Manchester v. S. Umfreville & Son. In the Matter of Manchester's Design. form an opinion with the assistance of the evidence-is that it really is the foundation of a cap, and that what is represented as the Design is not really the cap itself but only something upon which the cap is to be placed, notwithstanding that the registration is of a Design for a cap. But I repeat 5 that, to my mind, it is immaterial; because whether you put a cap on a linen foundation, or whether you make a cap according to this Design without any foundation, for all practical purposes, you have the same thing. I do not see any possibility of holding that, because the Plaintiff has registered a Design for a foundation for a cap, and only that, therefore any other person 10 could manufacture a cap such as would be laid upon that foundation and would be entitled to say it is not an infringement of the Design. The two things seem to me come to the same thing; but though I cannot help thinking, supported by the evidence, that to the ordinary eye it is more like a foundation of a cap than a cap itself, still I have a large body of evidence to shew that a cap might 15 be manufactured from this. The Defendants' witnesses were loth to allow, but they were driven to allow, that a cap could and would be made by an ordinary competent workman from this Design without any further instructions. Of course there is a great deal of latitude as regards the rosettes. That they must be rosettes is, I think, perfectly clear. As more than one witness said they 20 cannot be bows, and not being bows, the article to be manufactured being a cap, it is not suggested there was any alternative but rosettes. Those rosettes might be in one form or in another, but the cap would be made with something in the shape of a heart, and with rosettes resting upon the lobes of the heart. So far I have no difficulty. 25 It is not suggested-at any rate it is not proved-that anybody has ever made caps exactly in this form and it is desirable to see what caps have been made by those who are said to have infringed. In the first place the registered Design is perfectly plain as regards the heart. There is no suggestion of any pattern there. Is that of importance? I apprehend not? What the 30 applicant was pointing out was that the centre part of the cap was to be in the shape of a heart, and not that it was necessarily to be plain, though it might be plain, but she left it to the ingenuity of others to put in any figuring that occurred to the workman; and the result is that in the caps before me Nos. 217 and others-I take 217 as a typical case-there is some ornamental 35 pattern. So far I have no difficulty. Again as regards the rosettes, no pattern is given for the rosette. It is to be generally round. There is nothing to say it may not be frilled or varied in any way that the ingenuity of the workman might suggest. So we have in these cases-take again No. 217-something which to the eye is distinctly 40 different from the plain rosette which you see in the registered Design but that seems to me to be only an extension of the Design-an adaption of it in practice to the particular article under hand, and I see no difficulty about that. As to the shape of the heart, that certainly varies considerably in the different articles produced, not only in those which are supposed to be made by the 45 Plaintiff, and, according to her instructions, by her licensees, but by others. Take 217 as an illustration, because it is an extreme illustration. The curve at the top varies so much from the registered Design as almost to prevent one's recognising the heart shape at all. Still it is what is known to mankind as a heart shape, and because the curves differ I do not myself think that I can say 50 that that is not made according to the registered Design. Now comes a difficulty, which I have kept to the last, as to the relative proportions, and that struck me certainly as rather strange. According to the registered Design the rosette, which seems to my eye to be very large in proportion to the heart-shaped material, is of such a size that if another 55 were placed between the two existing on the Design that would overlap the other two considerably. I have tested it by measurement. Inno Manchester v. S. Umfreville & Son. In the Matter of Manchester's Design. one of the articles alleged to be infringements which have been produced is there anything at all like that. Now take No. 217 again. You might put another rosette in between the two rosettes there and leave a considerable vacancy on either side, and that is true I think of Nos. 210, 211, 214 and 215. As Lord Justice Vaughan Williams said in Bayer's Design (24 R.P.C. 65), 5 "A Design prima facie is always intended to be capable of magnification, if that "is the right word to use. All that you have to do in order to maintain the "identity of Design is to maintain the relative proportions." The learned Lord Justice is speaking there of the designer. He said when you have designed something which is capable of magnification-which may be magnified as it 10 may be reduced in practice-you must maintain the relative proportions; you must not take a Design of certain proportions and then, when you make it larger or make it smaller, alter those proportions. That is what I understand him to say. I do not understand him to mean-though he did perhaps literally say it that the proportions are to be mathematically observed; but that they are 15 to be substantially observed so as to maintain the relative proportions. He neither said, nor can he I think be taken to mean, that an alleged infringer should be allowed to get off because, as in this case, he has taken different proportions. I am satisfied that the learned Lord Justice's language is no authority for saying that the Defendants can claim not to have infringed because 20 they have made the proportions of their rosettes in No. 217 such as I have ventured to suggest. You must look at it with your eye as a whole and say whether the article produced by the alleged infringer is an article made substantially according to the registered Design or not, or according to the two words which have come to be commonplace in patent cases, the "pith and 25 marrow." There may be extreme cases. I do not know whether I ought to be able to conceive a cap of such a character, but I can conceive a cap so enlarged as to be still heart-shaped and still have rosettes but with proportions so altered that it would be monstrous to say that the Design covered it. I do not think I need call attention to any other differences, though no doubt there 30 are some, but in order to maintain this registration, which I think I ought to do if I fairly can, because there is certain ingenuity in the Design, I ask myself two questions-What is the Design? And has the Design been infringed? I ask myself really how is the Design to be described? The Plaintiff's own witnesses describe it as heart-shaped with rosettes-they did not say, but they 35 meant of course, with rosettes placed as the Design places them, on the lobes of the heart. That is what they said is the novelty, and it was such a novelty that at first it was not acceptable to the public and had to be introduced and advertised. A novelty is not taken up always easily, and this is an example of it. But that was the novelty, and I do not see my way to maintaining the 40 registration or saying that there is infringement except on that footing. That this is what the Plaintiff has designed-I repeat it again-a heart-shaped foundation or heart-shaped piece of material with rosettes fixed on to the lobes of the piece of material in that shape. 66 If that is what she has designed, and I think it is, is it new? To my 45 mind, there I think the Plaintiff entirely fails. I have a certain amount of evidence that heart-shaped caps with rosettes were known and in use many years before 1902. I think that that proposition might be extracted from the evidence of other witnesses, but two of the witnesses for the Defendants, Mr. Richard Bowden and Mrs. Adelaide Louise Irwood, were 50 quite positive about it-I mean that they were positive about the use of the heart-shaped caps with rosettes independently of widows' caps, to which I will come presently. It is objected by Mr. Walter-as I expected it would be-in reply that no samples of these articles, alleged to have been made, have been produced. Though it was said that they were made 15 years ago or 55 more, no samples are produced. That no doubt is an observation entitled to Manchester v. S. Umfreville & Son. In the Matter of Manchester's Design. considerable weight, but if I were considering the case of an engine, or even of a lamp, I should be disposed to give considerable weight to it; but I must remember that I am dealing with caps of a very cheap character and of a character which I think one might almost describe, perhaps not strictly but with 5 sufficient accuracy, as ephemeral. They are made of very light material capable of easy destruction, capable of being very easily spoiled and of no use to anyone when worn or dirty, and are sure to be thrown away. I do not think that when dealing with such an article I ought to say that because no articles made have been produced therefore I am to disbelieve the evidence of witnesses 10 who say that they have made these caps or sold these caps, heart-shaped with rosettes, for many years past. So much for that. Then apart from the evidence of caps, which are of heart shape with rosettes, for servants and others, I have distinct evidence that widows' caps of heart shape with rosettes have been in use for a very long period. There again I have 15 no article produced which has been manufactured and used-no article which has been even offered for sale-but I have before me a reproduction of one which is sworn to be such a cap as for many years past has been sold as a widow's cap. As to that part the answer given by Mr. Walter in reply is, these are servants' caps-caps for use among a different class of society altogether, 20 and you cannot say that a Design for caps of that kind has been anticipated by prior user in the shape of widows' caps. That seems to me to be no answer at all. The registration of the Design is for caps, not for caps for one class of society or another. It may be that the designer looked forward with a confidence, which has been justified, to a sale, among that large class of society consisting of 25 maidservants. But she does not restrict it in any way of that kind, and I think it is impossible for her to say that, if there has as a matter of fact been in use a cap like that for a different though limited class of society, she is still entitled to the benefit of her Design. But there was a comment made in reply on the particular cap produced. In 30 the Design, the rosettes are placed on the lobes of the heart, but they are so placed that for rather more than half the diameter of each rosette it extends beyond the lobe of the heart on either side; whereas in the widow's cap produced the rosette is placed entirely on the lobe of the heart, and the heart-shaped piece of material extends slightly beyond the rosette. It is suggested that it required 35 inventive ingenuity to design a cap in which the rosette extended beyond the heart. To my mind invention was not required. I think the design is practically the same, and that anyone taking a widow's cap, such as I have before me, as a pattern would make, without any difficulty and without the exercise of anything in the nature of inventive faculty, a cap with the rosettes 40 extending beyond the lobes of the heart. But really the more complete answer is the one which I have already given. What the Plaintiff has designed is a heart-shaped cap with rosettes resting on it, and here I have a heart-shaped cap with rosettes resting on it, and I think it is impossible to draw the line between rosettes which do and rosettes which do not overlap the heart-shaped 45 piece of material, Therefore whether I rest entirely on the evidence of other caps-mob caps, as they are called,--used by other classes of persons, or whether I rest upon widows' caps, it seems to me that I have clear evidence of prior user, and that this Design is no novelty, and therefore I must give judgment in the action for the Defendants. 50 On the Motion an Order was made to rectify the Register by expunging the Design, the Defendants to have the costs of the Motion as well as of the action, with a direction that the Order was not to be acted upon if the Plaintiff served notice of appeal within 14 days, the solicitors of the Defendants giving the usual undertaking as to costs in the event of an appeal. British Ore Concentration Syndicate Ld. v. Minerals IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION. Before MR. JUSTICE SWINFEN EADY. November 22nd, 1907. BRITISH ORE CONCENTRATION SYNDICATE LD. v. MINERALS SEPARATION LD. Patent.-Action for infringement. - Particulars of Objections. - Alleged insufficiency of Specification.-Further Particulars applied for.-Application refused.-Patents &c. Act, 1883, Section 5. 5 In an action for infringement of two Patents, the Defendants alleged in their Particulars of Objections to one of the Patents (2) that the Complete Specification 10 did not describe and ascertain the invention or in what manner it was to be performed, and under this head stated that they would rely (inter alia) on the defect (a) that the Specification did not sufficiently define the extent or limits of the invention claimed; another alleged defect related to insufficient description of a substance to be used. The Plaintiffs applied for further and better Parti- 15 culars of 2 (a) and of a similar objection to the second Patent, and the application was adjourned into Court. Held, that the Defendants ought not to be required to give further Particulars at the then present stage of the action. The application was dismissed with costs. In 1907 an action was commenced by the British Ore Concentration Syndicate 20 Ld. against Minerals Separation Ld. for infringement of Letters Patent No. 21,948 of 1898 and No. 6519 of 1901. In this action the Defendants delivered Particulars of Objections to the validity of both Patents, paragraphs 2 and 8, relating to such respective Patents, being as follows-"2. The Complete "Specification does not, as by law required, particularly describe and ascertain 25 "the nature of the said alleged invention, or in what manner the same is to be "performed. The Defendants under this head will rely on the following defects "in the said Specification :--(a) That the Specification does not sufficiently "define the extent or limits of the invention claimed ; (b) That it contains no "sufficiently precise description of the nature or consistency of the thick oil 30 "to be used in carrying out the said invention, and no particular statement "concerning the volatile constituents which are to be distilled off in preparing "it." "8. The Complete Specification does not particularly describe or ascertain "the nature of the invention forasmuch as-(a) The Specification does not "sufficiently define the extent or limits of the invention claimed; (b) The 35 "only direction given concerning the quantity of acid to be used-that is to say, the direction that it need not exceed one five-hundredth part of the "volume of oil or water employed in the operation-is ambiguous, unin"telligible, and misleading." 66 The Plaintiffs applied on the Summons for Directions for an Order inter alia 40 that the Defendants should deliver further and better Particulars of their 5 British Ore Concentration Syndicate Ld. v. Minerals Particulars of Objections in respect of paragraphs 2 (a) and 8 (a) setting forth in what respects the Specifications therein respectively referred to did not sufficiently define the extent and limits of the invention claimed. This application was adjourned into Court. Walter K.C., and H. A. Colefax (instructed by Hays, Schmettau, and Dunn) appeared for the Plaintiffs; Bousfield K.C., T. Terrell, K.C., and J. W. Gordon (instructed by Davidson and Morriss) appeared for the Defendants. Colefax for the Plaintiffs, referred to the pleadings and continued-No. 2 of the Particulars of Objections is a plea of insufficiency ;such a plea is always required 10 to be particularised. Unless 2 (b) particularises 2 (a) the latter leaves the Defendants free at the trial to go at large on insufficiency under it. I ask to have it particularised. [SWINFEN EADY J.-What is the Patentee's statutory duty as to his Complete Specification.] [Section 5 of the Patents &c. Act, 1883, was referred to.] Particular 2 follows the language of the Statute. The 15 Defendants ought to say in what respects the Patentee has failed, and what is required of him. Bousfield K.C. and Terrell K.C. for the Defendants.-Particular 2 includes two kinds of objection, first practical directions as in (b); secondly, that the Specification does not properly define the invention. It is impossible to give 20 particulars of 2 (a), because it depends on what construction the Plaintiffs seek to put on the Claims. If the Plaintiffs say that what the Defendants do is covered, we shall contend that the invention is not sufficiently defined. [SWINFEN EADY J.-Is it not another way of saying that the Specification does not ascertain, as opposed to describe, the invention ? Is there any case 25 in which Particulars have been ordered of such an Objection ?] No, but there is a case that says that the requirement that the Specification should conclude with a claim is directory (Siddell v. Vickers, 5 R.P.C. 416). We say that the invention is perfectly defined, but if the Plaintiffs say that the boundary of it is not what we say it is, then we shall submit that it is not sufficiently 30 defined. Subsection (5) of Section 5 of the Act of 1883, and not subsection (4) relates to this matter. 2 (a) is an objection that subsection (5) is not complied with. There is no case in which such Particulars have been ordered. The Defendants have done what was required in Dege's Patent (12 R.P.C. 448), so far as it was possible. [Heathfield v. Greenway (11 R.P.C. 17) was also 35 mentioned.] Colefax in reply.-The Defendants' arguments are inconsistent with each other. First, it is argued that there are two separate objections under Section 5 and that the Particulars of Objections follow these. On this argument I say that the Defendants should particularise in both cases. The plea of insufficiency 40 is based on the right of the public to have the invention described so that anyone can carry it out. [SWINFEN EADY J.-Is not the objection that if you seek to put such a construction on the Claims as covers what the Defendants do, the invention is not sufficiently defined? Is there any case in which particulars of this plea have been ordered ?] The plea or Particular 45 always goes on to say in what things the Specification fails to give directions for carrying out the invention. The plea has never been split up before, so as to raise (a) separately. There are not two objections of insufficiency, but one, e.g., the Defendants at the trial might say that the nature of the oil to be used is not sufficiently specified. 2 (a) is a meaningless plea unless it is to include 5() something of the nature of 2 (b). [SWINFEN EADY J.-What further Particulars, that could be of any help to you, could the Defendants give ?] They say that 2 (a) is an objection that the Claim is not sufficiently clear. They could say in what respect-e.g., oil to be used, or temperature-it was not so. SWINFEN EADY J.-This is an application by the Plaintiffs in a patent 55 action that the Defendants may deliver further and better Particulars of their Objections to the validity of the Patent. The Defendants have pleaded that |