UTILITY-continued.

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the fiat of the Attorney-General during the hearing of the Petition.First and true inventor.-Anticipation.-Subject-matter.-Utility.— Petition dismissed.-Costs on the higher scale. A Patent having been granted to M. for an Improved process for the manufacture of "lustrous threads, bands, strips, and the like of viscose," U. & Co. presented a Petition for the revocation of the Patent, alleging that they were largely interested in the manufacture of artificial silk from viscose; that they were the registered legal owners of Letters Patent No. 2529 of 1902 granted to S. and W., and that they were entitled to present the Petition as assignees of that Patent. The Particulars of Objections alleged that the invention was not useful; that the Specification disclosed no proper subject-matter for valid Letters Patent; that the invention was not new; and that the Respondent was not the first and true inventor. A doubt being expressed as to whether the Petitioners had any locus standi to present the Petition, Parker J., without deciding the point, gave leave to apply for the fiat of the Attorney-General, which if granted was to be treated as if granted nunc pro tunc, and the hearing of the Petition was continued. The fiat of the Attorney-General was obtained. The question of terms as to costs upon which leave was given to apply for the fiat was deferred until after the hearing of the Petition.--Held, that S. and W. were not the first and true inventors of the invention for which M.'s Patent was granted; that the Patent was useful; that there had been no anticipation; and that there was proper subject-matter for valid Letters Patent. The Petition was dismissed with costs on the higher scale, and consequently there was no necessity on that occasion to go into the question of terms as to costs upon which leave was given to apply for the fiat. IN THE MATTER OF MAX MÜLLER'S PATENT, p. 465.

3. Want of utility where no useful result is obtained distinguished from want of utility from failure to secure the result specified. IN THE MATTER OF ALSOP'S PATENT, p. 753. See REVOCATION (PETITION FOR), No. 8.

DIGEST OF DESIGN CASES.

DESIGN, WHAT CONSTITUTES.

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1. Design or mode of manufacture.-Construction and effect of statement as to novelty contained in the Application for registration. Motion for rectification of Register.-Alleged want of subject-matter and novelty.-Design or system of manufacture.-Effect of Note on Register.-Marking of articles.- Patents &c. Act, Sections 47 and 90.-Rule 9 of Designs Rules 1890.-Motion refused.-Appeal.— Fresh evidence given on appeal.· appeal. Appeal allowed. - Order for rectification made. In 1905 a Design (No. 454,848) was registered applicable to women's stays. The Application for registration included the following passage:-"Statement of nature of design, shape, or configuration of corset. The novelty consists in a corset having "the gores or gussets cut horizontally and from the front of the busk "towards the back of the corset, as shown in the representations." The registered sketch showed a straight-fronted corset, in which the seams were not exactly horizontal, but the gussets tapered towards the front. A representation was attached to the application. An application was made for rectification of the Register by removal of the Design on the grounds (1) that it was not subject-matter for registration, being a mode of manufacture; (2) that it was not novel; and (3) that the owner had in advertisements misrepresented his Design, and had sold articles differing substantially from the registered Design but marked with the registered number. On the hearing of the motion for rectification it was held, that the Design as registered was for a particular form of straight-fronted corsets made with horizontal gussets; that the fact that the Design incidentally described a mode of manufacture did not make it any the less a Design; that there was subject-matter and that the Design was novel, and that it was not shown that the pictures of the Design in the advertisements were not covered by the Design; and that a statement made after registration by the owner of the Design as to the extent of his protection ought not to affect the construction of the Application or the validity of the registration. The Motion was dismissed with costs (23 R.P.Č. 553). The Applicants appealed, and moved the Court of Appeal for leave to adduce fresh evidence on the hearing of the appeal on certain points referred to in the Notice of Motion. The Court gave leave to adduce such evidence by affidavit, the answer of the Respondent to be by affidavit. On the hearing of the appeal the affidavits were read and the deponents cross-examined.— Held, that the representation attached to the application illustrated a method of manufacture and that there was no Design capable of registration, and also, per Moulton and Buckley L.JJ., that such method of manufacture was not novel. The appeal was allowed and an Order made for the removal of the Design from the Register, but the execution of the order was stayed pending an appeal. Per Moulton L.J. -Nothing but that which can be matter for the eye to see can be a good subject of Design. IN THE MATTER OF BAYER'S DESIGN,* p. 65.

* The decision of the Court of Appeal has since been affirmed by the House of Lords.

DESIGN, WHAT CONSTITUTES-continued.

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2. "A Design primâ facie is always intended to be capable of magnifica. tion, if that is the right word to use. All that you have to do in "order to maintain the identity of Design is to maintain the relative "proportions." Per VAUGHAN WILLIAMS L.J. IN THE MATTER OF BAYER'S DESIGN, p. 72. See also per KEKEWICH J. in MANCHESTER v. UMFREVILLE & SON, p. 780.

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3. "Nothing in my opinion is a good Design but that of which full knowledge is given when you have once shown to the eye what your Design is. It may be shape or configuration; that is given by a specimen or by a proper drawing, and the eye can see it, and the eye can recognise whether it has been imitated. It may be by a pattern, "to which the same applies. It may be by an ornament, to which the same applies. But in my opinion nothing beyond that can rightly be "called a Design within the meaning of this Statute." Per FLETCHER MOULTON L.J. IN THE MATTER OF BAYER'S DESIGN, p. 77.

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4. "That therefore is the first quality of a Design, it must appeal to the eye. Secondly, I think it must possess this feature, that the pictorial representation must not be a mere representation of a single article, "but must be a suggestion of something which, on account of the language of Section 60, is capable of being applied to an article of "manufacture or to a substance. That may be expressed by saying "that a Design must be a thing which exists apart from its expression. "There must be a suggestion capable of being applied and in general, "certainly I think in this case as regards a corset, capable of be applied "under varying circumstances. It must suggest something to a person "which is new and original, and is capable of being applied to an "article of manufacture or to a substance." Per BUCKLEY L.J. IN THE MATTER OF BAYER'S DESIGN, p. 80.

DRAWING.

When the drawing accompanying an application for registration of a Design shows the Design applied to a particular article non constat that the Design is limited to that particular article. IN THE MATTER OF BAYER'S DESIGN, p. 78.

INFRINGEMENT.

A Design, which could always be readily distinguished from a registered Design at all material points of view, held not to infringe the registered Design. HUTCHISON, MAIN & CO. LD. v. ST. MUNGO MANUFACTURING CO., p. 265.

NOVELTY. See also RECTIFICATION.

Design held to be novel, and to be validly registered, although it did not require ingenuity to produce it, and was not original.New or original.-Infringement.-No obvious imitation.-Action dismissed. H. M. & Co. registered a Design for a golf ball, showing a brambled ball having round each of the six poles, formed by axes at right angles through the centre of the ball, a small circular smooth raised band containing seven brambles and having lettering incised on it. The brambles were arranged in concentric circles round the six poles. Concentric brambling round six poles and name circles round two

NOVELTY-continued.

poles had been previously employed, but never name circles round six poles. The M. M. Company manufactured a ball having six poles at the extremities of axes at right angles through the centre of the ball, and concentric brambling round these poles. The first circle of brambles round each pole was omitted, and on the space thus left was raised lettering. In an action for infringement of copyright in H., M. & Co.'s Design.-Held, that H., M. & Co.'s Design was novel; that it was not necessary that it should be novel and original, and that it was validly registered.-Held, further, that an essential feature of the Design was the six circular raised bands, and that H., M. & Co. had not acquired a monopoly of six similar distinctive and equidistant marks; and that the M. M. Company had not infringed H., M. & Co.'s Design. HUTCHISON, MAIN & CO. LD. v. ST. MUNGO MANUFACTURING CO., p. 265.

RECTIFICATION.

Design held not to be novel and ordered to be expunged.-Action for infringement.-Motion for rectification of Register.-Registration for shape and pattern.-Design whether sufficiently indicated in registration.-Discrepancy between registered Design and articles actually manafuctured.-Novelty. - General knowledge of trade.Anticipation by prior user.-Judgment for Defendants.-Design expunged. In an action for infringement the Plaintiff had registered a Design for caps in Class 10, registering for shape and pattern only. The caps put on the market under licence from the Plaintiff differed in the proportionate size of the parts from the Design as registered. These had been copied by the Defendant, who moved to rectify the Register by expunging the Design. The Defendants' case was (1) that the Design was not sufficiently indicated by the registration; (2) that if it were sufficiently indicated, the caps made and marked thereunder did not correspond with the Design, and that therefore the Defendants by copying these caps had not infringed; and (3) that there was no novelty in the subject-matter of the Design. In support of the plea of no novelty, evidence of general knowledge of similar caps in the trade was relied on, and three copies of caps made previously to the registration were also produced.-Held, that the Design was sufficiently indicated by the registration, and that the articles sold were substantially in accordance with the Design as registered but that there was evidence of prior user and that the Design was not novel. Judgment was given for the Defendants in the action, and the Register was ordered to be rectified by expunging the Design. MANCHESTER v. S. UMFREVILLE & SON, p. 782.

DIGEST OF TRADE MARK, TRADE NAME, AND OTHER CASES.

AGENCY.

Defendant held not to have represented himself to be agent for the Plaintiffs. NATIONAL CASH REGISTER CO. LD. v. THEEMAN, p. 211. See TRADE NAME, NO. 3.

APPLICATION FOR REGISTRATION. See REGISTRATION.

ASSOCIATED TRADE MARKS. See REGISTRATION, No. 3.

CALCULATED TO DECEIVE. See REGISTRATION, No. 6.

CERTIFICATE OF VALIDITY.

1. Certificate granted. IN THE MATTER OF THE APPLICATION OF THE COMPAGNIE INDUSTRIELLE DES PETROLES, p. 585.

2. Certificate granted. BOORD & SON LD. v. THOM AND CAMERON LD., p. 697.

COMPANY.

The use by a limited company of a trade name, other than its own, discussed. H. E. RANDALL LD. v. E. BRADLEY & SON, p. 773.

CONCURRENT USE. See also PASSING OFF, No. 3.

Applicants for registration of a Trade Mark and Opponents had for some years had a concurrent user of the word "Kinahan's" for whisky, but the Applicants' use of that word had been almost wholly within a particular district.-Held, by Kekewich J. and the Court of Appeal, that the Trade Mark proposed to be registered was not calculated to deceive on the ground that in use it would contain the word "Kinahan's." IN THE MATTER OF AN APPLICATION BY LYLE AND KINAHAN LD., pp. 37 and 249. See REGISTRATION, No. 1.

CONDUCT. See also MISREPRESENTATION.

Plaintiffs held not to have disentitled themselves to injunction by their own conduct, namely, by using certain advertisements, &c., for a period of about five weeks. MRS. POMEROY LD. v. SCALÉ, p. 177. See TRADE NAME, No. 2.

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