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Defendant from so trading.--Held, that there was evidence that Funt
3. Trade name held to denote an article of a particular type or
pattern and not an article of the Plaintifs' manufacture.Action to restrain Defendants from passing off their goods as the Flaintiffs' by the use of a name.- Vame whether Plaintiffs' trade name or a nome descriptive of the article.-Registered design.Continuance of use of “registered” after determination of registration. In 1885 F. S. W. registered a design for intercepting sewer traps, and his firm sold the same as “ Winser Interceptors." The registration expired in 1890. The business of the firm was transferred to a Limited Company. The Limited Company in 1898 commenced an action against A. & Co. for an injunction to restrain them from passing off their goods as the goods of the Plaintiff Company, and in particular from selling interceptors not being the Plaintiffs' as “Winser Interceptors." The acts complained of by the Plaintiff Company were the sale by the Defendants of four interceptors of their's as “ Winser Interceptors,” and there was no other ground of complaint. The Plaintiff Company's interceptors were, at the time of the commencement of the action, and always had been, marked with the name of their firm and the word " registered” and the number of the registered design. The Defendants' interceptors had no similar mark. The action was tried with witnesses.—Held, that upon the evidence “Winser's Interceptor” denoted an interceptor of a particular type or pattern, and not an interceptor supplied by the Plaintiff's, and that the Defendants in supplying “Winser “ Interceptors" did not thereby intend to and did not thereby, in fact, represent their goods to be the goods of the Plaintiffs. The question whether the use by the Plaintiffs of the word “registered " with the number, although the design hal expired, disentitled them to relief in Court was left undecided. WINSER & CO., LD. V. ARMSTRONG & Co., p. 167.
4. The word "Shorland” in connection with cycling shoes held
not to denote the Plaintiff's' shoes and no others.--dction to restrain passing off by use of name. Vame whether denoting Plaintiffs' goo:ls or only pattern.-J'erdict for Defendants.-Jotion for new trial.-- Jlotion refusell. The Plaintiffs in an action to restrain the Defendants from passing off their cycling shoes as the Plaintiffs' by the use of the name “ Shorland,” called at the trial a number of witnes-es who were cyclists and wholesale and retail people in the boot and shoe trade who gave evidence to the effect that “Shorland” denoted the Plaintiffs' shoes. The Defendants called a smaller number of trade witnesses, principally wholesale, who gave evidence to the contrary. The Jury found a verdict for 'the Defendants. The Plaintiff's moved for a new trial, or in the alternative for judgment in their favour, on the ground that the verdict was unreasonable having regard to the evidence given and the way in which the case was tried. The Motion was refused with costs. A, W. GAMAGE, LD, v. H. E. RANDALL, LD., p. 185.
5. Defendants held to be entitled to use the word “Capstan" in
connection with other closets made by them although they had previously only used it upon closets made under a license from the Plaintiffs.-ection to restrain passing off by use of a word.-Such word registered as part of a Trale Jark.- Word originally used by Defendants to denote patented articles made by them under license from the Plaintitis.- Jotion to rectify the Register of Trade Marks. The Plaintiffs in 1893 granted a sole license to manufacture closets under a patent to S., who afterwards transferred his business to a Limited Company. The license terminated in 1898. In the five years S. and his successors manufactured closets under the license, some of which were sold by the Plaintiffs and some by S. and his successors.
The former were sold as “ Turritt ” and the latter as “ Capstan.” The word " Capstan, with the device of a capstan, was registered as a Trade Mark by S. by arrangement with the Plaintiffs. The registration was for the whole of Class 16, but the Trade Mark was only used on closets made under the license until a few months after the determination of the license, when the Company began to sell closets of a slightly different pattern as “ Capstan No. 2.” The Plaintiffs thereupon brought an action to restrain the Company from selling any closets of their manufacture under the title of “Capstan,” and from in any other manner passing off their goods as goods constructed under the license of the Plaintiffs. The Plaintiff's moved for an interlocutory injunction, and also moved to expunge the Trade Mark from the Register on the ground that “ Capstan" was the name of a patented article, and on the ground that the Company were no longer able to manufacture “Capstan” closets, and therefore their good will in such closets having determined the Trade Mark had determined also.-Held, that both motions failed and must be refused. FREEMAN BROTHERS V. SHARPE BROTHERS & Co., LD., p. 205.
6. Injunction granted to restrain the Defendants from selling
coffee in tins got up in a manner similar to the Plaintiffs' tins.-Action to restrain passing off.-Get-up of coffee tins.-Injunction granted. The Plaintiffs in an action for passing off sold their coffee in circular tins surrounded by paper labels. The predominant colour of the label for one quality was red, for another quality blue, and for another quality green. There were three sizes of the tins of each colour. The Plaintiffs subsequently adopted enamelled tins in red and blue displaying a reproduction of the labels for the two larger sizes of the two higher qualities. The smaller tins of these qualities and all of the lowest quality were still used with paper labels. The brand “ Royal " appeared on the back and front of all the Plaintiffs' tins. The Defendants sold coffee in circular red, blue, and green tins, all of which were enamelled, resembling in general appearance, but differing in details from, the Plaintiffs' tins. The brand “Flag" appeared upon the back and front of all the Defendants' tins, and their Trade Mark “Flag" in tricolour was on the front of each tin. The names and addresses of the Plaintiffs and Defendants were not placed upon their respective tins.—Held, that the Plaintiff's were entitled to an injunction to restrain the use of the tins complained of. PAYTON & Co., LD. v. SNELLING, LAMPARD, & Co., LD., p. 283.
7. Form of order in action for passing off. See p. 290.
8. Intention to pass off held to be proved, and an injunction granted.-Action for passing of goods.—Similarity of Defendants
' coffee tins to Plaintiffs' coffee tins.-Injunction granted.-E.cecution stayed by consent. The Plaintiff's, who sold “Royal ” Coffee in tins, some of which bore red, blue, and green labels, while others were enamelled in the same pattern on a red or blue ground, brought an action to restrain the Defendants from selling “ Palais Royal ” Coffee in tins which were enamelled in somewhat similar pattern on a green or chocolate ground. The Defendants and their predecessors had for many years, and before the Plaintiffs' “Royal » Coffee was on the market, sold “ Palais Royal ” Coffee in tins with certain paper labels, which bore no resemblance to the Plaintiff's' labels in pattern or colour, and they subsequently began to use enamelled tins having a green or chocolate ground, the use of which tins the Plaintiffs sought to restrain.—Held, that as the similarities between the Plaintiffs' and Defendants' tins were so great, and as the Defendants' tins as a whole so nearly resembled in general appearance the Plaintiffs' tins as to be calculated to deceive, the Plaintiffs were entitled to an injunction and other consequential relief ; but, on the application of the Defendants, execution was, with the consent of the Plaintiffs, stayed pending an appeal, the Defendants undertaking to keep an account and to give notice of appeal within a week. PAYTON & Co., LD. v. TITUS WARD & Co., LD., p. 424.
9. On appeal, interlocutory injunction refused on the undertaking
of the Defendants to limit their sales to a particular cargo of the alleged infringing goods, and to particular towns, and also not to sell any more of the alleged infringing goods until the trial of the action.-Alleged infringement of Trade Marks.-Passing off of Defendants' goods as Plaintiff's'. Interlocutory injunction.Balance of convenience and inconvenience. The A. Association, an American Company, were the registered owners of two Trade Marks, one consisting of the head of a moose and the other a label embodying the first-mentioned Trade Mark. Salmon in tins bearing the said label had been for many years imported into and sold in the United Kingdom. During the last five years the whole of the tins so imported had been bought by a wholesale firm carrying on business in London. The Association brought an action against C. & Co., of Liverpool, who were importing into England salmon in tins which in general appearance resembled the Plaintiff's' tins, and had a red deer's head in the place where the moose's head appeared on the Plaintiffs' tins. The Plaintiffs moved for an interlocutory injunction, which the Defendants resisted mainly on the ground of delay; but the Defendants also contended that as they were selling only in Liverpool and Manchester there was no danger of their tins being sold for the Plaintiffs'. The tins complained of had arrived in England shortly before the motion was heard, and some of them had been sold.- Held, on comparison of the labels, that infringement of Trade Mark was not established, but that the get-up of the Defendants' tins was such as to deceive an unwary purchaser, and, on the balance of convenience and inconvenience, an interlocutory injunction ought to be granted to restrain PASSING OFF-continued.
the Defendants from selling the unsold portion of the tins which they had imported. The Defendants appealed, and, on their giving certain undertakings without prejudice to any question, the Order for the injunction was discharged. ALASKA PACKERS' ASSOCIA
TION v. CROOKS & Co., p. 503. 10. Injunction granted to restrain Defendant from using his own
name without clearly distinguishing his goods from the Plaintiffs'. - Motion to restrain manufacturers and sellers from infringing and from passing off goods not of the Plaintiffs' manufacture as and for the Plaintit7's' goods. Injunction granted. The Plaintiffs were owners of Trade Mark No. 196,435, Class 37, which consisted of the word “Brooks," and was an old mark in use before August 1875. J. Brookes was a manufacturer of cycle saddles. The Defendants' saddles were stamped with the name " J. Brookes." The N. Co. advertised these saddles as “ Brooks." The Plaintiffs commenced an action against J. Brookes and the N. Co. to restrain infringement of their Trade Mark and passing off of Defendant J. Brookes' saddles as the Plaintiffs' by the use of the word “ Brookes,” and moved for an interlocutory injunction. The N. Co. did not appear.-Held, that an injunction must be granted against the N. Co. to restrain infringement of the Trade Mark, and against the other Defendant to restrain passing off. J. H. BROOKS & Co., LD., v. THE NORFOLK CYCLE Co. and JOHN
BROOKES, p. 523. 11. “Wincarnis ” and “Vincalis.” Action for passing off dismissed
on the ground that there was no probability of deception.Passing off:- Motion for interlocutory injunction.-Names “Win“ carnis ” and “ l'incalis.”—Difference in articles.- Motion dismissed. Appeal dismissed. A Company, which had for many years used the word “Wincarnis” as a name for an alcoholic beverage, being a combination of Liebig's Extract of Meat and a preparation of malt and wine, and which was the registered owner of Trade Marks consisting of the same word registered in Class 43 and other classes, commenced an action to restrain B. & Co. from selling in valid or other wine under the name of “ Vincalis," and moved for an interlocutory injunction. The Defendants alleged that their wine was a pure sherry, principally used for altar purposes, and that there was no probability of confusion. The Plaintiff Company alleged that both articles were wines for the special use of invalids, and that they would be sold by the same class of persons. At the hearing of the motion it was dismissed on the ground that there was no reasonable probability of deception. The Plaintiffs appealed. The appeal was dismissed with costs. COLEMAN & Co., LD. v. JOHN BROWN & Co., p. 619.
PATENTS, &c. ACT, 1883.
Section 62. SEN SEN CO. AND OTHERS v. BRITTEN, p. 137.
PATENTS, &c. ACT, 1883-continued.
Section 72. JOHN BATT & Co. v. DUNNETT AND OTHERS, p. 411.
PATENTS, &C. ACT, 1888.
Section 17. JOHN BATT & CO. l'. DUNNETT AND OTHERS, p. 411.
PRACTICE. See also INJUNCTION.
1. Principles on which a new trial in a jury case is granted, discussed
A. W. GAMAGE, LD. v. H. E. RANDALL, LD., p. 199.
2. Action for passing off ordered to be tried with not more than
three expert trade witnesses on either side.- Action to restrain Defendants from passing off their goods as the Plaintiff's', and from infringing the Plaintiff's' Trade Mark.-Action set down without pleadings. --Limited number of trade witnesses to be called. . J. C. & J. FIELD, LD. v. THE WAGEL SYNDICATE, LD., p. 654.
RECTIFICATION OF THE REGISTER.
1. Application for, refused, where Respondents, who had registered for
the whole of Class 16, only used the mark for one article and had made a slight change in the pattern of that article previous to the motion to rectify. FREEMAN BROS. v. SHARPE BROS. & Co., LD.,
2. Two marks expunged as to the whole of Class 42 on the ground
that there had been no bona fide intention to use them in that class. — Application for registration. - Comptroller's refusal to register by reason of resemblance to registered maks.
- Motion to erpunge such marks.- Jarks registered without a bonâ fide intention to use.—Marks expunged.- Appeal dismissed.
- Appeal to House of Lords dismissed.-Patents, &c. Act, 1883, sections 65, 72, 75, 76, and 90; and Patents, &c. Act, 1888, section 17. On an application for registration of a Trade Mark in Class 42 for oats, the Comptroller refused registration on the ground of the similarity of two marks registered, one in 1882 and one in 1888, for the whole of Class 12. The Applicants moved to expunge these marks, and at the hearing asked alternatively to limit the registration of them to goods other than oats, and moved also that