One whose registered trademark is manifestly an imitation of an
earlier but unregistered trademark cannot restrain a third party
from using it.
The Philippine Trademark Act expressly denies the right of one
fraudulently using a trademark to recover.
Section 13 of the Treaty with Spain of 1898, protecting
industrial property in the ceded territory, will not be construed
as contravening principles of morality and fairness and as
protecting a trademark fraudulently registered prior to the
treaty.
A statute which introduces no new rule is not retrospective.
Even if a trademark be not registered, if it be well known, it
is imposition on the public to use an imitation of it.
Even if a statute makes a certificate of trademark conclusive,
it must be taken subject to the general principle of law embodied
in the statute to the effect that trademarks fraudulently adopted
are not protected.
Where it does not clearly appear to the contrary, this Court
will assume that the same principles of honesty and fairness
prevail in Spain as in our own law.
13 P.R. 11 affirmed.
The facts, which involve the right to use a trademark in the
Philippine Islands, are stated in the opinion.
MR. JUSTICE HOLMES delivered the opinion of the Court.
The plaintiff and appellant is a manufacturer of gin, and sues
to restrain the use of a trademark like his own
Page 226 U. S. 453
and to recover double damages. The trademark consists of two
concentric circles having the words Ginebra de Tres Campanas, and
the plaintiff's name between them, and in the center a device of
three bells (tres campanas) connected at the top by a ribbon and
some ears of grain, with the words Extra Superior under the mouth
of the bells. The plaintiff's autograph is reproduced across the
middle of the circular space and the bells. More detail is
unnecessary, but it may be mentioned that the plaintiff claims
title under a grant from the Governor General dated December 16,
1898, and that the mark covered by the alleged grant had underneath
the circles the word Amberes (Antwerp), indicating imported gin,
while that now used has Manila in the same place, and is applied to
gin made in the Philippines.
It may be assumed that the defendant's design has a deceptive
resemblance to the plaintiff's notwithstanding a change from Tres
Campanas to Dos Campanas, and the substitution of the defendant's
autograph for the plaintiff's. And whether the plaintiff has a
title to the mark now used or not, it also may be assumed that he
might recover under the Philippine Act of March 6, 1903, No. 666, §
4, Compiled Acts, p. 180, § 58, but for the following facts, on
which the defendant had judgment in both courts below.
The plaintiff's trademark, in its turn, closely imitates in most
particulars a much earlier and widely known trademark of Van Den
Bergh & Company of Antwerp. It is true that, in the latter,
there is but one bell, and that the title correspondingly is
Ginebra de la Campana, but the intent to get the benefit of the Van
Den Bergh device is too obvious to be doubted. We do not go into
the particulars of the different registrations, etc., of this
latter, beginning with a Spanish certificate to the Antwerp firm in
1873. For, although the plaintiff elaborately argues that, under
the Spanish regime, trademark rights could be
Page 226 U. S. 454
acquired only by statutory registered grant; that Van Den Bergh
& Company never acquired any such rights in the Philippines;
that, if they did, they lost them by failing to register or lapse
of time, and that he was free to get a registered title as against
any certificate of theirs -- those questions are immaterial in this
case. With or without right, the earlier trademark was in
widespread use and well known, and the obvious intent and necessary
effect of imitating it was to steal some of the goodwill attaching
to it and to defraud the public. The courts below found the fraud
and, that both plaintiff's and defendant's marks were nothing more
than variations upon the earlier mark.
In such a case, the Philippine act denies the plaintiff's right
to recover. Act No. 666, § 9.
See § 12, and No 744, § 4.
Compiled Acts, §§ 63, 66. It is said that to apply the rule there
laid down would be giving a retrospective effect to § 9 as against
the alleged Spanish grant of December 16, 1898, to the plaintiff,
contrary to general principles of interpretation and to Article 13
of the Treaty of Paris, April 11, 1899, providing that the rights
of property secured by copyrights and patents shall continue to be
respected. But the treaty, if applicable, cannot be supposed to
have been intended to contravene the principle of § 9, which only
codifies common morality and fairness. The section is not
retrospective in any sense, for it introduces no new rule.
See
Manhattan Medicine Co. v. Wood, 108 U.
S. 218. Imposition on the public is not a ground on
which the plaintiff can come into court, but it is a very good
ground for keeping him out of it. Even if Van Den Bergh &
Company had no registered title and no such other rights under
Spanish colonial law as they have under Act No. 666, § 4, the
imposition on the public was still there, and though not a matter
of which the defendant could complain, it was a matter to which he
could refer when the plaintiff sought to exclude him from doing
just what the plaintiff had done himself. This
Page 226 U. S. 455
certainly would have been our law, and we should assume, if
material, that the same doctrine would have prevailed in Spain in
the absence of the clearest proof to the contrary, which we do not
find in the record or the brief.
What we have said with reference to the plaintiff's claim under
the treaty applies in substance to his argument that, by § 14 of
Act No. 666, the Spanish certificate is conclusive evidence of the
plaintiff's title. That section must be taken to be subject to
general principles of law embodied in other sections to which we
have referred.
If there was any claim intended to be put forward on the ground
of unfair competition, the prayers of the complaint and the
plaintiff's testimony show that such claim depended fundamentally
on the alleged infringement of trademark. Any matters of fact in
dispute were sufficiently disposed of by the concurrent findings of
the courts below.
Judgment affirmed.