DIGEST OF TRADE MARK CASES. APPLICATION FOR REGISTRATION. See REGISTRATION. CONCURRENT USER. Held to be proved. EDGE & SONS v. GALLON & SON, p. 509. COSTS. 1. Special order as to where successful Defendant was held to have provoked the litigation. LEVER BROTHERS, LD. v. Bedingfield, p. 3. 2. Where Appellants were successful, the costs which had been paid by them of the trial below were ordered to be repaid but without interest. EDGE & SONS, LD. v. GALLON & SON, p. 509. DECEPTION (PROBABILITY OF). Motion for injunction in a Passing off action refused, where, although there DISCLAIMER. Words, whether addition to or part of Trade Mark.-Trade Mark.— Motion to rectify the Register.-Patents, &c. Act, 1883, sections 64 and In 1888, C., trading as the Compagnie du Vin de St. Raphael, applied to register under the Patents, &c. Act, 1883, a Trade Mark consisting a of label, on which the words "St. Raphael" occurred both in the name of the company and separately. The application was allowed and the label registered. In 1898, a company applied, by motion, for an order to rectify the Register by removing the mark, or by adding to the entry a disclaimer of any right on the part of C. to the exclusive user of the words "St. Raphael" or "Saint Raphael.” The Applicants alleged that there were several towns in France called "St. Raphael," and that there were vineyards at or near each of them, and that one of them was near a place called Bagnols, in connection with which name the Respondents had at one time used the words "St. Raphael," that the words "St. Raphael" were geographical, and were therefore not "fancy words," but were at the time of registration prima facie distinctive and open to the trade, and therefore ought to have been disclaimed under section 74 of the Patents, &c. Act, 1883. For the Respondents, it was alleged that they had no connection with any place called St. Raphael," 66 DISCLAIMER-continued. and that no reference to any such place was intended, and it was contended that the words were not an addition to, but an integral part of, the mark.-Held, by KEKEWICH, J., that the words "St. "Raphael" were not shown to be geographical, and, further, that they were not an addition to the mark, but part of it, and that no disclaimer was required. The motion was dismissed, with costs. The Applicants appealed.-Held, by the Court of Appeal, that the words. "St. Raphael" were not an addition to the mark, but part of it, and that no disclaimer was required. The appeal was dismissed, with costs. Per ROMER, L.J.-That the lower part of the registered Trade Mark was an addition within section 64 of the Patents, &c. Act, 1883, and that, not being prima facie distinctive, no disclaimer of such part was necessary under section 74. CLEMENT & CIE.'S Trade Mark, pp. 173, 611. EVIDENCE. See also PRACTICE, No. 2. Evidence to the meaning of a circular held to be inadmissible where there were no circumstances to suggest that the circular had a secondary meaning. BAKING POWDER Co. v. WRIGHT, CROSSLEY, & Co., p. 217. INFRINGEMENT. See also PASSING OFF, No. 1. 1. Not found, and on appeal injunction refused for passing off. LEVER BROTHERS, LD. v. BEDINGFIELD, p. 3. 66 .2. "The Defendant's design or combination of devices, although suggested by, and in some important respects similar to, that of the Plaintiffs, "is yet so different when regarded as a whole, that in our opinion "the Plaintiffs are not entitled to an injunction to restrain the "Defendant from infringing their registered Trade Marks. On this "part of the case the decision of the learned Judge was correct." Per LINDLEY, M.R. LEVER BROTHERS v. BEDINGFIELD, p. 10. 3. Copying a part of the Trade Mark is not necessarily an infringement. See LEVER v. BEDINGFIELD, p. 10. 4. A Trade Mark consisting of the device of a corset and the letters "C. B." within a star, and a Trade Mark consisting of 66 C. B. Corsets" held infringed by the use of "C. B. & Co.” and "C. B. D."-Action for infringement.-Colourable imitation.-Rectification. The Plaintiff, a manufacturer of corsets, had for twenty years used a Trade Mark consisting of the letters "C.B.," and on 29th January 1881 registered as a Trade Mark the device of a corset and the letters "C.B." within a star, and on 12th June 1886 registered, as an old Trade Mark, the letters and words "C.B. Corsets" in connection with corsets. In March 1896 the Defendants manufactured and sold corsets contained in boxes marked "C.B. & Co.," the " & Co." being much smaller than the letters "C.B."; they also manufactured and sold corsets in boxes marked "C.B.D." They refused to discontinue using the said marks, alleging that they were the proper initials of their firm "Connell Brothers" and "Connell Brothers, Dublin." An action INFRINGEMENT-continued. having been brought, the Defendants denied infringement, and by counterclaim applied that the letters "C.B." should be expunged from the Trade Mark registered by the Plaintiff on 29th January 1881, and that the registration of the alleged Trade Mark "C.B. "Corsets" registered on 12th June 1886 should be set aside and expunged, on the ground that they were incapable of registration, and that the Register of Trade Marks should be rectified accordingly. In March 1897, on an interlocutory motion by the Defendants for a rectification of the Register, the Plaintiff resisted, on the ground that the Irish Court had no jurisdiction, and the MASTER OF THE ROLLS made no Order, holding that there was no jurisdiction in the Irish Court, under the Patents, &c. Act, of 1883, to order any alteration or rectification of the Register of Trade Marks, it being a special jurisdiction conferred under the Act on the High Court of Justice in England. No proceedings were taken by the Defendants in England for a rectification of the Register. Subsequently, in an action in Scotland, the Plaintiff took proceedings against a firm in Glasgow for selling corsets which had been supplied to them by the Defendants marked "C.B. & Co.," and by a judgment of the Court of Session, confirmed on appeal by the Inner House, obtained an injunction. The action in Ireland having been proceeded with, the Defendants abandoned the case in so far as it related to the use of the letters "C.B. & Co.," but they still claimed the right to use the mark "C.B.D." on the grounds (1) that they were the proper initials of their firm, "Connell Brothers, Dublin"; (2) that it was different from the Plaintiff's Trade Marks; and (3) that it was not calculated to mislead, and that no purchasers had in fact been misled by it.— Held, that both "C.B. & Co." and "C.B.D." were colourable imitations of the Plaintiff's Trade Marks, and calculated to mislead the public into the belief that corsets so marked were the Plaintiff's manufacture, and that the Plaintiff was entitled to an injunction. CHARLES BAYER v. CONNELL BROTHERS & CO., p. 157. INJUNCTION. Breach of injunction. An injunction to restrain a Defendant from using a trade name without clear distinction held broken by the use of the trade name preceded by the Defendant's name.-Trade name.-" Brazilian Silver."-Injunction to restrain the use of name.-Motion to commit for breach of injunction.-Agent made Respondent as well as principal. In an action by D. and A. against W. and B., an injunction was granted to restrain the Defendants, their servants and agents, from passing or attempting to pass off goods not of the Plaintiffs' manufacture as or for goods of the Plaintiffs' manufacture by use of the words "Brazilian Silver," and from using the words "Brazilian Silver" as descriptive of or in connection with nickel silver goods, not of the Plaintiffs' manufacture, without clearly distinguishing such goods. from the goods of the Plaintiffs' manufacture. Subsequently W. began to sell forks and spoons marked "F. Whitehouse's Brazilian Silver," in packages bearing labels having the words "F. White"house's Brazilian Silver," and a Trade Mark. Some of such sales were made through E., who was W.'s traveller. D. and A. gave notice of a motion against W. and E. for breach of the injunction, 66 INJUNCTION-continued. but did not press for a committal.-Held, that there had been a breach of the injunction, and that W. must pay the costs of the motion. Semble: E. should not have been made a Respondent to the motion. DANIEL AND ARTER v. WHITEHOUSE AND EVERALL, p. 71. MISREPRESENTATION. 1. The use of the words "Trade Mark" referring to an unregistered Trade Mark does not necessarily represent that it is registered.-Action for passing off goods.-Motion for injunction. -Alleged misrepresentation on Plaintiffs' packets.-Words "Trade "Mark" referring to words not registered as a Trade Mark.Injunction granted.-Patents, &c. Act, 1883, sections 62, 76, 77, 78, and 105. The Sen Sen Company, having since 1896 imported into and sold in the United Kingdom cachous in distinctive boxes and packets with the words "Sen Sen" on them, joined in 1899 with an American Company, who were the manufacturers and vendors of the articles, in bringing an action against B. to restrain him from passing off his goods as the Plaintiffs'. The Defendant's articles were sold under the name " Santé," and, as the Plaintiffs alleged, with a get-up similar to theirs. The Plaintiffs moved for an interlocutory injunction, when in addition to other defences it was contended for the Defendant that, as the Plaintiffs had on their packets the words "Trade Mark" below the words "Sen Sen," and since the words "Sen Sen" were not registered as a Trade Mark, the Plaintiffs were making a misrepresentation to the public that disentitled them to relief. It appeared that the Plaintiffs had applied at the Patent Office to register the words "Sen Sen," but the application had not yet been dealt with.-Held, that the Plaintiffs had not made such a misrepresentation as to deprive them of the right to an injunction, and that on the facts they were entitled to an injunction until the trial. A Trade Mark may still be acquired by user, although the right to sue on it is limited by section 77 of the Patents, &c. Act, 1883. The use of the words "Trade Mark" referring to an unregistered Trade Mark do not necessarily represent that it is registered. (Lewis v. Goodbody, 67 L.T.N.S. 194 discussed.) SEN SEN CO. AND OTHERS v. BRITTEN, p. 137. 2. Question whether the use of "registered " on an article after the expiration of a registered design disentitles to protection in a Court of Equity raised but not decided. WINSER & Co., LD. v. ARMSTRONG & Co., p. 167. PASSING OFF. 1. Injunction for passing off granted by the Court of first instance, but refused by the Court of Appeal. In the opinion of the Court of Appeal, the Defendant's wrapper was not calculated to deceive, although parts of it had been copied from the Plaintiffs' wrapper.-Action for infringement of Trade Mark and passing off-Endeavour to pass off-No injunction as to Trade Mark, but injunction as to passing off-Cross appeals.-Judgment PASSING OFF-continued. entered for Defendant with costs of appeal, but no costs of action. In 1886, L. Brothers registered a Trade Mark in Class 47 for common soap, which consisted of a label divided into compartments and having the word "Sunlight" prominently in a compartment at the top and the word "Soap on a scroll underneath, with flowers round about the scroll, and in other compartments letterpress. They also at the same time registered a similar Trade Mark in Class 48 for perfumed soap. In 1894, L. Brothers, Ld., who had become the registered proprietors of the above-mentioned Trade Marks, registered another Trade Mark in Class 47 for soap, which consisted of a label very similar to those above mentioned, but having the figure of a maid hanging out clothes to dry in a compartment which was blank in the labels previously registered. In 1897, B. commenced to sell soap in boxes having on the top a label also divided into compartments, which, however, were not identical with those in the labels of L. Brothers, Ld.; this label had the words "Red Maid " prominently in a compartment at the top, and the word "Soap" on a scroll underneath, with flowers round about the scroll. The colours in this label were to a great extent the same as those in the labels of L. Brothers, Ld., but were differently arranged. L. Brothers, Ld., commenced an action for infringement of their three Trade Marks above described and for passing off.-Held, at the trial, that although the idea of some parts of the Defendant's label must have been taken from the Plaintiffs' Trade Marks, so much had not been taken as to constitute an infringement of any of the Plaintiffs' Trade Marks; but that the conduct of the Defendant showed that he had endeavoured to pass off his goods as and for the goods of the Plaintiffs, and that having regard to that fact the Plaintiffs were on the authority of Reddaway v. Banham, 13 R.P.C. 218, entitled to an injunction on the second part of the case. A special order as to costs was made. The Defendant appealed as regards so much of the decision as related to the passing off. There was also a cross appeal by the Plaintiffs as regards the decision on the question of Trade Mark.-Held, by the Court of Appeal, that the Defendant had not infringed the Plaintiffs' Trade Mark, and, as regards the passing off, that, as in the opinion of the Court the Defendant's wrapper was not calculated to deceive, thought it must in various respects have been taken from the Plaintiffs' wrapper, there was no ground for an injunction, and judgment must be entered for the Defendant. A special order as to costs was made. Reddaway v. Banham explained. LEVER BROTHERS, LD. v. BEDINGFIELD, p. 3. 66 2. Injunction granted, the Court holding that use of the word Dunlop" on the Defendant's goods suggested the Plaintiff Company, although they did not actually deal in such goods. -Trade name.-Passing off-Injunction. From 1888 the D. P. T. Co., Ld., and their predecessors in title used the name "Dunlop" in connection with the goods of their manufacture. Such goods consisted of pneumatic tyres for cycles and other accessories such as pumps, inflators, &c. The name "Dunlop " had become identified with the goods of the D. P. T. Co., Ld. One Funt traded as the D. L. Co., and dealt in oils and lubricants for cycles and other cycle accessories, but not the same class of accessories as the D. P. T. Co., Ld. The word "Dunlop" was used prominently on all the goods of the Defendant. The D. P. T. Co., Ld., brought an action to restrain the E |
