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Trademarks
identifying mark. The Council issued a decree that "a certain foreigner"
(his name was omitted from the public record) must obliterate the Durer
monogram. As a sidelight on this decision, it may be noted that the
"certain foreigner" evidently was allowed to continue copying Durer's
works so long as he did not use the "AD" monogram-the idea of an
artist's copyright in his creations had not yet become part of the law.
... One report states that in 1554 ... there was an edict of Charles
V concerning Flemish tapestries, which provided that city of origin and
maker's marks were compulsory and that infringers were to be punished
by cutting off the right hand ....
It also should be noted that there is no indication that any infring-
er's right hand actually was cut off. The edict established that as a
penalty, but there does not appear to be any documented instance of its
enforcement.
4. Industrial Revolution
The industrial revolution was characterized by an enormous growth
of industry as modern manufacturing methods replaced the handwork of
older times. One natural result was the concentration of production
capacity in larger units and this in turn required the development of
methods of distribution to get the goods to the consumer. Along with the
growth of distribution came the use of advertising to acquaint the
consuming public with the availability of the goods. And with increasing
advertising came the increased use of trademarks in their modern
function as identifiers of the source of the goods.
French porcelain provides a familiar example of a product that
became known by its trademark. The royal factory at Sevres marked its
goods from the eighteenth century on, with the design changing from
time to time ... Meissen ware from Germany also was marked ...
Pewter ware also regularly bore identifying marks. In England,
William Hogg resisted the temptation to use his own surname as the
basis for a design mark and chose a swan instead ...
Silver hallmarks of quality and makers' marks to identify the
individual silversmith continued as the industrial revolution developed.
One famous American silversmith of the Revolutionary period whose
initials are sought by collectors was Paul Revere, the same man who
made the famous ride in 1775.
Merchants' marks also were in use around this time. In France, the
commercial identification of the seller of silk fabrics seemingly was more
important than the manufacturer, for many silk merchants' marks were
recorded and have survived ...
One interesting document, turned up not by a lawyer but by a
pottery historian, comes from the Herculaneum Pottery Works, founded
in Liverpool in 1796. A resolution of the Committee of Management
dated August 6, 1822, ordered that:
. .. to give publicity and identity to the china and earthenware
manufactured, the words "Herculaneum Pottery" be stamped or
History
marked on some conspicuous part of all china and earthenware hereaf-
ter made at this manufactory ....
5. Development of Modern Trademarks
449
. .. In the Anglo-American legal system, protection for trademarks
was quite late in coming, aside from the old laws prescribing bizarre
punishments for violations in specific industries. The beginning of legal
protection for trademarks as such generally is traced to a 1783 dictum in
an English case, stating that an action for damages would lie based upon
fraud. The shift to an equitable remedy based upon the invasion of a
property right did not come until the nineteenth century. The first
record of an injunction against trademark infringement is an English
case decided in 1838 ....
Notes and Questions
1. Sidney A. Diamond served as Commissioner of Patents and Trade-
marks from 1979-1981. He died in 1983.
2. Consider Sidney Diamond's survey of the historical predecessors of
trademarks. Do the uses of markings in antiquity, the middle ages, and
the industrial revolution reflect the same mix of concepts at playas in
modern trademark law? What did they have to do with fairness or with
competition? To what extent did these markings seek to prevent deceit?
To prevent "trespass" onto proprietary goodwill?
The Making of Modern Intellectual Property
Law
BRAD SHERMAN & LIONEL BENTLY'
Trade marks as a fonn of intellectual property
When modern intellectual property law first took shape in the
1850s, or thereabouts, trade mark law was not recognised or indeed even
considered as a possible candidate for inclusion. This is unsurprising
given that modern trade mark law, as we understand it today, did not
really exist at the time. Rather the law-which consisted of statutes such
as the 1863 Exhibitions Medals Act and offered protection for things
such as needle labels and marks for use on cutlery-remained subject
specific and reactionary; in short, pre-modern. Moreover, the nature of
the law in the middle part of the century was dilatory and chaotic.
Indeed as Joseph Travers Smith, a leading trade marks solicitor of the
time, said, 'trade marks are not recognised as having any legal validity or
effect ... there is no written law on the subject of trade marks, and we
have consequently no definition by which we can try what a trade mark
is nor consequently what particular symbol amounts to a trade mark,
~ d ... the existing law gives no remedy against an actual pirate, but
only against the person who fraudulently uses a trade mark'.
Despite the uncertain and (at least to our modern eyes) somewhat
alien nature of the law in this area, over the second half of the
* 166-72 (CAMBRIDGE U. PRESS 1999).
450
Trademarks
nineteenth century trade mark law came to take shape as a discrete and
recognised area of law. A number of factors provided the impetus for the
crystallisation of modern trade mark law. In part, growing recognition
and use of marks in commercial practice led to increased specialisation
in this field. In turn this heightened the calls for recognition of trade
marks as a separate area of law and for the introduction of a registration
system for marks. These changes were reinforced by the fact that a
distinct domain for trade marks was slowly carved out at common
law ....
At the same time as trade mark law was taking on its now familiar
shape there was growing pressure for it to be included within the
framework of intellectual property law. The pressure for inclusion came
from a number of different sources. For many, factors such as shared
professional bodies (patents and trade mark agents), the nature and
form of international treaties, and the logic of industrial property made
the connection between trade marks and designs and patents an obvious
choice. Indeed, as trade mark law was in the process of formulation,
patents, designs and copyright law provided an important point of
analogy: for the existence of the right; as an aid to interpreting trade
mark doctrine; for the shape the system of registration should take; and
the language and structure to be used in trade mark legislation. Another
point of connection which existed between trade marks and copyright
and design was that they dealt with similar subject matter. At its most
extreme it was suggested that a trade mark, like a work subject to
copyright and design right, embodied the personality of its creator. As
John Smith reported to the 1862 Select Committee on Trade Marks, 'I
consider a trade mark to be equivalent to a man's signature to a letter.
There may be hundreds of John Smiths, but there would be such an
individuality in each man's signature, that you could identify the whole.
I consider that when a man puts a mark upon any article he produces to
identify it as his production, that it is equivalent to his name.'
Another practice which helped to reinforce the association between
trade marks and intellectual property law arose from the pragmatic
actions of trade mark proprietors who, in the absence of a specific, tailor-
made register for marks, utilised the pre-existing arrangements for
copyright and designs. As well as the quasi-official registration of news-
paper titles and labels as books at the Stationers' Company, manufactur-
ers also made use of the Design Register to gain protection for their
marks as designs by, for example, registering labels as designs. The
association between trade marks and copyright was reinforced by the
fact that the pictorial nature of the trade mark also suggested a link
with artistic copyright.
While there were many points shared in common between trade
marks and the then existing categories of intellectual property law, there
were a number of objections to trade marks being accepted as a part of
intellectual property law. Indeed, two primary reasons were given as to
why trade marks should not be and for a while were not included within
the remit of intellectual property law.
History 451
The first objection to treating trade marks as a species of intellectu-
al property turned on the issue of creativity. While the rights granted by
design, patents and copyright could be excused (and justified) because
they were only granted for new creations (and as such nothing was
therefore being taken away from the public), this was not the case with
trade marks which in many cases dealt with pre-existing subject matter.
Hindmarch, who drafted the GDvernment Bill in 1862, and who was
consistently opposed both to allowing assignment of marks separately
from goodwill and to treating trade marks as property, captured the tone
of these arguments when he said:
I have heard persons refer to the law of patents, and the law of
design, as parallel cases; but there is nothing parallel there. A man who
comes and takes a patent gives a consideration for the grant he obtains,
and so with a man who comes and registers a design, he acquires a
copyright of a limited character, never exceeding three years; he also
gives some consideration; there is something new, which the world
knows nothing about, and in consideration of that the copyright is
given; but in this case, in which it is proposed to give a copyright in a
trade mark, there is no consideration ... it would be to create a ...
monopoly totally and entirely unknown to law .. and, as I conceive,
contrary to the spirit of the great statute against monopolies.
The upshot of this was, as Hindmarch said in another context, that
'copyright in books and designs is a totally different thing [from that of
trade marks] because there is a property created'. With trade marks,
however, 'we create nothing new, but provide only a new mode of
defending the right that we acknowledge'.
The second reason why trade marks were considered to fall outside
the intellectual property rubric was that whereas copyright, patents and
designs were primarily concerned with the creation and protection of
property, trade marks were more concerned with forgery or fraud. While
there were arguments to the contrary, the consensus of opinion was that
in 'the existing state of the law a trade mark is clearly no property' at
all'. Rather, as Macfie said, the object of trade mark legislation 'is to
prevent the criminal use of a name or distinguishing indication, in fact
to counteract falsification or forgery, which would not only deprive
traders of a reputation they have laboured for, but would mislead the
public'. Campin was clearer as to the distinction when he said, 'it should
be remembered that there was this important difference between patents
and trade marks, that copying or infringing the latter was really analo-
gous to forgery, while the infringement of a patent was merely interfer-
ing with a private right of property'. Combined together, the facts that
trade marks dealt with pre-existing subject matter rather than the
creation of new material and that they were more concerned with
regulating fraud than property, meant that trade marks were said to fall
outside the scope of intellectual property law.
Notes and Questions
1. Brad Sherman is Professor of Law at Griffith University, Brisbane.
He is also the director of the Australian Center for Intellectual Property
in Agriculture, which is co-hosted by the Australian National University