66 Pinet & Cie. v. Maison Pinet, Ld. as manufacturers of boots or shoes under any name or description of which "the name of Pinet forms part without clearly distinguishing the boots or "shoes made or sold by the Defendants from those made or sold by the "Plaintiffs." If the Defendants do that, they are entitled to use their own name, Maison Pinet, but they must take care what they are about. 5 As to the costs, I think the costs here and below ought to be costs in the action. CHITTY, L.J.-I agree. The case depends upon the facts, and I shall not state them a second time. I think that, on the evidence, a case is made out justifying the Court in interfering in the present state of the proceedings by an injunction 10 framed in the manner that the MASTER OF THE ROLLS has already stated, and practically I have little to add to anything that he has said; but it seems to me that this is an attempt on the part of Louis Marius Pinet, under the guise of the Limited Liability Company which he established in February of this year, to take away from the Plaintiffs the reputation which they have acquired, and 15 really to pass off the Defendants' goods under the name of this Liability Company as the goods of the Plaintiffs. It is said that a case of fraud has not been proved, but I think we have had sufficient to show that fraud was intended, and, what is more, that the acts of the Defendant Company are calculated to deceive the public and by that means to deprive the Plaintiffs of the 20 great reputation that they have acquired for their goods. I may mention merely one other point. In the price list, the blue one, which has the name Maison Pinet, Ld., on it, I see that they describe the boots which they offer thus-" Pinet's," in very large conspicuous type, and then they put "S. M. Boots and Shoes." No one would understand without explanation 25 what "S. M. Boots and Shoes means. It appears to me that that would show to an ordinary man that there was a particular description of the well-known celebrated boots and shoes that were being sold by this Company. The defence is, that there was no business carried on before the establishment of the Company, and no business carried on since or intended to be carried on, except the selling 30 of boots and shoes of a special make. But I think that defence entirely fails, and for the reasons which have already been given by the MASTER OF THE ROLLS. The establishment of the Company is a material fact. It is a Company with a nominal capital of £2,000 in £1 shares, of which sum £1,200 has been allotted, and the whole of those shares have been allotted as fully paid up. coupled with the Memorandum, seems to me to disclose sufficient in the present state of the case and at the present stage of the proceedings to justify the Court in saying that this is an attempt on the part of Louis Marius Pinet to found a Company which alone should have to bear the brunt of any such action as that which has been brought, a Company which apparently has at the present 40 moment not a single sovereign of capital. For these reasons I agree. That, 35 The Commercial Development Corporation, Ld. v. The Castner-Kellner IN THE HIGH COURT OF JUSTICE-CHANCERY DIVISION. 5 Before MR. JUSTICE BYRNE.-November 6th, 1897. THE COMMERCIAL DEVELOPMENT CORPORATION, LD. v. THE CASTNERKELLNER ALKALI COMPANY, Ld. Patent.-Action to restrain threats.-Ex-parte motion for interlocutory injunction restraining issue of circular.-Injunction not granted.-Patents, &c. Act, 1883, Sec. 32. The Plaintiff Company, formed for the purpose of purchasing a patent, sent copies of their prospectus to various newspapers for insertion, on the 5th of 10 November 1897. The prospectus stated that the list of subscribers would be opened on the 5th of November and closed on the 8th of November. The Defendant Company, the assignees of another patent, sent a circular to all the leading newspapers for publication simultaneously with the Plaintiffs prospectus. The Plaintiffs, having commenced an action to restrain the 15 Defendants from alleging that the patent, under which the Plaintiffs proposed to work, was an infringement of the Defendants', and from using threats, moved for an injunction ex-parte to restrain the Defendants, over the 8th of November, from issuing the circular. Held, by BYRNE, J., and the COURT OF APPEAL, that it was not a proper 20 case for granting an injunction ex parte. :: The Plaintiff Company, registered on the 9th of October 1897, under the Companies Acts, was formed for the purpose, among other things, of purchasing the Letters Patent of John Gustave Rhodin, No. 21,509 of 1896, for an improved electrolyser or electrolytic apparatus, and all foreign and colonial patents and 25 protections. The prospectus, with the form of application for shares, was issued on the 3rd of November 1897. Copies were sent to all the leading London and provincial papers, to be advertised on the 5th and 6th of November. The list of applications for shares was to be closed upon Tuesday the 8th of November. The Commercial Development Corporation, Ld. v. The Castner-Kellner The Defendant Company were the assignees of Letters Patent, No. 16,046 of 1892. On or about the 4th of November, the Plaintiffs learned that the solicitors to the Defendant Company had sent to all the leading newspapers for publication the letter dated the 4th of November, hereafter set out. The Plaintiffs' 5 solicitors thereupon wrote to the Defendants' solicitors, stating that if any such notice or any similar document should appear in any paper or print, they would commence immediate proceedings against the Defendants and all others in any way connected therewith. The following letter was also sent by the Plaintiffs' solicitors, through their advertising agents, by telegram, to all the 10 leading newspapers in which the prospectus was to be advertised : "We understand you have letter from The Castner-Kellner Alkali "Company, Ld., for insertion, with the opinion of Mr. Moulton, Q.C., advising "that the Rhodin patent is an infringement upon theirs. Castner or Kellner opposed Rhodin patent in Germany, and was defeated. Have instructions to 15 "commence proceedings at once if such publication takes place." 66 On the 5th of November, The Commercial Development Corporation, Ld., commenced an action against The Castner-Kellner Alkali Company, Ld., claiming an injunction restraining the Defendants, their servants and agents, from alleging by letter, circular, advertisement, or in any other manner, that 20 the Rhodin apparatus constituted an infringement of the Defendants' alleged patent right, if used for the making of alkali in the United Kingdom, or from threatening the Plaintiffs, or any of their agents or customers, with legal proceedings in respect of the manufacture, sale, or use by the Plaintiffs, their agents, their customers or licensees of such apparatus. On the 6th of November, the Plaintiffs moved for an interlocutory injunction as above until judgment in the action or further order. 25 25 The following letter, the publication of which the Plaintiffs succeeded in stopping in all the papers except the "Times" of the 5th of November, was the letter, in respect to which an injunction was sought. 30 “SIR, "117, Cannon Street, November 4. "Referring to the prospectus of The Commercial Development Corpora"tion, Ld., formed with the object (inter alia) of purchasing Mr. J. G. "A. Rhodin's patent improved electrolyser, the directors of The Castner- 35 "Kellner Alkali Company, Ld., hereby inform the public that they are advised "by Mr. Moulton, Q.C., Mr. Bousfield, Q.C., and Lord Robert Cecil, that the "apparatus described and claimed therein will constitute an infringement of "their patent rights, if used for the making of alkali in the United Kingdom. "A copy of the opinion of Counsel is annexed. We are instructed to give 40 "notice that the Castner-Kellner Alkali, Ld., who are the owners of the patent "referred to in such opinion, will institute proceedings against any person so "using the Rhodin apparatus so soon as an attempt is made to employ it "for the manufacture of alkali in the United Kingdom. "We are, sir, your obedient servants, "Baker, Blaker, and Hawes, "Solicitors to the Castner-Kellner Alkali Company, Ld.” A copy of the opinion was annexed. 45 An affidavit of G. A. Grindle, a director of Plaintiff Company, was read in support of the motion, verifying the facts before stated, and deposing that 50 The Commercial Development Corporation, Ld. v. The Castner-Kellner as early as August last the Defendants knew that a Company was being formed to purchase the patent: that they also knew, at the date of registration, that the Company had been formed to manufacture and use an apparatus constructed in accordance with Rhodin's patent; that although they had known this for 5 three months they had taken no legal proceedings; and further deposing that he had been informed by the Plaintiffs' advertising agent, that unless the Defendants were immediately restrained the newspapers, which had hitherto refrained from publishing the circular, would comply with the Defendants' wishes and publish the same. Three affidavits were also read to show that the 10 publication of the circular in the "Times" had had a prejudicial effect upon the Deponents and others in regard to taking up shares in the Company. 15 The following letter from the Defendants' solicitors to the Plaintiffs' solicitors, dated the 1st of November, not referred to in any affidavit, was allowed by the Judge to be read. 66 "We have been consulted by our clients, The Castner-Kellner Alkali "Company, Ld., respecting the statements made by Mr. Harvey with "regard to Mr. J. G. A. Rhodin's patent for an improved electrolyser or "electrolytic apparatus. We have to inform you that our clients are advised "that anyone working the process as described by the patent will infringe the patents of H. Y. Castner and D. Carl Kellner, which are now owned by 66 our clients; and on our clients discovering that the process is being worked, they will at once institute proceedings against any person or companies who may work under the Rhodin patent. We write you as we see your names on "a prospectus of the Commercial Development Corporation, which we notice 25"intends to work the patent in question." 20 66 66 The prospectus of the Company was dated the 30th of October, and a few copies were distributed before the final issue. T. Terrell, Q.C., Astbury, Q.C., W. D. MacConkey, and T. H. Gray (instructed by Brooke, Freeman, and Battley, agents for Wright, Beckett, 30 and Company, of Liverpool) appeared to support the motion. Lord Robert Cecil held a brief for the Defendants, who had been served irregularly with the notice of motion, but elected not to appear, so the motion was heard ex-parte. In the course of the case, answering questions put to him by Mr. Justice BYRNE, as amicus curiæ, Lord R. Cecil stated that the 35 Defendants would issue a writ immediately. Terrell, Q.C., and Astbury, Q.C., submitted that the Defendants had shown such want of diligence in not bringing an action as to exclude them from the benefit of Section 32. What harm would it do the Defendants if the Court granted an injunction over Monday? [BYRNE, J.-It may induce the public. 40 to think there is no truth in what is inserted in the circular.] The acts of the Plaintiffs did not constitute an infringement of the Defendants' patent rights. In an action for infringement, the issue would be whether this was or was not true. The circular was not a mere general warning, and therefore should be restrained; Coats v. Chadwick, 1894, 1 Ch.D., page 347. [BYRNE J.-It would 45 be going very far to grant the injunction asked. I will give leave to serve short notice of motion for Tuesday. The granting of an injunction might be misinterpreted by the public. You have your remedy in damages.] The Plaintiffs did not object to the publication of a statement by his Lordship, that there was no decision upon the merits of the circular. The Defendants, if 50 appearing, would be required, according to the authorities, to give an undertaking not to continue the publication of the circular; Fenner v. Wilson, 10 R.P.C. 283. An injunction granted ex-parte was granted upon the same principle as an interlocutory injunction. The damage would all be done by Monday, and the shares would not be taken up. [BYRNE, J.-I do not suggest 55 an ex-parte injunction cannot be granted. The terms of Section 32, and the The Commercial Development Corporation, Ld. v. The Castner-Kellner importance of allowing persons to warn others as to their intentions, preclude me in this case from so doing.] The Defendants did not propose to bring an action until an attempt should have been made to use the process. [BYRNE, J.—If a writ had been issued at this moment, could you ask for this injunction ?] Yes. The Court would always grant an injunction to restrain 5 acte done mala fide, and resulting in great damage. The Defendants' object was to prevent people subscribing to the Company in order to stop the Company from being in a position to support its patent. The circular was not a caution to the trade generally, but was an illegal act. If (Defendants being restrained over Monday) the shares of the Plaintiff Company should be 10 subscribed for, that could not be an illegal act. The Defendants were only entitled to stop an infringement. They could appear on the motion if they wished. Even where a writ may have been issued, the Court has always insisted upon an undertaking not to issue the threats pending the trial. The Plaintiffs could satisfy the Court that there was no infringement; and, 15 therefore, they were entitled to an injunction. Colley v. Hart, 6 R.P.C., 17. They also cited Mackie v. Solvo Laundry Supply Company, Ld., 9 R.P.C., 465; Fusee Vesta Company v. Bryant and May, 4 R.P.C., 191. No undertaking in damages could be enforced in a threats action, but the Plaintiffs were quite willing to give such an undertaking. 66 20 BYRNE, J.-In this case I feel that I cannot grant an ex-parte injunction. As I intimated at an earlier stage of the case, the section is one which must be acted upon with great care. This matter is brought on ex-parte, and upon the evidence which has been brought before me it does not appear that communications had taken place between the parties prior to the issue of the circular; but on my 25 enquiry whether such communications had taken place, a letter dated the 1st of November is produced to me in which the solicitors for the Defendants wrote, --and that on the day following the date of the prospectus, and therefore at the earliest possible moment-giving this notice :-" On our clients discovering that "the process is being worked, they will at once institute proceedings against any 30 persons or companies who may work under the Rhodin patent." What the reply to that is I do not know, but at all events no proceedings are taken upon that— the prospectus is issued in the face of that letter, and on the 4th this letter is written to the newspapers, which is a letter, which is fair enough having regard to this, that parties are entitled, if they institute proceedings with due diligence, 35 to give fair warning to all the world that they mean to take proceedings against persons using what they conceive to be an infringement of their patent. Of course the question of the balance of convenience and inconvenience has been put to me, and it is said that this letter is written with a design of preventing the due issue of the shares to the public on Monday. I feel very great difficulty 40 about an argument founded upon this. The question is, have the Plaintiffs made out a legal right to this injunction; if they have not, and the Defendants are doing no more than they are legally entitled to do, then I do not think I ought to grant an injunction simply upon the argument that it cannot do them any harm if I grant it over Tuesday next. Under these circumstances, without delaying 45 further-I may be preventing the parties making a further application-I do not feel justified in granting this application. I give leave to serve notice of motion for Tuesday, or, if you prefer it, for 4 o'clock on Monday afternoon, but I do not think that will be any better for you. Your point is, that unless it is granted to-day it will not do any good. Astbury, Q.C.-We might as well take it for Tuesday morning if your Lordship gives leave, but I am very much afraid that will be of no use. BYRNE, J.-I will give leave for Tuesday morning. 50 The application was immediately renewed before the Court of Appeal. |