66 Daniel and Arter v. Whitehouse and Everall. had been sold for a long time, but denoting it as actually made by the Plaintiffs. The learned Judge thought they clearly had established their case. In the course of the observations at the end the learned Judge, in pointing out what the form of order should be, says, "My opinion is, taking the case as a whole, that 5 "the Plaintiffs have established their position, and the case falls within the well"known class of authorities which have been referred to in the course of the argument, which entitle a person who has acquired a right by use to consider "a certain description of goods as identified with his name, and to prevent "other people who use that name from using it so as to pass the goods off to 10" the public and buyers as goods made by the Plaintiffs." Then a little further on, after having pointed out what the order was to be, and that the Plaintiffs were entitled to the injunction which they claimed, “I take it that that injunc"tion will be substantially in the form which was adopted in the Yorkshire "Relish' case. The Defendants are not to be allowed to use this name in 15" connection with or as descriptive of their goods without distinguishing them "from the Plaintiffs' goods, so that nobody can mistake the one for the other." Then Mr. Bousfield said "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 Defendants 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 that your Lordship sees that had to be guarded necessarily the right to sell it if he could." Mr. Justice Barnes: "Must not it be limited? Suppose they stamp upon the goods in a bold way so and so. That was a question the learned judge put, but he did not answer 25 it, and I do not think it necessary for me to answer it either, because whether the true spirit of the judgment is that it prevents the use of the name altogether, or prevents the use of it unless accompanied by some such words as "These goods are not made by Daniel and Arter, but are made by so and so," then that would be sufficient. I do not think it necessary to go into that part of the case because 30 in my opinion, assuming the latter view which I have taken is the true one the injunction was to be one which would not prevent the Defendant saying "The 20 66 6 66 66 66 goods are not made by Daniel and Arter, but are made by me, Whitehouse." Assuming that to be the construction of the injunction I do not think that the Defendant has used those words or anything like them. What he has done is 35 this: He has kept the old name, the "Brazilian Silver," and then he has added at the beginning "F. Whitehouse's Brazilian Silver." 66 Is that sufficient? Does that say it is not made by Daniel and Arter, but is made by me? I do not think it says anything of the kind; and there is a good deal of evidence, of which I will read one instance in the evidence of Mr. 40 Handford in his affidavit in chief. There is some little contradiction on it, but what is established is what I find in this affidavit. He says, "I am acquainted "with the mark Brazilian Silver' and have known it for 15 years last past. "The words Brazilian Silver' in the trade denote a particular kind of nickel silver article manufactured by Messrs. Daniel and Arter. If I saw the words 45 "Brazilian Silver' stamped upon spoons or forks I should immediately conclude "that they were Messrs. Daniel and Arter's make and I should sell them as goods of Messrs. Daniel and Arter's manufacture. In my opinion the words 'Brazilian "Silver' on spoons and forks would convey to the general public, who buy this "class of goods and who are in the habit of buying Brazilian silver, that such 50"spoons and forks had been made by Messrs. Daniel and Arter. In the trade the "mark 'Brazilian Silver' is regarded as belonging to Messrs. Daniel and Arter. A spoon and fork bearing the words 'F. Whitehouse's Brazilian Silver' are now produced and shown to me marked W.H. I should have considered, unless "informed to the contrary, from seeing the words 'Brazilian Silver' upon 55" them that such spoons and forks were manufactured by Daniel and Arter, and 66 66 66 6. 66 Daniel and Arter v. Whitehouse and Everall. "that F. Whitehouse was the name of the retailer, for whom they had been "manufactured, as it is very common in this trade for manufacturers to stamp a "customer's name or initials upon spoons or forks of a particular brand if requested to do so, and such name or initials frequently do not denote the manufacturer at all, and the brand is the only guide as to the source of the 5 "manufacture of the articles. The trade and the purchasing public would not "be guided by the initals or name but by the brand in determining whose "manufacture the goods were." Now, there is a good deal more evidence to that effect. There is some evidence the other way. But supposing we come to this, that there are some people who would not take the view of the case- 10 the evidence of witnesses that a good many people would do so puts that aside. In my opinion, the Defendants have not done what was necessary for the purpose of complying with the Order. Committal has not been asked for, and I do not think it is a case for committal, but it is a case in which the Defendant must, in my opinion, pay the 15 costs. As regards the servant, I think it is a great pity that he was joined. Everall is a mere servant who was acting in the matter, and although no doubt it is quite clear that the Court can commit for contempt a person who, though not a party to the action, assists other people in commiting a breach of an injunction, yet he was a 20 mere servant in the matter, and I think he should not have been brought here at all. He was a mere servant under his master, and it was quite sufficient to bring the master here as the person against whom the motion is made. The servant has appeared by the same person as the master. It will make no difference to the costs, because I do not mean the master to pay less than the whole costs. I think 25 it would have been better if Everall had not been proceeded against. Macnaghten, Q.C.-The order is that Mr. Whitehouse pay the costs of the motion. NORTH, J.-Yes. J. Cutler, Q.C.-And your Lordships will grant an injunction to restrain him 30 from stamping forks and spoons, as they are now stamped? NORTH, J.-No, I have decided it as a breach of the injunction. I have only done that because there is an injunction. You do not want a fresh one. I think the Defendant would do wisely if he ceased to use the name "Brazilian Silver." Why cannot he call it "Cuban Silver" or "Porto Rico Silver" or something 35 else? The Pneumatic Tyre Company, Ld. v. The Tubeless Pneumatic Tyre and Capon Heaton, Ld., and others. 5 10 IN THE HOUSE OF LORDS. Present: THE LORD CHANCELLOR, LORD WATSON, and LORD SHAND. December 9th and 12th, 1898. THE PNEUMATIC TYRE COMPANY, LD. v. THE TUBELESS PNEUMATIC TYRE AND CAPON HEATON, LD., AND OTHERS. Action for infringement of three potents.-One only relied on at the trial.Validity not contested.-Infringement not found.-Judgment for Dejendants, with costs, and certificate that the Particulars of Objections to the two abandoned patents were reasonable and proper.—Appeals dismissed. The P. Company brought an action against the T. Company for infringe ment of three patents for improvements in pneumatic tyres, one being a patent by B. for a tyre held to consist (inter alia) of an inner inflatable tube. At the trial, the question resolved itself into one of infringement of this patent, the case as to the other two patents being abandoned by the Plaintiffs. The Defendants 15 had no inner inflatable tube, but the Plaintiffs contended that part of the Defendants' construction was equivalent to an inner inflatable tube. Held, at the trial, that the Defendants had not infringed, and judgment was given for them with costs. The Plaintiffs appealed to the Court of Appeal. Held, by the MASTER OF THE ROLLS and VAUGHAN WILLIAMS, L.J., that the 20 inner inflatable tube was of the essence of B.'s invention, and that the Defendants had not infringed, but it was held by RIGBY, L.J., that the Defendants had taken the combination described in B.'s first claim, and therefore had infringed. The appeal was dismissed, with costs. The Plaintiffs appealed to the House of Lords. Held, by the House of Lords, 25 that the Defendants had not infringed. The appeal was dismissed, with costs. On the 21st of October 1890, a patent (No. 16,783 of 1890) was granted to William Erskine Bartlett for an "Invention of improvements in tyres or rims "for cycles or other vehicles." The Complete Specification of this patent (which will be found set out in full in 14 R.P.C., page 283) was, so far as material 30 for this report, as follows:-" This invention relates to tyres which consist of a "flat endless band of india-rubber wider than the dovetailed groove into which The Pneumatic Tyre Company, Ld. v. The Tubeless Pneumatic Tyre and Capor Heaton, Ld., and others. "it is inserted, so that it assumes an arched form when in place. I introduce "between the arched outside tyre and the circular bottom of the metal rim a "tube constructed of cloth and india-rubber provided with a branch for filling "it with compressed air." The first claim was: "The combination of a grooved "rim or metal tyre, and an arched tyre of india-rubber or other flexible 5 "material held in the groove by the pressure of an inflated tube within the arch, "which forces its edges against the sides of the groove substantially as "described." An action was brought by The Pneumatic Tyre Company, Ld., to restrain infringement of this and two other Letters Patent, of which they were the pro- 10 prietors, viz., No. 10,607 of 1888, granted to J. B. Dunlop, and No. 19,990 of 1890, granted to Wm. Golding. All three patents were for improvements in pneumatic tyres. The breaches complained of were the sale of certain tyres alleged to be made in accordance with the said inventions. These tyres were known as Fleuss tyres. The Defendants denied infringement, and also the 15 validity of the several Letters Patent on various grounds.* The case as to the Dunlop and Golding patents was abandoned by the Plaintiffs. The action was tried on the 7th and 8th of December 1897, before Romer, J., who held that the Defendants had not infringed the patent relied on, and dismissed the action, with costs.* 20 The Plaintiffs appealed. On the hearing of the appeal it was held by the MASTER OF THE ROLLS and VAUGHAN WILLIAMS, L.J., that the inner inflatable tube was of the essence of Bartlett's invention, and that the Defendants had not infringed: but RIGBY, L.J., dissented, and held that the Defendants had taken the very combination described in the first claim of 25 of Bartlett's Specification, and had infringed Bartlett's Letters Patent. The appeal was dismissed with costs.† The Plaintiffs appealed to the House of Lords. Moulton, Q.C., Roger Wallace, Q.C., J. C. Graham, and A. J. Walter (instructed by J. B. and F. Purchase) appeared for the Appellants; T. Terrell, Q.C., 30 Astbury, Q.C., Jenkins, Q.C., and Rylands (instructed by Field, Roscoe and Co., agents for Smith, Pinsent and Co., of Birmingham) appeared for the Respondents. Moulton, Q.C., and Roger Wallace, Q.C., for the Appellants.-The only question in this appeal is infringement. The Plaintiff sues on Bartlett's Specification, No. 16,783 of 1890. The invention thus is for an arched tyre 35 held in a grooved rim by an inner chamber. The Defendants have dispensed with the inner tube, but are using an equivalent. They have the grooved rim and the arched tyre. Instead of the inner tube they have lined the insides of the arched tyre and added a flap to one side, or rather continued the lining of the arched tyre beyond the edge of the tyre on one side. When inflated the 40 lining and flap constitute an inner tube. The mechanical forces which are made use of in the Fleuss tyre are exactly the same as in Bartlett. These forces were never before used for this purpose. Bartlett was the first to make the air its own gaoler; he used the air pressure to give resistance to air pressure. [HALSBURY, L.C.-Have you not claimed the combination of the three parts, 45 grooved rim, arched tyre, and inner tube] The question is, Have the Defendants taken the pith and marrow? [Lord WATSON.-If the inner tube is of the essence of your patent it is difficult to see how a tubeless tyre infringes.] From the outside it is exactly the same as the Gormully tyre, which was held to be an infringement (Gormully and Jeffery Manufacturing 50 Co. v. North British Rubber Co., 15 R.P.C., 245). During all the time The Pneumatic Tyre Company, Ld. v. The Tubeless Pneumatic Tyre of action it is, in fact, a tube, but not a separable tube. [HALSBURY, L.C.— In the Gormully case, the separability of the tube was put forward as one of the merits of Bartlett's invention.] The outer cover can be made to serve as the tube so as to dispense with the tube. Previous to 5 Bartlett, no tyre had been thought of which was held on by air pressure, whether separable or inseparable. The Defendants have taken five sixths of Bartlett's invention in such a way that the other sixth takes itself. The only difference between this and the Gormully tyre is that this is only a temporary tubular chamber. All the merits of the invention are here. The only 10 question is, must the air pressure be got by a separable device. Bartlett's invention was making the air pressure useful for holding on the cover. He could not get air pressure without air tightness, and he naturally thought of the ordinary method of the day, viz., a tube. It makes no difference how the air pressure is got. Bartlett's invention is for two things held together in a 15 particular way. The only difference in the Fleuss tyre is that their tube is not separable. [Lord SHAND.-In the Gormully tyre there were all three, rims, cover, and inner tube.] The Respondents must have a tube in action, and they utilise the outer cover. [Lord SHAND.-Here there is no third factor.] Portion of one of their factors, viz., the lining of the cover, is useless for the purpose of a cover, and is made to perform the function of a tube when the tyre is in action. [Lord HALSBURY, L.C.-The whole question comes back to the construction of the claim.] The whole purpose of the first claim in Bartlett's specification is to get air pressure. [Lord SHAND.-The purpose may be the same but the means may be different.] The means are practically the same. Bartlett uses 25 an inflated chamber. If the Respondents build up a chamber then, it is submitted, they infringe. Both use a rim, a cover, and a tubular chamber. The only difference lies in the separability. 20 35 Counsel for the Respondents were not called on. Lord HALSBURY, L.C.-My Lords, I confess that it seems to me that this 30 matter is susceptible of being treated very summarily indeed. It becomes really a question of fact and of the construction of the patent which is said to be infringed. Both of your Lordships who are here took part in the judgment on the former occasion, and I think indeed delivered the only judgments upon the matter, and you are familiar of course with the construction which was placed upon, and the mechanism which was the subject of, the patent which is now alleged to be infringed. It appears to me that the patent essentially differs from the thing which has been produced as the infringement. It is not a very profitable exercise to go through every part of a new machine and to see whether or not there may not be something which corresponds in the old patent that is 40 alleged to be infringed. Of course there are, and there must be, when you are dealing with the same subject-matter, and dealing also with machines intended to produce the same result, some things which must be common to both, whether the apparatus in question is an infringement or not; but the thing which your Lordships have to consider is whether or not the invention-the thing which 45 has been protected and which the rest of mankind are prohibited from using for the period during which the patent lasts-has been taken by the person who is alleged to have infringed. I confess to my mind I cannot see how, under patent law, it can be plausibly argued that it has been taken here. That a principle which was applied in the former case exists here I do not deny-I think 50 that is true; but that there is any principle which can be claimed as a principle, as distinct from the application of it to the particular machine, is of course quite outside the region of patent law. You cannot appropriate to yourself a mere principle; you can only appropriate the application of the principle, and upon reading the specification of the patent which is now alleged to be infringed, it |