66 In the Matter of Thomas and Prevost's Application for a Patent. "in the preparation of cotton and other fabrics and fibrous materials," granted to J. Mercer; No. 5713, A.D. 1881, for "Treatment of yarn and other cotton "goods," granted to C. W. Lightoller and J. Longshaw; No. 3640, A.D. 1885, for "Improvements in the mode of weighting and driving two or more coupled rotating or reciprocating calender rolls, which may be used for glazing and 5 "finishing paper, card-board, mill-board, paper wads with intervening polished plates or other materials," granted to W. Hartley; No. 20,314, A.D. 1889, for "Improvements in the treatment of or finishing of manufactured or partially 66 manufactured materials from cotton or similar fibres or other substance "containing cellulose," granted to H. A. Lowe; No. 4452, A.D. 1890, for 10 "Improvements in the treatment of or finishing of manufactured or partially "manufactured materials from cotton or other cellulosic fibres," granted to H. A. Lowe; No. 16,840, A.D. 1896, for "Improvements in the process of what "is known as Mercerising fabrics composed of vegetable fibre," granted to E. Edwards; No. 19,633, A.D. 1896, for "Improvements in the production of a 15 "silky or similar lustrous effect on yarns, threads, and fabrics having a vegetable "origin," granted to A. Liebmann; No. 3218, A.D. 1897, for " Improvements in "mercerising textile materials," granted to A. G. Bonbon; and No. 9056, A.D. 1897, for "Improvements in the method of and means for mercerising vegetable fibres, fabrics, and the like," granted to E. Crépy. 66 The matter came before the Chief Examiner (acting for the ComptrollerGeneral), who refused the application. In the course of the proceedings the Applicants were desirous of amending their Specification, in order to meet the grounds of the opposition; and also of filing declarations. 20 The Applicants appealed from the refusal to seal the patent and from the 25 refusal for leave to file evidence. Birkbeck appeared as agent for the Appellants, and O'Brien as agent for the Respondent. Sir ROBERT FINLAY, S.G.-I do not think that any advantage would be derived from filing evidence in this case. The question is not as to the particular 30 process of manufacture carried out under these various patents, and the success which attends the various manufactures which carry out these processes, but the question before me is as to whether this patent ought to be granted, or whether it should be refused, on the ground that the application is only for what is covered by patents already granted. 35 I am of opinion that the decision appealed from is right. There are two points suggested on which this patent ought to go. The first is that it is said to be a patent for a combination of certain things which were already knownthe process of mercerising as introduced by Mercer himself, the stretching as introduced by Lowe, and the pressure which is referred to in other patents. It 40 is admitted that all these are old, but it is said that this application is for a patent for the combination. The second point on which it is said that the patent should go is that the Applicants state that they sometimes apply the pressure in certain places only so as to produce a variegation in result upon the fabric. I do not see my way to allowing the patent to go upon either of these 45 grounds. Let me first say a word with regard to the applications that have been made for various amendments. It is perfectly true that there is a power of requiring amendments as a condition of granting a patent, and in suitable cases that power will be exercised by the Comptroller, or by the Law Officer, but it must 50 not be supposed that the exercise of that power is anything like a matter of course. A Specification cannot be framed so as to include a number of things, devolving upon the Law Officer the task of eliminating what might properly be the subject-matter of a patent. It is the duty of the Applicant to frame his In the Matter of Thomas and Prevost's Application for a Patent. Specification in such a way that a patent may properly be granted; and while I do not wish to say anything that might appear to have a tendency to limit the discretion as to limits being imposed as a condition of granting a patent, I desire it to be distinctly understood that is not at all a matter of course 5 that if the Specification is presented in such a form that the patent cannot be granted without amendment, the necessary amendment will be made. On the present occasion I do not think that the amendments which have been asked for ought to be made. The Solicitor-General then considered the Claims in detail and in the result 10 affirmed the decision, and dismissed the Appeal with three guineas costs. IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION. Before MR. JUSTICE NORTH. December 2nd, 1898. DANIEL AND ARTER v. WHITEHOUSE AND EVERALL. 15 Trade name." Brazilian Silver."—Injunction to restrain use of name.Motion to commit for breach of injunction.-Agent made Respondent as well as principal. In an action by D. and A. against W. and B., an injunction was granted to restrain the Defendants, their servants and agents, from passing 20 or attempting to pass off goods not of the Plaintiffs' manufacture as or for goods of the Plaintiffs' manufacture by use of the words "Brazilian Silver," and from using the words "Brazilian Silver" as descriptive of or in connection with nickel silver goods, not of the Plaintiffs' manufacture, without clearly distinguishing such goods from the goods of the Plaintiffs' manufacture 25 Subsequently W. began to sell forks and spoons marked "F. Whitehouse's "Brazilian Silver," in packages bearing labels having the words, "F.Whitehouse's "Brazilian Silver," and a trade mark. Some of such sal s were made through E., who was W.'s traveller. D. and A. gave notice of a motion against W. and E. for breach of the injunction, but did not press for a committal. Daniel and Arter v. Whitehouse and Everall. Held, that there had been a breach of the injunction, and that W. must pay the costs of the motion. Semble: E. should not have been made a Respondent to the motion. In January, 1897, Daniel and Arter commenced an action against Frederick Whitehouse and J. A. Britton to restrain them from passing off, or attempting 5 to pass off, goods not of the manufacture of the Plaintiffs as or for the goods of the Plaintiffs by the use of the term "Brazilian Silver" (which the Plaintiffs claimed as their trade name) or by executing orders for "Brazilian Silver" goods by supplying goods not being the goods of the Plaintiffs. The action came on for trial in March, 1898, before Mr. Justice Barnes, sitting as an 10 additional Judge in the Chancery Division, who gave judgment for the Plaintiffs, and granted an injunction to restrain the Defendants, their servants and agents, from passing or attempting to pass off goods not of the Plaintiffs' manufacture as and for goods of the Plaintiffs' manufacture by use of the words "Brazilian "Silver," and from using the words "Brazilian Silver" as descriptive of or in 15 connection with nickel silver goods not of the Plaintiffs' manufacture without clearly distinguishing such goods from the goods of the Plaintiffs' manufacture. The trial and the judgment of the learned Judge will be found reported in 15 R.P.C., at page 134, and, in addition to what is reported at page 140 as having taken place at the close of the judgment, the following also took place. 20 Bousfield, Q.C.-Does your Lordship think it is necessary in this case to limit the injunction? It is rather different from the "Yorkshire Relish" case. That was a class of case in which the Defendant said, "Yorkshire Relish' is the name of a particular compound, and if I can make the compound I am entitled "to sell it under that name." So your Lordship sees that had to be guarded 25 necessarily the right to sell it if he could. 66 BARNES, J.-Must not it be limited? Suppose they stamp upon the goods in a bold way, "These goods are not made by Daniel and Arter, but made by "so-and-so"? Bousfield, Q.C.-Of course it was said in the "Yorkshire Relish " case that it 30 would be practically impossible for him to do it except by doing that. BARNES, J.-Well, but he could do it, I suppose? It has been said again and again, "Because it is very difficult to do, there is no impossibility." I should think that the settled form which I find practically in Powell's case-the "Yorkshire Relish" case-would be sufficient. 35 On the 5th of November 1898, the Plaintiffs gave notice of motion for an order that "(1) the Defendant Frederick Whitehouse and one John William Everall, "his servant and agent, and each of them may be restrained by injunction from "selling or attempting to sell nickel silver or other goods, not being goods of the "Plaintiffs' manufacture, under the name or style of Brazilian Silver,' or 40 "from using the term 'Brazilian Silver' in connection with such goods in "breach of an injunction granted by an order of this Honourable Court in "the action of Daniel and Arter v. Whitehouse and Britton, 1897, D. No. 148, "and dated the 22nd March 1898, whereby it was ordered that the Defendants, "Frederick Whitehouse and Joseph Abraham Britton therein named, their 45 "servants and agents, be perpetually restrained from passing or attempting to pass off goods not of the Plaintiffs' manufacture, as and for goods of the "Plaintiffs' manufacture, by use of the words 'Brazilian Silver,' and from "using the words 'Brazilian Silver' as descriptive of, or in connection with, "nickel silver goods not of the Plaintiffs' manufacture without clearly distin- 50 "guishing such goods from the goods of the Plaintiffs' manufacture, or in "the alternative, for an order that (2) The said Frederick Whitehouse and John "William Everall be committed for contempt of Court, for the breach of the 66 Daniel and Arter v. Whitehouse and Everall. "said injunction, granted by the said order of this Honourable Court, in selling "or attempting to sell, and invoicing nickel silver goods or other goods not of "the Plaintiffs' manufacture, under the name or style of Brazilian Silver' "without clearly distinguishing such goods from goods of the Plaintiffs' 5" manufacture, and that the said Frederick Whitehouse and John William "Everall do pay the costs of, and occasioned by, this application." The acts which the Plaintiffs complained of as being breaches of the injunction were as follows:-The Defendant Whitehouse began to sell forks and spoons marked with the words, "F. Whitehouse's Brazilian Silver." All such goods 10 were wrapped in parcels of one dozen each, and then enclosed in boxes containing three to six dozen, and each parcel and each box bore a label, a representation of which, in black and white, is subjoined. In use, everything coloured black in the label as subjoined was coloured red; the rest was white. Everall, who was a traveller of Whitehouse, wrote to one Ritchie, of Edinburgh 15 a letter which was as follows:-"I have sent you per Globe the 1 grs. of "Brazilian tea-spoons, and put the prices of tables and desserts on invoice. "I shall be very pleased to receive your orders for same, although I cannot "promise delivery under a fortnight, as I have already several hundred gross "to deliver to promises already made. Hoping to receive your favours." 20 66 The invoice referred to in the letter was for "1 grs. tea spoons 858 Brazilian per Globe." The motion came on for hearing before Mr. Justice NORTH on the 2nd of December, 1898. Bousfield, Q.C., John Cutler, Q.C., and Schiller (instructed by C. Urquhart Fisher) appeared for the Plaintiffs; Macnaghten, Q.C., 25 and A. J. Walter (instructed by Beale and Co.) appeared for Whitehouse and Everall. A large number of affidavits which had been filed by both sides were read to the Court. Among the Plaintiffs' evidence were a number of affidavits by members of the trade; the material portion of one of such affidavits is quoted 30 in the judgment of the learned Judge. Among the evidence on behalf of Whitehouse and Everall were also several trade affidavits. The following passages from one of such affidavits represent the case of the Defendant Whitehouse as presented by his trade witnesses :-"2. I know that both the "Plaintiffs and the said Frederick Whitehouse manufacture spoons and 35 "forks which are termed 'Brazilian Silver.' The Plaintiffs' goods are always "marked D. and A. in addition to the term 'Brazilian Silver,' and by the 66 66 Daniel and Arter v. Whitehouse and Everall. 3. The "impression of these initials their goods are readily identified. "Defendant Whitehouse has for some time past impressed his goods with "the name, F. Whitehouse's Brazilian Silver,' such name has been impressed on the top end only of the goods. The Plaintiff's goods are always marked on "the leg of the spoon or fork. 4. As a wholesale and retail dealer in similar 5 goods to these made by the Plaintiffs and the Defendant Whitehouse, I say "that it would be impossible for any dealer in such goods to be deceived as to "who had manufactured the same. 5. I am aware that retailers do occasionally "ask for their names or initials to be placed upon spoons or forks, but the name "of such retailer would not be impressed in the same manner as the words 10 "F. Whitehouse's Brazilian Silver' are impressed upon goods manufactured by "the Defendant Whitehouse. I do not believe for one moment that any retailer "of experience could be misled into supposing that the name of the Defendant "Whitehouse as impressed upon his goods applied to the retailer and not to the "manufacturer. 6. I am aware that the Defendant Whitehouse, in addition to 15 "putting his name upon the spoons and forks manufactured by him, causes "such goods to be made up into parcels of one dozen each, and that three of "such parcels are then placed into a box, and that each parcel and each box "bears a printed label with the words F. Whitehouse, Brazilian Silver,' "clearly printed thereon, such label also bears the Trade Mark of the 20 "Defendant Whitehouse, and the appearance of such Trade Mark upon the "label would clearly indicate to any one acquainted with the trade that the label "was placed on the parcel or box by the manufacturer, and not by a retailer who "has a trade mark." John Cutler, Q.C., for the Plaintiffs.-We submit that there has been a clear 25 breach of the injunction; but we do not press for committal only for the milder form of relief asked by the notice of motion. The judgment of the learned Judge at the trial shews that it was established that if "Brazilian Silver" appears upon the goods they would be taken to be the Plaintiffs', no matter what else appeared thereon also. The affidavits on the present motion clearly 30 prove that Whitehouse's goods in their present get up would deceive the trade and the public, and although the Defendants' witnesses say the trade would not be deceived, none of them say that the public would not be deceived. The name" Whitehouse" is not a sufficient distinction, nor is the trade mark; and, as to that, although the trade mark appears on the packages it does not appear 35 upon the forks and spoons, and the evidence shews that the forks and spoons are often sold apart from the packages. Macnaghten, Q.C., for Whitehouse and Everall.-The Plaintiffs are claiming an exclusive right to the words "Brazilian Silver"; but Mr. Justice Barnes, at the close of his judgment, refused to grant an absolute injunction. Under the 40 injunction as it stands the Defendants are at liberty to use "Brazilian Silver" provided they clearly distinguish, and this Whitehouse has done. From what Mr. Justice Barnes said, after giving judgment, his view was that if Whitehouse used his own name in conjunction with "Brazilian Silver" that would do. No reply was called for. 45 NORTH, J.-I think in this case the Defendant is wrong. There are two points raised. First, what the meaning of the order by Mr. Justice Barnes was; and, secondly, assuming a particular meaning to be attached to it, whether the Defendant has complied with the exigencies of that order or has not. On the first point it is quite clear, reading through the learned Judge's judgment, that he 50 considered that the name 66 Brazilian Silver" described a well-known article of commerce made by the Plaintiffs, and that was the one thing it did describe. No question arises between the parties as to the composition of the article made either by the Plaintiffs or the Defendants, or whether it was identical or not; but it was the use of a particular name as describing an undescribed thing that 55 |