Manchester v. S. Umfreville & Son.

In the Matter of Manchester's Design.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE KEKEWICH.

March 1st and October 17th, 18th, and 19th, 1907.

MANCHESTER v. S. UMFREVILLE & SON.

IN THE MATTER OF MANCHESTER'S DESIGN.

Design.-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 manufactured.-Novelty.-General knowledge of trade.-Anticipation by prior user.-Judgment for Defendants.-Design expunged.

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In an action for infringement the Plaintiff had registered a Design (No. 402,223) 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 15 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 20 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 25 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.

On the 13th of December 1902 Clara Manchester registered for "shape " and "pattern" a Design for caps and head-dresses in Class 10 under No. 402,223. 30 The Design registered was as shown above.

Manchester v. S. Umfreville & Son.

In the Matter of Manchester's Design.

Clara Manchester granted to the firm of Pratt, Hurst & Co., for three years from the 25th of February 1903, an exclusive licence to make and vend caps to which this registered Design was applied, and the licence was subsequently extended to the 26th of February 1907. In pursuance of this licence Pratt, Hurst & Co. 5 placed upon the market in 1903, and had since sold in enormous quantities, a servant's cap known as the "Geisha," which was formed of a heart-shaped piece of embroidered or plain cambric or similar substance with two rosettes of lace or frilled material resting upon and projecting beyond the two lobes of the heart. Upon the discovery in 1906 that S. Umfreville & Son, who were cap 10 manufacturers of Hoxton, were selling under the name "Marie Stuart " a cap practically identical with the "Geisha," the writ in this action was issued on the 6th of February 1907. The Defendants upon receiving notice of Motion for an interlocutory injunction, gave notice of an originating Motion to rectify the Register, and the two Motions came on for hearing together before Joyce J. 15 on the 1st of March 1907, when by consent no Order was made on the Motion for injunction except that the costs were to be costs in the action, and directions for pleadings were given and cross Orders for discovery made. The originating Motion was by consent ordered to be entered in the Witness List to come on with the trial of the action, the Defendants undertaking to deliver 20 Particulars of Objection to the Design.

In the Defence and Particulars of Objection when delivered was contained the following paragraph :-" (e) Before the date of the said registration the manu"facture and use of caps made with a rosette on either side of a triangular or "heart-shaped piece, and disposed in manner appearing by the caps of the 25" Defendants complained of in this action had been common knowledge and common practice in the trade for more than 20 years, and the use of founda"tions and shapes for caps, similar to the central piece shown in the registered Design, and of rosettes separately and in every possible manner of combination "had also been common knowledge and practice in the trade."

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Three widows' caps, of patterns alleged to have been manufactured and sold by the Defendants before the registration sued upon by the Plaintiff, were referred to as anticipations of the Design and exhibited. One of these caps is represented below. Further, there was an allegation that the articles, marked with the registered number of the Design by the Plaintiff, did not correspond 35 with the Design as registered.

Manchester v. S. Umfreville & Son.
In the Matter of Manchester's Design.

was admitted by Counsel for the Defendants that "common knowledge was alone alleged by paragraph (e) of the Particulars of Objection, and that no specific instances of caps were intended to be adduced as anticipations at the trial except the three widows' caps exhibited.

The action came on for trial before Mr. Justice KEKEWICH on the 17th of 5 October 1907.

A. J. Walter K.C. and L. B. Sebastian (instructed by Ashwell and Tutin) appeared for the Plaintiff; P. O. Lawrence K.C., and Kerly (instructed by Ward, Perkins, and McKay) appeared for the Defendants.

Walter K.C. having opened the Plaintiff's case, the following witnesses were 10 called on behalf of the Plaintiff :

Joshua Furness, the manager of the cap department of Pratt, Hurst & Co., manufacturers, of Nottingham. He stated that the "Geisha" cap (which was the cap to which Design No. 402,223 was applied by the witness's firm under their licence from the Plaintiff), when introduced to the trade in 1903 as a 15 servants' cap, had been considered so novel that at first none of the wholesale houses would buy, but for the past three years the sales had averaged 50,000 dozen a year. The essence of the Design was a heart-shaped centre piece with two rosettes placed upon and extending over the extremities of the heart. The Defendants had first of all in 1904 sold a servants' cap with a centre piece 20 not heart-shaped, but like a flattened V, but in 1906 it had come to the knowledge of the witness's firm that the Defendants had, through Jeremiah Rotherham & Co., sold to the trade a cap identical with the "Geisha сар, and described usually in the trade as the "Marie Stuart." This cap was illustrated in Rotherham & Co.'s Catalogue in variously patterned materials. 25 No. 217 in the Catalogue (see representation below) was typical of the

Defendants' alleged infringements, and was identical with the "Geisha " cap in the witness's opinion. The caps sold by Pratt, Hurst & Co. under licence from the Plaintiff were made in accordance with the registered Design, which, in the witness's opinion, denoted unmistakeably a cap with a 30 heart-shaped centre and two rosettes upon the edges of it, it being impossible to construe the shaded circles of the Design as anything except rosettes. The heart-shaped widow's cap with rosettes alleged as an anticipation was not the same Design, the relative size and position of the several parts not being the same as the "Geisha." The witness admitted, however, that the relative pro- 35 portions of the "Geisha" cap as made differed from those of the Design as registered, and claimed that any sized rosettes would be an infringement if placed upon the ends of a heart-shaped centre piece. He intimated that he regarded widows' caps as being of a totally different nature from servants' caps, since they had rigid bases and were structures built with stiff wires upon underlying 40 "shapes."

Mr. Mason, the manager of the cap department of Copestake, Crampton & Co., of Cheapside, and S. A. Clark, cap manufacturer, of Nottingham, gave similar

Manchester v. S. Umfreville & Son.

In the Matter of Manchester's Design.

evidence as to the meaning of the registered Design, and that the "Geisha" cap was novel when first brought out by the Plaintiff, although heart-shaped caps with rosettes upon them were well known both in servants' caps and widows' caps. The general outline produced by the arrangement of the Plaintiff's 5 Design gave, in the witness's opinion, an effect never seen in a cap before.

KEKEWICH J. asked why the Design was registered for shape as well as pattern, and what the intention and effect of this was?

Walter K.C. referred upon this point to In re Pearson's Design v. Morris, Wilkinson & Co. (23 R.P.C. 738); Heath v. Rollason (15 R.P.C. 441; L.R. (1898) 10 A.C. 499); and Bayer's Design (24 R.P.C. 65, at pages 73, 74, and 77).

KEKEWICH J. intimated his opinion that the registration in this case should have been for the Design simply.

P. O. Lawrence K.C., for the Defendants, said that what was proposed to be proved in this case was-(1) that the Design as registered was incapable of 15 registration because of its vagueness; (2) that the Design was not novel; (3) that there had been no infringement of the registered Design.

The following witnesses were called for the Defendants:-A. T. Umfreville, one of the Defendants; G. Berry, lace and cap manufacturer; W. Lucas, manager to Seers Bros., manufacturers of shapes and foundations for caps; 20 Richard Bowden, buyer for Jeremiah Rotherham & Co., wholesale dealers; and Adelaide Louise Irwood, a milliner of Aldersgate Street.

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The evidence of these witnesses were directed to two main points—(1) that the Design as registered could be interpreted in various ways and would not primarily or alone refer to caps of the "Geisha " "or Marie Stuart type; 25 (2) that every possible variety of rosette had been applied to every sort of heart-shape foundation at some time or other. It was not however specifically stated that a cap had ever been produced with a heart-shaped centre upon which rosettes were placed so as to overlap the edges of the centre piece. It was admitted that a workgirl given the registered Design would probably interpret 30 the shaded circles as rosettes, though they would equally well indicate discs, sections of balls or beaded ornaments. The widow's cap (page 783) was proved to be a copy of a model which had long been sold by the Defendants.

Kerly, for the Defendants, in summing up the evidence argued that the following points were proved-(1) That in the Design as registered no sufficient 35 Particulars had been given to identify the Design and to show what was claimed. The registration was therefore improper. (2) That there was no novelty possible in the Design in face of what had been proved as to the knowledge and practice of the trade (Le May v. Welch L.R. 28 C.D. 24). (3) That there was no infringement. Granting that the Defendants' "Marie Stuart was like the Plaintiff's 40 "Geisha," neither of them was like the registered Design, since the relative proportions and positions of the parts as shown in the Design were not maintained in the caps as made (Bayer's Design 24 R.P.C. 65).

Walter K.C., in reply, for the Plaintiff.-The Design is sufficiently identified to enable it to be applied to articles. It is not intended to be a picture of the 45 article itself. As to novelty, the only novelty necessary is in the application of the Design (Holdsworth v. McCrea L.R. 2 H.L. 380; Saunders v. Wiel 9 R.P.C. 469; 10 R.P.C. 29; L.R. (1893) 1 Q.B. 470). Rosettes and heart-shapes may have been old, but the eye of the trade judged this to be a novel application of them to a cap. The total of the shape presented is something quite new 50 and has a very different effect from the only combination of a heart-shape and two rosettes which is actually produced, namely, one of the widow's caps (page 783). As to infringement, the Plaintiff's and the Defendants' caps are admittedly alike, and both of them have had applied to them the registered Design.

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KEKEWICH J.-The Plaintiff is the registered proprietor of a design for a cap or head-dress, and she says that the Defendants have manufactured and sold

Manchester v. S. Umfreville & Son.

In the Matter of Manchester's Design.

caps-I drop the word head-dress-which are an infringement of her registered Design. Apart from the question of novelty, which I will reserve to the last, the main question in the case, and one which has given rise to all the difficulty, is-what has been registered? The Plaintiff has registered this Design for shape and pattern, and I was puzzled, and continue to be puzzled, why she was 5 advised to do that. There was no occasion for her to register it for shape and pattern although those words occur in the 60th Section of the Act of 1883; she might have registered the Design without any reference to shape or pattern. She in fact did not make any reference to the other term used in the same Section namely, "configuration." It seems to me to be reasonably clear that an 10 applicant for registration may tender a Design and may register a Design for shape only or for pattern only. It may be that an applicant would be advised that there might be a difficulty about maintaining registration for either shape or pattern by reason of there being some possible anticipations; whereas for the other, pattern or shape, as the case may be, there was a clear ground for claiming 15 novelty. That very thing occurred in the case to which I referred in the argument of children's carriages (Pearson's Designs 23 R.P.C. 738) where the registration had been made separately for shape and pattern and succeeded without difficulty as regards shape, though the pattern was shewn not to be new. The leading authority on the subject of what may be registered-what is 20 to be treated as registered-in a Design is Heath v. Rollason. But that only goes to show that where the registration is in general terms then the applicant may have the benefit of all the novelty in his Design, and that it is not necessary for him to restrict himself to either shape, design or pattern. In that case the application stated that the Design was applicable for the pattern. I do not think 25 that the report states the exact form under which the registration was granted, but it would be no doubt, according to the application, for the pattern but not exactly the shape or the configuration; and the House of Lords gave the applicant the benefit of the Design so far as it could be maintained-it was really maintained wholly for shape, pattern or configuration. As I have pointed 30 out, there is nothing to prevent an applicant limiting it if he pleases, but I was a little puzzled, and am puzzled now, to know why here shape and pattern were introduced. I am convinced by reference to the last mentioned case that the difficulty which occurred to me is removed to this extent-that registering for shape and pattern the applicant is entitled to put forward a Design and say- 35 "This is my Design for all the purposes contemplated by the Act of 1883 and I "have not limited it by using those two words; I am in the same position as I "should have been if I had limited it without saying anything about shape "and pattern."

The case is different, therefore, from the one about children's carriages (Pear- 40 son's Designs 23 R.P.C. 738), because there there were two registrations, one for shape, the other for pattern, indicating, as I thought, that the applicant intended to rest upon two separate registrations separately applicable, one to shape and the other to pattern. I have therefore got rid of that which puzzled me in the first instance.

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Then the next question is-is this a cap? The suggestion against that is that it is the foundation of a cap. Now on that I have a certain amount of evidenceevidence by those whom I may call experts, that is to say persons acquainted with the trade, manufacturers, warehousemen, and others who are competent to advise me what the Design indicates. I have, of course, to form my own 50 opinion, but in forming that opinion it is useful to have the evidence of those acquainted with the trade, and I have a good deal of evidence on the point. After consideration I do not think that the difference between a cap and the foundation of a cap is really material. My own impression-as far as I can

* 15 R.P.C. 441; L.R. 1898 A.C. 499.