Witthaus v. Braun

Robinson, J., delivered the opinion of the Court. The complainant seeks to restrain the appellees, who are manufacturers of smoking tobacco, from making use of a brand, which he alleges to have been the trade-mark of one Moses Ealk, of the City of New York, and to the exclusive use of which, he claims to he entitled as the assignee of Ealk. The brand or trade-mark in question maybe described as follows : A label, in the centre of which is a picture of an Irish harp, with a shamrock on each side of the harp, and below it the words “Erin, go Bragh;’’ on the left of the harp the word “trade,” and on the right the word “mark;” above the harp the words “ Genuine Dublin Cut Cavendish,” and at the bottom the words “Smoking Tobacco.” The label is printed in gold letters on dark green paper. ³⁰⁵ The right of the complainant to the trade-mark thus described, is founded upon the following assignment: “New York, November 5th, 1873. “In consideration of one cent paid to me, I have this day sold all my smoking tobacco brands to Mr. E. L. Witthaus, of the firm of H. Wilkens & Co., of the City of Baltimore. Moses Ealk. ’ ’ The appellees contend that a trade-mark being a mere device or symbol, to designate ihe manufacture of an article by a, particular person, or at a particular place, there is no such thing as a right of property in such trade-mark, apart from the article to which it is affixed, and which it has been used to designate, and that a purchaser, therefore, can acquire no right, of property, by the bare sale of the trade-mark itself.

Conceding this to be so, it is equally well settled, that where a trade-mark is used to designate the place, and the person by whom the goods are made, the right to such trade-mark passes to the purchaser upon the sale and transfer of the business and manufactory at which the goods are made. Since the cases of Banks vs. Gibson, 34 Beav., 566, Hall vs. Barrows, 10 Jurist, N. S., 56, Bury vs. Bedford, 33 Law Journal, Ch., 465, and The Leather Cloth Comp. vs. The American Leather Cloth Comp., 11 House of Lords Cases, 523, this can no longer be considered an open question . In the latter case, Lord Crastworth said : “ But I further think that the right to a trade-mark may, in general, treating it as property, be sold and transferred upon a sale and transfer of the manufactory of the goods on which the trade-mark has been used to he affixed, and may be lawfully used by the purchaser.” “In such a case, the use of the trade-mark would indicate only that the goods so marked were made at the manufactory which he had purchased.” ³⁰⁶ Now in this case, the tobacco was manufactured by H. Wilkens & Co. for Moses Falk, and according to his directions, or as termed in the trade, “by his secret,” and the assignment of the trade-mark under such circumstances to the manufacturer, would, in our opinion, bring this case within the principle of the decisions referred to. The mere .sale of a trade-mark apart from the article to which it is affixed, confers no right of ownership, because no one can claim the-right to sell his goods, as goods manufactured by another.