A. W. Gamage, Ld. v. H. E. Randall, Ld.

outweighs it. I want to call attention now to two witnesses who were called by Gamages. I cannot shut my eyes to the fact that they may have had a very serious effect upon what the case was. Gamages were saying that the word "Shorland" meant Gamage-"their shoe made by them." I will just call attention to the two witnesses; first, there is a witness named Allen, who was 5 called by Gamage. Allen is a professional cyclist, and a man who is supposed to know more about it than anybody else. He agrees with the last witness. He says, "If sold without stamp" (that is the stamp which Gamages put on all their shoes as I have already mentioned), "would not think they were "Gamages'." Well that is a good piece of evidence, I should say, on behalf of 10 Randalls, and a very bad piece of evidence on behalf of Gamages. The next witness, Walter, says in answer to the Lord Chief Justice, "If I wanted Gamages' shoe, I should go to Gamage, and not to a retailer," and another witness who was called on behalf of Gamages, Mr. Arthur, said, "without the "mark I would not for a moment suppose it was Mr. Gamage's." Here are 15 three of Gamages' own witnesses-two especially-saying that if the shoe was sold in the way in which Randalls were selling this shoe, namely under the name of "Shorland," but without the brand or mark on the sole, they would not suppose for a moment it was Gamages'.

66

Well, it seems to me it is impossible for this Court, adopting any rule which 20 is in vogue for granting new trials, to say that this case comes within any rule as being against the weight of evidence. This jury had to decide between these two conflicting cases; they had an ample and clear direction on the subject; the right question was left to them, and in my opinion, the application fails.

This

25

COLLINS, L.J.-I am of the same opinion. This case relates to a trade name, and for some reason, I do not quite know why, cases of that class are always considered as the proper subject matter for all sorts of refined and subtle arguments, chiefly relating to facts, addressed to the Court; but in the last resort this case is the most simple common-place, common law action, resting 30 upon one single simple issue of fact; and I cannot help thinking that it is because a large part of the litigation in this subject matter is conducted before Judges, who are themselves judges of fact as well as of law; and who, in giving their judgments, properly balance the facts and pronounce opinions on the facts, and do not absolutely distinguish them from the propositions of law, 35 it is for that reason that we have cited to us numerous opinions of learned Judges which, when analysed, are opinions upon fact, and are statements of the grounds which have led them to adopt a particular conclusion of fact. case being tried in the Common Law Division is disencumbered from considerations of that kind. We have to do two things. We have to see whether the 40 proper issue has been left to the jury, and we have to see whether there has been a proper direction upon that issue, and when we have got that, then the only remaining question is whether there is evidence reasonably sufficient to support the finding. Well, here we have got the issue of fact properly eliminated, and put in terms absolutely unexceptionable, as it appears to me, by the learned 45 Judge we have got an adequate direction upon that, and we fall back on the question whether or not the evidence is reasonably capable of supporting the finding. Now, at the bottom of this case lies, as I have said, the simple issue of fact, which has been properly asserted as a fact in the pleadings for the Plaintiffs. It is this. The Plaintiffs say, "The word 'Shorland' has ever since 50 "the time when it was first used in connection with the said cycling shoe "denoted and been universally understood by the trade and the public both at "home and abroad to denote cycling shoes of the pattern above described "manufactured by the Plaintiff Company or their said predecessor in business "and no other cycling shoes, and both the trade and individuals asking for 55 "Shorland' cycling shoes expect and intend to be supplied with cycling shoes "manufactured and sold by the Plaintiff Company or their said predecessor in

A. W. Gamage, Ld. v. H. E. Randall, Ld.

"business and no others." Well, there is a mistake in that assertion of fact because it is not pretended that these shoes are manufactured by the Plaintiff Company, but they are said to be sold by them and exclusively sold by them.

Now that is the foundation of the Plaintiffs' case, and that is a simple issue of 5 fact. It is no use affirming before us that the Plaintiffs have spent a very large sum of money in advertising. They may have thrown their bread on the waters and it may not have returned to them yet; hereafter possibly it may. Advertising is simply a method by which the Plaintiffs hope that they will succeed in identifying their name with the name of the shoe in such a way 10 that when a person asks for a "Shorland" shoe he expects and intends to get a shoe coming from Gamages' shop. That is the purpose of the advertising. It is not ad rem at all unless it has succeeded in producing that effect. Some people may read an advertisement-the uninstructed amateurs-and see the name of the shoe and take very little notice whatever of the name of the seller 15 or maker at the top, and may ask for the shoe without knowing that any particular maker has or claims a monopoly in the right to sell it. If the advertisement only produces that effect on the mind of the person who reads it, it does not take Gamages a step towards the result which they wish to reach, namely, the identification of their name with the shoe. It is only a stepping20 stone towards the result which they may or may not accomplish. That result must be proved by the evidence of persons conversant with and dealing in matters of this character, the persons who buy and the persons who sell this class of shoe. Well, we have had an argument from Mr. Moulton mainly based upon passages taken from judgments on this matter. We have had the illustra25 tion of the "Eureka" shirt and so on. It is not impossible that a Judge may find in the result that a particular name, such as "Eureka," is identified with a particular maker, although there may be instances of people referring to it by the name "Eureka" without identifying it with the man who claims to have made it or sold it. He has cited a passage in which a learned Judge points that 30 out, but that has no bearing on the discussion now before us. It is simply the question whether that issue, which I have read from the Plaintiffs' own pleadings, ought to have been on the evidence supported and which could not reasonably on the evidence have been decided as it was. When we get to the evidence we find a number of witnesses who unquestionably had the very best 35 means of knowing what the meaning of this word "Shorland" was in the trade, and among persons who bought and sold it, and who have given a large body of evidence, and might have probably given quite as much more if the jury had allowed it, to the effect that on asking for the "Shorland shoe the public are not to be taken to demand and expect one of Gamages' shoes. The 40 Plaintiffs, on the other hand, cailed a larger number of witnesses, who say that the public ought to have that expectation. The jury have found that they ought not to have it, and have not; and I have no doubt that one factor in the grounds of the jury's opinion was, that it was obvious, as was pointed out by the learned Lord Chief Justice in the summing up, that the Plaintiffs based their case on 45 an utterly hopeless foundation. It was said and believed, aud no doubt they would like to establish, that they have a monopoly in the word "Shorland.” They had nothing of the kind. They could only succeed by having the issue, which was properly defined by the Lord Chief Justice, found in their favour. In my judgment there was abundant evidence to support the finding of the 50 jury. I am not at all sure whether I should not have felt bound to have arrived at the same conclusion of fact myself if I had heard the evidence.

ROMER, L.J.-I agree. The jury were entitled to take, and I see no reasonable doubt that they did take into consideration all the important circumstances of the case. To some of those circumstances I called the attention of Mr. 55 Moulton in the course of his argument, and I will not now repeat them. The case occupied a considerable time in its trial, and the jury had an ample opportunity of understanding the points in dispute, which, after all, as pointed out T

A. W. Gamage, Ld. v. H. E. Randall, Ld.

by the Lords Justices, were not difficult or complex, and of thoroughly appreciating the evidence bearing on those points. The question before us is not to what conclusion we might have come had we heard the case and seen and heard the witnesses, and had to decide the questions of fact which arose. The question is whether the finding of the jury should be set aside and a new trial be 5 ordered, or judgment be entered for the Plaintiffs. I cannot see my way to do either consistently with the principles upon which this Court acts, for these short reasons. In the first place, the jury were rightly directed by the Lord Chief Justice. I think the points which had to be decided by the jury were fairly and properly put before them, and I have no reason to believe that 10 they did not fully and duly appreciate them. Lastly, it appears to me impossible to say that the jury could not reasonably on the whole of the evidence have come to the conclusion that they did.

IN THE PRIVY COUNCIL

Present: LORD HOBHOUSE, LORD MACNAGHTON, LORD DAVEY, and SIR 15 WILLIAM COUCH.

January 27th and February 25th, 1899.

IN THE MATTER OF THORNYCROFT'S PATENT.

Patent.-Petition for prolongation.-Invention not sufficiently meritorious. -Failure to prove inadequate remuneration.

The beneficial owners of a patent for improvements in steam generators applied for a prolongation. The invention was admittedly useful.

The

20

accounts showed a profit on the foreign patents and also on boilers fitted to boats not constructed by the Petitioners, but a loss on boilers fitted to boats constructed by the Petitioners. In the case of these latter, the profit or loss had been arrived 25 at by taking the profit or loss on the boats, including the boilers, and dividing it between the boilers and the boat exclusive of the boilers in proportion to their relative cost.

Held, that the invention, though useful, was not especially meritorious, and that the Petitioners had failed to prove that sufficient remuneration had not or 30 could not have been made, and that, therefore, the Judicial Committee would advise Her Majesty that the prayer of the petition should be refused.

On the 31st day of January 1885, Letters Patent (No. 1404 of 1885) were granted to John Isaac Thornycroft for an invention for "Improvements in "steam generators." Patents were also taken out in Spain, France, 35 Russia, Austria, the United States, Italy, New Zealand, New South Wales, Germany, Finland, Canada, Denmark, and Belgium. The legal interest in the English Letters Patent and also in the foreign Patents, with the exception of the French Patents, was vested in John Isaac Thornycroft. The legal

5

In the Matter of Thornycroft's Patent.

interest in the French patent was vested in one David Tweddle. The beneficial interest in all the Patents was vested in the Petitioners, John Isaac Thornycroft and John Donaldson, who carried on business at Chiswick as partners under the style of John I. Thornycroft & Co.

The accounts presented by the Petitioners showed a loss on the British patent of £6,204 118. and a profit on the foreign patents of £5,826 5s. 4d., resulting in a total loss of £378 5s. 8d. To this it was proposed to add the sum of £33,255 158. 9d. which represented the loss on the hull and engines of a vessel called the "Speedy," which was a special contract undertaken for the purpose of 10 proving the suitability of boilers made under the patent for gun-boats, cruisers, and other large vessels. The accounts also showed that, whereas a loss of £6,494 7s. had resulted on the construction of boilers fitted to vessels built by the firm, the Petitioners had made a profit of £3,178 10s. on boilers constructed for boats not built by the firm.

15

The petition now came on for hearing. Moulton, Q.C., and Graham (instructed by Tatham and Lousada) appeared for the Petitioners; Sir Richard Webster, A.G., and Sutton appeared for the Crown.

Moulton, Q.C., explained the invention, and then called witnesses, including John Isaac Thornycroft, one of the Petitioners, Professor Capper, who spoke to 20 the novelty and utility of the invention and to the prejudice that had existed against water tube boilers, and David Tweddle, who explained the accounts.

Moulton, Q.C.-This boiler was the first successful water tube boiler. Many attempts had previously been made, but none were successful. After 14 years it has not been surpassed for certain purposes. Some others are lighter, but for acom25 bination of lightness and economy it is still the best. It has shown other people the road to success, but being the first it had to contend with all the prejudice against water tube boilers. Subsequent types have reaped the benefit of this. Owing to this prejudice, orders had to be accepted at an unremunerative price. Under the foreign patents many licenses have been granted, and there is a profit 30 from these foreign patents of £5,826 5s. 4d. On the other hand, there is a loss on the British patent of £6,204 11s. This sum does not include the loss on the "Speedy" apart from the boilers. This vessel was built as an advertisement, and it is an open question whether the loss on the vessel, apart from the boilers, amounting to £33,255 15s. 9d., can fairly be charged against the patent. In the 35 accounts presented, it is put separately so as to avoid confusion. Apart, however, from this sum there is a loss on the British patent, which is greater than the profit on the foreign patents. There is a profit of £3,178 10s. on boilers supplied for boats built by other shipbuilders. [Lord DAVEY.-If it is possible to estimate the price of boilers to be fitted to boats built by other firms so as to 40 show a profit, is it not also possible to do so with boilers fitted to ships built by the firm itself?] Most of the boilers were made for the firm's own ships; of those made for other firms, some show a loss, just as some of those built for their own ships show a profit. It is urged that the method of arriving at the loss on the boilers is not correct because, in the Admiralty tenders, the price of 45 the boilers is estimated. But where the total price quoted is wrong, and there is a loss on the whole contract, is it fair to say that the whole loss is on the ship apart from the boilers? I ask your Lordships to say that this is a fair case for an

extension.

Sir Richard Webster, A.G.-The accounts here are set out quite honestly and 50 straightforwardly. The invention is certainly one of considerable merit, and if your Lordships think that the invention is sufficiently meritorious to bear the total loss on the "Speedy" there has been undoubtedly a great loss. [Lord HOBHOUSE.-Do you admit that the "Speedy" was an experimental case?] Yes. The question is whether the boilers can fairly be saddled with the total 55 loss on the vessel. According to the Admiralty estimate, the loss on the "Speedy" boilers was £688. The evidence as to merit would have been more satisfactory had an Admiralty expert been called. It seems strange that the

In the Matter of Thornycroft's Patent.

boilers made for ships built by other firms show a profit, while those made for their own ships show a loss. This seems to show that it is somewhat hard on the boilers to have to bear the whole of this proportionate loss. It also seems to point to the fact that the method of arriving at the profit or loss on the boilers is not satisfactory.

5

Lord DAVEY.-This is an application for an extension of the term of certain Letters Patent, dated the 31st January 1885, and granted to John Isaac Thornycroft, for "Improvements in steam generators." The invention has reference to what are known as water tube boilers, and consists of the combination of various parts, all or most of which were admittedly not new at the date 10 of the Letters Patent. It is no doubt a useful invention, particularly in marine engines, and has been applied with success both in this country and abroad. It has been used in vessels of the Royal Navy in which high speed is required with small weight of boilers and of fuel to be carried in the vessel. But the evidence has not satisfied their Lordships that the invention is one of such 15 striking or unusual merit as would justify them in recommending an extension of the term of the patent. The only evidence on this point, in addition to that of the Patentee himself, is that of Professor Capper, who speaks of the boiler as the best of its kind for certain purposes. He is no doubt a gentleman of competent skill and knowledge, but his evidence on a point of this kind has not the 20 same authority as that of a naval architect or constructor might have had.

The evidence as to the remuneration of the Patentee is also unsatisfactory. In the opinion of their Lordships, the Petitioners fail to give any sufficient explanation why they have not or might not have received adequate remuneration for the invention. The Petitioners have received a net profit of £5,826 25 5s. 4d. on their foreign patents. They have also made a profit of £3,178 10s. during the years from 1888 to 1895 inclusive on boilers made by them in this country for boats not built by them, being at the rate of about 16 per cent. on the expenditure. But they state that they have lost £6494 78. in fitting the patented boilers on boats built by themselves under contract. They have built 30 between 30 and 40 boats fitted with the patented boilers from the year 1885 to the year 1896 at an expense of £480,686. In particular they state that in the year 1891 they lost a sum of £38,226 8s. 9d. on a vessel called the "Speedy," which they built for the British Admiralty, and they attribute £4,970 13s. of the loss to the boilers. In this and other cases the Petitioners have taken the percentage 35 of loss on the boat including the boilers, and divided it pro rata between the actual cost of the boilers and that of the boat exclusive of the boilers. It appears, however, on cross-examination, that the tenders for the "Speedy," as well as for some other vessels, contained separate prices for the boilers, and for the boat, and the difference between the contract price and the actual cost of the 40 boilers of the "Speedy" was £688 only. Their Lordships think that the proportion of loss attributed to the boilers is ascertained on a fallacious principle, but in the circumstances of this case they do not find it necessary to dwell on these details. No explanation whatever has been offered why this large loss-nearly 10 per cent. on the amount expended-was incurred in building 45 boats fitted with the patent boilers for themselves, while a handsome profit was made on supplying the boilers for boats built by other builders. In the absence of any explanation, the facts proved are consistent with the existence of some error of judgment, miscalculation, or other defect in the Petitioners' mode of carrying on their business of boat building, and their Lordships cannot accept 50 the evidence as proof that no profit was or could have been made in working the patented invention.

They will, therefore, humbly advise Her Majesty that the prayer of the petition be refused.