stating that the sale of spurious wine was a most outrageous form of deceit, and punishing by hanging any innkeeper who sold ordinary wine as Rudesheimer. [31] Charles V in 1544 directed his attention to Flemish tapestries demanding that “any master workman who makes or causes to be made any such tapestry, shall work upon one end and upon the bottom of the said tapestry a mark or symbol, and such signs as the city may require; that it may be known by the said marks of what city and of what master the said tapestry is a product.” [32]  Kohler reports [33] that “an edict of the magistrates of Brussels, 1525, established a system of protection for the originators of new tapestry designs; and in 1528 another edict required that each piece of a certain size should bear, on one side, the mark of the maker, and on the other, that of the city.”  A royal edict of Charles IX in 1564 put imitators of marks in the same category as counterfeiters who were capitally punished.  Statutes protecting the drapers of Carcassone (1666) imposed the penalty of pillory on infringers.  Punishment was established for imitators of the marks of the goldsmiths in 1376, the weavers in the 1400’s, and the calenders in 1518. [34] These acts, we are told, were non-general in nature; for some trades, infringement of a trademark was a felony and in others it was only a civil -wrong. [35] In 1266, the English Parliament enacted a law stating: “Every baker shall have a mark of his own for each sort of bread in order that would-be customers should know what kind of bread they were being offered.”  [36] In France at least as early as the fourteenth century, each workman had his mark, with which he was required by law to mark all of his products.  This trademark usage was not optional, but rather obligatory, for purposes of showing who was responsible for the


work.  There was also a public stamping after an inspection and approval.

In 1366 it was decreed that no London silversmith should sell wrought silver of less than sterling fineness the mark of every such smith was to be made known to the wardens of the craft.  Lead seals (which date from the fourteenth century) have been found at Charlton, the early center of the English woolen industry, and it is suggested that these seals were used in the identification of bales of wool. [37]

There also are evidences in Scots law concerning trademarks.  In an Act of 1487 entitled “The binde of Salmond, and measure thereof,” it is prescribed that every burgh shall have, in addition to hoop irons serving to bind and measure barrels containing salmon, “a burning iron to marke the samin, under the paine of escheit of the barrel un-marked.” [38] Similar edicts, decrees and town-council legislation concerning trademark infringement are cited ad infinitum in every responsible study of this segment of legal history.

The use of trademarks by printers was an inevitable consequence of conditions which resulted from an absence of any notion of property in literary work.  The first book published under a printer’s mark was Psalterium Latinum printed in Mayence by Johann Fust and Peter Schoffer in August, 1457.  It is interesting to note that the third appearance of a printer’s mark (in 1470) was a counterfeit of Fust and Schoffer’s original mark. [39]

For many years after the invention of the printing press, a void existed in the law corresponding to modern copyright regulation.  There were few original contributions to literature.  Books of the day consisted almost entirely of Greek and Latin classics and the writings of the fathers of the Church.  The end sought by publication was not originality but accuracy.  Some printers acquired a great reputation for the considerable accuracy of their texts; monograms of various kinds were employed to identify as theirs the books that they published.  Thus the dolphin and anchor of Aldus, the representation of a printing press of Badius and the monogram of Caxton are familiar examples of publisher’s marks. [40]

Inasmuch as the law afforded no copyright protection, publishers pirated not only the full literary contents of a work, but also the trademark of the original publisher.  In the Preface to Aldus’s publication of Livy in 1518, there is written:

Lastly, I must draw the attention of the student to the fact that some Florentine printers, seeing that they could not


equal our diligence in correcting and printing, have resorted to their usual artifices.  To Aldus’s Institutiones Grammaticae, printed in our offices, they have affixed our well known sign of the Dolphin wound round the Anchor.  But they have so managed that any person who is in the least acquainted with the books of our production, cannot fail to observe that this is an impudent fraud.  For the head of the Dolphin is turned to the left, whereas that of ours is well known to be turned to the right.’[41]

Such warnings appeared to be a common practice.  Benedict Hector of Bologna in “Justinus et Florus” warns: “Purchaser, give heed when you wish to buy books issued from my printing office.  Look at my sign, which is represented on the title-page, and you can never be mistaken.  For some evil-disposed printers have affixed my name to their uncorrected and faulty works, in order to secure a better sale for them.” [42] Jacobus Badius of Paris faced the same pirating competitors as did his Italian counterparts: “We beg the reader to notice the sign, for there are men who have adopted some title, and the name of Badius, and so filch our labour.” [43] Literary and publishers’ mark piracy became so prevalent that the Milanese Printer’s Guild declared that “No printer or dealer must use for his sign a token identical with or closely similar to that already in use with an authorized printer or dealer.” [44] That printers’ marks were regarded as valuable property is evidenced by the lengthy procedures established in many printers’ wills to transfer such marks to their heirs.

The hazards of navigation during the Middle Ages made the use of a private mark of especial value to those merchants whose trade extended beyond the seas.  Merchants’ marks were registered, and certificates issued attesting to mark ownership.  In the event that goods were lost on a sea voyage and subsequently recovered, it was often necessary to determine the identity of the lost goods by the merchants’ marks affixed to them.

A trade book from the City of Danzig of 1420 bears in its margin the marks of a large number of merchants, including several from Amsterdam, England and Genoa.  Guild books of the merchants of Liibeck, the principal city of the Hanseatic League, gives beside the name of its members, the mark of each.[45] In 1418 the town council of Hamburg wrote to Lege, in order to get possession of boats held at Dordrecht with their cargoes, the property of certain citizens of Hamburg; in proving claim to the goods, the document cited forty-three merchants together with their marks,


which it is said, were found upon the merchandise making up the cargo. [46]

Throughout Europe numerous so-called marks of control or guarantee were affixed by local authorities to certify that the goods bearing them were of a prescribed quality standard.  These were used in connection with other marks, and correspond closely to modern inspectors’ stamps on meat, dairy and other perishable commodities.  Such control marks were concerned more with regulating the size, weight, price or quality of the product, rather than identifying the individual maker, except to point out on whom the fault lay should the standard not be met. [47] Not uncommon either during the Middle Ages were regional marks applied to products of a whole district, in distinction to those of a particular town or guild.

There appears an amazing similarity between Middle Age trademark legislation and modern trademark law.  Kohler quotes a Statute of Parma which he claims is “more compact and adequate than the Trade Mark Act of the United States”: [48]

A chapter for the protection of guilds and artisans in this state, and to prevent many frauds which are or may be committed upon them; - that no persons in the trade or guild shall use the mark of any other person in such trade or guild, nor place such mark, or a similar one, upon knives or swords; and if any person in such guild has continuously used a mark upon knives, swords, or other steel or iron articles for ten years, and any other person is found to have used, within one or two years, the same mark or an imitation thereof,… whether stamped or formed in any other way, the latter shall not in future be allowed to use such mark upon knives, swords, or other steel or iron articles, under penalty of ten pounds of Parma for each and every offense, and that regardless of any compromise or award of arbitrators which may have been made.  Tenth session, 1282, Aug. 28. [49]

Similar legislation appeared in France, Italy, Germany and England. [50]

In the Guild Statute of Liibeck it was declared in 1547 that bakers were required to put a mark on their bread with a sign “which shall continue to be the property of the house, so long as it is continued as a bakery.”  The Act also provided for the registration of all bread bakers’ marks in a book as public notice of ownership.  The asset value of a trademark was recognized by a provision that, just as a business belongs to the house and is transferred


with it, so the mark belongs to the business and passes to successors. [51]

The modern day parallel of this doctrine was explained in a decision of Mr. Justice Field: [52]

When the trade-mark is affixed to articles manufactured at a particular establishment and acquires a special reputation in connection with the place of manufacture, and that establishment is transferred whether by contract or operation of law to others, the right to the use of the trade-mark may be lawfully transferred with it.  Its subsequent use by the person to whom the establishment is transferred is considered as only indicating that the goods to which it is affixed are manufactured at the same place and are of the same character as those to which the mark was attached by its original designer.

The holder of a registered trademark was “not to lend his mark to anyone whatever, to keep an open shop, etc.”  Any lending of marks was declared to be a violation of good faith and of the public ordinances in relation to trademarks. [52] The prohibition against loaning trademarks (i.e., naked trademark licenses) is also a vital part of our present law, as evidenced by a pronouncement of Justice Smith: [54]

If the legislature and the courts are thus sedulous to protect the rights of individuals in respect to their inventions, labels, and devices, it would seem to be implied that such individuals should not themselves attempt to allow any imposition upon the public by false and fraudulent use of such labels, devices, or names, or inventions, for the sale of spurious or simulated articles.

But if it be a crime to counterfeit labels, words, or devices previously appropriated to distinguish property, or to vend goods thus stamped, without disclosing the fact to the purchaser, it is equally an offence against the spirit of the law, equally injurious to trade and commerce and equally an imposition upon the public, to palm off spurious goods under cover of genuine labels and devices.  Contracts to do this are clearly against public policy and should not be upheld and enforced by the courts.

Much of modern trademark law and many common law rules concerning trademarks are found in surprisingly similar form in the medieval guild regulations, municipal ordinances, and royal decrees.  In the introduction to Lucien-Brun’s Les Marques de


Fabrique et de Commerce it is noted that “The general rules were almost the same then as now.” [55] It is believed that no knowledge of these older statutory provisions was possessed by the legislators and judges who applied modern trademark law.  This reappearance of such similar doctrine can only be accounted for on the theory that similar commercial conditions have necessitated similar measures of protection and required similar legal institutions.

The first reference to trademarks in the King’s Bench is an “irrelevant reminiscent dictum” [56]first reported in 1656 to have been pronounced in the case of Southern v. How by Dodderidge, J. concerning a Common Pleas action for infringement of a clothier’s mark.  The reasons for the inclusion of the dictum are obscure and the very fact of its utterance is barely established by the five extant and conflicting reports of the case. [57]

Despite the fact that Dodderidge’s reminiscence (whatever it was) was a pure dictum, and despite the conflict of evidence as to what the dictum actually was, Southern v. How appears to have acquired considerable weight as authority for the proposition that the unauthorized use of a trademark is unlawful and may be subject to an action in deceit.  It is classified as propounding that theory in many abridgements and digests. [58] English courts have unequivocally relied upon the authority of Southern v. How to establish the antiquity of their jurisdiction to prevent trademark piracy. [59]

Nevertheless, several text-writers on trademarks have been quite content to regard the law as practically the creation of the nineteenth century.  Thus in his treatise, Hopkins states :

We walk in almost absolute darkness along these dim historic trails.  On every hand are signs that show the coming importance of trademarks.  But Rome is to reach her zenith and her debacle, the Middle Ages are to intervene, the new world beyond the Atlantic is to be discovered, modern Europe is to be reorganized by states and peoples before we again reach traces of the use of identifying marks in trade.  Even then, the laws of trademarks will not come into existence until generations of traders have come and gone.  The history of the law of trademarks is pretty accurately at our service. [60]

Why such commentators have failed to take account of the historical evidence is of course a matter of conjecture and beyond the scope of this article.


However, until a report of the case referred to in Southern v. How is found its dictum can only be employed to support Pound’s complaint against the courts and text-writers by whom “a principle was found latent in some meagrely reported, ambiguous and fragmentary pronouncement of a mediaeval court which had culminated in the latest decisions of English and American courts.” [61] Southern v. How thus proves a “most fragile link between the Middle Ages and the modern commercial law of trademarks.  At any rate a careful investigation has not disclosed any contemporary reliance thereon or indeed any reference thereto.” [62] It appears that to a great degree trademarks remained the concern of the guilds and companies rather than the common law courts.  Schechter, discussing these pre-common-law origins of trademark jurisprudence, states:

In addition to the law developed by the gilds and companies or, as Stubbs has aptly termed such law, “gild jurisprudence,’ [3. W. Stubbs, Constitutional History of England (4th ed.) iii, p. 592] we have seen germs of modern trade-mark law in statute law and also in the conciliar law, i.e. the law developed by the King’s Council and the Star Chamber.  All three of these sources of modern trade-mark law, and especially “gild jurisprudence,” had by the seventeenth century, made contributions to trade-mark law of much greater significance than that of the common law itself. [63]

The problem thus arises of determining the connecting link in the development of trademark law between the guild, statute, and conciliar law and the common law.  The simplest solution to this problem is Seligman’s theory that “the gild rules were… only  part and parcel of the common laws, and not merely the independent work of the crafts themselves.” [64] The question as to the extent of the autonomy and separate judicial authority of the guilds is still a mooted one, [65] upon which no theory of the contiguity of trademark law can be predicted.  Even if guild law should be regarded as a form or phase of the common law, there still remains to be determined the actual point of contact between the fragmentary law of trademarks as developed in the guilds and the modern common law and equitable doctrine of trademark law.  With the endeavors of the Tudors and the Stuarts to organize both external and internal trade came also the effort by the Crown to repress, through the Privy Council and the Star Chamber, various forms of commercial fraud, including the infringement of trademarks.  The study of the clothing and cutlery trades of


England exhibit that the Star Chamber and Privy Council as well as the Crown itself by royal proclamation repeatedly intervened, in the sixteenth and seventeenth centuries, to protect individual and collective marks. [66] Despite the various tendencies toward the crystallization of the modern concepts of the trademark and trademark law, it was not until the beginnings of the eighteenth century that lawyers (or at any rate law-writers and lexicographers) were evidently beginning to think at all in general terms of trademarks and when they did so, their definitions of trademarks indicate a still very considerable uncertainty on their part as to the exact function of a mark and as to the basis of complaint for the misuse of a mark.

Giles Jacob in 1723 in his New Law Dictionary says that a “mark of goods… is what ascertains the Property or Goodness thereof &c.  And if one Man shall use the Mark of another, to the intent to do him Damage, Action upon the Case lieth. 2 Cro. 471.”  The second volume of Blackstone’s Commentaries (1766) contains no reference whatever to the subject of trademarks in his discussion (Book II, Ch. XXVI) of “Titles of Things Personal by Occupancy” although among the “things personal” there enumerated are patents and copyrights.  The slight degree of national economic significance acquired by trademarks prior to the middle of the nineteenth century accounts for much of the tardiness in the growth of modern trademark law both in England and the United States.  Closely following the Industrial Revolution came a tremendous expansion, not only in the means of production and distribution, but proportionately, in the advertising of goods, in which process trademarks for the first time acquired a national and not merely a local significance.  In the United States as in England trademarks did not acquire importance as assets of value in the commerce of the nation until the second half of the nineteenth century. [67]

In the first case of its type, Lord Hardwicke in Blanchard v. Hill [68] denied exclusive trademark protection :

Every particular trader has some particular Mark or stamp, but I do not know of any instance of granting an injunction here to restrain one trader from using the same mark with another and I think it would be of mischievous consequences to do it…

The language of sections of this judgment suggests that if the defendant had used the mark with a fraudulent design to pass


off inferior goods by that means, or to draw away customers from the owners of the mark, he might have granted the injunction. [69] Although Blanchard v. Hill was described a century later by an English judge “as a leading case on the subject,” [70] and the reasoning of Lord Hardwicke as “the true foundation of the jurisdiction in these cases,” [71] it appears to have created no contemporary comment (adverse or otherwise) and has either been ignored or repudiated by Anglo-American courts of law and equity for the past century.

In 1777 there was tried before Lord Mansfield in the Court of King’s Bench a case then described as “remarkable… and the first of its kind,” [72] Carbrier v. Anderson, in which a verdict of one hundred pounds was awarded to plaintiff under a Statute of William III for the defendant’s putting Carbrier’s name on five watches made by the defendant. [73] It is not surprising therefore that in 1783, in the case of Singelton v. Bolton, where the issue of trademark piracy at Common law was touched upon, Lord Mansfield held that “if the defendant had sold a medicine of his own under the plaintiff’s name or mark, there would be fraud for which an action would lie.” [74]

It is regrettable that in the first instance of the issuance of an injunction restraining trademark infringement, Day v. Day, [75] there appears no record of the reasoning of the Lord Chancellor, Lord Eldon, the case being merely noted by Eden in the 1821 edition of his work On Injunctions. [76] The first reported case squarely involving the protection of trademarks by an English common law court did not come until 1824 when Chief Justice Abbott in Sykes v. Sykes [77] appears to have regarded the law as settled and the citation of authorities consequently unnecessary:

It was established most clearly that the defendants marked the goods manufactured by them with the words “Sykes’ Patent” in order to denote that they were the genuine manufacture of the plaintiff; and although they did not themselves sell them as goods of the plaintiff’s manufacture, yet they sold them to retail dealers for the express purpose of being resold as goods of the plaintiff’s manufacture.  I think that is substantially the same thing, and that we ought not to disturb the verdict (for the plaintiff).

In 1833 the Court of King’s Bench in Blofeld v. Payne [78] stated that it was not necessary for the plaintiff, in an action for damages at common law, to prove that the goods sold by the infringer were


inferior to those to which the mark in question might rightly be applied, or to prove that he had suffered special damage by the defendant’s acts.  In the case of Millington v. Fox [79] the Lord Chancellor, Lord Cottenham, (without citing any authorities and ignoring Blanchard v. Rill) held that equity would enjoin trademark infringement even though such infringement was without intent to defraud and in ignorance of plaintiff’s ownership of the trademark involved.  This decision led by obvious deduction to the recognition of a right of property arising from the use of a trademark. [60] Thereafter protection of trademarks in equity became based upon a theory of property rights.  No such theory was accepted in the common law courts, and in them fraud remained an essential ingredient of a cause of action for the infringement of a trademark down to the date of the amalgamation effected by the Judicature Acts.

The origin of the movement for trademark protection in America appears to have some connection with the sail-cloth or cotton duck industries of Massachusetts.  That competition in the manufacture of sail-cloth was accompanied by the infringement of trademarks is evident from an Act of the General Court (February 3, 1789) incorporating “The Beverly Cotton Manufactory,” Section 5 of which provided:

That all goods which may be manufactured by the said Corporation, shall have a label of lead affixed to the one end thereof, which shall have the same impression with the seal of the said Corporation and that if any person shall knowingly use a like seal or label with that used by said Corporation, with a view of vending or disposing thereof, every person so offending shall forfeit and pay treble the value of such goods, to be used for and recovered for the use of the said Corporation, by action of debt, in any court of record proper to try the same. [81]

By 1791 an echo of the need for the protection of trademarks of sail-cloth is to be found in a petition of Samuel Breck and other Boston sail makers to the Second Congress asking that they be given the exclusive right to use certain marks for designating the sail-cloth of their manufacture.  This request was reported on by Thomas Jefferson in a communication:

Dec. 9, 1791

The Secretary of State…Reports, That it would, in his opinion, contribute to fidelity in the execution of manufac-


tures, to secure to every manufactory, an exclusive right to some mark on its wares, proper to itself.

That this shall be done by general laws extending equal rights to every case to which the authority of the Legislature should be competent…

And that this may be done by permitting the owner of every manufactory to enter in the record of the court of the district wherein his manufactory is, the name with which he chooses to mark or designate his wares, and rendering it penal to others to put the same mark on any other wares. [82]

In a letter from a Philadelphia manufacturer printed in the Columbia Centinel of Boston on December 24, 1791, it was stated:

… And although this offence is one of the most heinous against the manufactures and commerce of this country, being absolutely a species of forgery, and meriting condign punishment, yet there is not one of the states in which impositions and frauds of this nature are properly guarded against, as much as is necessary, and the publick good requires.  Hence when a person thus injured, discovers and brings to publick notice the aggressor, he can obtain no redress adequate to the magnitude of the injury he has sustained, although he may go to enormous expense and deal of trouble in the business, as well as a waste of time, and after all is perhaps allowed by a jury, moderate damages by no means equivalent to the loss sustained, much less does it prove a salutory remedy against future offences of the like nature.

A general act of Congress obviating these difficulties, and providing for the prevention of offences of this kind, and for the due punishment of the perpetrators of such infamy and baseness, experience daily convinces me would be of universal utility, and is a very desirable thing in this country.

This statement says that the statutory provision for trademark protection was necessary because the remedy of damages, which was the only remedy afforded by the common law, was ineffective.  It indicates that there must have been a certain amount of litigation in the state courts in the early nineteenth century.  There appears, however, to have been insufficient demand at this time to warrant enactment of these recommendations.  It is nevertheless surprising that the first reported case of trademark infringement in the United States did not come before a state court of record until 1837. [83] It was not until 1844 that the first case was brought before a United States Court. [84]  In this original federal decision,


Judge Story, in granting an injunction, said: “I do not quote cases to establish the principle above stated.  They are very familiar to the profession; and are not now susceptible to any judicial doubt.” [85]

In England there was no parliamentary consideration concerning trademark regulation of a broad and general nature until 1862. [86] The statute then enacted [87] did not provide for the registration of trademarks, but merely made the counterfeiting of these marks a penal offense.  It was not until 1875 that the ignorance and indifference of Parliament in this matter of registration was finally overcome and the first British trademark registration statute enacted. [88] In 1870 the first United States statute providing for the registration of trademarks was passed, [89] that statute being held unconstitutional. [90] A similar statute was re­enacted in 1876 with the objectionable features of the earlier law eliminated. [9]

A typical statement of the early reaction of the American courts toward trademark piracy is contained in the authoritative opinion of Justice Duer of the Superior Court of New York in Amoskeag Manufacturing Company v. Spear decided in 1849.

When we consider the nature of the wrong that is committed when the right of an owner of a trademark is invaded, the necessity for the interposition of a court of equity becomes still more apparent.  He who affixes to his own goods an imitation of an original trademark, by which those of another are distinguished and owned, seeks, by deceiving the public, to divert and appropriate to his own use, the profit to which the superior skill and enterprise of the other had given him a prior and exclusive title.  He endeavors, by a false representation, to effect a dishonest purpose; he commits a fraud upon the public and upon the true owner of the trademark.  The purchaser has imposed upon him an article that he never meant to buy, and the owner is robbed of the fruits of the reputation that he had successfully labored to earn.  In his case there is a fraud coupled with damage, and a court of equity in refusing to restrain the wrongdoer by an injunction, would violate the principles upon which a large portion of its jurisdiction is founded and abjure the exercise of its most important functions, the suppression of fraud and the prevention of the mischief that otherwise may prove to be irreparable. [92]

With the merger of law and equity in both England and the United States and also in view of the fact that injunctive relief is more


effective than pecuniary reparation, the repression of trademark infringement has in recent years fallen more and more within the scope of equity and the rules governing relief in such cases have accordingly been those of equity rather than law.  The law as it stands today is explained in the comments of Mr. Justice Pitney discussing the principles by which courts should be governed in the adjudication of cases involving trademark infringement and unfair competition:

The redress that is accorded in trademark cases is based upon the party’s right to be protected in the good-will of a trade or business.  The primary and proper function of a trademark is to identify the origin or ownership of the article to which it is affixed… Courts afford redress or relief upon the ground that a party has a valuable interest in the good-will of his trade or business, and in the trademarks adopted to maintain and extend it.  The essence of the wrong consists in the sale of the goods of one manufacturer or vendor for those of another. [93]

The law relating to the regulation of trademarks is a mirror upon which is reflected the commercial maturity of a system’s political and economic development.  As Mr. Justice Cardozo has written: [94] “Life casts the moulds of conduct, which will some day become fixed as law.  Law preserves the moulds which have taken form and shape from life.”



Note the following related articles, in addition to those cited within this article: Leon E. Daniels, Words Worth Millions - Their Origin and Ancestry, 23 TMR Bull 183 (1928); Harrison Elliott, Watermark Held Unlikely to Have Cryptic Meanings, 37 TMR 211 (1947) and Gerald Ruston, On the Origin of Trademarks, 45 TMR 127 (1955).

1. Francis H. Upton, A Treatise on the Law of Trade Marks, with a Digest and Review of the English and American Authorities 9 (1860).  Modern codifiers of trademark law have simplified this to “any word, name, symbol, or device or any combination thereof adopted and used by a person to identify goods made or sold by him and to distinguish them from goods made or sold by others.”  Section 1(A) of the Model State Trademark Bill as presented in The United States Trademark Association, State Trademark Registration Manual with Model Bill, page 56 (1966).  “[A]ny word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others.”  Section 45 of the Lanham Act; 15 USC 1127.

2. See discussion infra at page 562ff and note 57. Popham 144; J. Bridgeman 125; Cro Jac 469; 2 Rolle 5; 2 Rolle 29.  See explanation of the disagreement among these several reports, infra note 57.

3. Upton, supra note 1, at 10.

4. Edward S. Rogers, Good Will, Trade-Marks, and Unfair Trading 33 (1914).

5. David Caplan and Gregory Stewart, British Trade Marks & Symbols: A Short History and a Contemporary Selection 11 (1966).

6. Singer Manufacturing Company v. Loog (1880), 18 Ch D 395, 412.


7. Abraham S. Greenberg, The Ancient Lineage of Trade-Marks, 33 J Pat Off Soc’y 876, 878 (December, 1951).

8. Samuel Birch, History of Ancient Pottery: Egyptian, Assyrian, Greek, Etruscan, and Roman 12, 17 (1873).

9. Greenberg, supra note 7, at 877.

10. Edward S. Rogers, Some Historical Matter Concerning Trade-Marks, IX Mich L Rev, 29 (Number 1, 1910).

11. Id at 30.

12. Joseph Kohler, Das Becht des Markenschutzes (1884), as reported in Rogers, supra note 10, at 30 and also Birch, supra note 8, at 322, 335.

13. See for example: I Kings 6, 7, 8; Deuteronomy 6:8, 9; Genesis 30:33.

14. Leon E. Daniels, The History of the Trade-Mark, 7 TMR Bull 239, 245 (1911).

15. Daphne Robert Leeds, Trademarks-Our American Concept, 46 TMR 1451, 1452 (1956).

16. Birch, supra note 8, at 519.

17. Bernard Rudofsky, Notes on Early Trademarks and Related Matters, in Egbert Jacobson (ed), Seven Designers Look at Trademark Design 9 (1952).

18. Geoffrey, Roman Pottery Marks (1886), as described in Rogers, supra note 10, at 31.

19. Rogers, supra note 10, at 31.

20. Jacob Larwood and John Camden Hotten, The History of Signboards From the Earliest Times to the Present Day 2 (1866).

21. Daniels, supra note 14, 7 TMR Bull at 246.

22. Kohler, supra note 12, at 38, 39, 41.

23. Leeds, supra note 15, 46 TMR at 1451.

24. Rogers, supra note 10, at 31.

25. Daniels, supra note 14, 7 TMR Bull at 247.

26. Id. at 248.

27. Rogers, supra note 10, at 36.

28. Kohler, supra note 12, at 46-48.

29. George Haven Putman, II Books and Their Makers During the Middle Ages 409 (1897).

30. Joseph Lucien-Brun, Les Marques de Fabrique et de Commerce, Introduction (1895).

31. Report of M. de Marafy to the Congress of Industrial Property 83 (1878) as quoted in Rogers, supra note 10, at 33.

32. Lucien-Brun, supra note 30.

33. Kohler, supra note 12, at 50.

34. Rogers, supra note 10, at 34.

35. Lucien-Brun, supra note 30.

36. Greenberg, supra note 7, at 881.

37. Ibid.

38. W. C. Fairweather, Early Scots Law on Trade-Marks, 36 TMR Bull 45 (1941).

39. Rudofsky, supra note 17, at 21-22.

40. Rogers, supra note 10, at 35.

41. Kohler, supra note 12, at 41.

42. Rogers, supra note 10, at 36.

43. Larwood and Hotten, supra note 20, at 6-7.

44. Putnam, supra note 29, I at 453.

45. Daniels, supra note 14, 7 TMR Bull 249-50.

46. Lucien-Brun, supra note 30.

47. Leon E. Daniels, Trade-Marks-Their Origin and Development, 36 TMR Bull 58, 59 (1941).

48. As quoted in Rogers, supra note 10, at 37.

49. The reason for the ten-year provision (regarded as a dangerous innovation when it was introduced into the English Trade Marks Act of 1875, and from there in modified form, into the United States Statute of February 20, 1905; called the “old mark” section of the English law and the “ten-year proviso” of the United States law) is that it is safe to assume that a mark after a period of ten years of continuous use serves to identify the origin of the goods to which it is affixed.  Compare Section 2(f) of the Lanham Act; 15 USC 1052.

50. E.g., Stat 4 Edw IV, c 1; I Rich III, c 8 (II Statutes of the Realm, 404, 486), which referred to these marks as a sign of police regulation.

51. Kohler, supra note 12, at 46-48.

52. Kidd v. Johnson, 100 US 617 (1879).

53. Kohler, supra note 12, at 48.

54. Bloss and Adams v. Bloomer (1857), 23 Barb 604 (NY Sup Ct).


55. Supra note 30.

56. Frank I. Schechter, The Historical Foundations of the Law Relating to Trade-Marks 1, 6 (1925).

57. Southern v. How was a King’s Bench action for the sale of counterfeit jewels by the plaintiff to the defendant through the defendant’s servant.  The case, which was first reported in Popham’s Reports published in 1656 (and stated therein as having been decided at the Trinity Term, 15 Jac I) had no relation whatever to trademark law, but the report nevertheless states on page 144: “Doderidge (sic) said, that 22 Eliz the action upon the ease was brought in the Common Pleas by a clothier, that whereas he had gained great reputation for his making of his cloth by reason whereof he had great utterance to his benefit and profit, and that he used to set his mark on his cloth whereby it should be known to be his cloth: and another clothier, observing it, used the same mark to his ill-made cloth on purpose to deceive him, and it was resolved that the action did well lie.”  This report of Southern v. How, while appearing in Popham’s Reports was not actually reported by Popham himself, but was included in the volume among “Some Remarkable Cases Reported by Learned Pens since his death.”

The next report of Southern v. How was published in 1659 in J. Bridgeman’s Reports, which on page 125 ascribes this case to the Hilary Term, 13 Jac I, and makes no mention of Dodderidge’s dictum.

Also in 1659 Croke’s Reports (Cro Jac 469) sets the Hilary Term, 15 Jac I, as the date of the ease, and contains an entirely different version of Dodderidge’s dictum concerning the case of the clothier, squarely stating the action to have been brought not by the clothier whose mark had been misused, but rather by the defrauded purchaser: “Dodderidge cited a case to be adjudged 33 Eliz in the Common Pleas: a clothier of Gloucestershire sold very good cloth, so that in London, if they saw any cloth of his mark, they would buy it without searching thereof ; and another who made ill cloth put his mark upon it without his privity; and an action upon the case was brought by him who bought the cloth, for this deceit; and adjudged maintainable.”

Volume II of Rolle’s Reports published in 1676 contains two conflicting accounts of Southern v. How.  The first of these (2 Rolle 5) reports the case as having been decided 15 Jac I, Hilary Term, and like J. Bridgeman’s Report makes no mention of Dodderidge’s dictum.

The second report (2 Rolle 28) ascribes the ease to 16 Jac I, Trinity Term and is obscure as to just who was bringing the action against the infringing clothier, but believes it was the vendee.

58. See: I Nelson’s Abridgement 38, 17; 3 Bacon’s Abridgement 560 (K) (3d ed.) ; I Viner’s Abridgement 574 (2d ed) ; I Comyn’s Digest 166: Action Upon the Case for a Deceit: 2 Kent’s Commentaries 446, note b (7th ed).

59. Schechter, supra note 56, at 9.

60. Hopkins, Trademarks, Trade Names and Unfair Competition 2 (4th ed 1924), as quoted in Schechter, supra note 56, at 11.

61. Roscoe Pound, Interpretations of Legal History 28 (1923).

62. Schechter, supra note 56, at 123-24.

63. Id at 125.

64. E. R. A. Seligman, Two Chapters on the Mediaeval Guilds of England in American Economic Assn publications, Volume 2, Number 5, page 76 (1887).

65. Conflicting views on this point are presented in Austin P. Evans, The Problem of Control in Medieval Industry, XXXVI Political Science Quarterly 603 (1921).

66. Schechter, supra note 56, at 126.

67. Id at 130.

68. 2 Atk 484 (1742).

69. T. A. Blanco White, Kerly’s Law of Trade Marks and Trade Names 1, 2 (9th ed 1966).

70. Wood, V. C. in Farina v. Silverlock (1855), 24 Law Journal Ch N. X. 632, quoted in Schechter, supra note 56, at 136.

71. Wood, V. C. in Collins Company v. Brown (1857), 3 K & J 423, 428, as quoted in Schechter, supra note 56, at 136 fn 5.

72. St. James Chronicle, December 4, 1771, as quoted in Schechter, supra note 56, at 137.

73. Atkyns and Overall, Some Account of the Worshipful Company of Clock-makers of the City of London 259, as quoted in Schechter, supra note 56, at 137.

74. 3 Doug 293 (1783).

75. (1816). See Robert H. Eden, Treatise on the Law of Injunctions 226, fn (e) (1822).

76. 314 (1821), as reported in White, supra note 69, at 2.

77. (1824) 3B &C 541.


78. (1833) B & Ad 410.

79. (1838) 3 Myl & Cr 338.

80. White, supra note 69, at 4.

81. Massachusetts Private and Special Laws, 1789, e 43, 1, 226 (1805), as quoted in Schechter, supra note 56, at 130-31.

82. Jefferson’s Complete Works, Washington, 1854, VII, 563, reported in the Report of the Commissioners Appointed to Revise the Statutes Relating to Patents, Trade and Other Marks, and Trade and Commercial Names, Under Act of Congress Approved June 4, 1898, Washington, 1902.  Hereafter referred to as the “Report of the Commissioners.”  Quoted in Schechter, supra note 56, at 131-32.

83. Thompson v. Winchester, Supreme Court of Massachusetts 1837, 19 Pick 214; reported in Report of the Commissioners, supra note 81, at 93.  Quoted in Schechter, supra note 56, at 132-33.

84. Taylor v. Carpenter, United States Circuit Court, District of Massachusetts, 3 Story 458; in Report of the Commissioners, supra note 81, at 93.

85. Id at 3 Story 464.

86. Schechter, supra note 56, at 139.

87. 25 and 26 Viet e 88.

88. 38 and 39 Viet 6 91.

89. 16 Stat L 198.

90. Trade Mark Cases, 100 US 82 (1879).

91. 19 Stat L 141.

92. 2 Sandi (NY) Super 599, 605-06 (1849).

93. Hanover Milling Company v. Metcalf, 240 US 403, 412-13 (1915).

94. Benjamin H. Cardozo, The Nature of the Judicial Process 64 (1922).