British Motor Syndicate, Ld. v. Universal Motor Carriage and

Cycle Co., Ld., and Others.

event in each case; the Taxing Master will make the proper apportionment and there will be the usual set off.

As to the first patent his Lordship directed an inquiry as to damages and gave certificates that the Particulars of Breaches were proved and that validity had 5 been in question. He also gave the Defendants certificates that such of the Particulars of Objections to the other three patents, as to which evidence was given, were reasonable and proper.

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IN THE COURT OF APPEAL.

Before THE MASTER OF THE ROLLS and LORDS JUSTICES RIGBY
and VAUGHAN WILLIAMS.

January 21, 1899.

ALLEN v. ABRAHAM PYATT & CO. AND ANOTHER.

Patent.-Action for infringement.-Construction of Specification.-Anticipation.-Action dismissed.-Appeal dismissed.

In 1893, Letters Patent were granted to A. for "An improvement in water "closets or water closet basins," and in 1897 A. commenced an action against P. and others. The Defendants denied infringement, and alleged anticipation (inter alia) by the Specification of F.'s patent of 1886.

Held, at the trial, that the essential part of the Plaintiff's invention was an 20 inclined pipe which the alleged infringement did not possess, and that therefore the Defendants had not infringed. The learned Judge also intimated that A.'s patent was anticipated by F.'s Specification.

The Plaintiff appealed.

Held, by the Court of Appeal, that the inclined pipe was of the essence of the 25 invention, and that therefore the Defendants had not infringed. On the question of anticipation, the Court intimated that in their opinion A.'s patent was not anticipated by F.'s Specification of 1886.

On the 28th of November 1893, Letters Patent (No. 22,781 of 1893) were granted to William Thomas Allen for "An improvement in water closets and 30 water closet basins." The second claim of the Specification was as follows:"In water closets, or water closet basins, pans or pipes with arms or pipe "entrances, constructed, arranged and provided substantially as and for the purpose as described and set forth." The complete Specification, together with the drawings, will be found in the report of the trial before Mr. Justice 35 Bigham.*

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* 15 R.P.C. 723.

Allen v. Abraham Pyatt & Co. and Another.

The Defendants, by their defence, denied infringement, and also stated that the Letters Patent were invalid for various reasons, including anticipation by the Specification of Letters Patent, No. 11,310 of 1886, granted to Fowler.

The action came on for trial before Mr. Justice Bigham on July 6th 1898, when it was held that the Defendants had not infringed. The learned Judge 5 also expressed the opinion that the Plaintiff's Letters Patent had been anticipated by Fowler 11,310 of 1886.

The Plaintiff appealed.

A. J. Walter (instructed by Pepper, Tangye, & Co., agents for H. H. Pepper and Tangye, Birmingham) appeared for the Plaintiff; J. W. Gordon (in- 10 structed by Jeffery, Parr, and Hasell of Birmingham) appeared for the Defendants.

Walter, for the Plaintiff.-This invention relates to water-closets which are flushed with slop and surface water. Previously tipping pans were necessary to collect the water until there was a sufficient quantity to give an efficient 15 flush. The judgment below is against the Plaintiff both on the point of infringement and novelty. On the question of novelty there can be no doubt that the Plaintiff ought to succeed. The infringement is more difficult. [THE MASTER OF THE ROLLS.-There is no doubt as to what is the essence of the invention.] The essence of the invention, I submit, is the flushing of the basin 20 without the use of revolvers by so constructing the inlet passage that the surface water is made to take a head and run directly into the basin in such a manner that efficient flushing is performed. [THE MASTER OF THE ROLLS.-Undoubtedly the essence of the invention is the curved arm. The Defendants have no curved arm, and, looking at Fowler's Specification of 1886, it is plainly 25 a question of the curved arm or nothing.] If your Lordships are against me on the question of infringement, I ask that you should reverse the judgment as regards anticipation. [THE MASTER OF THE ROLLS.-There is no formal order against the patent.] There is a very strong dictum in the judgment of Bigham, J., which would seriously affect the patentee in any subsequent action 30 he might bring. [RIGBY, L.J.-It is not fatal.] It would have great weight in a court of first instance.

LINDLEY, M.R.-I do not think we ought to go into that matter, but I will tell you at once that the subject of the Patent seems to me, in the face of Fowler's, to be B3 or nothing. 35

Walter.-I am not dissenting from that view.

LINDLEY, M.R.-That bowls you out. It is a perfectly hopeless appeal. You make take this grain of comfort; I do not know that it is an anticipation, but if you can uphold your Patent it must be on that ground. The appeal was dismissed with costs.

* B of Fig. 1. See 15 R.P.C, 724.

Sen Sen Company and Others v. Britten.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE STIRLING.-February 17th and 23rd and March 1st, 1899, SEN SEN COMPANY AND OTHERS v. BRITTEN.

Action for passing off goods.-Motion for injunction.-Alleged misrepre5 sentation on Plaintiffs' packets.-Words "Trade Mark" referring to words not registered as a trade mark.-Injunction granted.-Patents, &c. Act, 1888, 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 10" 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 Plaintiff's alleged, with a get-up similar to theirs. The Plaintiffs moved for an inter15 locutory 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 20 had applied at the Patent Office to register the words Sen Sen, but the application had not yet been dealt with.

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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.) On the 30th of January, 1899, the Sen Sen Company and T. B. Dunn 30 Company commenced an action against H. Britten claiming an injunction to restrain the Defendant, his servants and agents, from passing off or enabling or assisting others to pass off any medical preparations not of the Plaintiffs' manufacture or merchandise as or for preparations of the Plaintiffs' manufacture or merchandise, whether by means of the name under which the same were sold 35 or offered for sale, or of the manner in which the same were packed or got up for sale or otherwise howsoever and from selling or offering or exposing or advertising for sale or procuring to be sold any such preparations as aforesaid in any boxes, packets, wrappers, or other enclosures, got up or contrived so as, by colourable imitation of the Plaintiffs' boxes, packets, wrappers, or enclosures 40 or otherwise, to be calculated to represent or lead to the belief that such preparations were of the Plaintiffs' manufacture or merchandise. And for other consequential relief. The Plaintiffs' also gave notice of motion for an interlocutory injunction,

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Sen Sen Company and Others v. Britten.

Affidavits were filed on both sides.

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An affidavit by C. L. Willis alleged :-" (1) I am manager of the partnership "firm carrying on business at 9, Farringdon Avenue, in the City of London, "under the style of the Sen Sen Company,' being one of the above-named "Plaintiffs. (2) The Plaintiff company, T. B. Dunn Company, is a corporation 5 "incorporated under the laws of the State of New York, America, and manu"factures there and sells to Sen Sen Company, and the Plaintiff Sen Sen Company purchases from T. B. Dunn Company, cachous and similar articles, and "sells the same in the United Kingdom. (3) The aforesaid cachous are manu"factured under a secret formula, which manufacture was commenced in 10 "America about the month of March 1894. (4) The Trade Mark 'Sen Sen' was adopted in America from the first manufacture of the cachous there, and "such trade mark is registered in America, and an application for the regis"tration of the same in the United Kingdom is now proceeding." The Deponent further alleged that the business of the Sen Sen Company was 15 established in England in November 1896, when boxes and packages of "Sen Sen" were put on the market, and that the design of the boxes and packages in which the cachous had always been sold were like those exhibited to the affidavit; and that the Defendant was selling cachous under the name "Santé" in boxes and packets similar to the Plaintiffs' boxes and packets, and 20 that the Defendant's name, box, and packet were calculated to deceive. The Defendant, in his affidavit, alleged that the boxes and packets sold by him were dissimilar to the Plaintiffs', and that no one could mistake the names. Evidence of chemists and others dealing in cachous as to the probability of deception was filed by both sides. The price of the Defendant's packages was 2d., that of 25 the Plaintiffs' 3d. A description of the boxes and packets will be found in the judgment.

Upjohn, Q.C., and L. B. Sebastian (instructed by Keddey, Fletcher, and Fry) appeared for the Plaintiffs; Gatey (instructed by Church, Rendle, Todd and Co., agents for W. S. Restall, of Birmingham) appeared for the Defendant. 30 Upjohn, Q.C., opened the Plaintiffs' case, drawing attention to the boxes and packets, and referring to the facts. [The evidence was then read.] After commenting on the evidence filed on behalf of the Defendant, he submitted that the Plaintiffs were entitled to an injunction.

Gatey for the Defendant.-The Defendant is only an agent. I subinit that as 35 to the names "Santé " and "Sen Sen" there is no similarity; also our boxes and packets are both different from the Plaintiffs'. Then there is a misrepresentation on the Plaintiffs' packets; there are the words "Sen Sen, Trade Mark," whereas "Sen Sen " is not a trade mark. This misrepresentation is serious, anddisentitles the Plaintiffs to relief, even if they would be otherwise entitled to it. 40 Upjohn, Q.C. was only called on to reply on the point as to misrepresentation.This point has taken us by surprise. It is not mentioned in the affidavits, and Mr. Willis, the representative of the Plaintiffs in England, has not had the opportunity of giving any explanation on oath. I have no doubt that the explanation of the presence of the words "Trade Mark" is that it arises from the 45 fact of an application having been made at the Patent Office for registration of the words eighteen months ago, but it has stood over at the instance of the Office. There is a trade mark in the United States, whence these goods are imported. The words are not "Registered Trade Mark," and do not imply that the trade mark is registered. It is only where the misrepresentation is 50 fraudulent that the Court refuses relief. ["Sebastian on Trade Marks," p. 232, and Melachrino and Co. v. The Melachrino Egyptian Cigarette Company (4 R.P.C. 215) were referred to.] [STIRLING, J., referred to p. 239.] Ford v. Foster, L.R. 7 Ch. 611, as to the use of the word "patentee," is in my favour. STIRLING, J.-There the Plaintiff had not a false statement in the thing which 55 he was seeking to protect. Here, on the very thing you are seeking to protect you have this statement. That is my difficulty.

Sen Sen Company and Others v. Britten.

The further hearing of the motion was then adjourned at the request of the Plaintiffs' counsel, and was resumed on February 22nd.

Upjohn, Q.C.-I say that the statement in this case is not untrue. We have, in fact, a trade mark in England, although not registered. The Trade Mark 5 Acts recognise that there may be a trade mark which is not registered. [S. 62 of the Patents, &c. Act, 1883, and Form F in the 2nd Schedule to the Trade Mark Rules, 1890, were referred to.] A trade mark may be acquired either by use or by the statutory method. Sections 66, 71 and 78 of the Act of 1883 all assume that you may have a trade mark independently of the Act. Section 64 10 and also section 10 of the Act of 1888 shew that a statutory trade mark is quite different from a common law trade mark. Section 76 of the Act of 1883 shows that registration is only evidence of a right. Registration is only required for the purpose of enabling a person to sue (see section 77). As to old marks used before 1875, a certificate of refusal to register is sufficient. Under the Act of 15 1875 the disability to sue was confined to an injunction; it did not extend to damages (see sections 1, 3 and 5 of that Act.) The Register is only one of registered proprietors (see sections 78, 87 and 92 of the Act of 1883). [Gatey referred to section 65.] That has effect before registration. The terms of section 105 shew that it is not an offence to call an unregistered mark a trade mark; the offence is 20 to say that it is registered when it is not. In Mouson v. Boehm, L.R. 26 Ch.D. 398, the proprietorship of a trade mark was held to be a good defence to the action, although the mark was not registered. Also in Re Hudson's Trade Marks, 3 R.P.C. 155, L.R. 32 Ch.D. 311, it was held by the Court of Appeal that user was not necessary previously to registration; the judgments support my contention, as 25 also does the judgment of Chitty, J., in Barlow and Jones v. Johnson, 7 R.P.C. 385, at p. 404. Hall v. Barrows, 4 De G. and S. 150 was also mentioned. The cases show that the right of property in marks is not taken away by the Acts. It follows from the authorities that if we obtain registration we can sue in respect of acts done before registration. I also submit that as the representation 30 only applies to the words "Sen Sen," and not to the whole get-up: it is purely collateral, and the doctrine of Ford v. Foster applies.

Gatey for the Defendant.-It has been held in many cases that the use of the word "patent," referring to an article not patented, although the word be only a part of the description, is sufficient to vitiate the Plaintiff's claim. 35 [Leather Cloth Company v. American Leather Cloth Company, (11 H.L.C. 523); Flavel v. Harrison (10 Hare, 467); Morgan v. McAdam, 36 L.J. Ch. 228, and Cheavin v. Walker, L.R. 5 Ch.D. 850 were mentioned.] The precise point here arose in Lewis v. Goodbody, 67 L.T. 194. There it was held by Kekewich, J., that the use of the words "trade mark 99 was a representation that the device 40 was a registered trade mark.

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Upjohn, Q.C.-This point was not really the important point in Lewis v. Goodbody; it was the hearing of a motion, and the cases of Mouson v. Boehm and Hudson's Trade Marks were not cited then.

Judgment was reserved, and delivered on March 1st, 1899.

STIRLING, J.-This is an action in which the Plaintiffs seek to restrain the Defendant from passing off certain goods as and for the goods of the Plaintiffs by means of the get-up of the goods. The goods in question consist of a medical preparation which is said to be useful for the voice. The Plaintiffs are an American Company who have since the year 1896 sent large quantities of these 50 goods into England and sold them. The goods are made up in small packages such as I have in my hand and they are made up in a certain distinctive way. They bear on them at the top and at the bottom of the front portion of the package the word "Sen Sen " with "Trade Mark" under it. Then diagonally across the package there is a ribbon made up in a bow. The various packages 55 are made up in this way in different colours. In addition to that the packages are sold in boxes, of which I have one before me, and a striking feature in that box is that there is on each of the two opposite sides a transparent piece behind