Payton & Co., Ld. v. Titus Ward & Co., Ld. any case of that kind, but the right to use the words "Palais Royal,"—or rather the use of it, I will not say the right to use it,-is established as one of long duration and long anterior to the use of the word "Royal" by the Plaintiffs. That is put forward now as a strong point on behalf of the Defendants. The strength of the Defendants' case is their greatest weakness. That may sound, 5 and perhaps is, paradoxical, but under a paradox you will find a great truth. If the Defendants had not been accustomed to use, and had not used, the words "Palais Royal," they would have had a much easier task before them in making a coffee tin or getting up a coffee tin which would be attractive, and would sell their goods and avoid any similarity to that of the Plaintiffs'. It was because 10they had used the word "Royal" that their difficulties were great, not unsurpassable we know from the exhibits which have been put in by the Defendants, but very much greater than if they had not had the use of the word "Royal" with "Palais" before it. They wanted to use that, of course, it was their own trade name, they desired to perpetuate that, but when they 15knew that in perpetuating that they were using a name which was also used by the Plaintiffs then they were under a very great difficulty, and they were bound then to do what, strangely, they say they endeavoured to do, make the dissimilarity as great as possible. The very existence of one point of similarity which could not very well be avoided, and which there was no reason to avoid, 20 made the duty of avoiding all other points of similarity very much greater. I think they have failed to perform that duty. I wish I could pass from the case without saying any more. I would rather have stopped the case earlier and let the Defendants submit to judgment without anything more than a formal judgment of the Court to this effect, but 25having heard the case I am bound to say that I think this passing off is deliberate. I give Mr. Harry William Ling, and also Mr. Thomas Pratt Ling, credit for not having known anything about the Plaintiffs' tin or tins before they started the tins they now use at the suggestion of Messrs. Lloyd, we knowing perfectly well, of course, why Messrs. Lloyd came to the Defendants. 30 It requires some little effort of charity to give him credit for such complete ignorance as he has professed on the subject, but I do not think it is a greater effort than I could fairly make. I think it right to add that I cannot make an effort great enough to include ignorance after they used the tins; that I think goes beyond what my credence will allow, but they knew nothing about it till 35Messrs. Lloyd called their attention to it, and then with some difficulty I am told, difficulty which one does not quite understand, they succeeded in finding out what the Plaintiffs' tins were, and they were warned by Messrs. Lloyd, who, having themselves had the disadvantage of litigation, were unwilling to run any further risk without an indemnity, and they insisted upon that 40 indemnity before they would manufacture the tins which the Defendants wished them to make, and in the letter of the 22nd of February 1898, Messrs. Lloyd expressed their opinion distinctly that they were not safe in proceeding with it. Notwithstanding that, the Defendants insisted on going on, giving Messrs. Lloyd the indemnity and saying, "We will run the risk"; and knowing 45 that they still say and swear that they did their best to provide this dissimilarity. I wish it were not my painful duty to say, after having heard the professions of honesty in the witness box, that I think this is a dishonest case, and that it has been done on purpose to imitate the Plaintiffs' tins, and with the view of passing off the goods of the Defendants as the goods of the Plaintiffs. Therefore 50 the Plaintiffs are entitled to the relief they ask. An injunction was granted in accordance with the third claiming clause of the Statement of Claim, with an account of profits and order for delivery up of infringing tins. But, on the application of the Defendants, execution was, with the consent of the Plaintiffs, stayed pending an appeal, the Defendants under- 55taking to give notice of appeal within a week and to keep an account of their sales. In the Matter of Clark's Patent. 5 Before THE JUDICIAL COMMITTEE OF THE PRIVY COUNCIL. Present: LORDS MACNAGHTEN, MORRIS, and SHAND. June 14th, 1899. IN THE MATTER OF CLARK'S PATENT. Patent.-Petition for prolongation.-Patentee's interest in Patent insufficient. -Patent acquired by a Company as a speculation.-Accounts not satisfactory.Petition refused. On the 20th of June 1885 Letters Patent (No. 7563) were granted to Alexander Melville Clark for an invention of "Improvements in retorts for the distillation 10" of coal and other solid matters and in apparatus in connection therewith." The Patent subsequently passed through various hands till it became vested in the Petitioning Company, in which the inventor had a comparatively small interest. The accounts filed related to all the business of the Company, who held and worked other Patents in connection with the one which was the 15 subject of the Petition. The Petition set out, inter alia, that the Specification of the Patent in question for the first time disclosed a successful method of using for the production of coal gas a system of inclined retorts which could be automatically charged and discharged, and which dispensed with a great part of the labour 20 hitherto necessary in gas works, and at the same time provided for the distribution of the coal over the surface of the retort in even layers of even depth, which is essential to the successful production of coal gas; that the invention was one of great practical importance, and at the present time the merits of the invention were becoming fully recognised, though, owing to 25 the large capital involved in existing Patents in gas works, the adoption of the patented system had in the past been limited; that the expense of erecting a new gas plant sufficiently large to demonstrate on a commercial scale the value of the invention was very great, and as the system involved a complete change in the method of production and in the class of labour employed prior to the 30 date of the Patent, a long trial of the mechanical and commercial merits of the invention had to be made before those interested in the gas industry would adopt the invention, and the chief opportunities for the adoption of the patented invention only arose when old plants were being dismantled or new works erected; that Patents for the same invention were taken out in certain 35 foreign countries, but that no adequate remuneration had been derived from the foreign Patents, and owing to the expense of maintaining the same they were allowed to lapse; that up to the year 1890 the beneficial interest in the said Letters Patent remained in the hands of the inventor, Mr. Coze, whilst Mr. A. M. Clark remained until the assignment of the Patent to the Petitioning 40 Company on the 19th of February 1891 the registered owner of the Patent; that on the 20th of January 1890, an agreement was entered into between Mr. Coze and Messrs. Morris, Terry, Van Vestrant, and Woodall, under which, in consideration of the sum of 2801. paid to Mr. Coze, and in further consideration of the right of Mr. Coze to share to the extent to 20 per cent. in 45 any profits which Messrs, Morris, Terry, Van Vestrant, and Woodall might In the Matter of Clark's Patent. derive from the said Patent, Mr. Coze granted to the said Messrs. Morris, Terry, Van Vestrant, and Woodall an exclusive right to use, work, and dispose of the said Patent; that subsequently to the date of the said agreement the said Messrs. Morris, Terry, Van Vestrant, and Woodall formed a limited company called The Coze Syndicate, Ld., with a capital of 10,0007. in 100 shares of 1007. 5 each, and the said Coze Syndicate, Ld., purchased the said Letters Patent, together with other Patents taken out by the said Mr. Coze, for the sum of 6,0007. in cash and 20 per cent. of any profits which might be made by The Coze Syndicate, Ld., on a resale of property; that on the 10th of June 1890, The Coze Syndicate, Ld., entered into an agreement with one Walter Mathew 10 Knight on behalf of a limited company then about to be formed under the name of The Automatic Coal Gas Retort Company, Ld. (the Petitioning Company), and by the terms of the said agreement it was provided that the vendors should sell, and the proposed Company should purchase, inter alia, the Patent in respect of which the present Petition was presented, and it was further provided 15 by the said agreement that the consideration for the said sale should be the sum of 70,000l. in cash and 30,000l. in fully-paid shares in the proposed Company; that it was further provided by the said agreement that, unless before the 1st of August 1890, at least 100,000 shares in the proposed Company should have been taken up by responsible persons, either the vendors or the said W. M. Knight 20 might, by notice in writing, rescind the agreement; that the Petitioning Company was duly incorporated on the 1st of July 1890, but up to the 1st of August 1890, only 3,140 shares had been applied for; that it was subsequently agreed between the Petitioning Company and The Coze Syndicate, Ld., that, as there were no monies out of which the 70,0007. cash, which should have been 25 paid to them under the said agreement of the 10th of June 1890, could be paid, the members of the Syndicate should apply for and receive as fully-paid 70,000 one-pound shares in the Petitioning Company, and the said shares, together with a further 30,000 shares, were issued to the members of The Coze Syndicate, Ld., and under this distribution the inventor received 6,750 shares 30 in the Petitioning Company, which were still held by him; that since the formation of the Petitioning Company every effort had been made to extend the use of the patented invention, and numerous licenses had been granted; that little, if any, profits had been derived from the Patent, and in the year 1896 the Company were compelled to take proceedings against The Mayor, 35 Aldermen, and Burgesses of Salford, who were proposing to work the patented invention, but declined to recognise the validity of the Patent, or to pay royalties for the use thereof; that in his judgment at the trial of the action Mr. Justice Romer found that the Defendants had infringed, and that the Patent was entirely new.* 40 The accounts filed showed (A) a profit of 12947. 12s. 3d. to A. Coze in respect of the English Patent; (B) a profit of 16867. 15s. 1d. to A. Coze in respect of the foreign Patents; (C) a profit of 5500l. to Messrs. Van Vestrant, Morris, Terry, and Woodall in respect of the English Patent; (D) a loss of 600l. to The Coze Syndicate, Ld.; and (E) a profit of 566l. 10s. 7d. to the Automatic Coal Gas 45 Retort Company, Ld., making in all a total profit of 84477. 17s. 11d. Moulton, Q.C., Walter and Gray (instructed by Lumley and Lumley) appeared for the Petitioning Company; Sir Robert Finlay, Q.C., S. G., and Sutton appeared for the Crown. Moulton, Q.C., explained the invention, and then called Dugald Clerk to 50 speak to the utility of the invention. [Finlay, S.-G., admitted the utility.] André Coze was then called, and stated that he had done all he could to get the invention taken up, and that he held 6,750 shares in the Petitioning Company. The next witness was the chairman of the Petitioning Company, who stated *See 14 R.P.C. 450. In the Matter of Clark's Patent. that the other Patents held by the Company were for details in connection with and subsidiary to the Patent which was the subject of the application. Moulton, Q.C., for the Petitioners.-The invention is decidedly meritorious, and one which from its nature it is difficult to get adopted. The whole profit 5 made is only 80007., which is quite inadequate. As regards the accounts, the other Patents are subsidiary to this Patent, and it is impossible to keep the accounts separate. Finlay, S.-G., for the Crown.-The inventor here is only interested to a very slight extent. From the state of the accounts it is impossible to see what 10 relates to this Patent and what to the other Patents held by the Company. It is said that the other Patents are subsidiary to this one; but it is the Patentee's duty to keep his accounts in such a way that anyone can see exactly how he stands financially with regard to his Patent. Lord MACNAGHTEN.-Their Lordships are unable to recommend the prolon15 gation of this Patent. There are several objections to the application, any one of which would probably be fatal. In the first place, the Patentee has practically no interest whatever in this application or in the prolongation of the Patent. Possibly if it is prolonged he might get something, but whatever he got would be extremely small. The application is really made by a Company, who entered 20 into this speculation, which has been an unfortunate speculation, no doubt, though not altogether unfortunate, for they have received some profit; but the fact that it has not been as successful as they anticipated is no reason why the Patent should be prolonged. The principle of Norton's case and BowerBarff's caset are directly applicable. It is not necessary to read the passages, 25 because they have been cited in judgments delivered by the Court so very lately, in 1897 and 1898. Then, the accounts are certainly most unsatisfactory. It has often been laid down that a Patentee who comes to make an application for the prolongation of a Patent ought from the first to keep his accounts in such a manner that it 30 may be clear to the Court what profits have been made. In this case several matters foreign to this Patent have been mixed up in the accounts, and the accounts appear to have been kept in the most unsatisfactory manner. That also is covered by authority, which it is not necessary to read; but I refer to what is laid down in Thomas' Patent and Saxby's Patent,§ both of which are 35 directly applicable to this case. Their Lordships, therefore, have no option but to dismiss the application. 40 IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION. Before MR. JUSTICE STIRLING. February 8th, March 1st, 2nd, and 3rd, and June 7th, 1899. KANE v. GUEST & Co. Patent.-Action for infringement.-Want of subject-matter.-Pricr publication.-Prior user.-Defence of non-infringement abandoned at trial.-Patent found invalid because of want of subject-matter and prior publication.—Certificate that Plaintiff had proved Particulars of Breaches granted.-Costs. * Moore P.C. (N.S.) 339. † 12 R.P.C, 383, 9 R.P,C. 367. § L.R. 3 P.C. 249. Kane v. Guest & Co. The owner of a Patent for an invention for "Improvements in or apper"taining to the manufacture of candy" sued the Defendants for infringement. The Defendants pleaded non-infringement, and attacked the validity of the Patent on the grounds of prior publication, prior user, want of subject-matter, and insufficiency of description. Held, that the Plaintiff's Patent was invalid on the grounds of prior publication and want of subject-matter, and that the prior user alleged by the Defendants was an experimental user. 5 The defence as to infringement having been abandoned at the trial a certificate that the Plaintiff had proved his Particulars of Breaches was granted, and the 10 Plaintiff was allowed any extra costs occasioned by the Defendants having denied infringement. The Plaintiff was the owner of Letters Patent (No. 785 of 1887) granted to William Phillips Thompson for "Improvements in or appertaining to the "manufacture of candy," as a communication from abroad. The Defendants 15 were confectioners, carrying on business at Ancoats in Manchester. : The Complete Specification of the Plaintiff's Patent was as follows: "The objects of this invention are to produce candy, more particularly stick "candy, of a quality superior to that resulting from the ordinary process as "regards its clearness or brilliancy, its strength, and its resistance to atmospheric 20 "influences, and at the same time to lessen the cost of manufacture. În the "manufacture of stick candy as heretofore practised, it has been customary to "boil the cane sugar or syrup either alone, or with a small percentage of "glucose, in open kettles or pans until it acquires a proper consistency. This "method of treating the sugar necessitates the employment of very high 25 "temperatures, which commonly resulted in the carbonization and discolora"tion of the sugar, and in the production of a candy of dark appearance. The "candy produced by this process is exceedingly brittle, so that in being handled "and transported, there is a heavy deterioration and loss from breakage. It is "also objectionable in that it is peculiarly susceptible to the influence of 30 "moisture and increased temperatures, which render it adhesive and otherwise "troublesome to carry in stock for any considerable length of time. 66 "The inventor has discovered that by the addition of a large percentage of 'glucose he is enabled to produce a candy which possesses an increased "strength, greater brilliancy and clearness, and a greater power of resisting 35 "the influence of moisture. "Under the methods heretofore practised it was impossible or impracticable "to incorporate with the cane sugar a sufficient amount of glucose to secure the "ends which the inventor has in view. He has discovered, however, that by "making use of a vacuum pan or other equivalent apparatus for boiling the 40 "materials in vacuo, he can combine with the cane sugar from 25 to 35 per "cent. or even a greater percentage of glucose, and that this compound may be "cooked to a consistency suitable for stick candy without discoloration, and "without injuriously affecting the ingredients. "The inventor has also discovered that the compound of cane sugar and 45 "glucose may be thus brought to the required consistency at comparatively "low temperatures, so that when delivered from the pan or kettle, it may be "immediately handled by the workmen and finished into the required forms, "without undergoing the usual cooling treatment. 66 "The essence of this invention consists in subjecting a compound of cane 50 sugar and glucose or grape sugar to a cooking or boiling action in vacuo. And "it is to be distinctly understood that the apparatus for carrying out this process may be modified in form and construction at will; that the temperature may "be regulated, and the period of the cooking operation lengthened or shortened 66 |