Star Cycle Company Ld. v. Frankenburgs.

as describing a cycle it means, or is intended to mean, or refers to the Plaintiffs' cycles.

It is said that if "Star of the West," "White Star" and all these various stars do not produce any confusion why should "Midland Star" produce any confusion? The suggestion is-"Oh, Midland Star' is made at Birmingham in 5 "the Midlands, and the Plaintiffs' Star' is also made in the Midlands, and, "therefore, that would produce confusion."

It was said by the Plaintiffs' Counsel in opening the case that he did not suggest that the advertisement would cause confusion in the trade, or that any wholesale dealer would be misled by it-any person in the trade-but if any 10 slip is made in the opening I certainly do not think that any of the parties ought to be bound by that, and if any statement was made which would go beyond what, upon consideration, Counsel would desire to adhere to, I think it might well be overlooked; in fact it was not pressed against him, and certainly, as regards the evidence of Mr. Lisle, he said that in his opinion he thought that 15 a person in the trade would be deceived by the page that was shown to him in the Defendant's Catalogue. With regard to the statement that no wholesale man would be deceived, he did not accept it.

In considering whether what the Defendant has done is calculated to deceive I must bear in mind certain facts. One is that his advertisements are directed 20 only to the trade; he only supplies the trade; he only deals with the trade ; he does not deal with the public at all; his Catalogue is only sent to the trade ; his advertisements have only appeared in trade papers. The advertisement on page 15 of his Catalogue which contains a specification of the cycle complained of, specifies the origin of the parts, that is to say, the makers of the various 25 parts, the rims, the wheels and the hubs, then the chain, Brampton's pedals, Perry's or Villiers' free wheel, and so on-the manufacturer of the parts is mentioned. Mr. Sutcliffe gave a piece of evidence that struck me at the time as having a bearing upon this. He says it is not customary for makers or proprietors of cycles to indicate the origin of the parts composing them. When 30 he was pressed as to whether the Defendant's cycle would not be likely to be taken for the Plaintiffs', that was one of the reasons that he gave, and that seems to me well founded, and seems to me of great importance, because when I look at the Plaintiffs' advertisements-and a batch of them has been put in ranging from 1897 up to the present time-I observed that it is not usual for 35 the Plaintiffs to mention the makers of the various parts. The last Catalogue put in is the current one for 1906, and except perhaps for the chain-the Plaintiffs' say they use Brampton's chain-the inference is that they make all the parts themselves. According to the evidence, no doubt they buy parts, and it is urged upon me that the Plaintiffs do just the same as every other manu- 40 facturer, that is, buy almost all the parts from other persons, not necessarily always, but at times. There is nothing in their Catalogues to indicate that, but rather the reverse. They do not make a point, in advertising their proprietary "Star" cycles, of where they get the parts from. That is made a great feature of Frankenburg's, and that seems to have appealed to more than 45 one of the witnesses when they observed in the specification in detail the persons who supplied the various parts. Then evidence was called of certain persons in the trade as to whether they would be deceived by the Defendant's Catalogue and by the Defendant's advertisements, but the way in which questions were put to them is really not calculated to assist 50 the Court in coming to a conclusion. For instance, what was done, and it was done constantly, was this-the Defendant's Catalogue was taken, it was opened so that the cover was not presented to the witness, it was opened at the particular page, and the particular page was handed to the witness, and it was said: "Now, looking at that page, what should you understand by the 55 "Midland Star' cycle there: whose should you take it to be?" Now

the Catalogue

Star Cycle Company Ld. v. Frankenburgs.

Frankenburgs' name does not appear on that page at all, although if you take he uses at the bottom: "Frankenburgs, Manufacturers, Birmingham," and 5 and look through it you quite see the nature of the Catalogue, and the terms of the business are apparent. The witnesses were handed frequently for the first time this page 15, but that was not the way in which evidence should be given to assist the Court in coming to a conclusion. Then the same with regard to some of the advertisements. An advertisement was put to several of

as a whole the name is very prominent, and if you refer to page 4

10 the

Witnesses that appeared in the "Cycle and Motor Trades Review of the 12th of April; the advertisement was handed to a witness who, until it was handed to him in the box, had not seen it before, and his attention was called to the words "Midland Star Cycle," and he said he should take that to be the Plaintiffs'. With regard to Mr. Grasby, when his attention was called, as 15 regards the advertisement, to the words appearing in the advertisement of the 12th of April," Midland Star Cycles and Frame are only made by Franken“burgs," he said "Now that my attention is called to those words in the "Defendant's advertisements, I think they mean that the cycles advertised are "made by the Defendants." Then Mr. Selwyn, who is a traveller, was called, 20 and he said: "Looking at the advertisement of the 12th of April, and reading “it carefully, I should say it was a different machine altogether, the one made by the Defendants. That is different from the Plaintiffs', but if I read only "the large print I should say it was a cycle made by the Plaintiffs." In crossexamination he said that in his view no wholesale person would be deceived 25 by page 15 of the Catalogue; in re-examination he modified it. There were

66

other witnesses to the same effect.

On the other hand, witnesses were called on behalf of the Defendant, and they said that in their opinion nobody in the trade would be misled.

It is urged, that the case does not depend upon the Catalogue, or those 30 advertisements. There are other advertisements to which greater objection can be taken, because in the advertisement in February and March the words “Made

66

only by Frankenburgs" do not appear. It is said that although Frankenburg's name appears in those advertisements, the advertisements are open to objection, and more so than the advertisements that were put in in the Plaintiffs' opening. 35 Then it is urged that even if the man in the trade is not deceived, the effect of selling cycles under the name of the "Midland Star" will be to put into the hands of the trader the means of committing a fraud on the ultimate purchaser; it enables him to pass off the machines on the ultimate purchaser as "Midland "Stars" tending to confusion with the Plaintiffs.

40

66

it

It appears that in no single case has the transfer with the star upon ever been used. The Defendant contemplated using the transfer as prepared by Mr. Gay, but, when the writ came, I suppose he took advice at all events he did not use it, and he has never used the transfer with the star upon it. On the machine itself there is nothing put to which the least objection can be taken. 45 The words "The Midland," the initials, and the design are entirely free from objection, so that as regards the machine itself there is nothing upon it that enables any machine to be sold dishonestly. The Plaintiffs say that their cycles are so well known as " Star cycles" that a machine with the name Star" upon it would indicate a machine of their manufacture-I forget what other words 50 were also used, but whatever they were it would also mean one of their machines. On the other hand, it would seem that the Plaintiffs manufacture machines which they sell without any name upon them, and without any transfers, and also other machines manufactured by them, and sold; for instance, there is the Grosvenor" and the "Bicester," according to two witnesses who gave evidence. 55 The Grosvenor" was sold by Mr. Haskins. He says the "Grosvenor " is a machine sometimes made by the Plaintiffs, and they put his transfer on it, and

66

Star Cycle Company Ld. v. Frankenburgs.

Thomas Williams spoke to the "Bicester". "Some of the cycles which I sell as "Bicester' are made by the Plaintiffs," so that not every cycle made by the Plaintiffs is known as a 66 Star," but it is known under the trade name that is taken by the person who sells it. Under those circumstances, bearing in mind the evidence that is adduced on 5 both sides, is there any reasonable probability that what the Defendant is doing is passing off his cycles as the Plaintiffs'? He has not taken or used any part of their registered Trade Mark, and I am satisfied that there is no case whatever of infringement of their Trade Mark. Then with regard to the advertisements, Catalogues, and so on, in my opinion, although he uses the expression "The 10 "Midland Star" he does not use it in such a way as to lead to the belief that the persons to whom his advertisements are addressed will be misled into thinking that they are the Plaintiffs' cycles, and I do not believe that any persons in the trade would be deceived. Having regard to his name appearing in the advertisements, to his position as a wholesale agent, the Plaintiffs not 15 selling their goods through a wholesale agent, to the specification of the machines, and to the particulars, I am of opinion that there is no reasonable probability, or chance of his goods being passed off as and for the Plaintiffs'. I think the whole of the Plaintiffs' case fails. Perhaps it is to be regretted that when the Plaintiffs' found that they had made a mistake in the charge they first made against the 20 Defendant, of supplying or intending to supply "Midland Star" cycles when "Star" cycles were ordered, and they found there was no ground for that, they persevered with the action. The real object of the action is to enable the Plaintiffs to sustain a claim to the exclusive use of the word "Star." It is quite clear from what both the Lisles said that this was the real object of the action. In my opinion 25 they have no monopoly of the word "Star." The Defendant has not done anything of which the Plaintiffs are entitled to complain. Whatever may have been the case in other cases, the Defendant has been acting honestly in this case, and has only defended himself when an attack was made upon him. I think the action fails, and must be dismissed with costs.

Micklem K.C. stated that the abandonment of the question of accessories related only to the present action.

SWINFEN EADY J.-I am only trying this action.

30

In the Matter of Brown's Patent.

5

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before LORDS JUSTICES MOULTON and BUCKLEY.

December 7th, 1906.

IN THE MATTER OF BROWN'S PATENT.

Patent.-Petition for revocation.-Alleged prior user.-Interrogatories.— Order refused.-Appeal dismissed.

In a Petition for revocation of a Patent relating to improvements in telegraphic apparatus, the Petitioners alleged prior user by the manufacture and sale or use by their predecessors in business of certain electrical shunts, coils, and 10 recorders. On the hearing of a Summons by the Respondents for Particulars as to the alleged prior users, the Petitioners undertook to give certain Particulars, but the Court of Appeal refused to order Particulars of the weight, size, resistance, and induction of the articles alleged to have been used prior to the Patent. The Respondents then applied for leave to deliver to the Petitioners 15 Interrogatories as to matters of a similar nature, but leave was refused by the Master and by the Judge in Chambers. The Respondents appealed.

Held, that the Petitioners ought not to be ordered at this stage to disclose their own case, and that the Interrogatories ought not to be allowed. The appeal was dismissed with costs, the Petitioners undertaking to give inspection of articles 20 in their own possession or under their control.

Letters Patent (No. 1434* of 1899) were granted to Sidney George Brown for an invention of "Improvements in electric telegraph apparatus." In May 1906 Alexander Muirhead and Muirhead & Co. Ld. presented a Petition for revocation of the Patent. The Petition alleged the invalidity of the Patent on the 25 grounds of want of subject-matter and want of novelty. The Respondents were the Patentee, Herbert Arnand Taylor, and J. A. L. Dearlove, and the Commercial Cable Company, licensees.

The Particulars of Objections alleged (inter alia) the following instances of prior user upon which the Petitioners intended to rely against the 3rd, 4th, 30 and 7th Claims of the Specification:-B (1) The manufacture and sale by Muirhead & Co. for many years prior to the Patent, and the common general use for telegraphic purposes, of "Electro-Magnetic Shunts," "Magnetic Shunts," and Induction Coils," the same being of both open circuit and closed circuit form. (2) The common general use for many years prior to the date of the 35 Patent by Muirhead & Co., in their laboratories at Westminster and Elmer's End, of an electro-magnetic shunt with closed circuit for shunting "recorders." (3) The exhibition and user by the Eastern Telegraph Company at the Edinburgh Electric Exhibition, 1890, of a Siphon Recorder shunted with a closed

In the Matter of Brown's Patent.

circuit shunt. (4) The manufacture and use at the works of Muirhead & Co., Elmer's End, for the West India and Panama Telegraph Company, in December 1898 of "Recorders" shunted with closed circuit induction coils.

The Respondents applied for an Order for further and better Particulars of Objections as follows: Under (B), Instances of prior user :-(1) Particulars of 5 the sales by Muirhead & Co. of Electro-Magnetic Shunts," Magnetic

"Shunts," and "Induction Coils," giving dates and addresses of the persons to whom such sales were made, the purposes for which such shunts were supplied, and their size and weight. Also Particulars of the type of shunts so sold giving their resistance in "Ohms" and self-induction in "Henries." (2) 10 Particulars of the closed circuit Electro-Magnetic Shunts in common and general use in the laboratories of Muirhead & Co. at Westminster and Elmer's End, giving their resistance in "Ohms" and self induction in "Henries," and also their size and weight. (3) Particulars of the closed current Shunt used at the Electric Exhibition in Edinburgh in 1890, giving the resistance in "Ohms" 15 and the self induction in "Henries," and also its size and weight. (4) Particulars of the Closed Circuit Induction Coils supplied to the West India and Panama Telegraph Company in December 1898, giving the resistance in "Ohms" and self induction in " Henries," and also their size and weight; and that in default thereof the said paragraph (B) in the Particulars of Objections 20 might be struck out.

The Master made an Order, as to B (1), for Particulars of the sales, with dates and names and addresses of the persons to whom such sales were made, and the purposes for which such shunts were supplied, the Petitioners not objecting to give these Particulars, but he ordered no other of the Particulars asked for. 25 At the request of the Respondents the matter was referred to the Vacation Judge Bargrave Deane J., who ordered the Petitioners to give the Particulars asked for by the Summons, but gave leave to appeal. On the hearing of the appeal the Order was discharged, the Petitioners by their Counsel undertaking on or before the 16th of November 1906 to deliver to the Respondents H. A. 30 Taylor, S. G. Brown, and J. A. L. Dearlove the best particulars they could under paragraph 2 B of (1) the sales by Muirhead & Co. of "Electric Magnetic Shunts," "Magnetic Shunts" and Magnetic Shunts" and "Induction Coils," dates, and names and addresses of the persons to whom such sales were made, and the purposes for which such shunts were supplied, and of (2) the closed circuit 35 Electro-Magnetic Shunts in common and general use in the laboratories of Muirhead & Co. at Westminster and Elmer's End (23 R.P.C. 790).

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The Respondents, H. A. Taylor, S. G. Brown, and J. A. L. Dearlove, subsequently applied (1) for discovery of documents and (2) for liberty to deliver Interrogatories. The proposed Interrogatories were as to matters of the nature 40 of those in respect to which an Order for Particulars had been refused by the Court of Appeal, as stated above. The Master made an Order for discovery, but refused to allow any of the proposed Interrogatories, and on adjournment to the Judge on the latter point, Neville J. made no Order, but gave leave to appeal without further argument. The Respondents appealed.

Bousfield K.C. and Graham K.C. (instructed by Trinder, Capron & Co.) appeared for the Appellants; Walter K.C. (instructed by A. Withers) appeared for the Respondents.

45

Bousfield K.C. and Graham K.C. for the Appellants.-Notwithstanding the statutory provisions as to Particulars, leave to administer Interrogatories may be 50 given (Birch v. Mather L.R. 22 C.D. 629), and in that case Interrogatories as to alleged prior user were allowed. We submit that the Appellants in this case are entitled to know the facts as to the alleged prior users which the interrogatories seek to elicit. They are facts material to their case. [BUCKLEY L.J.Are not Interrogatories said to be for the purpose of proving one's case out of 55 the opponent's own mouth ?] Cannot one interrogate as to a fact which is material to the case of both parties? The Respondents are here going to attack