The Welsbach Incandescent Gas Light Company, Ld. v. Dowle and The London and Suburban Maintenance Company.

the burner complete-the Sunlight burner and the Sunlight mantle-and wrapped them up, and was paid the 3s., and that she made out the invoice for 3s. She denies that Mr. Lacey waited in the shop. She says that when she had packed it up he asked her what mantle was supplied with the burner, and 5 that she said it was a Sunlight mantle, and that he said, "Oh, that is red; I "want a white one." "I told him if he had a Welsbach mantle it was not to "be used with the burner I had supplied. He said, 'I want a Welsbach "mantle; the Welsbach mantle is for another burner.' Then I altered the "bill to 2s. 3d, to allow for the Sunlight mantle, and then supplied him with 10" the Welsbach mantle, making the bill 3s. 6d." If her evidence is correct it is clear there was no breach of the condition, because she distinctly informed him that the Welsbach mantle was not to be used except with a Welsbach burner. He said he had a Welsbach burner already, and wanted to use the Welsbach mantle with that Welsbach burner. Therefore, if her statement be true, there 15 was no breach of the condition. Of course, in this conflict of evidence it is somewhat difficult to decide where the true facts lie. On the one hand, it may be said Lacey was an inquiry agent, inclined from the very circumstances of his employment-no doubt unconsciously-to put upon facts a complexion that will best suit the interests of his employers. On the other 20 hand, Miss O'Hare, again-unconsciously no doubt-perhaps inclined to overlook any irregularity of conduct on her part that might get her employers into difficulty.

It seems to me that I must be guided by the probabilities of the case, and I am guided very much by the invoice or receipt. It seems to me it is improbable 25 that Miss O'Hare could have packed up the parcel without putting in a mantle, and that it is improbable that she should have made out the bill, and been paid for it, if the mantle was not put in the parcel. It seems to me more probable that her story is the correct one-that in the first instance she made up the parcel with the Sunlight burner and the Sunlight mantle, but that then she 30 was asked for a white mantle, and she substituted a white mantle, and altered the bill for the substituted white mantle. And if that story is true it lends probability to her statement that, when she substituted a white for a Sunlight mantle, she made the statement that it could not be used except with a Welsbach burner.

35 Therefore I do not think, having regard to the evidence given, there is sufficient evidence to justify me in coming to the conclusion that there was an infringement. The evidence I have referred to is the only evidence of acts of infringement prior to the issue of the writ, and I say it is not, in my opinion, sufficient to justify me in coming to the conclusion that the Plaintiffs' mantles 40 were sold by the Defendants or their servants in breach of the condition.

It is contended that I should attach weight to evidence offered, and to which I have referred, of acts done after the issue of the writ. I was trying the case without a jury, and I thought it better to receive the evidence; but I am of opinion that evidence of acts done after the issue of the writ is not admissible, 45 and that I ought not to regard the evidence. I am guided in that opinion by a decision of Lord Justice Romer in the case of The Shoe Machinery Company, Ld. v. Cutlan, reported in Vol. XII. of the Patent Office Reports. The passage bearing on this point begins at page 357. It is not necessary for me to read the whole of the passage in Lord Justice Romer's judgment that bears on 50 this point; it is enough for me to say that he considers the matter with great care, and reviews the cases that bear on the matter prior to that time, particularly the case of Dowling v. Billington, which was a case relied on by the Plaintiffs, and he came to the conclusion that, where the action was for infringement, evidence ought not to be admitted to prove acts done after the 55 issue of the writ. There are two classes of cases he draws a distinction between. There are cases where the action is based on the fact, not that the Defendant has infringed, but that he threatens or intends to infringe; in those cases the Plaintiff may claim an injunction to prevent the threatened infringement,

The Welsbach Incandescent Gas Light Company, Ld. v. Dowle and The London and Suburban Maintenance Company.

and in such cases, in order to prove that the Defendant has an intention of infringing, you may give evidence of acts done after the issue of the writ to shew that he has carried out his intention, or is about to carry out the intention that existed prior to the writ. But Lord Justice Romer came to the conclusion that, where an action is, as this is, for infringement, evidence 5 cannot be given of acts done after the writ was issued.

I think that I am bound by that decision, whether I agree with it or not, and that it is an authority I cannot disregard. I was inclined to think at the time I admitted the evidence that, if acts of infringement of the condition were proved before action, then in order to shew a course of continual unlawful dealing 10 evidence might be given of acts done after action, in order to negative any presumption that might otherwise arise that the acts before action were unintentional or accidental infringement. I think Lord Justice Romer's decision prevents my adopting that view.

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But if the evidence was to be considered as admissible, I do not think I could 15 give much weight to it. There is the evidence of Mr. Williams. He is an accountant in the Plaintiff Company's service, and he states that on the 28th of May 1898, after the issue of the writ, he went to the Alexandra Palace, and the Defendants had a stall there. "I saw two kinds of incandescent burners burn"ing. I asked the price. There was a difference in the price. I asked the 20 reason, and I was told it was owing to the mantle; that the white one would "be more expensive. I asked if I could have a white mantle with a cheaper "burner. The man who served me "-it was in evidence that the person who served him was the Defendant Dowle-"said he was not supposed to "sell the cheaper burner with the white mantle. I asked the reason. He 25 "said it was an infringement of the Patent; but he did not suppose the Com66 pany troubled themselves about these things in private houses.' Even if that stood alone it would be very difficult to say that at the time the mantle was sold he did not inform the purchaser that he could not supply the Plaintiff Company's mantle unless it was to be used with the Plaintiff Company's 30 burner; to do so would be an infringement. But when Mr. Dowle was called he said distinctly, "I have always given express instructions that no "sale shall be made contrary to the conditions," and he denies that at any time he was a party to any sale contrary to the conditions. I do not think it would be satisfactory to act on such evidence, even if that evidence were to 35 be received. It depends entirely upon the conversation, and the exact words that were used. It is difficult to say, it seems to me, even on Mr. Williams' account, that the articles were sold without notice that it was an infringement of the Patent to use the Plaintiff Company's mantle otherwise than in connection with the Plaintiff Company's burner. But it would be impossible 40 and unsafe to attach so much importance to such evidence of mere conversations as to treat that as affording evidence of the infringement of the condition.

The only other matter I need consider is the matter mentioned this morning with reference to the evidence of Mr. Barnett. I cannot attach importance to that for the reason that no notice whatever was given of that matter. The 45 Defendants had no opportunity of giving any explanation; and I do not think I should attach importance to evidence of that character, after the issue of the writ, where no notice has been given to enable the Defendants to meet the case, and give such explanation as might possibly be given if they had notice of the charge that would be made against them. 50

There is one matter I should mention to which some importance was attached by Mr. Terrell yesterday. One of the invoices produced seems to have been issued by the Defendants, and contains these items:-"2 dozen mantles, 5s. ; "1 dozen common burners, 5s. 6d.; 1 dozen Welsbach mantles, 10s." It was said that in the same invoice were the mantles that were said to be 55 Sunlight mantles, there were common burners, and there were Welsbach mantles sold without a Welsbach burner. No evidence has been given with reference to the circumstances under which those goods were sold; but, as I

The Welsbach Incandescent Gas Light Company, Ld. v. Dowle and The London and Suburban Maintenance Company.

have said, it is no breach of the condition to sell mantles for the purposes of renewals, or for the purpose of their being used with Welsbach burners. It is quite possible that common burners and Welsbach mantles may be sold at the same time, and yet that Sunlight mantles may be sold and used for Sunlight 5 burners, and that Welsbach mantles may be sold and used for Welsbach burners. The mere production of a document of this kind does not, to my mind, establish that there has been an infringement of the condition.

Coming to a conclusion as best I can upon somewhat conflicting testimony, I must dismiss the action. The Plaintiff Company have not made 10 out their case. If I regard the evidence before the issue of the writ it is clearly insufficient, and if I supplement that by the evidence after the issue of the writ I do not think it is sufficient to establish the case. Therefore I dismiss the action, and—I do not know why the ordinary course should not be followed-I shall dismiss it with costs.

15

IN THE HOUSE OF LORDS.

Before THE LORD CHANCELLOR, and LORDS WATSON, SHAND, and DAVEY.

March 2nd and 3rd, and April 25th and 27th, 1899.

THE CELLULAR CLOTHING COMPANY v. MAXTON AND MURRAY.

Trade name.-Action to restrain the use of trade name.-Action to restrain 20 the passing off and use of " Cellular" as applied to cloth or clothing.-Descriptive name.-Contemporary subsistence of primary and secondary meaning in different parts of United Kingdom.—Probability of deception.-Absence of deceit or fraud.—Interdict refused.-Appeals dismissed.

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A trader in 1886 made a new weave of fabric generically known under the 25 name "Gauze," and selected for this weave the name Cellular," and in 1888 assigned whatever rights he had in the fabric and name to the Pursuers' Company, which was formed for the purpose of selling it and goods made from it, and incorporated under the name "The Cellular Clothing Company." They advertised extensively all over the world, and in their advertisements 30 prominence was given to the word "Cellular." Various rival traders, after using the name "Cellular," gave undertakings or submitted to injunctions restraining them from continuing to use it, or selected other names to describe similar textile fabrics made or sold by them. The bulk of the trade in the particular fabric was in England and the Colonies, the Scotch trade being very 35 small. In the beginning of 1897, M. & M., a firm of Scotch warehousemen, who

The Cellular Clothing Company v. Maxton and Murray.

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did not manufacture, issued in a book, the leaves of which folded up, ranges of goods supplied to them by various makers, and upon one series of patterns they stamped the word "Cellular" in block letters, the only sign of the goods being their's or supplied by them appearing in the initials " M. & M." stamped on the outside of the book. Certain persons to whom the book was supplied ordered 5 "Cellular" goods but they did not expect to get the goods of any particular maker.

The Pursuers, the C.C.C., brought action to interdict the Defenders M. & M. from using the word "Cellular" so as to denote cloth or clothing other than the cloth or clothing of the Pursuers, and from selling cloth or clothing as 10 "Cellular" cloth or clothing so as to lead purchasers to believe that the cloth or clothing was of the Pursuers' manufacture. Pursuers averred that "Cellular" in the market meant exclusively their goods. The Defenders averred that the goods described by them as "Cellular" were in point of fact "Cellular," and that as it was an appropriate descriptive, it had not been 15 and could not be monopolized by any trader. A large body of testimony was adduced. The English traders examined were unanimous that "Cellular" meant the Pursuers; but the opinion of the Scotch traders was divided. There was no evidence from the public as apart from the trade. The evidence as to the exactness of the term as a description of the cloth was conflicting, but all the 20 witnesses agreed that while the term had not been used in connection with cloth before the Pursuers had applied it as a name to their cloth, and before then it would not have presented any picture to the mind, yet when the name and the cloth were seen together, the name was recognised as appropriate and suggestive, if not an exact description of the fabric. Interdict was refused by the Lord 25 Ordinary and by the Inner House.

The Pursuers appealed to the House of Lords.

Held, that the appeal failed, and it was dismissed with costs.

Per the LORD CHANCELLOR.-It was for the Appellants to establish, if they could, that an ordinary word in the English language properly applicable to 30 the subject matter of the sale was one which had so acquired a technical and secondary meaning that it could be excluded from the use of everybody else the Pursuers have failed in establishing this initial fact. Reddaway v. Banham, 13 R.P.C. 218 considered.

In November 1886, Lewis Haslam, then and now a partner of John Haslam & 35 Co., Ld., Bolton and Manchester, and since its incorporation managing director of the Pursuers' Company, designed a fabric so woven as to permit, while retaining its warmth, free expiration of the skin. Such fabric is crossed by a fine fluff which holds the air in its meshes, allowing the air passing off from the body at the natural heat of the body to be temporarily held as in the 40 fur of quadrupeds. He selected for the fabric the name "Cellular," which had never theretofore been applied to clothing or any textile fabric. On the 3rd of December 1886, there were registered under the Designs Acts, in the name of John Haslam & Co., Ld., three designs-No. 62,742, 62,743, 62,744, in Class 13, the statement of the nature of the designs being "Fancy Woven Net," which 45 shows a fabric all woven as in said "Cellular cloth. In the present case no question arose as to infringement of any patent right or of any of those designs. The said John Haslam & Co. shortly after such registration manufactured and sold cloth so woven, the first of such sales having been made on the 27th of January 1887. It was first sold as "Kershaw's Cellular Cloth," the cloth at 50 that time being manufactured at John Kershaw & Co.'s mills, Bolton, which was one of the places of business of the said John Haslam & Co., Ld. The

The Cellular Clothing Company v. Marton and Murray.

said fabric was exhibited at the Manchester Exhibition in May 1887, and at the Bolton Exhibition in the autumn of 1887, and at other exhibitions. On the 25th of July 1888, Haslam assigned to the Pursuers (inter alia) the said three designs above referred to which had previously been assigned to him by the 5 said John Haslam & Co., Ld.

The Pursuers' Company was incorporated under the Companies Acts on the 23rd of March 1888. The objects for which the Company was established, as set forth in the Memorandum and Articles of Association (inter alia), were to manufacture, buy, sell, and deal in Kershaw's "Cellular" cloth, or any other 10 woven or other cloth, or any textile fabric whatsoever of any material, and to manufacture, buy, sell, and deal in any garments or other articles made of any such cloth or fabric.

Prior to 1896 the Pursuers discovered several instances of other traders selling cloth or clothing under the name or description "Cellular," but in all 15 cases such traders, on being remonstrated with, undertook to desist from, or consented to an injunction restraining them from, selling goods as or under the name "Cellular," or from selling goods as "Cellular "except those manufactured by the Pursuers.

In or about February or March 1897 Maxton and Murray, a wholesale firm 20 of shirt makers carrying on business in Edinburgh, issued pattern books to certain traders who were in the habit of dealing with them, with a range of underwear upon which the word "Cellular " was placed in the manner stated in the Head Note hereto (supra page 582). On this coming to the knowledge of the Pursuers they at once challenged the right of Maxton and Murray to do 25 so, and Maxton and Murray at first agreed to abandon the use of the word "Cellular" on or in connection with any shirts or cloth or clothing not of the manufacture of the Pursuers' Company, but after consulting their solicitors withdrew from that position and declined to accede to the Pursuers' demand. The Pursuers then raised an action in the Court of Session, in which the 30 Court was asked to interdict, prohibit, and discharge the Defenders "from "using the name, term, or word Cellular' by itself or in combination or in "conjunction with any word or words describing or distinguishing, or in "connection with cloth or clothing so as to denote or indicate cloth or clothing "not being cloth or clothing made or supplied by the Complainers, and from 35" selling or offering for sale, or causing to be sold or offered for sale, cloth or "clothing not of the Pursuers' manufacture, made or supplied by the Pursuers, "under the name, word, or term Cellular,' and from using trade labels, "window tickets, wrappers, invoices, circulars, notices, or advertisements of any kind with the said name, word, or term Cellular' by itself or in 40 "conjunction with any other word or words thereon in connection with the "manufacture or sale of cloth or clothing, bandages, sheets, curtains, shirts, 66 or underwear not made or supplied by the Pursuers, or upon or attached "to any such goods or class of goods not made or supplied by the Pursuers, "and from publishing or issuing, or causing to be published or issued, circulars, 45 "notices, or advertisements of any kind containing or using the word 'Cellular' "in such way as to denote goods not of the Pursuers' manufacture, and from "using said word in any way calculated to lead the public to infer or believe "that the Defenders are entitled to sell goods under the name Cellular' "which are not made or supplied by the Pursuers, or that the goods which 50"they so sell are made or supplied by the Pursuers, and also from otherwise "in any way infringing the Pursuers' right to the name, word, or term 'Cellular,' "by using it in any way so as to designate any goods not made or supplied by "the Pursuers."

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The statements on which the Pursuers supported their demand commenced 55 with the history of "Cellular cloth, and in regard to what The Cellular Company had done, they averred that :-"The Pursuers marked or distinguished "or designated said cloth and clothing, and all goods made of said fabric, and "sold by them, as 'Cellular,' and have manufactured and sold the said 'Cellular' "cloth and Cellular' clothing continuously and in increasing quantities ever