76 THE ILLUSTRATED OFFICIAL JOURNAL (PATENTS). [Dec. 31, 1910

TRADE MARK CASES.

ALTERATION OF TRADE MARK.

Alteration of Trade Mark by an addition including the words Incorporated by Royal Charter" refused as to such addition by reason of the word "Royal."-Company incorporated by Royal Charter.-Proposed alteration including the word "Royal."-Refusal of Application by Registrar.-Appeal to the Board of Trade referred to Court.-Appeal dismissed.-Trade Marks Act 1905, Sections 11, 34, and 68.-Trade Mark Rules 1906, Rule 12. The Carron Co. incorporated by Royal Charter in 1773, registered in 1881 a Trade Mark as an old mark. In 1909 the Company applied for leave to alter the Trade Mark, one of the proposed alterations being the addition of the words "Carron Company, Incorporated by Royal Charter 1773" within a double ring around the mark. The Registrar refused the leave asked for because of the word "Royal," in view of Rule 12 of the Trade Marks Rules of 1906. The Company appealed, and the appeal was referred to the Court.-Held, that the Registrar was right in refusing the Application. IN THE MATTER OF AN APPLICATION BY CARRON CO., p. 412.

"CALCULATED TO DECEIVE." See also REGISTRATION, Nos. 3 and 5; PASSING OFF and TRADE NAME.

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"Calculated to deceive' is not a phrase which has reference to to-day or "when the writ is issued. It means, according to the proper sense of "language, calculated to deceive in the ordinary sense of business, assuming that the business will be carried on in future, not precisely and exactly in the mode it is carried on to-day by this new Company; but with one's knowledge of affairs how is it likely to be "carried on?" Per COZENS HARDY M.R. in OUVAH CEYLON ESTATES LD. v. UVA CEYLON RUBBER ESTATES Ld., p. 756.

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66

COMPANIES (CONSOLIDATION) ACT, 1908.

Section 8 (1)

HOPTON WOOD STONE FIRMS LD. v. GETHING, p. 605.

CONTEMPT OF COURT.

Motion to attach for contempt of Court dismissed on the ground that service of an amended notice of motion was not accompanied by service of the affidavits which were to be used in support of it. BECHSTEIN v. BARKER AND BARKER, p. 484.

COSTS. See also PRACTICE.

1. Inadequate offer. Where the Defendants in an action for infringement offered to the Plaintiffs all the relief that they were entitled to claim, but the Plaintiffs claimed further relief and went to trial, the Defendants were given the costs of the action subsequent to the refusal of the offer, the costs up to that date and the necessary costs of obtaining an Order were given to the Plaintiff's, with a set-off. SLAZENGER v. SPALDING, p. 20. See ACCOUNT OF PROFITS.

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TRADE MARK CASES.

COSTS-continued.

2. Costs where Order varied on Appeal. In a passing-off action in Scotland where a declarator, an interdict, damages and expenses were awarded to the Plaintiffs, but on appeal it was held that the Plaintiffs were not entitled to a declarator or to damages, and the terms of the interdict were varied, the Plaintiffs were given the expenses in the Outer House modified to two-thirds, and in the Inner House no expenses were awarded to either party. CHARLES P. KINNELL & Co. LD. v. BALLANTINE & SONS, p. 185.

3. Isolated instance. Where an injunction was refused in a passing-off case on the ground that the Defendants had not done anything which they were not entitled to do except in an isolated instance and by mistake, the Defendants were given the costs of the action, except so far as down to and including the hearing of a motion for an interim injunction, on which the Defendants gave a certain undertaking, the costs were increased by the complaint with reference to that isolated instance. ARMSTRONG OILER CO. LD. v. PATENT AXLEBOX AND FOUNDRY CO. LD., p. 362.

4. On an application for registration of a Trade Mark the costs of three Counsel in the High Court and Court of Appeal were allowed. Costs of attendance of country solicitor in High Court also allowed.-Special Application to register" Perfection" as Trade Mark for common soap.-Opposition.-Refusal by Registrar to register.-Appeal to Court dismissed with costs.-Appeal to Court of Appeal dismissed with costs.-Taxation of Opponents' costs.Costs of third Counsel and attendance of country solicitor disallowed by Taxing Master.-Costs of preparing brief and attendance of witnesses reduced.—Summons. by Opponents to review taxation.Counter Summons by the Applicants.-Costs of third Counsel in High Court and Court of Appeal allowed.-Costs of attendance of country solicitor in High Court allowed.-Other costs referred back to Taxing Master to reconsider.-Counter Summons dismissed. Kirkwood v. Webster (L.R. 9 C.D. 239) followed. Peel v. London and NorthWestern Railway (L.R. (1907) 1 Ch. 607) distinguished. IN THE MATTER OF AN APPLICATION BY JOSEPH CROSFIELD & SONS LD. TO REGISTER A TRADE MARK (“ PERFECTION "), p. 433.

5. Where the Defendants in an action for infringement of Trade Mark and for passing-off made an offer to the Plaintiffs to submit subject to a condition as to advertising which the Plaintiffs were not bound to and did not accept, the Defendants were ordered to pay the costs of the Action.-Action to restrain infringement of Trade Mark and passing-off-Conditional offer to submit to judgment by Defendants.-Subsequent trial.-Offer held to be insufficient.-Judgment for Plaintiffs with costs. In an action for infringement of Trade Mark and for passing-off the Defendants by letter offered to consent to a perpetual injunction with other relief, and to pay the Plaintiffs' taxed costs, upon the terms that the judgment should not be advertised or that it should contain a statement that the Defendants submitted to the judgment for the sake of peace. The Plaintiffs refused to agree to the condition attached to the offer, and the Defendants put in a Defence in which they pleaded their offer,

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TRADE MARK CASES.

COSTS continued.

At the trial of the action the Defendants asked that the costs from the date of the offer should be ordered to be paid by the Plaintiffs.-Held, that the Plaintiffs were not bound to accept the condition, and an injunction was granted, with other relief, and the Defendants were ordered to pay the costs of the action. HENRY CLAY AND BOCK & Co. LD. v. GODFREY PHILLIPS LD., p. 508.

6. Excepted costs. Where on an application to rectify the Register, the Mark was held to be a joint mark, and, subject to an amendment as to parties, the Register was ordered to be rectified by including the name of the Applicants as co-proprietors, the Respondents were ordered to pay the costs of the application, including the costs of the Registrar, but excepting so far as the costs had been increased by a claim of the Applicants that their predecessors were the designers of the Trade Marks, and the Applicants were ordered to pay the excepted costs, and the costs of and occasioned by the amendment. IN THE MATTER OF THE TARANTELLA TRADE MARKS, p. 588. See RECTIFICATION, No. 3.

DAMAGES.

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In an action in Scotland for passing-off no actual deception was proved, and it was held that although the Plaintiffs were entitled to an interdict, they were not entitled to damages. CHARLES P. KINNELL & CO. LD. v. BALLANTINE & SONS, p. 185. See also PASSING-OFF, No. 4.

DECEPTION. See CALCULATED TO DECEIVE.

DISTINCTIVE MARK. See REGISTRATION, and TRADE MARK (VALIDITY OF).

FOREIGN LAW.

A sale by a foreign Court under foreign law cannot affect property not within reach of the foreign law or the jurisdiction of the foreign Court. Per Lord MACNAGHTEN in REY v. LECOUTURIER, p. 276.

FRAUD. See TRADE MARK (VALIDITY OF), No. 1.

GEOGRAPHICAL WORD.

Special Application for the registration of the word "Itala" allowed to proceed. IN THE MATTER OF AN APPLICATION BY THE ITALA FABBRICA DI AUTOMOBILI, p. 493.

GOODS. See PASSING-OFF, No. 3.

GOODWILL.

Effect of foreign law on English good will of foreigners. REY v. LECOUTURIER, p. 268. See PASSING-OFF, No. 6.

INFRINGEMENT. See PASSING-OFF, Nos. 7, 9, 10, and Costs, No. 5,

Dec. 31, 1910] THE ILLUSTRATED OFFICIAL JOURNAL (PATENTS).

TRADE MARK CASES.

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JOINT TRADE MARK. See RECTIFICATION, No. 3.

LIBEL.

A document alleged to be a libel held not to refer to the Plaintiffs in the part alleged to be libellous. HUNT, ROOPE, TEAGE & Co. v. EHRMANN BROS., p. 512. See PASSING-OFF, No. 11.

MASTER AND SERVANT. See RECTIFICATION, No. 1.

MISREPRESENTATION. See RECTIFICATION OF THE REGISTER, No. 4. NAME. See also TRADE NAME.

Name of article. Gramophone held to be the name by which the article, namely a talking machine with disc records, is popularly known and not to be registrable under Section 9 (5) of the Trade Marks Act 1905. IN THE MATTER OF AN APPLICATION BY THE GRAMOPHONE Co. LD., p. 689.

OLD MARK. See ALTERATION OF TRADE Mark.

OPPOSITION. See REGISTRATION.

PASSING-OFF. See also TRADE MARK (VALIDITY OF).

1. Alleged use by Defendants of Plaintiffs' mark as a quality mark not established. Injunction granted.-Trade Mark.-Use by Defendants of name distinctive of the Plaintiffs' goods and registered as their Trade Mark.-Alleged use as quality mark.-Injunction granted.-Judgment for Plaintiffs. The owners of a Trade Mark, consisting of the word "Vacuum," registered for (inter alia) lubricating oils, commenced an action for infringement of the same, and for passing off by the Defendants of oils not being the goods of the Plaintiffs as and for their goods. The Defendants had sold oil, not the Plaintiffs', out of a barrel in their shop marked "Vacuum Motor Oil, A quality," and invoiced it as "Vacuum A Mobiloil." They alleged in defence that "Vacuum Quality was an expression used in practice in the trade to denote quality and would deceive no one.-Held, that the Plaintiffs' rights had been infringed, and an injunction was granted against infringement of their Trade Mark and against passing-off, and an inquiry as to damages, and the Defendants were ordered to pay the costs of the action. VACUUM OIL CO. LD. v. GOOCH AND TARRANT, p. 76.

2. Use by Defendants of trade name for motor tyres held to be liable to lead to the belief that the goods were those of the Plaintiffs, who were interested in a business in which the same name was connected with cycle tyres. Right of Plaintiffs to sue.-Trade name of goods.-Plaintiffs not making or selling, but having sold for them, "Warwick" cycle and motor-cycle tyres.Defendants making and selling "Warwick motor tyres.-Probability of deception.—“ Warwick" the name of managing director of Defendant Co.-Judgment for Plaintiffs.-Form of injunction.

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TRADE MARK CASES.

PASSING-OFF-continued.

The D. R. Co. made, and the D. P. T. Co. sold for the Warwick Co. tyres for cycles and motor cycles (but not for motor cars) under the name of "Warwick" tyres, which had been sold under that name in large quantities since 1896. The N. Co., which had for two years previously made and sold motor tyres, in 1908 began to call their motor tyres "Warwick motor tyres." The business of the N. Co. substantially belonged to, and was conducted by, a person of the name of Warwick. The Warwick Co. brought an action against the N. Co. for passing-off. At the trial the Plaintiffs did not prove that any purchaser had been deceived. The Defendants alleged that they had adopted the name "Warwick" because their tyres had become known to their customers by that name; they contended that the Plaintiffs as being neither the makers nor the sellers, but merely the receivers of the proceeds of sale, of the tyres, were not entitled to sue, and that the Defendants' motor tyres could not be mistaken for the Plaintiffs' cycle or motor-cycle tyres, inasmuch as they were larger and more expensive than the latter, and could only be obtained directly from the Defendants.-Held, that the Plaintiffs, as the only persons entitled to use the name, were entitled to sue; that the tyre trade generally included dealing in both cycle and motor tyres; and that the use by the Defendants of the name "Warwick " in connection with the sale of motor tyres would be calculated to mislead persons into the belief that such tyres were of the same make as the wellknown "Warwick" tyres. An injunction was granted with costs, and an Order for delivery up or destruction of offending tyres was made, but an inquiry as to damages was not directed. WARWICK TYRE Co. LD. v. NEW MOTOR AND GENERAL RUBBER CO. LD., p. 161.

3. Different goods. In a passing-off case it is not necessary that the goods dealt in by the defendant should be identical with the goods dealt in by the plaintiff. Wherever the defendant is putting his goods on the market in such a way as to lead to the supposition that they are the goods of the plaintiff, the plaintiff is entitled to an injunction. WARWICK TYRE Co. LD. v. NEW MOTOR RUBBER CO. LD., p. 170.

4. Where the Plaintiffs in a passing-off action established that a name applied by them to their goods had acquired a secondary meaning, they were held entitled to an interdict, but not to a declarator that they had the exclusive right to the use of the name in connection with the goods in question.-Trade name of goods.-Secondary meaning.-Descriptive name." Horse"shoe" boiler.-Use calculated to deceive.-Actual deception not proved. -Declarator of exclusive right refused.-Interdict granted against use of name without clearly distinguishing.-Damages refused.-Expenses For twenty-five years K. & Co. sold boilers, of a particular kind invented by them, under the name of "Horse-Shoe boilers. The first few boilers made were circular, but during practically the whole of that time the boilers were made of a horse-shoe or U-shape. The name was applied to boilers by K. & Co. only. In February 1906 B. & Sons began to issue to the trade Price Lists which had printed on the front page "Horse-Shoe Boilers." On some of the Lists their name and address appeared. In November 1907 K. & Co. learnt of these Price Lists and at once remonstrated. B. & Sons replied that