Mica Insulator Company Ld. v. Bruce, Peebles & Co. Ld.

subsection which we have to deal particularly with here, and that says this[His Lordship read subsection 6.] My Lords, I venture to think that that, again, is an expression of what our ordinary practice would have done without it. In our views of audit, we should never have allowed the costs of parts of 5 the case that had been found to be entirely useless and did not contribute to the case at all or the eventual issue of the case at all. Of course, when you come to apply a rule of that sort to a case there are difficult questions of degree; but that is neither here nor there, the general rule is clear enough. Why that particular subsection was put in I do not know; but I do not think it would 10 be a difficult guess to suppose that it was put in to meet some sort of abuse which it was considered had arisen in the English practice. And, more than that, one can easily see that the phrase, as it is, had this effect in England, that it relegated the matter to the determination of the judge. Now, my Lords, although in one sense I have no right to know anything of these matters, because 15 it is not my system of law, yet it is common knowledge, and I do know that there are in England many matters regulated by the Master which, in Scotland, are always under the determination of the judge. The effect of that Section is, in England, to take these things out of the cognisance of the Master and bring them directly before the judge. And, therefore, again, if I hazard 20 another guess, I think that that had very likely something to do with the genesis of the Section. That sort of provision is, of course, of no use in Scotland, where all these matters are directly under the cognizance of the judge. And, therefore, my Lords, what it comes to is this-are your Lordships to deal with this subsection as putting on us a statutory requirement that there should be a Certificate 25 under the hand of the judge in order to deal with what is an auditor's question? I do not think that that subsection was meant to operate in that way at all; and I think, taken along with Section 107, we are still entitled to go according to our own procedure in which, allowed to run in its own natural channels, we shall entirely carry out the whole spirit of the enactment that is in subsection 30 6 of Section 29.

That question being put out of the way, we come to the next and only other question whether the particular taxation here has been right. My Lords, the case in this matter is somewhat peculiar. It is not a thing that can very easily recur. The course of the case was this: The Pursuers came into Court alleging 35 an infringement by the Defenders, but the infringement not of a thing but of a process. Well, they had a discussion in the Outer House, and, apparently, there was some difficulty. The Lord Ordinary allowed a Proof. The Defenders reclaimed, and said there was not sufficient specification in the Pursuers' complaint to enable them to meet it, and, in particular, that the Pursuers had 40 not told them the way in which the Defenders had infringed their process. It is evident that there is all the difference in the world between a process and a thing in this matter. If it had been that the Defenders had made a certain machine or a certain thing which was like the Pursuers', they would need no more specification; but if the Defenders have infringed a process, the Pursuers 45 must tell in what way the particular process has been infringed. That argument prevailed in the Inner House, and the Inner House thought that, as the action stood, it really was not relevant for want of specification; but, as in all cases where the action is not relevant for want of specification, they gave the Pursuers an opportunity of amending. In order to let them amend, it was necessary to 50 get out of the way the formal Order for Proof standing in the interlocutor of the Lord Ordinary. Accordingly, the first step was to recall the Order for Proof, and give the Pursuers an opportunity of amending. Parties did amend, as I pointed out, and, having amended and having made what, in the view of the Inner House, was a relevant Record as being not wanting in specification, 55 the Record was of new closed and the case remitted to the Lord Ordinary. Now, of course, a formal Order for Proof was not renewed, but there was no other possible Order which the Lord Ordinary could pronounce. Accordingly, my

Mica Insulator Company Ld. v. Bruce, Peebles & Co. Ld.

Lords, my view is that, when the case went back from the Inner House, it was truly in the same situation as if an Order for Proof had been pronounced. The General Regulations attached to the Act of Sederunt are, of course, of the highest authority, but they are only regulations. They are merely a set of rules which the Court gives out for the guidance of the Auditor. They are not 5 rules which any one Division sitting by itself can in any way set aside, because they have the authority of the whole Court, by which one Division is bound. But, on the other hand, they are not a Statute where one must necessarily stick upon the mere letter of what has been enjoined; they are merely rules for our guidance, of which we are fully entitled to interpret the spirit.

10

Therefore, my Lords, I am of opinion that we are entitled to say to the Auditor that, in the peculiar circumstances of the case, the spirit of the third rule is carried out by holding that here it is in the same position as if an Order for Proof had been pronounced. But then, my Lords, I am bound to say I do not think that leads to the result to which the Lord Ordinary seems to have come, 15 because he says that he would allow such expenses as were properly incurred in preliminary enquiries to enable the defence to be properly stated. Unless there is a distinction between Patent cases and other cases-and there is no distinction raised by the terms of the Act-I see no ground for subjecting the Pursuers to the expenses of the Defenders in making their case. They may 20 have, according to the General Regulations, the expense of precognition even although in the long run the Proof, with a view to which those precognitions were taken, never is held, because the case has got into such a position that they were in good faith in going on and making their preparations for that Proof which was necessarily the future of the case-if the case went on. It is a 25 perfectly different thing to say that they are to have the expense of finding out what their defence is to be. It may be that there is a little hardship in it. There is always a certain amount of hardship in defending yourself against an unjust claim. But, at the same time, any opposite rule would lead to inextricable confusion. You must hold that Defenders, when they are called into 30 Court by Pursuers, know their own defence. In most cases they do. Patent cases are so far peculiar that, though they may know their own defence in the infringement proper, they may not know the whole possibilities of their defence in the way of attacking the Pursuers' Patent, and as prudent people they may think it is a better means of defending themselves rather to direct a counter- 35 attack against the Pursuers' Patent than to rely exclusively upon the fact that they had not infringed the Patent.

On the whole matter, my Lords, I am, upon the Lord Ordinary's report, in favour of issuing an order to the Auditor that this account should be taxed in this case in the same way as if in this case an Order for Proof had been pro- 40 nounced in so many words at the time the Interlocutor of the 3rd of November was pronounced; but that beyond that no distinction can be made between this case, in respect that it is a Patent case, and any other.

Lords M'LAREN, KINNEAR and PEARSON concurred.

The Court found no expenses due to or by either party in connection with 45 the proceedings the subject of this report.

In the Matter of Russell's Patent.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

5

Before MR. JUSTICE NEVILLE.

May 4th, 1907.

IN THE MATTER OF RUSSELL'S PATENT (No. 3268 of 1905).

Patent.-Revocation.-Order by consent.

In 1906 Letters Patent (No. 3268 of 1905) were granted to Joseph Nelson Russell for an "Improved method of and means for heating buildings by the "circulation of steam or vapour.'

The invention was based upon the employment, on the steam or vapour supply 10 service pipes leading to the radiators, coils, pipes or other portions of the heating system, of valves adjustable at will so as to permit the passage of the amount of steam required by the sections of the installation controlled by the valves; upon the maintenance of a partial vacuum within the condensed water return portion of the installation; and upon the employment of a back pressure or 15 non-return valve, on the condensed water outlet of any section, normally open and adapted to close only on the occurrence of back-pressure.

On the 25th of April 1907 a Petition was presented by the Atmospheric Steam Heating Co. Ld. for the revocation of this Patent, the Patentee being made Respondent. The Petition came on for hearing on the 4th of May 1907 before 20 Mr. Justice NEVILLE who made an Order by consent for the revocation of the Patent and directed that notice of the Order be given to the Comptroller.

In the Matter of Arthur Brock's Patent.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

66

Before MR. JUSTICE WARRINGTON.

June 1st, 1907.

IN THE MATTER OF ARTHUR BROCK'S PATENT (No. 871 of 1905).

Patent.-Petition for revocation.-Order by consent.

5

In 1906 Letters Patent (No. 871 of 1905) were granted to Arthur Brock for Improvements in Pyrotechnic Signal Lights." The Complete Specification "claimed "A pyrotechnic signal light composed of two or more sections, each "provided with a thick plug or partition which separates the combustible compound therein from that in an adjacent section, and with a layer of an 10 explosive arranged adjacent to the said plug to blow it off and light the "combustible compound of the next section, so that different sections cannot "burn simultaneously, substantially as described."

66

A Petition having been presented on the 15th of April 1907 by James Pain & Sons for revocation of this Patent, it came on for hearing before Mr. Justice 15 Warrington on the 1st of June 1907, when an Order was made, by consent, for revocation of the Patent without costs. Notice of the Order was directed to be given to the Comptroller.

Star Cycle Company Ld. v. Frankenburgs.

5

10

IN THE COURT OF APPEAL.

Before THE LORD CHIEF JUSTICE and LORDS JUSTICES FLETCHER MOULTON and BUCKLEY.

April 16th, 1907.

STAR CYCLE COMPANY LD. . FRANKENBURGS.

Passing-off and infringement of Trade Mark.-" Star Cycles."-Use by Defendant in his Price List of name "Midland Star."—Actual fraud held not proved.-Concurrent user of name by third parties.-Probability of deception not established.—Action dismissed.—Appeal dismissed.

The Plaintiffs and their predecessors had carried on business for many years as makers of cycles at the Star Cycle Works, Wolverhampton, and had used a Trade Mark, registered in 1891, and consisting of the device of a Star, in connection with the sale of their cycles, which were well known as "Star" cycles. In an action for passing-off and infringement of the Trade Mark, the Plaintiffs 15 complained of an advertisement of "Midland Star" cycles and cycle frames in the Defendant's Price List; they also charged the Defendant with having accepted an order for a "Star" cycle, but on a Motion for an interlocutory injunction that charge failed, and it was held that probability of deception had not been established, and no Order was made, except as to costs. The Plaintiffs claimed 20 to be entitled to the exclusive right to the use of the word "Star," alone or in combination, in the sale of cycles and cycle parts and accessories, but at the trial they limited their claim to cycles and frames. The Defendant proved that a considerable sale of cycles under various names of which "Star" formed a part had been going on openly for several years unchallenged by the Plaintiffs. The 25 Defendant alleged that the name " Midland Star" was innocently adopted; that his price list was issued, and his cycles were sold, to the trade only; that the advertisement could not deceive; that his device containing a Star had never been affixed by him to any cycle; that he had never sold a cycle or frame under the name "Midland Star"; and that the Plaintiffs regularly sold cycles without 30 any name on them. It was held at the trial, that the Defendant had adopted the name "Midland Star" without any fraudulent intention; that the Plaintiffs had no exclusive right to the use of the word "Star"; and that probability of deception had not been established. The action was dismissed with costs. The Plaintiffs appealed.