The Place of Scienter in Trade Mark Infringement in Nineteenth Century England: The Fall and Rise of Millington v. Fox

Abstract

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. A person infringes, irrespective of whether they knew of the plaintiff’s 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. 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, 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 infringe– ment 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. Thereafter, proceedings for trade mark infringement were in essence equitable. 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. 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? Is there a defence of using one’s own name, and, if so, what is its scope?