TRADE MARKS AS PROPERTY: THE EARLY 20TH CENTURY

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CHAPTER4 TRADE MARKS AS PROPERTY:  THE EARLY 20TH CENTURY

This chapter considers judicial attitudes  towards the concept of « property » in early twentieth century Anglo-American trade mark law, and concludes the first part of this work.
English law on the question was settled by then: registration afforded the registrant a registered right of property whilst at common law, as we shall see, the House of Lords had held that outside of registration there was no property in a trade mark perse.
American law appears to    have been less certain concerning the matter. I have by way of illustration, highlighted the views of two American researchers regarding the topic, namely, Frank I Schechter and Daniel M McClure.
Schechter•s ¹ views were expressed more or less contemporaneously with the two landmark cases which I ¹ shall discuss whilst McClure’ s ² historical study has the benefit of hindsight.
Frank I Schechter is an important figure in the history of US trade mark law. His primary research – especially regarding medieval marks – for his doctoral thesis The Historical Foundations of the Law Relating to Trade Marks, New York, 1925, has not been surpassed in the U.S.A.. Schechter is also regarded as the father of the dilution doctrine and his article – The Rational Basis of Trademark Protection 40 Harvard Law Review 813 – is seen as seminal thereto. See also p 439-444 infra regarding Schechter.
Daniel M McClure’sscholarly article – Trade Mark and Unfair Competition: A Critical History of Legal Thought 69 TMR 305-356 (1979) earned him the Stephen P.Ladas Memorial Award for 1978.See Sebastian Trade Marks 170.
entitled to the mark was, in  terms  of this legislation, the proprietor of the mark entitled to its exclusive use. Although his rights were « less unlimited » than those of owners of other kinds of property in the sense that trade marks could be transferred only in connection with the goodwill of the business in the goods in respect of which the mark was registered the proprietor was otherwise entitled to deal with his mark as he chose, subject to the provisions of the Act. ⁴
Schechter points out that early twentieth century text writers on equity and tort regarded trade mark infringement as the violation of a property right of one kind or another: a property right of an indefinite kind. ⁵
The courts, on the other hand, whilst seeking to protect trade marks, were at the same time largely disinclined to base relief upon a theory of property protection even though they were not able to discover a sound alternative ground for relief.
Ref erring to Anglo-American trade mark law in general, Schechter concluded that the courts were faced with a dilemma: on the one hand,’ judges were anxious to protect trade marks because trade mark piracy was regarded repugnant to the judicial conscience. On the other hand, the courts had to feel their way towards some legal theory of trade mark protection which avoided the necessity of having to invoke the only basis of equitable protection to which they had at one time become accustomed to   resort, namely, the protection of a property rig.h t. ¹³ Wh y t h e courts should have tried to avoid regarding trade marks as property is not clear from Schechter•s discussion. It appears, however, that it was the spectre of allowing a monopoly which led to resistance.
According to McClure, the idea of trade marks as property developed slowly in the United States. Despite that the Supreme Court had held in the Trade Mark Cases ¹⁴ that the right to a trade mark was a property right, American courts showed an early and strong disinclination to base relief in trade mark cases upon a theory of property:
The  reluctance  of courts to recognise a property right in trademarks stemmed from the feeling that  to do so would give a monopoly in language to private individuals, thus depriving competitors of the use of the word. The English vocabulary was said to be « the common property of mankind, in which all have an equal share and character of interest. From these fountains whosoever will may drink, but an exclusive right to do so cannot be acquired by any « . It was believed that to give a monopoly in language would lead to a monopoly in production. ^{1 5}
Schechter poses two problems which are central also to the address of this thesis:
Two problems of trade-mark law and of the law of unfair competition, which has been developed largely by analogies to the law involving cases of technical trade-marks, perplex the minds of both British and American courts, and conflicting theories with regard to these problems are materially affecting the decisions of these courts in cases that are constantly being presented to them. In the first place, in both British and American courts, the very nature of the right in a trade-mark is still unfixed.
In the second place, aside from the determination of the somewhat metaphysical question as to the exact nature of a right in a trade-mark and of injury to trade marks, there is the very practical consideration as to the basis of relief in trade-mark cases and, more particularly, in cases of unfair competition.

Chapter 1 ANTIQUITY, ROME AND THE MIDDLE AGES 
1 From antiquity to Rome
2 Rome
3 Marks on goods during the Middle Ages
4 The medieval guilds
5 Medieval marks in general
6 Merchants’ marks
7 Production marks
8 The cloth and cutler’s trades
9 Cloth marks
10 Cutlers’ marks
11 The medieval period and the law
12 In sum
Chapter 2 FROM THE FIRST TO THE VICTORIAN AND EARLY AMERICAN CASES 
1 Towards the 19th Century
2 The earliest cases
3 Southern v How
4 Other early cases
5 Developments in trade mark law during the 19th Century
6The common law
7 Equity
8 Trade Mark Law at the time of the Judicature Acts 1873-1875 and the Patents,
Designs, and Trade Marks Acts 1883-1888
9Early trade mark law in the U.S.A.
10 In sum
Chapter 3 THE FIRST ACTS IN BRITAIN AND THE UNITED STATES 
1 The background to early trade mark legislation in England
2 The first Merchandise Marks Acts
3 The Trade Marks Registration Act, 1875
4 The Patents, Designs and Trade Marks Acts, 1883-1888
5 Distinctiveness
6 Fancy words
7 Invented words
8 Old marks
9 The 1905 Act
10 The Trade Marks Act, 1919
11 Registration and the infringement action
12 Early legislation in the U.S.A.
13 In sum
Chapter 4 TRADE MARKS AS PROPERTY: THE EARLY 20TH CENTURY
1 The confluence of Anglo-American case law regarding property in trade marks
Chapter 5 UNITED KINGDOM: THE 1938 ACT – INTRODUCTION
1Changes made by the 1938 Act
2 Infringement
3 Methodology
3 Licensing and Assignment
4 Further innovations
Chapter 6 UNITED KINGDOM: THE 1938 ACT – OBTAINING REGISTRATION 
1 Obtaining trade and service mark registration under the Act Mark
2″Trade Mark » and « Service Mark »
3 Distinctiveness
4 Names and signatures [Categories (a) – (b)]
5 Invented words [Category (b)]
6 Category (d) Marks
7 Geographical names
8 Surnames
9 Other distinctive marks
10 Qualification for Part B
11 Remaining disqualifications
12 Marks offending Section 11
13 Marks offending Section 12
14 Honest concurrent user
15 Conflicting co-pending applications
Chapter 7 UNITED KINGDOM: THE 1938 ACT – INFRINGEMENT
1Infringement under the earlier Acts 1938 Act: infringement of Part A registrations
2 The registered right
3 Sections 4(1)(a) and (b)
4 Section 4(l)(a) infringements
5 Section 4(l)(b) infringements
6 Section 4(2)
7 Sections 4(3)(a), (b) and (c)
8 Section 4(4)
9 Sections 7 and 8
Chapter 8 UNITED KINGDOM: – THE RELATIONSHIP BETWEEN TRADE MARKS AND GOODWIU: ASSIGNMENT AND LICENSING UNDER THE 1938
1 Assignments prior to the 1938 Act
2 The early cases concerning goodwill
3 The 1938 Act: Background to the assignment provisions
4 Goodwill
5 The nature of goodwill
6 Assignment of goodwill
7 Separate goodwills
8 Trade marks as symbols of goodwill
9  Intrinsic value in trade marks per se
10  Goodwill in brands
11Reputation and goodwill
12 International goodwill
13Shared goodwill
14Assignments of marks under the 1938 Act
15 Assignments without goodwill
16 The assignment of unregistered marks
17 Section 22(3)
18 Associations
19 Licensing
20 Licensing and the 1938Act
21  Unregistered licences
Chapter 9 UNITED KINGDOM: TRADE MARKS AND GOODWILL AS PROPERTY 204
1 Personal property
2 Early approaches and authorities in the Netherlands and South Africa
3 The relationship between South African and United Kingdom trade mark law
4 Early trade mark legislation in South Africa
5 Union legislation
6 The Chowles Committee
7 Act 62 of 1963
8 Service marks
9 Further amendments and transitional provisions
10 In sum
Chapter 11 SOUTH AFRICA: THE 1963 ACT 249
1 Obtaining registration
2 « Mark »
3 « Trade Mark »
4 Distinctiveness
5 Part B of the Register
6 Remaining disqualifications
7 Infringement
8 Assignment
9 Licensing
10 JO The courts and property in trade marks 27
11 In sum
Chapter 12 THE EUROPEAN COMMUNITY
1 Historical development of the EC
2 Institutions of the communities
3 Community legislation and direct effect
4 Community Law 3
5 The European Union
Chapter 13 EC TRADE MARK LAW
1 The underlying policy
2 History of the Regulation and Directive
3 The Draft Regulation
4 The Directive
5 The Madrid Agreement
6 The Madrid Protocol
7 Trade Mark Law and the ECJ
8 In sum
Chapter 14 MODERN TRADE MARK LAW IN THE U.S.A. 
1 Formalism v Realism
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THE NATURE OF THE RIGHT TO A TRADE MARK IN SOUTH AFRICAN LAW