proprietors is on the top label of every pot, to counterfeit which is forgery." The bill prayed that the defendants might be restrained from selling any ointment under the name of Lieut. James's Horse Blister, or in pots and circulars which were a colourable imitation of those of the plaintiffs. This was a new article, introduced by Lieut. James, and the name is not in any way descriptive of the quality of the article, but an arbitrary designation used same article, and who is said to be (I do not know how far that is in evidence) the proprietor of a recipe originally prepared or invented by a man of the name of Harvey. Whether there ever was a Harvey or whether he ever made the recipe or ever gave it to her, or however her title arose, this is clear that from some time in the last century she carried on business at No. 6, Edwards Street, Portman Square, as the manufacturer of a sauce called " Harvey's Sauce," and with the addition of Lazenby, that is to say, "Lazenby's Harvey's Sauce." She, beyond all question, as far as the evidence in this case goes, was the original maker and vendor of the article known as Lazen The Solicitor-General (Sir G. Jessel) and Montague Cookson, for the plaintiffs. -The plaintiffs, as successors in title of the original inventor, are exclusively entitled to the use of the name Lieut. James's Horse Blister, for that name is not to be treated as the general trade name, but rather as a trademark distinguishing the article as made by a particular by's Harvey's Sauce, and was such maker and firm, successors of Lieut. James. This distinguishes it from Harvey's sauce, which was the subject of litigation in the unreported case of Lazenby v. White, where it was admitted that Harvey's sauce was the trade name by which the article was known to the public, and in support of their argument and to shew that the lapse of time was no bar to their right, they referred to several passages of the judgment of Lord Justice James in that case (1). LORD JUSTICE JAMES (without calling on counsel for the respondents).-This is an appeal from a decree of the Master of the Rolls made on the hearing restraining the defendant by a perpetual injunction from using a certain trademark. We allowed this appeal to be advanced on the ground that there had been no interlocutory injunction, and therefore no opportunity on the part of the defendant to take the opinion of the Court of Appeal, and if it was properly open to a reversal the decree as it stood would have destroyed the defendant's trade. I think it necessary to say this, to explain the peculiar circumstances under which we thought it right to give this case priority over the others which have been waiting so long on the paper. The plaintiff's case is this: The plaintiff is the manufacturer of a certain article of considerable public interest called "Harvey's Sauce." He derives his title by direct descent and devolution from a person of the name of Elizabeth Lazenby, who was formerly a manufacturer of the vendor at No. 6, Edwards Street, Portman Square. She conveyed her business to two of her sons. From them the title has descended or devolved upon the plaintiff, William Howard Harvey Lazenby, who, at the time this bill was filed, was still properly described as of the same place, 6, Edwards Street, Portman Square, where, as I understand, the business is still carried on, but the name of the street had been altered by the paramount authority of the Metropolitan Board of Works. The plaintiff having this article, and having this title, used certain labels and used certain bottles. In the year 1858 he found that certain other persons (the original defendants were persons of the name of Marshall) were using labels which were only colourably altered or varied from his labels, and therefore were using fraudulently and piratically his trademark. The Court thought so. The Court thought that he had established his title as the owner of the trademark and thought that the defendants in that case were so fraudulently using and pirating his trademark. Accordingly, after an interlocutory injunction had been granted, there was a perpetual injunction to restrain them from so using it. Then the defendants took into their employment or made some arrangement with a person of the name of Lazenby to assist them in the manufacture of sauce; and it being assumed at the former hearing and assumed at the present hearing that the word Harvey's Sauce was not itself a trademark, but that "Harvey's Sauce was the name of an article which was open to anybody in the world to manufacture as a sauce by that name-" Harvey's Sauce" not being of itself a trademark-of course it was open to anybody of the name of Lazenby to manufacture Harvey's Sauce, and to say it was manufactured by Lazenby, and call it Lazenby's Harvey Sauce." To that extent the Master of the Rolls has adopted the view of the defendant, but thought the defendant was not at liberty to use a label which was calculated to deceive the public into the belief that the defendant's sauce was the sauce of the plaintiffs, and that he was not entitled to represent 66 by him and his successors to distinguish their manufacture, and as such would be protected Braham v. Bustard, 1 Hem. & M. 447. that his sauce was the "original sauce," or was the " original Lazenby's sauce," or Lazenby's sauce the original," because in truth that was to represent it in another form as being the plaintiff's. The plaintiff is the owner of the original trademark connected with Elizabeth Lazenby, and is the only person authorised to represent himself in any form whatever as the successor of Elizabeth Lazenby, and the proprietor of Elizabeth Lazenby's business of making the sauce. Indeed, before us, though it was not admitted, it was not substantially contested that the original labels were not a piratical imitation of the plaintiff's, or that there was any substantial alteration made in the labels now presented to us as the labels of the defendant. It is admitted that the defendant has used the labels which are before us, which in truth we have had considerable difficulty in distinguishing after a minute investigation from labels forbidden by the original decree. The real case made on behalf of the defendant is a case of title derived by the defendant through the acquiescence and permission of the plaintiff. He says the plaintiff having an opportunity of enforcing his decree by a motion to commit, having an opportunity of taking the opinion of the Master of the Rolls as to whether the alteration made was a sufficient alteration, did not do so, but remained quiet from the year 1859 until the year 1868, when he filed his bill. That is to say, remained quiet so far as regards hostile or litigious proceedings. He remained quiet, and the defendant says that having so remained quiet he was entitled to consider that the plaintiff really was satisfied with the alteration that was made in the label, and that he was entitled to consider that the plaintiff acquiesced in what was going on, and that he bought the business in that belief. He was buying a business joining the original business, and then doing what was complained of first in the character of partner, and afterwards as sole owner, and he says he was induced to do this in the belief that the plaintiff had ceased to make any objection to it, and that therefore he was misled by the plaintiff's conduct in laying out his money in the purchase of the business, part of which was the use of the label complained of. When that was opened to us by Sir Richard Baggallay, I carefully turned to the answer to see if any such case as that was raised by the answer itself; because where a defendant's case is that he was misled by the conduct of the plaintiff into doing something and had done it bona fide, one would expect to find it, not only verified by the answer, but by the defendant's affidavit, who would thereby expose himself to cross-examination in order that the plaintiff might test the truth of the story. I am satisfied that in fact he was not misled. As far as regards the persons whom he joined-the They further said that the use of the name "Lieut. James's Blister" by the defendants, with the signature of Robert James, which was not the full signature of either of the defendants, was part of Marshalls-there was a letter intimating the dissatisfaction that the plaintiff felt with the alteration which was made. Really, if I had been the plaintiff, I should almost have treated it as an insulting joke to suggest that as an alteration which would remove the cause of complaint in any way. The plaintiff wrote a letter to say that that alteration was perfectly idle, and afterwards in the year 1865, just about the time the defendant joined the other defendants in the original suit, he wrote a formal notice drawing attention to the fact that this was a mere colourable imitation of his trademark, and warned them of the consequences. That being so, I think the defendant bought with full notice that this was what it is, on the face of it, a most fraudulent imitation of another man's trademark, and that being so, he was put upon enquiry to satisfy himself as to whether the plaintiff acquiesced in it. If the plaintiff did not assent to the use of that mark, the plaintiff cannot be deprived of his rights, because a defendant chose to take the risk of mixing himself up in transactions of that kind. The plaintiff, therefore, having the decree against the original defendants, under whom the defendant now claims, has within a few years afterwards-that is to say, the letter being written in 1865, the bill was filed in 1868-filed his bill against the defendant, the defendant has continued to use that mark, which he must have known to have been wrongly begun and wrongly con tinued, and the defendant has been rightly restrained, I think, by the Master of the Rolls' decree from further continuing that wrongful and fraudulent imitation of the plaintiff's mark. I have carefully looked through the language of the order. It appears to me to be right in every respect, except one little word which cannot mislead as to the absence of an antecedent to the word "him" in part of the order, which cannot deceive anybody. You may substitute for that either "the defendant" or "the plaintiff," it really does not signify which. It seems to me in every respect to be most carefully worded, so as not to extend to prevent the defendant from doing that which the Master of the Rolls had held in his judgment he is entitled to do, to represent himself as the proprietor and maker of a Harvey Sauce, and to represent himself, if so minded, as the proprietor of a Harvey Sauce made according to a recipe purchased by him from a Mr. Charles Lazenby, or to represent that there is a connection by relationship between Charles Lazenby, the vendor, and Elizabeth Lazenby, the original proprietor of it. He is not entitled to use the present labels or anything like them, or anything which is calculated to represent his sauce as the sauce of the plaintiff, or to represent his business as being carried on at No. 6, Edwards Street, Port a scheme to represent themselves as the successors of the original manufacturer, and was clearly unjustifiable according to the decision in Lazenby v. White (ubi supra); As to the question whether the defendant, R. J. James, having acquired knowledge of the ingredients while working for his father, was entitled to make use of knowledge so acquired, they cited Yovatt v. Wineyard, 1 J. & W. 394; Morison v. Moat, 21 Law J. Rep. (N.S.) Chanc. 248, affirming 9 Hare 241; s. c. 20 Law J. Rep. (N.S.) Chanc. 513. I [THE MASTER OF THE ROLLS, before hearing counsel for the defendant, said Sir Richard Baggallay, there are only two points upon which I wish to hear you. I will tell you what you are not entitled to, and give you my reasons. think you must not use the name of Robert James singly, but you must put Robert Joseph James. I think you must not in any advertisement, or in any circular, use any expression which asserts or suggests that the thing manufactured by the plaintiff is either spurious or not genuine. I will state my reason for that first. I am of opinion that a person having discovered a valuable invention, and not having patented it, any one who has discovered the ingredients (I am not talking of the case of a breach of trust, a species of fraud, or the like), but any one who has discovered the ingredients fairly may sell those ingredients, and may use the name of the person who discovered them, not in his lifetime, so as to suggest they are made by him, but after his death, as in this case, as in the case of the Reading sauce, or in the case of James's Fever Powder, any person who can make out that he has fairly acquired the prescription may sell the article, and any person is entitled to buy it from him. So when Lieutenant James makes a very valuable blister for horses, as soon as he dies that becomes a matter of commercial trade, and any person may make Lieutenant James's blister for horses after that time, provided he has got the proper prescription for that purpose properly and fairly. Any one who, in the course of the business, has ascertained how it is made, and chooses to state to the public he has learnt how Lieutenant James's blister for horses is made, I am of opinion is entitled to publish himself as making Lieutenant James's blister for horses, provided he does not say anything to shew that his article is made by the person to whom Lieutenant James has left his property; but he is at liberty to say, "I have made it. I have acquired the recipe, and I make that blister which is called Lieutenant James's blister." If it had been a question of fraud, or if it was done contrary to an agreement by which he was not entitled to do it, then the Court would grant an injunction; but that is not the question here, for it is admitted by the plaintiffs in this case that the defendant is entitled to make the ointment, and the plaintiffs only object that he has called it Lieutenant James's blister; but I am of opinion that he has a right to call it Lieutenant James's blister, because it has acquired a title in the commercial world, in the same manner as the Reading sauce or Harvey's sauce. Anybody has a right to sell sauce Harvey's sauce, provided he does not suggest that it is made by the original proprietor, or take the name of Lazenby, or state that it is the "original" Harvey sauce that he is making. I am therefore of opinion he is entitled to use the name of Lieutenant James's blister, if in every other respect it is exactly the same, and if the fact of his having got those ingredients together is not untrue. Then he may use the name that that blister bears in the market, but he cannot say that it is made by the plaintiffs, or use their names for that purpose, and I am of opinion that he is not at liberty to put the name of Robert James upon his labels and upon his pots, subject to what I may hear from Sir Richard Baggallay upon that, because that is asserting that this is the actual as blister which belonged to Robert James. He must not lead the public to suppose that this is actually the property of Robert James himself, he must put the words Robert Joseph James. I am therefore of opinion that he is not entitled to use the words Robert James alone as a signature. He may put the words Robert James, as indicating it is Robert James's blister, as he may use Lieutenant James's blister, but he must not use anything that looks like a signature to shew that Robert James is the owner of that particular article. In that respect I think he is wrong, and I am of opinion that he is wrong in asserting that he is the only Robert James, or in asserting the plaintiff is not; he is not entitled to cast any slur upon their title as being the persons who have, by descent from the original inventor, the right to the property, and the right to make the blister. I will also state this, that you have a right to sell the goods, and you have a right to praise them as much as you like.] Sir R. Baggallay and Mr. Townsend, for the defendants, contended that the defendants had a right to use the signature Robert James, which was, in fact, his signature, though not containing all his Christian names, and that if they were not justified as advertising their article as the only genuine in self-defence against the plaintiffs, who declared that theirs was the only genuine, at least the Court would not restrain the defendants from doing so at the suit of the plaintiff's, who did exactly the same, without putting the plaintiffs upon terms to discontinue their practice on this point. THE MASTER OF THE ROLLS. Upon this part of the case I am against the defendants. It opens a question which I do not know has ever been determined; it is quite clear that I could not determine it in this case. I will state the case which arises here exactly: Lieutenant James discovered a valuable ointment for blistering horses. He gives it to his executors or assigns, who carry on the business and sell his blistering ointment. There being nobody else in the field, they state with perfect propriety that the only genuine one is theirs. Another person gets the recipe, in such a form that he is entitled to use it, and thereupon he says, "I am the only genuine maker." I am of opinion that he is not entitled to say that, but is he thereupon entitled to file a bill, and call upon the plaintiffs to alter their advertisements? I do not know that that has been determined, all I can say is that that would be relief which I could not give in this suit. I am satisfied the defendants are not entitled to say theirs is the only genuine blister ointment. The expression of the plaintiffs in their advertisement is, that "None is genuine without the signature of the proprietors are on the top label of every pot, to counterfeit which is forgery," which is perfectly true, but all the person is entitled to is to put his name on the top of the pot. But the assertion of the defendant goes much beyond that, for he states, "that the public are cautioned against a spurious imitation of this blister." "None is genuine without the trademark, a horse's head on the top of each pot, and the signature Robert James." If by signature is meant the signature which is supposed to be, at least I assume it is supposed to be, the facsimile of the signature of the original inventor that is involved in the question of whether they have a right to sell Robert James's or Lieutenant James's blister, but the signature of Robert James, the second signature, would lead people to suppose that that was prepared by the inventor himself. I do not think he is entitled to do that. If the name of the original inventor had not been Robert James I think the case would have been very different; but the name of the inventor being Robert James, and signed as such, I think the defendant's signature ought to contain his full name, and not the signature of Robert James alone; and I am by Robert James, and that there must be an injunction to restrain him from this. It is quite clear that this is not a case in which I can give any costs at all. The order made was as follows"Restrain the defendant from using the name of Robert James singly, instead of Robert Joseph James, or R. J. James; also from stating or inserting in his advertisement or circular any words or expressions asserting or suggesting that the ointment manufactured and sold by the plaintiffs is spurious and not genuine." In 1859, a patent was taken out in America by one Halvor Halvorson, of Massachusetts, for improvements in the manufacture of lamp burners, and this invention was published in England in the year 1861. In 1865, the defendants, Messrs. James and Joseph Hinks of Birmingham took out a patent in England for an improved lamp burner. The plaintiff, John Gustavus Rollins, an American merchant residing and carrying on business in London, in September, 1871, purchased in America a large stock of double wick lamp burners, manufactured under Halvorson's patent, and advertised in a weekly newspaper called "The Grocer," that he was prepared to receive orders for these burners on the arrival in England of the stock. This having come to the knowledge of the defendants, their solicitois, on September 26, wrote a letter to the plaintiff, stating that the attention of their clients had been called to the plaintiff's advertisement, that the burners he offered for sale appeared to be an infringement of the defendants' patent, and continuing as follows :— "If this statement of yours is really honest, you will have no objection in complying with a request which we now make, that you will send us immediately on the arrival of stock, one of the double wick lamp-burner lamps, for which we are prepared to pay in advance, if required. "We make this purchase, as we give you notice, simply for the purpose of having formal proof on which to found legal proceedings against you, and this proof, if, as we have before observed, your advertisement means what it says, you will be anxious to give." To this letter the plaintiff replied on September 27, as follows: "Your order for one of my dual lampburners is received. As soon as the stock arrives the sample shall be sent. "You may rely upon my honest intentions, to prove which I have this day letters from the manufacturers, saying the stock would probably be shipped by next steamer, and I am soliciting orders and prepared to defend all actions your clients like to bring, either against myself or my customers." The defendants then caused the following advertisement to be published in the "Grocer" of September 30: "Duplex Lamps: "To the Trade. "Our attention has been directed to an announcement that an infringement of our patent has been made in America for sale in this country. Constant threats of these infringements have been held out to us for some time past to induce us to make arrangements with our rivals, but have never yet been carried into effect by the actual sale in this country of any one of the infringements. Whenever an actual sale does occur, we shall at once proceed by injunction against the offender, and in all cases in which we can prove that this notice has come to their knowledge, shall also sue for damages. "Yours truly, |