Consolidated Pneumatic Tool Company Ld. v. Clark. "independently of the piston," which may be, I think, intended by Boyer to differentiate his arrangement from arrangements to be found in Beckwith, or other Patents in which a hole through, or a groove in, the piston itself forms part of the air passage or method of communication between ports of a similar 5 kind to T1 and T? I do not think so. It is true therefore in a sense, that you find the same cycle of operations in Claim 13 of Boyer, and in Brazelle's Specification. But, nevertheless, I feel compelled, after a very careful consideration of the evidence and the arguments which have been placed before us, to hold that, fairly construed, the combination in Claim 13 is essentially novel as well as 10 useful, and has not been anticipated by Brazelle. The piston operates according to the very words of the Claim to close communication between the said passages, that is, T and T, except when it approaches one end of its stroke, and then (I think stress should be put on that word) places the said passages in communication with each other. What does this mean, and what does it 15 as a skilled and intelligent workman would understand the words, naturally involve? It appears to me that it both expressly and impliedly means an arrangement which does something substantially different from the Brazelle arrangement, and, for the use of a pneumatic hand hammer, different with important practical consequences. Whereas the communication in Brazelle 20 was to be, and must, as his differential piston is constructed be, at the termination of the downward stroke of the piston-involving the "deadness of "stroke" and, as you cannot bring c1 and c2 together, the "shortness" of stroke, inasmuch as the cavity of the piston necessarily occupies a length equal to the length of the stroke-the invention in Claim 13 creates a communication between 25 the ports, which I call, as marked on the Drawings T' and T, when the piston approaches the end of the downward stroke. The object is clear, namely, to allow the piston from that point to complete its stroke practically by its momentum only, and so prevent the shock and jar which the 'dead' stroke causes and which is so prejudicial to the use of a hand hammer, the return of 30 the piston, under Claim 13, being due chiefly to the backward rebound of the piston when the blow is struck. Further in making the communication when the piston is approaching the termination of its stroke, and not at its termination, the inventor, if I appreciate the technical evidence, can and naturally would, put, and as Boyer's Drawings show and as his Specification in its text 35 expressly states, he intends to put the ports, which are T1 and T in his nomenclature (c and c2 in Brazelle) in about the same sectional line, whereas in Brazelle they are at a considerable distance, and, as I understand, must be at a considerable distance from each other in the length of the cylinder. This means a valuable practical gain in the length of the stroke; and it seems to me 40 that it would mean in regard to the construction of the piston itself, as you have the ports T1 and T in about the same sectional line, the necessity of having in your piston, in order to bring these ports into communication by the working of the piston in its downward stroke, only a narrow space of diminished circumference in the piston, whether you call it, as Boyer does, a circumferential 45 groove, or by any other name, and you do not need the length of cavity which is an integral part of Brazelle's scheme. I come to my conclusion in favour of the Plaintiffs upon this part of the case, I need scarcely say, with great diffidence, not only on account of the highly technical and very complex character of the subject-matter, in regard to which 50 one who is not a trained expert may easily be misled, but on account of the different opinion, not only of the Master of the Rolls, but of my brother Warrington, from both of whom I should always be slow to differ. But if the conclusion at which I have arrived as to the true meaning of the Brazelle Specification and the true meaning of, and proper inferences to be drawn from, 55 the language of Boyer's Claim 13 is correct, it appears to me that the Claims of the inventor in Nos. 13 and 14 are not bad either by reason of anticipation or for want of subject-matter. It appears to me that in these two subordinate Consolidated Pneumatic Tool Company Ld. v. Clark. combinations, treated as subordinate integers, there is not only great usefulness, but there is to be found the essential novelty of invention. COZENS-HARDY M.R.-It will be allowed as to the 1896 Patent and dismissed as to the 1895 Patent. Walter K.C.-If your Lordships please the appeal will be allowed Sir GORELL BARNES.-I will read you exactly what I said. [His Lordship then read the passage from his judgment, ante, page 636, line 4 to line 11.] I only stated that in my judgment as a question which had not been discussed, but which could be considered if there was anything to say about it. 5 10 Walter K.C.--As to the 1896 Patent, your Lordships grant an injunction and we will take an inquiry as to damages. I ask for a certificate of validity, and a certificate as to the Particulars of Breaches. Then the Order in the Court below provided that the Defendants were to have their costs on the higher scale. I shall not raise any objection to their having, on the 1895 Patent, the costs of the 15 appeal on the higher scale, or to their having three Counsel also. COZENS-HARDY M.R.-Mr. Walter, with reference to the costs, we quite recognise that the important matter was the 1896 Patent, on which you have succeeded, but, at the same time, you have failed as to the 1895 Patent, and there was a certain amount of time and expense incurred as to that. If the strictest Order were to be made, there ought to be taxation of the separate costs of the Defendants so far as they relate to that. They ought to get that, and the Plaintiffs ought to get the rest, but we think that substantial justice will be done if we direct the Respondents to pay three-fourths of the Plaintiffs' costs of the appeal. Walter K.C.-As regards the costs in the Court below, the matter will stand in the way your Lordships have indicated. The Plaintiffs will have all the costs of the action so far as they relate to the 1896 Patent, and the Defendants will have all the costs of the action so far as they relate to the 1895 Patent. Upjohn K.C.-Mr. Walter is asking for the costs of the action below so far as they relate to the 1896 Patent. That is wrong, because the Plaintiffs delivered Particulars of Breaches relating to four Claims, two of which they abandoned. Walter K.C.-I do not ask for a Certificate except as to Claims 13 and 14. COZENS-HARDY M.R.-We must be careful to avoid giving you, under the general language which has been used, your costs so far as they relate to the Particulars of Breaches of Claims 50 and 51. Walter K.C.-I ask for a Certificate for my Particulars of Breaches limited to Claims 13 and 14. Upjohn K.C.-We ask for the costs of the Particulars as respects Claims 50 and 51. 20 25 309 35 40 COZENS-HARDY M.R.-Mr. Upjohn, we are not disposed to do anything more. Mr. Walter will only have the Certificate he asks for on Claims 13 and 14. The rest must take the usual course. Of course the costs below will be set off. A stay of the injunction was asked for, and granted (the Defendants undertaking to keep an account) on the ground of the difference of opinion in the Court, coupled with the fact there was no possible doubt as to the Plaintiffs 45 getting their damages if an appeal failed. British Vacuum Cleaner Company Ld. v. New Vacuum Cleaner IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISIÓN. 5 Before MR. JUSTICE PARKER. June 5th and 6th, 1907. BRITISH VACUUM CLEANER COMPANY LD. v. NEW VACUUM CLEANER 10 Trade name.-Action to restrain use of " Vacuum Cleaner as part of name. -"Vacuum Cleaner" name of class of machine used by Plaintiffs and Defendants.-Secondary meaning not established.-Probability of deception not established.-Action dismissed. In 1902 a Company, the Vacuum Cleaner Company Ld., was formed to work, under a Patent granted in 1901 and purchased by the Company, a process of cleaning carpets and other articles by means of a vacuum. The British Vacuum Cleaner Company Ld., which was formed in 1903, took over the undertaking of the first-named Company, and advertised widely and acquired a large business. 15 They were interested in numerous subsidiary Companies working the process under licences. The business of each subsidiary Company was restricted to a particular area, and the name of each subsidiary Company contained the words "Vacuum Cleaner" with a territorial qualification. In October 1906 the New Vacuum Cleaner Company Ld. was formed to work, under a Patent 20 granted in 1904, a process of cleaning by vacuum. They took business premises close to premises of the British Vacuum Cleaner Company Ld., who brought an action to restrain them from using the words "Vacuum Cleaner" as part of their name. The Plaintiffs alleged that they, the Plaintiffs, had become known to the public as the "Vacuum Cleaner Company." The Defendants alleged that 25 the words objected to were descriptive of the class of machine and process used by both themselves and the Plaintiffs, that the words had not acquired any secondary meaning of the Plaintiffs' machine, process, or business, and that, used in conjunction with the word "New," they were not calculated to deceive. At the trial the Plaintiffs proved that confusion of the two Companies had 30 arisen in three instances; they alleged that the Defendants had induced two of the Plaintiffs' employees to enter the Defendants' employment. British Vacuum Cleaner Company Ld. v. New Vacuum Cleaner Company Ld. Held, that a scheme or design by the Defendant Company to take unfair advantage of the Plaintiff Company by the adoption of the name New Vacuum Cleaner Company was not proved; and that no deception would occur. action was dismissed with costs. The Cellular Clothing Company v. Maxton (16 R.P.C. 397; L.R. (1899) A.C. 326) 5 followed. Aerators Ld. v. Tollitt (19 R.P.C. 418; L.R. (1902) 2Ch. 319) discussed. 66 On the 4th of December 1906 the British Vacuum Cleaner Company Ld. commenced an action against the New Vacuum Cleaner Company Ld. claiming "(1) An injunction to restrain the Defendant Company, its servants, 10 "agents and work-people from using, or carrying on business under, its present name, style or title, or any name, style or title which includes the words "Vacuum' and 'Cleaner' in juxtaposition, or which so nearly resembles the "Plaintiff Company's name as to be calculated to deceive the public, or to "induce the belief that the business carried on by the Defendant Company 15 "is the same as the business carried on by the Plaintiff Company or in any way connected therewith; (2) Damages; (3) Further or other relief; "(4) Costs." 66 66 66 By their Statement of Claim the Plaintiffs alleged as follows:-"(1) The "Plaintiffs are a limited Company registered under the Companies Acts in 20 "this country on the 11th of May 1903. From time to time since the said date "of registration the Plaintiffs have caused to be formed in this country and else"where subsidiary Companies, and these latter Companies have caused to be "formed certain other Companies hereinafter referred to as local subsidiary "Companies. The Plaintiffs have a substantial interest in all the aforesaid 25 "subsidiary Companies, and these latter Companies are largely interested in "the local subsidiary Companies which they have respectively caused to be "formed as aforesaid. (2) The words Vacuum Cleaner' form part of the "name of every British subsidiary and local subsidiary Company registered as "aforesaid, and of the name of most of the foreign and colonial subsidiary and 30 "foreign local subsidiary Companies registered as aforesaid, and until the regis"tration hereinafter referred to, no Company (save and except such of the aforesaid "subsidiary and local subsidiary Companies as were registered in this country) registered in this country with the words Vacuum Cleaner' as part of its name was in existence. (3) The Defendants are a Company registered under 35 "the Companies Acts in this country on the 18th of October 1906 with a capital "of 10,000l. in shares of the nominal amount of 17. each, but little, if any, of "the said capital has been subscribed or issued. They are proposing to carry on a business in cleaning carpets, &c. (4) The Plaintiffs have since their "incorporation continuously and profitably carried on an increasing business in 40 "cleaning carpets, upholstery, &c., by a method which is protected by Letters "Patent, No. 17,433 of 1901 granted to H. C. Booth (of which the Plaintiffs "are the registered legal owners) in which the carpets, &c., are cleaned by passing over them the nozzle of a pipe in which there is a substantial 66 vacuum. The Plaintiffs have come to be generally known as the Vacuum 45 "Cleaner Company, and the said process has come to be generally known as "the Vacuum Cleaner process. (5) The use in their business by the Defendants "of their name, or any name containing the words 'Vacuum Cleaner' as part "thereof, is calculated to lead to the public being deceived and induced to "believe that the Defendants' business is the same as the Plaintiffs', or that the 50) "Plaintiffs are in some way connected with the Defendants and the Defendants' "business." The relief claimed is stated above. 66 5 British Vacuum Cleaner Company Ld. v. New Vacuum Cleaner Company Ld. The Plaintiffs delivered Particulars of the names of the subsidiary Companies mentioned in paragraph 1 of the Statement of Claim, the dates of their incorporation, and the amount of the Plaintiffs' interest therein. 66 66 The Defendants, by their Defence, said that:-"(1) Save as hereinafter admitted, they deny each and every allegation in the Statement of Claim as "if the same were specifically denied. (2) The said words 'Vacuum Cleaner "are ordinary words in the English language properly applicable to the new "and improved process owned by the Defendants, and are merely descriptive "of the method of cleaning, and are in no way distinctive of the Plaintiff 10" Company or any other Company. (3) The said words Vacuum Cleaner' "have not acquired any technical or secondary meaning differing from their "natural and descriptive meaning, and do not indicate to the trade or public any connection with the Plaintiff Company or any other Company, nor is "the use by the Defendants of their name, or any name containing the said 15" words Vacuum Cleaner,' alone or as part thereof, calculated to lead to "the public being deceived or induced to believe that the Defendants' business "is the same as the Plaintiffs', or that the Plaintiffs are in any way connected "with the Defendants' business. (4) If the said words Vacuum Cleaner,' "when used alone, are in any other way distinctive of the Plaintiff Company's 20" business or that of any alleged subsidiary Company, which is denied, the use by the Defendants of the word 'New' in connection with the said words "sufficiently distinguishes the Defendants from the Plaintiffs. The Defendants, "in fact, own a new and improved system of vacuum cleaning, and they are "entitled to so describe the said system. The said words 'The New Vacuum 25 "Cleaner' correctly describe the said system." 66 · The action came on for trial on the 5th of June 1907 before Mr. Justice PARKER. Buckmaster K.C. and Colefax (instructed by Hasties) appeared for the Plaintiffs; Walter K.C. and J. H. Gray (instructed by John B. and F. Purchase) 30 appeared for the Defendants. Buckmaster K.C. opened the Plaintiffs' case.-Before 1901 no effectual means had been devised for cleaning by suction. Booth's Patent, under which the Plaintiffs have worked, was taken out in August, 1901, and was held valid by Mr. Justice Farwell.* In February, 1902, a Company, called the Vacuum 35 Cleaner Company Ld., was formed to work the Patent. The process was a remarkable success. The Plaintiff Company in 1903 acquired the undertaking of the Vacuum Cleaner Company. Their business is an increasing one; they have advertised extensively, and have always given prominence to the name. They do not seek to restrain every use of the words "Vacuum Cleaner," but 40 only such a use as is liable to deceive; they do not object to people saying they clean by vacuum. No other system works so effectively as the Plaintiffs'. A picture referring to vacuum cleaners appeared in the "Sketch" newspaper for the 27th of June 1906. At that time the Plaintiff Company was sub stantially the only company working vacuum cleaners in London. In December 45 1904 the Atlas Vacuum Cleaning Company Ld., was formed. It granted a licence to the Defendants to work under Birtwistle's Patent (No. 11,201 of 1904). The Defendants subsequently advertised by means of post-cards reproducing the picture, which was made when they were not in existence, and which could not have referred to them. They took an office at Highgate, next door 50 but one to the Plaintiffs' office, and they took into their service one of the Plaintiffs' employees. There is evidence of actual mistake. In such a name as the Plaintiffs' the public disregard the qualification of the central feature * 21 R.P.C 303. |