5

Sirdar Rubber Company Ld. and Maclulich v. Wallington, Weston & Co.

"In order that my said invention may be clearly understood and readily "carried into effect I will proceed to describe the same more fully with reference "to the accompanying drawings, which illustrate cross-sections of my improved "rim and tyre; A being the rim, B the tyre and C the felloe of the wheel.

66

"As before stated the said rim is by preference made of metal and the width of "its mouth, that is to say the distance between the points a a, is approximately equal to the width of the base between the points a1 a1. a2 a2 are the inclined "interior surfaces of the angular walls of the rim, said surfaces meeting together "at a point a approximately midway between the inner surface of the base and 10"the outer edge of the flange of the rim. The inner surface of the said base is "flat and the edges at of the flanges are preferably curved so as not to present a sharp surface to the tyre.

66

66

"The base of the tyre or that portion which lies within the rim is made approximately of the same shape in cross-section as that of the interior of the 15" said rim, so that the base of the tyre is supported by the bottom of the rim. "The portion of the tyre which projects beyond the mouth of the rim is so shaped that it does not overhang or project laterally beyond the flanges of the "rim under ordinary pressures, as aforesaid."

66

66

The Patentee claimed :-"1. A wheel-rim having angular flanges so formed 20" that the lateral stresses, to which its tyre is subjected while in ordinary use, are utilized to retain the said tyre in the rim substantially as described. "2. A wheel-rim and solid rubber tyre constructed substantially as described "with reference to the accompanying Drawings for the purpose specified."

On the 24th of December 1903 the Sirdar Rubber Company Ld. as owners 25 in equity of the Patent, and the Patentee, as the registered legal owner, commenced an action against Wallington, Weston & Co. (manufacturers of rubber tyres) for infringement thereof, and to restrain them from selling under the term "Buffer" any rubber tyre not of the Plaintiffs' manufacture or merchandise, and from passing off any goods not of the Plaintiffs' manufacture or 30 merchandise as and for the Plaintiffs' goods. They claimed the usual relief. At the trial the Defendants stated that they did not claim any right to sell tyres as "Buffer" tyres, and accordingly that part of the case was not proceeded with by the Plaintiffs.

By their Statement of Claim, delivered the 24th of February 1904, the 35 Plaintiffs stated (inter alia) in reference to the Patent that the Plaintiff Company were the owners in equity and the Plaintiff James Mecredy Maclulich the registered legal owner of the Patent, and that the Defendants had infringed. The usual relief was claimed.

The Particulars of Breaches, delivered with the Statement of Claim, alleged 40 that the Defendants had manufactured, sold, offered for sale, and used rims and tyres for vehicle wheels constructed in accordance with the invention

Sirdar Rubber Company Ld. and Maclulich v. Wallington, Weston & Co.

described in the Specification and claimed in both the claiming clauses thereof, and that in particular the Defendants had, to the order of one H. Thompson, of Guildford, shortly before the date of the writ, applied to a motor wheel the combination of the metal rim and rubber tyre constructed as aforesaid, and that the Defendants threatened and intended to continue to infringe.

5

By their Defence, delivered on the 25th of April 1904, the Defendants alleged (inter alia) (1) that they had not infringed the Letters Patent by making or selling any metal rims for vehicle wheels constructed in the manner described in the Specification; (2) that if they had sold or supplied any rubber tyres for use with or applied to rims of the section described and claimed in the Specifi- 10 cation of the alleged invention in the manner therein described, which they denied, all such tyres were applied to such rims or sold or supplied for use therewith as repairs to wheels duly licensed under the Patent, the rims and and tyres of all such wheels having been made sold by the Plaintiffs or their licensees; (3) that the Patent was invalid for the reasons set forth in the 15 Particulars of Objections.

or

The Particulars of Objections (which will be found set out in 22 R.P.C. 260) alleged various Objections to the validity of the Patent. The ninth Objection being that the Complete Specification of the invention did not particularly describe and ascertain the nature thereof, and in what manner the same was to 20 be performed, inasmuch as if the base of the rubber tyre was of the same dimensions in cross-section as the rim it was liable to come off, and no sufficient directions were given as to how to construct the tyre so as to permit the free access of the rubber through the mouth of the rim and at the same time ensure the retention of the tyre in the rim.

25

The action came on for trial on the 23rd of February 1905 before Mr. Justice Swinfen-Eady, who held—(1) that the Specification did not particularly describe and ascertain the nature of the invention and the manner in which it was to be performed; (2) that there was no subject-matter; (3) that there was want of novelty; (4) that, even if valid, the Patent had not been infringed, as what the 30 Defendants had done was a fair repair and not a reconstruction; (5) that the Patentee was the true and first inventor; and he dismissed the action with costs, except that he gave the Plaintiffs the costs of the issue of true and first inventor (22 R.P.C. 257).

From this decision the Plaintiffs appealed. The Court of Appeal dismissed 35 the appeal on the ground that the Specification did not particularly describe and ascertain the invention and the manner in which it was to be performed (23 R.P.C. 132).

The Plaintiffs appealed to the House of Lords.

Walter K.C. and H. A. Colefax (instructed by Shaen, Roscoe, Massey & Co.) 40 appeared for the Plaintiffs; Bousfield K.C. and W. Neill (instructed by CollyerBristow, Hill, Curtis, Booth & Co.) appeared for the Defendants.

Walter K.C. and Colefax for the Appellants.-The nature of the invention is based on the properties of rubber which, though incompressible, is resilient and therefore able to flow under pressure, but which, owing to vulcanisation and 45 the use of fillers, powders under repeated knocks. In a vehicle tyre centrifugal force, especially with high speeds and heavy weights, would cause a flatbottomed tyre to leave the supporting base of the rim at all points except where it touched the ground, causing a knocking there. Also the rim tended to rotate separately from or creep" inside the tyre. It was common knowledge at the 50 date of the Patent that arching the base of the tyre was the proper method of overcoming the action of centrifugal force and making the tyre a tight fit in the rim to prevent creeping. The Specification therefore does not deal with these points, but only with an improved method of overcoming the tendency of lateral road strains to roll the tyre out of the rim. Previously this had been 55 prevented by clamping down the rubber by the edges of the rim which,

Sirdar Rubber Company Ld. and Maclulich v. Wallington, Weston & Co.

however, prevented the inside portion from flowing, and the outside of the tyre, being free, was cut to ribbons. In an open section rim, the tyre was held on by wires which also cut through the base of the rubber. The novelty of the patented invention consists in the shape of the tyre, which is such that the 5 inner part is held in the rim like a nut in a spanner, and the outer part does not overhang the edges of the rim when in use. [The Specification was read.] The words with additional security" show that previous common knowledge must not be discarded, and the evidence shows that almost all solid tyres were. previously slightly crowned. When a tyre is crowned, unless it is made wider 10 than the rim the edges will be drawn away and the tyre will not fill the rim when it is inserted. "Approximately fit" the rim means substantially fill the rim, and does not refer to the shape of the tyre before it is put into the rim. The direction that the base of the tyre is to be supported by the bottom of the rim leads to the application of the common practice of arching and consequential 15 widening. The Drawings too show a snug fit, and the words "lateral stresses in the first Claim show that it was only these that the Patentee was trying to overcome by his directions. The Patent is for a combination of rim and tyre, and, although we cannot stop the Defendants from making tyres, they infringe when they fit new ones into our rims. [Dunlop Pneumatic Tyre Company v. 20 Neal (16 R.P.C. 247; L.R. (1899) 1 Ch. 807) and Dunlop Pneumatic Tyre Company v. David Moseley & Sons Ld. (21 R.P.C. 274; L.R. (1904) 1 Ch. 621) were referred to.] [Lord HALSBURY.-The principle is quite clear although its application is sometimes difficult; you may prolong the life of a licensed article but you must not make a new one under the cover of repair.] [The 25 judgments of Swinfen Eady J. and the Court of Appeal were read.] The Court of Appeal have wrongly construed the word "approximately "—(1) by assuming that "free access of the rubber into the rim necessitates a loose fit instead of merely avoiding the obstruction to the flow of the rubber caused by the nipping method of securing the tyre; (2) by assuming that the Patentee 30 was going to dispense with the universal practice of putting the tyre on by mechanical pressure; and (3) by misapprehending the reason of the experiments made on the section of the rubber between the date of the Provisional and Complete Specifications, for the letters clearly show that the Patentee was in possession of all the common knowledge as to arching and widening, and he 35 is entitled to have it read into his Specification in the absence of a contrary direction.

Counsel for the Respondents were not called on.

Lord LOREBURN L.C.-My Lords, as this, after all, is only a question of the construction of the Specification, as has been very fairly and candidly stated by 40 the learned Counsel for the Appellants so far as the argument has hitherto proceeded, it is not necessary to take any time for a more deliberate judgment. In my opinion the real invention has not been adequately described in this Specification. Indeed, I think that what appears in the Specification amounts to a mis-description, if the intention was to describe what, in the result, was 45 ascertained by experience to be the real merit of the invention itself. I suppose that it was well known that tyres should have a convex base, and also that a tyre should be wider at the sides than the rim into which it was to be forced. It seems to me that, in these circumstances, if a skilled person were to read this Specification stating that the shape ought to be approximately identical so 50 that there should be a fit, he would say, "Hitherto it has been believed that "there must be a convex base; hitherto it has been believed that you ought to "have a tyre somewhat wider at the sides, and now this Specification indicates, "to me at all events, if it does not affirm, that those conditions may be dispensed "with." At least, as I think, the Specification is consistent with that. There55 fore, I am of opinion that it is not an adequate description, and I agree with the conclusions at which the Court below arrived. I therefore move your Lordships that the appeal be dismissed with costs.

Sirdar Rubber Company Ld. and Maclulich v. Wallington, Weston & Co.

Lord HALSBURY.-I am of the same opinion. It appears to me that two points have been made which are fatal to this Patent. In the first place, I think what is pointed out as a necessity of the article when it is made, in order to be successful, is, that there should be what has been described by the witnesses as a crown, that is to say, a convex surface. Both in the Drawings 5 and in the description, the base is said to be flat. If that means actually flat, how they are to fit together when one is convex and the other is flat I do not understand. In the next place, the familiar mode by which a thing can be fastened to another thing, when it consists of an elastic substance like indiarubber, would be by making it a little larger than the thing into which it is to 10 be fitted, and the mechanical pressure by which it was forced in would be such that when once it was forced in it could not get out again. There is nothing very meritorious, nothing very scientific, and nothing in the smallest degree involving any invention in that. It appears to me that the only mode by which the one thing is attached to the other here is by the forcing it into the space by 15 considerable mechanical pressure, and that itself is the only mode of attachment. Neither the convex surface-which is to be applied to the flat surface, so that when they are forced in they both become flat in some mysterious way, which I do not at present understand-neither the one thing nor the other is mentioned in the Specification. I cannot hesitate for a moment to say 20 that there is here, not only an inadequate description, but, to my mind, an inaccurate description which so far from guiding a skilled workman to perform the work that he has to do when the Specification is put into his hands, misleads him into supposing that he must do something which he must not do if this thing is to succeed. Under these circumstances it appears to me 25 that the Patent is fatally bad, and therefore it is not necessary to enter into the other parts of the case, into which indeed the Court below did not itself enter. I only wish to add that so far as I have read Mr. Justice Swinfen Eady's judgment I concur with the view that he has entertained.

Lord JAMES OF HEREFORD.-My Lords, I concur in thinking that the 30 Judgment of the Court below should be affirmed.

Lord ATKINSON.-I concur. I think the two essentials which were necessary to make this patented article a success have, not only not been referred to in the Specification, but on the fair reading of the Specification I think they are excluded.

The appeal was dismissed with costs.

35

In re Gestetner's Trade Mark.

5

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE NEVILLE.

July 10th and 11th, 1907.

IN RE GESTETNER'S TRADE MARK.

Trade Mark.-Motion to rectify.-" Cyclostyle."-Invented word.-Descriptive word.-Name of a patented article.-Trade Marks registered under previous Acts.-Trade Marks Act, 1905, Sections 3, 9, 35, and 36.

The word "Cyclostyle" was registered for stationery in 1882 by F. & Co., the predecessors in title to the Trade Mark of G., who in 1881 and 1888 took out 10 Letters Patent for a wheel-pointed pen which in his Specifications was frequently spoken of as a "Cyclostyle." From 1882 onwards the word was frequently used by F. & Co. for the pen, ink, paper and other accessories of duplicating apparatus. K., a manufacturer of duplicating apparatus, applied, as a person aggrieved by the registration, to have the Trade Mark removed from the 15 Register.

Held, that the word "Cyclostyle," being the name of a patented article and also being composed of two known, though foreign, words, was not a fancy word at the date of its registration in 1884 within the meaning of Section 64 of the Patents &c. Act of 1883, but was descriptive; and that, inasmuch as Section 36 20 of the Trade Marks Act, 1905, uses language of the present tense and points to the question whether, if a mark were removed from the Register, it would be such a mark as could be registered again under that Act, it must be considered whether the word "Cyclostyle" was at the present time an invented word capable of registration under the new Act, and that it was not an invented 25 word within Section 9, and did not satisfy the definition of a Trade Mark given in Section 3. The Register was accordingly ordered to be rectified by the removal of the mark.

This was a Motion by the Neostyle Manufacturing Company Ld., of London, manufacturers and vendors of stationery, of which Augustus David Klaber 30 was the managing director, for the rectification of the Register of Trade Marks by removing therefrom the Trade Mark No. 37,760, consisting of the word "Cyclostyle," registered on the 27th of May 1884 in Class 39 for Stationery and Apparatus for Producing Facsimile Copies of Writings and Designs, by Fairholme & Co., the predecessors in business of the Respondent David 35 Gestetner.