In the Matter of Garnett's Application for a Patent. The grant was opposed by E. S. Kelly, President of the Rubber Tyre Wheel Company, of Springfield, Ohio, U.S.A., upon the ground that the invention had been previously patented upon an application of prior date, viz. :-Patent No. 24,386 of 1895 (granted to George Croydon Marks as a communication from 5 the said Rubber Tyre Wheel Company). This specification set forth and claimed a solid rubber tyre fitted in a channelled iron on the felly and retained by two wires extending through longitudinal holes in the tyre. A method of uniting the ends of the wires by means of a coupling sleeve was also set forth. At the hearing before the Comptroller General, the Applicant's agents offered 10 to make the following amendments, viz. :--(a) To cancel the words "My "invention also has reference to details of construction and arrangement herein"after fully described and particularly pointed out in the claims." (b) To insert the following disclaimer:-"I am aware that it is not new to secure a "resilient tyre in a channelled wheel rim by means of two retaining wires 15" encircling the rim below the projecting edges of the flanges of the channel iron "or rim and embedded or enclosed within the substance of the resilient tyre or part "thereof, and I am also aware that it is not new to secure a solid rubber tyre within the rim aforesaid by means of two retaining wires lying in recesses one "on each side thereof, or by means of a wire lying within a passage way 20"extending longitudinally through the tyre, and I lay no claim to any of these "nor to the particular form of tyre or method or means of constructing the same "as described in the Specification of Letters Patent 24,386 of 1895, but :-" (c) To cancel the present claims and substitute the following:-"1. In a rubber "tyre for vehicle wheels having one or more holes therein and a wire extend25 ing through each of said holes, the combination therewith of a suitable covering for said wire or wires adapted to fit within said holes. 2. In a "rubber tyre for vehicle wheels having one or more holes therein and a wire "extending through each of said holes, the combination therewith of a suitable "covering of non-elastic or slightly elastic material about said wire or wires 30" and within said holes substantially as shown and described. 3. In a rubber "tyre for vehicle wheels having one or more holes therein and a wire extend"ing through each of said holes, the combination therewith of a suitable covering vulcanized to said wire or wires and adapted to enter said holes "substantially as described." 66 66 66 The Comptroller General in his decision stated that as, in his opinion, the tyre and rim shown in the Applicant's drawings and claimed in combination with the wire covering, as well as the means for connecting the wire ends, were identical with those of the Opponent, the existence of the Opponent's Specification should be clearly recognised by the Applicant, and that he must confine 40 his claims to the one feature of novelty, viz., encasing the retaining wires with a suitable covering, to which alone he appeared to be entitled. 66 He therefore directed that the disclaimer submitted by the Applicant's agents should be amended to read as follows:-"I am aware that it is not new to secure a solid rubber tyre in a channelled wheel rim by means of two retain45 "ing wires lying within two longitudinal holes in the substance of the rubber "tyre, such as is shown in my drawings, as such an arrangement has been "described and claimed in the Specification of Letters Patent granted to George 'Croydon Marks, No. 24,386 of 1895; and I am also aware that it is not new to secure a solid rubber tyre within the rim by means of a single wire lying 50" within a passage way extending longitudinally through the tyre. I therefore "lay no claim to such arrangement per se, but ". He allowed the amended claims. 66 The Applicant appealed. Haddan appeared as agent for the Applicant, and G. Croydon Marks for the 55 Opponent. Sir R. FINLAY, S.G.-I do not think I need trouble you, Mr. Marks, 66 66 In the Matter of Garnett's Application for a Patent. 10 I am of opinion that this appeal must be dismissed. My only doubt is whether the Comptroller did not show too much indulgence to the Applicant, but as there is no cross appeal that question does not arise. The invention described in the body of the Specification is of a very definite nature, and not at all extensive. It is supplying these wires with the coverings, which are useful 5 in various ways as has been very clearly explained to me by the agent for the Applicant. That is the invention described in the body of the Specification, but when I come to the claims, I find them framed, as printed in the original Specification, so as to cover a great many things which are not at all covered by the body of the Specification. Taking the first claim, the Applicant says :— "I declare that what I claim is :-A rubber tire for vehicle wheels, having one or more holes therein, a wire extending through each of the said holes, and adapted to hold said rubber to said wheels and a suitable covering for said wire or wires, also adapted to fit within said holes." Now what the Applicant really ought to have said he had invented was the suitable covering for the wires 15 placed in the rubber tyres in the way described, but instead of confining himself to that point (and nothing would have been easier than to have framed a claim in accordance with the body of the Specification) the first claim is framed in that very loose way. The same thing applies more or less to the other claims. When an Applicant comes forward with a Specification, I think 20 it is his duty to frame the claims in accordance with the substance of the matter described in the Specification, and it would be very unsatisfactory if it were supposed that an Applicant might cast his net as wide as he pleased in the claims, and then when he came to have the Patent sealed, says :-"This is a case for amendment, and I desire it should be amended." Amendments may 25 be made in these cases in the discretion of the Comptroller or Law Officer, but they are to be made somewhat sparingly. I certainly do not see my way to take away anything from, or in any way to modify, the somewhat extensive amendments the Comptroller has been good enough to accord to the Applicant already. I think if the Comptroller has erred, it has been on the side of mercy to the 30 Applicant, and I therefore dismiss the appeal, with three guineas costs. Charles Bayer v. Connell Brothers & Co. 5 IN THE HIGH COURT OF JUSTICE, IRELAND.-CHANCERY DIVISION. Before THE MASTER OF THE ROLLS. February 23rd and 24th, 1899. CHARLES BAYER v. CONNELL BROTHERS & Co. Trade Mark.-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 10 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 15 the said marks, alleging that they were the proper initials of their firm "Connell "Brothers" and "Connell Brothers, Dublin." An action having been brought, the Defendants denied infringement, and by counter claim 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 20 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, 25 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 30 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 at the 35 trial 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 P Charles Bayer v. Connell Brothers & Co. 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 5 Plaintiff was entitled to an injunction. This was an action by Charles Bayer, trading as Charles Bayer & Co., a manufacturer of corsets in London, Portsea, Bath, Bristol, and elsewhere, against the Defendants, Connell Brothers & Co., corset manufacturers, carrying on business in Bride Street, in Dublin. The Plaintiff alleged that he had been for 10 more than twenty years making and selling corsets of his own design, to which he gave the name of "C.B. Corsets," a mark invented by himself, and had ever since continued to manufacture and sell corsets of various types and designs, to all of which the mark "C.B." had been applied, and the said mark had come to be regarded by the trade and the public as an indication that corsets so marked 15 were of his manufacture. His sales during the last seven years amounted to about seven million pair, and he was at the present time manufacturing and selling over a million pair in the year, including 60,000 in Ireland alone, and the mark "C.B." had become a valuable property. On the 29th January 1881 he registered as a Trade Mark the device of a corset and the letters "C.B." 20 within a star, and on 12th June 1886 he registered the letters and word "C.B. Corsets as an old Trade Mark in connection with corsets, and he was still the registered owner of the said Trade Marks. He had expended nearly 35,000l. in advertising these corsets, which were all sold in boxes containing his Trade Marks. In March 1896 the Plaintiff ascertained that the Defendants were 25 manufacturing and selling corsets in boxes marked conspicuously with the letters "C.B." followed by "& Co.," the "& Co." being in much smaller letters than the "C.B." He instructed his solicitors to write to the Defendants complaining of infringement, and requiring them to discontinue the use of the mark and to make satisfactory compensation. In reply the Defendants denied infringe- 30 ment, and claimed that they were perfectly justified in using the marks "C.B. & Co.," and they refused to discontinue using same. The Defendants also made and sold corsets in boxes marked "C.B.D.," and the Plaintiff having complained of this as also an infringement they replied that these letters were also the initials of the title of their firm, "Connell Brothers, Dublin," denied 35 that they constituted any infringement, and refused to discontinue them. In May 1896 the Plaintiff instituted proceedings, claiming an injunction and damages. The Defendants, in addition to denying infringement, alleged that, as regarded the Trade Mark registered on the 29th January 1881, its distinctive characteristic was the device of a corset within a star, and that the letters 40 "C.B.," the use of which was sought to be restrained in the action, formed only a part, and not the essential part, of said Trade Mark, and they alleged that the said mark was not a Trade Mark capable of registration. As regarded the Trade Mark registered on 12th June 1886, the Defendants alleged that it was not an old Trade Mark in use prior to August 13th 1875, and was not 45 capable of being registered as such. The letters "C.B.," as the initials of Defendants' firm, had been used by the Defendants in connection with corsets prior to the year 1886, and they denied that the mark "C.B. Corsets" was a Trade Mark, or that the Plaintiff was properly registered as the proprietor of same. They further alleged that the mark "C.B. & Co." used by them was 50 wholly unlike the alleged Trade Mark of the Plaintiff; that their boxes, in colour and general get-up, were totally dissimilar to those of the Plaintiff, and no person could possibly mistake one for the other and that, as a matter of fact, no person was ever misled or deceived thereby. As regarded the use by : Charles Bayer v. Connell Brothers & Co. them of the letters "C.B.D.," they denied that it was any infringement or imitation of the Plaintiff's Trade Marks; it was simply the initials of the title of their firm, "Connell Brothers, Dublin," and was used by them only in connection with corsets manufactured for sale in the home or Dublin market, and 5 no one was ever misled or deceived by it. On March 2nd 1897, the Defendants applied to the Master of the Rolls by an interlocutory motion for an Order "that the letters 'C.B.' be expunged from the Trade Mark registered by the "Plaintiff on 29th January 1881, and that the entire registration of the alleged "Trade Mark registered on 12th June 1886 should be set aside and expunged, 10" and the Register of Trade Marks rectified accordingly." The Plaintiff, in his reply, denied" that the Irish Court had any jurisdiction to expunge or set aside "the registration of a Trade Mark either wholly or in part." The motion having been argued by Counsel on the question of the jurisdiction of the Irish Court to order a rectification of the Register, the MASTER OF THE ROLLS, on the 15 9th March 1897 delivered judgment, holding that the Court in Ireland had no jurisdiction to order any alteration or rectification of the Register, such being a special jurisdiction conferred by the Act of 1883 upon the High Court of Justice in England. (See 14 R.P.C. 277.) His Lordship accordingly made no rule on the motion. Since the delivery of this judgment no step had been taken by the 20 Defendants in the High Court in England for a rectification or alteration of the Register in respect of the Plaintiff's Trade Marks; and the case now came before the Court on the application of the Plaintiff for an injunction and damages. Ronan, Q.C., Matheson, Q.C., and Blood (instructed by J. and J. Galloway) appeared for the Plaintiff; Serjeant Dodd, Q.C., and Daniel Kehoe (instructed 25 by Michael L. Hearn) appeared for the Defendants. Ronan, Q.C., in stating the case for the Plaintiff, referred to the application made by the Defendants in March 1897, and said his Lordship had allowed the case to stand over to enable the Defendants to apply to the proper Court in England to have the Plaintiff's Trade Marks expunged. Since that time, 30 however, no steps had been taken by the Defendants in the matter, and there had consequently been considerable delay. In the meantime, the Plaintiff having brought an action in Scotland against J. and L. Baird, of Glasgow, who were selling corsets supplied to them by the Defendants contained in boxes labelled "C.B. & Co.," and the case having been fully argued, the Court of Session in 35 Edinburgh delivered judgment, which was affirmed on appeal by the Inner House, holding that the use by the Defendants of the mark "C.B. & Co." was an infringement, and granting an interdict. (See 15 R.P.C. 615.) The Plaintiff had been in business as a corset manufacturer upwards of thirty years, and by good manufacture and judicious advertising had become the largest manufacturer 40 of corsets in the world. Last year his business reached the astounding figure of near three million corsets. He had expended about 35,000l. in advertising. An illustrated book, descriptive of the various styles of corsets which he manufactured, cost over 8007. to print, and each copy of it represented an outlay of seven shillings. The marks "C.B." and "C.B. Corsets" were invariably put 45 both on the corsets themselves and on the boxes containing them, and were regarded by the trade and the public as an indication that they were the Plaintiff's manufacture. The Plaintiff complained, firstly, that the Defendants were selling corsets marked "C.B. & Co."; and although the Defendants alleged that the letters " & Co." were nearly the same size as the "C.B.," the 50 Court would see, looking at the box produced, that such was not the fact, for the "& Co." was printed in such minute characters that at a little distance anyone would take the label as containing "C.B." only. As the Lord President of the Inner House said in his judgment (15 R.P.C. 633), "They are putting on "the market corsets about which I hold it to be proved-and this time by ocular 55" demonstration-that on the boxes in which they are offered for sale the central " and most prominent mark is C.B.' It is quite true that, on the boxes and on |