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Davies v. Townsend & Co., Ld.

"I claim is-1st. The sliding back and seat in combination with the locking "frame with springs for working and locking the back and seat in any desired 66 position as herein described."

Shortly after the date of his Patent Townsend assigned it, with his business, to Townsend & Co., Ld., of which Company he became the managing 5 director.

On the 16th February 1899 Davies brought an action against Townsend & Co., Ld., for alleged infringements of his Patent, No. 20,566 of 1894, claiming the usual relief. The Defendants denied infringement and set up their own Patents, No. 821 of 1893, No. 10,023 of 1896, No. 2913 of 1897, and No. 5944 of 10 1897, under which they alleged that they were working.

The action came on for trial before Mr. Justice PHILLIMORE, sitting without a jury, on the 11th of July 1899.

The Plaintiff appeared in person. W. H. Eldridge (instructed by Lucas and Ward) appeared for the Defendants.

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The Plaintiff opened his case.-There is no new invention in the Defendants' chair. I invented the spring. [PHILLIMORE, J., referred to the claiming clause in the Plaintiff's Specification.] I was the inventor of the frame, and it is part of my invention protected by this Patent. The whole Specification is a claim and not the claiming clause alone. The cases of Siddell v. Vickers, 20 5 R.P.C. 428, Kelly v. Heathman, 7 R.P.C. 343, and Harrison v. Anderston Foundry Company, L.R. 1 App. Cas. 577, support this view. [PHILLIMORE, J.— Since 1883 the claim must be a distinct statement of the invention claimed.] When a clear result is described but not claimed no subsequent Patent may be taken out for it. (Kaye v. Chubb & Sons, 4 R.P.C. 289.) They may not take 25 any part of my invention. They use the spring and the frame. [PHILLIMORE, J. -What is the advantage of your spring?] It is my invention and is useful in raising the seat. Townsend applied for a Patent, No. 16,055 of 1895, which I opposed. The Comptroller refused to seal it on the ground that it was for exactly the same thing as my Patent of 1894. Now they use the hinged frame 30 which I submit is covered by my Patent, although not specifically referred to in the claiming clause; you must read the whole Specification together.

Specimens of the Plaintiff's and Defendants' chairs were put in, and the Plaintiff called Walter Christie to prove the manufacture of his chair under his directions at Townsend's works. The Plaintiff then went into the box 35 and stated that he knew how to use the frame when he had the first chair made, and that he was the inventor of the frame. On cross-examination he said that he applied for his Patent in October 1894, and invented the frame in November of the same year. The action before Mr. Justice Byrne was in respect of chairs made by Townsend under his instructions, and subsequently sold by Townsend 40 without his authority.

W. H. Eldridge for the Defendants.—I submit there is no case. As to the spring it is not claimed or mentioned. [PHILLIMORE, J.-The case turns on the question of the frame.] The Plaintiff cannot now claim the frame in his Patent. He has not claimed it as a novelty and there is no mention of it until the Complete 45 Specification. Siddell v. Vickers only says that a Patent need not have a claim; but if there is a claim I say that claim must contain exactly what that invention is. All the cases go to this, from the roller-skate case to Edison v. Smith, 11 R.P.C. 148. The claim when made is binding, and operates only with respect to what is specifically claimed and as a disclaimer of what is not 50 mentioned. Upon the Specification itself there is no case. Again, the Defendants here are the Company, but the Company have made none of the Plaintiff's chairs, nor have they sold any. We have only sold our own chairs. Counsel also referred to Plimpton v. Spiller, 4 Ch.D. 286, and Parkinson v. Simon,12 R.P.C. 406. He elected not to call evidence, but to rely on his 55 submission.

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Davies v. Townsend & Co., Ld.

The Plaintiff, in reply.-The frame is mine even though I have not claimed it; the seat was the first invention and then the means of keeping it up. I applied for protection for improvements in chairs generally, not for improvements in seats.

PHILLIMORE, J.-In this case the Plaintiff, who has conducted his own case in person, and has done it remarkably well, has invented a very clever chair. It seems to me, without much knowledge of mechanics, to be a very ingenious invention. He complains that the Defendant Company have been selling another chair which he says is an infringement of his Patent. It is admitted 10 that his Patent is a good one. It is established by a decision of Mr. Justice Byrne, and it is admitted the Defendants have been selling chairs in accordance with their Patent. I have had their Patent before me, not with a view of determining whether their Patent is good or not, but as guiding me in seeing what they are really doing, and how far their chair differs from the Plaintiff's 15 chair. I have also seen examples of the Plaintiff's chair in the various forms, and of the Defendants' chair. Now both chairs have this in common, that the seat can be raised or lowered so as to enable the child to sit, when not at a table, at a convenient distance from the floor or near the floor, and also to sit high at the table Both have that in common. Neither can claim that as a novelty, 20 because at least in 1877, if not earlier, there was some Patent which had some form of raising or lowering the chair. Therefore neither can claim that. There is a spring in both by which the seat is assisted in being raised, or is raised, but the Plaintiff cannot claim anything in respect of that spring. That, I think, he substantially admits. There remains the residue of the invention. Now 25 the Plaintiff's chair is so moved that the seat, when it is lowered, becomes the back; that is to say, the chair turns round, and what was the back becomes the seat, and what was the seat becomes the back. The Defendants' chair is raised simply in cut grooves, and the legs of the chair are raised and then dropped, assisted by a spring, and they are locked. In those two respects, therefore, the 30 Defendants' chair differs entirely from the Plaintiff's. The Plaintiff, in his final Specification, claims only as a novelty the utilisation of the back of the chair as a high chair for the seat of the low chair, and the back of the low chair for the seat of the high chair. That is what is claimed as the novelty, and there is nothing of that at all in the Defendants' chair. The Defendants do 35 not use that, and, therefore, they do not infringe. Then the Plaintiff said, "Yes, but another very important part of my invention is the use of the frame, "which is raised to nearly a sloping position-nearly vertical-when the chair " is high, and which supports then the chair so as to prevent its falling down, " and still more to prevent its turning over and the back becoming the seat 40" when the child is in the high chair." It is perfectly obvious that that is a very important improvement on the Plaintiff's invention, because without it the chance of the chair being supported is not very great, and it is also obvious it is an important part of the Defendants' chair. But what I have to consider is :-Have the Defendants in taking that form pirated the Plaintiff's invention ? 45 There has been some evidence given by and on behalf of the Plaintiff as to who invented that frame, and he swears he was the person who invented it. It has been suggested on behalf of the Defendant that the man under whom they claim, Mr. Townsend, was the person who invented that frame. ¡Counsel for the Defendants finally elected not to call witnesses, and, therefore, I have 50 only the Plaintiff's evidence on the one side and the suggestion on the other. But that is not material, as Counsel for the Defendants rightly said, because whether the Plaintiff invented that frame or not, if he did not patent it he loses the benefit of his invention. Certainly he mentions the frame in his final Specification, and he shows it in the drawing which accompanies his final 55 Specification, but he does not mention it in the Provisional Specification or the drawing, and we learn now from the Plaintiff that he had not thought of it

Davies v. Townsend & Co., Ld.

then. It is not, in fact, the invention he intended to patent. He might still probably have protected himself in the final Specification, but in order to do that he must have claimed it-I do not say necessarily in the actual words of the claiming part of the Specification, but it must have been done in a way to show clearly that he did claim that part somewhere or other in his Specification 5 as a portion of his patented invention. If he had done that he would have thrown the burden on the Defendants, and they might very likely have proved that there was no novelty in the frame at all. The frame in the particular application to this case is novel, but the idea of the frame has no novelty at all, and it might be he would have rendered his Patent bad if he had in point of 10 fact claimed the frame as a novelty. But I have not to consider that. He did not claim it. The question is whether the Defendants have infringed his Patent. They have not infringed what he says to have been the essence of his Patent, and what I believe to be the essence of his Patent-namely, the application of the back of the high chair to the seat of the low chair, and the back of 15 the low chair to the seat of the high chair. There is no infringement of that, and, the Defendants not having in fact infringed any part of the Plaintiff's claimed invention, I hold that the Plaintiff has failed in this action, and it must be dismissed with costs.

I ought to add that I think the two inventions might very well stand 20 together. I should not myself think the Plaintiff would suffer any material injury from the construction and sale of the Defendants' chairs. I should have thought the Plaintiff's chair the more ingenious of the two; but, at any rate, those who care for one would not care for the other, and I do not suppose in reality he suffers at all. Be that as it may, in deciding the matter as a question 25 of dry law, I am of opinion the Defendants have not infringed the Plaintiff's Patent.

Alaska Packers' Association v. Crooks & Co.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE KEKEWICH.-July 7th, 1899.

IN THE COURT OF APPEAL.

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Before THE MASTER OF THE ROLLS, THE PRESIDENT OF THE PROBATE, &C. DIVISION, and LORD JUSTICE ROMER.-August 2nd, 1899.

ALASKA PACKERS' ASSOCIATION v. CROOKS & Co.

Alleged infringement of Trade Marks.-Passing off of Defendants' goods as Plaintiffs'.-Interlocutory injunction.-Balance of convenience and incon

venience.

10 The A. Association, an American Company, were the registered owners of two Trade Marks, one consisting of the head of a moose and the other a label embodying the first-mentioned Trade Mark. Salmon in tins bearing the said label had been for many years imported into and sold in the United Kingdom. During the last five years the whole of the tins so imported 15 had been bought by a wholesale firm carrying on business in London. The Association brought an action against C. & Co., of Liverpool, who were importing into England salmon in tins which in general appearance resembled the Plaintiffs' tins, and had a red deer's head in the place where the moose's head appeared on the Plaintiffs' tins. The Plaintiff's moved for an interlocutory 20 injunction, which the Defendants resisted mainly on the ground of delay; the Defendants also contended that as they were selling only in Liverpool and Manchester there was no danger of their tins being sold for the Plaintiffs'. The tins complained of had arrived in England shortly before the motion was heard, and some of them had been sold.

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but

Held, on comparison of the labels, that infringement of Trade Mark was not established, but that the get-up of the Defendants' tins was such as to deceive an unwary purchaser, and, on the balance of convenience and inconvenience, an interlocutory injunction ought to be granted to restrain the Defendants from selling the unsold portion of the tins which they had imported.

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The Defendants appealed, and, on their giving certain undertakings without prejudice to any question, the Order for the injunction was discharged.

Alaska Packers' Association v. Crooks & Co.

The Alaska Packers' Association, an American Company, were the registered owners of Trade Marks Nos. 86,588 and 86,590, which were registered in 1889 by The Nushagak Canning Company, who, in 1892, transferred the good-will of their business and their Trade Marks to the Association, who are hereinafter referred to as the Plaintiffs.

Trade Mark No. 86,590 was as follows:

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From 1889 continuously the Plaintiffs and their predecessors in business exported to the United Kingdom large quantities of tinned salmon, which for the last five years had been bought exclusively by a wholesale firm in London. 10 The tins bore a label the front part of which was substantially a reproduction in colours of Trade Mark No. 86,590, the oblong blank being filled up with a salmon. The following is a representation of this label in black and white, but

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