THE PLACE OF SCIENTER IN TRADE MARK INFRINGEMENT IN NINETEENTH CENTURY ENGLAND: THE FALL AND RISE OF MILLINGTON V. FOX.

• Author: Bently, Lionel

CONTENTS INTRODUCTION I. MILLINGTON V. FOX A. Millington B. Not a Revolution 1. The State of the Case-law 2. The Nature of the Action and the Role of the Declaration 3. Lord Cottenham's Understanding of the Law C. Crawshay and the Requirement of Intent to Deceive at Common Law D. Millington Becomes A Loose-End II. MILLINGTON BECOMES A LANDMARK: THE TRIUMPH OF STRICT LIABILITY III. EXPLANATION A. The Collins Company Cases B. Taylor's Persian Thread C. Commercial Immorality and Trade Mark Jurisprudence CONCLUSION INTRODUCTION

Today, it is taken for granted that trade mark infringement--whether of registered or unregistered marks (so-called "passing off")--is a matter of strict liability. (1) A person infringes, irrespective of whether they knew of the plaintiffs business or trade mark, irrespective of whether they copied an existing mark or developed their own, and irrespective of whether they believed the mark used by another trader was descriptive or generic. At the same time, it is widely assumed that modern trade mark law derived from the law of deceit for which scienter--specifically an intent to deceive--was a requirement. (2) The aim of this article is to try and gain an understanding of how this perceived shift from intent-based liability to strict liability came about, (3) and, more generally, the changing significance of scienter, in particular intention to deceive, in nineteenth-century trade mark law in England and Wales.

Hitherto, the story has been told largely in terms of a simple, evolutionary logic. Trade mark protection, it is said, was first recognised at common law, and the common law courts required a plaintiff to prove an intent to deceive. Later, probably as late as the early nineteenth century, the courts of equity gave assistance by way of an injunction. As the chief forum for litigating trade mark infringement shifted from law to equity, the latter abandoned the requirement of an intent to deceive, following a key decision of the Lord Chancellor in Millington v. Fox in 1838. (4) Thereafter, proceedings for trade mark infringement were in essence equitable. (5) It is true that by the end of the century, (6) scienter was not required in most cases (and certainly not for registered marks, after the introduction of registration in 1876), (7) but a closer look suggests that the conventional account is much too simplistic and the development of the law in the period from 1830 to 1875 was much messier, contested, and ad hoc.

My goal in revisiting this history is not to suggest that adoption of strict liability was a false turn. (8) Rather, the goal is to understand how the modern law came to be as it is. Indeed, this may have implications for a number of current legal questions, the answers to which are very muddled. Is there a distinction between primary and accessory liability in the law of trade marks, the latter requiring a showing of scienter? (9) Is there a defence of using one's own name, and, if so, what is its scope? (10)

Is a successful claimant in a trade mark action entitled either to damages or an account of profits? (11) Contemporary lawyers who pick authorities from the past, without engaging with the broader shifts in trade mark thinking, are likely to misunderstand these authorities or be misled by them. This article aims to unpick the history and thereby to offer some guidance.

The article begins with a brief account of Millington v. Fox itself. I suggest that while it has been positioned as a landmark in a seamless transition from intent-based liability to strict liability (and from law to equity), the court likely thought it was carrying out a mere clarification of the standard applicable both at common law and in equity. However, in the years following Millington, the courts of common law did, indeed, make clear that scienter was required to establish trade mark infringement, and chancery courts also moved in that direction. In many respects, in the 1840s, Millington became not a landmark so much as a loose-end. Section II describes how, at the end of the 1850s, a number of judges embraced Millington and strict liability (in the sense that innocence or ignorance at the time of adopting the mark is no bar to injunctive relief). Section III offers some reasons as to why this occurred.

1. MILLINGTON V. FOX

   1. Millington

      Millington v. Fox concerned the use of words "CROWLEY" and "MILLINGTON," as well as some associated marks, on steel. (12) The plaintiffs, Thomas Isaac Millington and Crowley Millington, were successors to the partnership "Crowley Millington & Co," making steel near Newcastle in the North East of England, (13) much of which was exported to America. The defendants, James and Samuel Fox, were partners in a relatively newly established firm called "Fox Bros" in Sheffield. (14) The plaintiff had been alerted to the defendant's sale of steel stamped with the marks and, on 7 August 1834, issued a bill in the Court of Chancery seeking discovery, injunctive relief, and an account. (15) The bill alleged that "for fraudulent purposes on steel manufactured by them the said Defendants used and imitated the said marks ... in order to enable the said steel to be passed off in the market as steel manufactured by your Orators." (16) A preliminary injunction was granted ex parte, and the defendants entered their answer, (17) explaining that they had understood the terms CROWLEY and MILLINGTON to indicate particular types of steel, (18) and that they had never heard of the plaintiffs. While the defendants had agreed to cease using the words (even before the plaintiffs entered their bill), the plaintiffs pursued the matter and there followed a commission to examine witnesses, (19) a process that took up most of 1836, and ultimately a hearing, seeking a perpetual injunction and account. (20)

      At the hearing before Lord Cottenham LC, counsel for the defendants argued that it had not been proved that the defendants had made use of the Plaintiffs' marks "knowingly and wilfully." (21) Although the claim to an account was abandoned, (22) Lord Cottenham LC awarded the injunction. He explained:

      I see no reason to believe that there has, in this case, been a fraudulent use of the Plaintiffs' marks. It is positively denied by the answer; and there is no evidence to shew that the Defendants were even aware of the existence of the Plaintiffs, as a company manufacturing steel; for although there is no evidence to shew that the terms "Crowley," and "Crowley Millington," were merely technical terms, yet there is sufficient to shew that they were very generally used, in conversation at least, as descriptive of particular qualities of steel. In short, it does not appear to me that there was any fraudulent intention in the use of the marks. That circumstance, however, does not deprive the Plaintiffs of their right to the exclusive use of those names; and therefore I stated, that the case is so made out as to entitle the Plaintiffs to have the injunction made perpetual. (23) Lord Cottenham LC thus awarded injunctive relief on the same terms as the interim order, that is to say:

      to restrain the Dfts & each of them their & each of their Servants & Agents from stamping and impress (g) or caus (g) to be stamped or impressed on any Bars of Steel or o (r) pieces of Steel the names Crowley Millington or either of them or any other the Names or Marks or any Material part of any of the Marks in the Pets Bill ment (d) to be stamped by the Pets on Steel manufact (d) by the Pets & from manufactur (g) or causing to be manufactd & also from sell (g) or contract (g) to sell and Bars of Steel or o (r) pieces of steel stamped with any of the s (d) Names of Marks or any mater (1) part of any of the s (d) Marks or any Name or mark in Imitation of any of the s (d) names or any material part of any of s (d) Marks. (24) However, the Lord Chancellor declined to order costs in favour of either party.

   2. Not a Revolution

      As noted in the introduction, the decision has long been regarded as a key moment in the evolution of trade mark law. This is because, for the first time, the Court of Chancery treated trade mark violations as ones of strict liability, in the sense that injunctive relief would be awarded irrespective of the scienter of the user at the time the mark was adopted. (25) This case, it is said, introduced a divergence between law and equity. This part suggests that such an account is historically inaccurate, or at least a considerable over-simplification. It argues that, in fact, the position 'at law' was unclear and, almost certainly, Lord Cottenham thought that while he might have been clarifying the law, he was not creating a divergence between law and equity. (26) Rather, he understood his holding in Millington as an incremental development. The radical nature of the decision only became apparent later when common law courts made clear that scienter was a prerequisite to trade mark infringement.

      1. The State of the Case-law

         When Millington v. Fox was decided, in 1838, there was relatively little reported case-law concerning trade marks. At this point, there were no treatises that focussed on trade mark law and the topic was hardly touched in digests, journals, and other published works.

         Most famously (to trade mark historians at least) there were the three reports of a non-trade mark case, Southern v. How, which recounted, each in a different way, how Dodderidge J recalled a case (now commonly known as "the Gloucestershire Clothier's Case") from the time of Elizabeth I in which an action had been brought at common law relating to the unauthorised use of one clothier's mark by another clothier. (27) In addition, there were at least three reports of other cases at common law: Singleton v. Bolton, where the plaintiff had been nonsuited, decided in 1783 but only reported in 1831; (28) and two, in 1824 and 1833, in which a plaintiff had succeeded--Sykes v. Sykes (29) and Blofeld v. Payne. (30)...