PASSING OFF-continued. 7. Injunction_granted restraining Defendant from the use of the word "Dindigul" in connection with cigars without clearly distinguishing such cigars from those of the Plaintiffs'. Action to restrain-Name of place.-Motion for interlocutory injunction. - Form of injunction. In 1887, B. and Co. commenced to sell Indian cigars under the brand "Flor de Dindigul," and had since sold the same in large quantities. The cigars were often asked for and sold as "Dindigul" cigars; the name "Dindigul" had not prior to B. and Co.'s use been used as part of the name of a cigar. În 1897 H. commenced to sell cigars under the brand "Cigarro de "Dindigul." B. and Co. commenced an action against H. to restrain H. from using in connection with cigars the words "Cigarro de "Dindigul," "Dindigul," or "Flor de Dindigul," and also from passing off his goods as the goods of B. and Co. B. and Co. alleged that in the Defendant's shops the Defendant's cigars had been sold in response to orders for "Flor de Dindigul" cigars. The Defendant claimed the right to use the name Cigarro de Dindigul," on the ground that Dindigul was a district in India in which the tobacco was grown of which his cigars were made. B. and Co. moved for an interlocutory injunction.-Held, that B. and Co. were entitled to an interlocutory injunction restraining the Defendant from using the name of "Flor de Dindigul" or "Cigarro de "Dindigul" as the brand or title of any cigars not being the Plaintiff's cigars, and from supplying any cigars not being the Plaintiff's cigars in response to orders for "Flor de Dindigul" cigars, and from using the name "Dindigul" in connection with the sale of cigars not being the Plaintiff's cigars without clearly distinguishing such cigars from the Plaintiffs' cigars; but the order was not to prevent the Defendant from describing any cigars sold by him which were in fact made of "Dindigul tobacco as being so made. BEWLAY & Co., LD. v. HUGHES, p. 290. 66 8. No injunction granted with regard to infringement of Trade Mark but granted for passing off.-Trade Mark and passing off. -Action for infringement and passing off-Endeavour to pass offNo injunction as to Trade Mark.-Injunction as to passing offCosts. In 1886, L. Brothers registered a Trade Mark in Class 47 for common soap, which consisted of a label divided into compartments and having the word "Sunlight" prominently in a compartment at the top and the word “ Soap on a scroll underneath, with flowers round about the scroll, and in other compartments letterpress. They also at the same time registered a similar Trade Mark in Class 48 for perfumed soap. In 1894, L. Brothers, Ld., who had become the registered proprietors of the above-mentioned Trade Marks, registered another Trade Mark in Class 47 for soap, which consisted of a label very similar to those above-mentioned, but having the figure of a maid hanging out clothes to dry in a compartment which was blank in the labels previously registered. In 1897, B. commenced to sell soap in boxes having on the top a label also divided into compartments, which, however, were not identical with those in the labels of L. Brothers, Ld.; this label had the words "Red Maid " prominently in a compartment at the top, and the word "Soap" on a scroll underneath, with flowers round about the scroll. The colours in this label were to a great extent the same as those in the labels of L. Brothers, Ld., but were differently arranged. L. Brothers, Ld., PASSING OFF-continued. commenced an action for infringement of their three Trade Marks above described and for passing off.-Held, that although the idea of some parts of the Defendant's label must have been taken from the Plaintiffs' Trade Marks, so much had not been taken as to constitute an infringement of any of the Plaintiffs' labels; but that the conduct of the Defendant showed that he had endeavoured to pass off his goods as and for the goods of the Plaintiffs, and that having regard to that fact the Plaintiffs were, on the authority of Reddaway v. Banham, 13 R.P.C. 218, entitled to an injunction on the second part of the case. A special order as to costs was made. LEVER BROTHERS, LD. v. BEDINGFIELD, p. 453. 9. No injunction granted with regard to infringement of Trade Mark, but granted for passing off.-Trade name.—Trade Mark.-Action for infringement and passing off-Probability of deception established. H. and S. took over in 1891 the business of The Lion Soap Company, and subsequently sold "Red Lion Soap," "Golden Lion Soap," and "Lion Carbolic Soap," the first in large quantities. They were the owners of several registered Trade Marks, one being the word "Lion," and the others comprising the device of a lion, but they did not use any of their Trade Marks as such upon their soap wrappers. Their soaps became known as "Lion Soaps." K., a limited company, who dealt in arms and ammunition, and had registered and used for such goods the Trade Mark of a lion's head, began to sell soaps in four different wrappers, unlike H. & S.'s wrappers, but having thereon the representation of a lion's head in several places, and in some cases with the words "Trade Mark" attached. K.'s name was prominent upon their wrappers. An action was brought by H. and S. against K. to restrain them from infringing the Plaintiffs' Trade Marks, and to restrain them from selling soap in wrappers or boxes bearing the device of a lion or a lion's head, and from using the device of a lion and the word lion in the course of their trade in soap.-Held, that the Plaintiffs had not established a case of infringement of Trade Mark, but were entitled to an injunction to restrain the Defendants from selling, or offering for sale, soap in the wrappers complained of or so as to induce the belief that the Defendants' soaps are manufactured by the Plaintiffs. HODGSON AND SIMPSON v. KYNOCH, LD., p. 465. 66 10. Forty Shillings damages awarded for the use of "Buck's Patent" in the past, but no injunction granted for the future.-Patent.-Infringement.-Reference to English patent on goods imported from America.-Damages.-Costs. In 1892 a patent was granted to B., an American, for improvements in "rubber stamps " and a patent for a similar invention was granted to him in America. L. sold certain rubber stamps which he imported from America, where he obtained them from H. These stamps bore, by arrangement with B. and H. the following:-"Licensed Buck's patent," "Made in America," "Patented in U. S.," and "Patented in England." The owners of B.'s English patent brought an action against L. to restrain him from infringing their patents and from selling stamps inscribed "Buck's patent," or with any other words. leading to the belief that the stamps were made under their patent, and they claimed an account of profits.-Held, that the Defendant's stamps were not infringements, and that on the Defendant undertaking in future to use words showing that the American patent was 16747-2 E 2 PASSING OFF-continued. alone referred to, no injunction would be awarded, that no case of passing off had been male out by the Plaintiffs, but that the Plaintiffs were entitled to damages for the use by the Defendant in the past of the words complained of, which damages were assessed by the Judge at 40s. A special order as to costs was made. PNEUMATIC RUBBER STAMP CO. v. LINDNER, p. 525. 66 11. "Sparkling Lime Wine." Defendants held entitled to use the term and not to have imitated the get up of the Plaintiffs' goods.-Action.-Passing off.-Get-up. A company, which had for some years sold an article by the name of "Sparkling Lime Wine," brought an action against a firm to restrain them from passing off their goods as and for the Plaintiff Company's goods, and moved for an interlocutory injunction. The Plaintiff Company did not claim any right to the exclusive use of the name Sparkling Lime Wine" (which name the Defendants were also using), and had, in applying for a Trade Mark containing these words, expressly disclaimed any such right, but alleged at the hearing of the motion that the Defendants had imitated the get-up of the Plaintiff Company's goods. The Plaintiff Company and the Defendants both put their respective names and Trade Marks on their goods.-Held, by NORTH, J., and on appeal by the COURT OF APPEAL, that on the facts the Plaintiff Company had not established a probability of deception, and the motion and appeal were both dismissed, with costs. PACKHAM & Co., LD. v. STURGESS & CO., p. 669. 66 66 12. "Magnolia" Anti-Friction Metal "Tandem C Metal." Held that the word "Magnolia" did not designate the Plaintiffs' goods and that the Defendants had not used the word Magnolia" so as to pass off their goods as the Plaintiffs'.Use of word" Magnolia" in connect on with "Anti-friction Metal." -Meaning of word.--Effect of findings of jury.—Form of injunction. -Appeal.-Judgment entered for Defendants. An English Company and two American Companies, which manufactured and sold Magnolia Anti-friction Metal," commenced in 1897 an action to restrain the 7 Syndicate, Ld., (1) from passing off anti-friction metal not of the Plaintiffs' manufacture as the Plaintiffs' metal by the use of the name "Magnolia," (2) from advertising themselves as manufacturers of" Magnolia Metal" and from representing that the metal manufactured by them was "Magnolia Metal," and (3) from representing that their "Tandem C Metal" was the same as "Magnolia Metal." The action was tried before RIDLEY, J., and a special jury. At a trial in November 1896, between The Magnolia Metal Company and The Atlas Metal Company, before COLLINS, J., the learned Judge found as a fact that the word "Magnolia" described the metal, and not the metal as manufactured by the Plaintiff Company. The questions put by RIDLEY, J., and the findings of the jury were:-(1) "Did Magnolia' mean the manufacture of the "Plaintiffs?" Answer-Until November 1896, the date of the last "trial, Magnolia ' did mean the manufacture of the Plaintiffs." (2) "Is the metal made by the Defendants practically and commercially "the same as that made by the Plaintiffs?" Answer-"No." (3) "Have the Defendants used the name so as to pass off their metal as "the manufacture of the Plaintiffs?" Answer-"The Defendants "did not use the name so as to pass off their metal as the actual metal "of the Plaintiffs, though they did use the name so as to pass off their PASSING OFF-continued. "metal as similar to that manufactured by the Plaintiffs." On these PATENTS, &c. ACT, 1883. Section 64 (1) (e). MEABY & Co., LD. v. TRITICINE, LD. AND OTHERS, p. 1. Section 65. CARTER'S APPLICATION, p. 262. J. BATT & Co's. TRADE Section 72. EASTMAN PHOTOGRAPHIC MATERIALS Co., LD. AND ANOTHER V. THE JOHN GRIFFITHS CYCLE CORPORATION, LD. AND THE KODAK CYCLE CO., LD. AND IN THE MATTER OF THE TRADE MARK No. 207,006 (KODAK), p. 105. CARTER'S APPLICATION, p. 262. J. BATT & CO.'S TRADE MARKS, p. 534. Section 75. CARTER'S APPLICATION, p. 262. J. BATT & Co's TRADE MARKS, p. 534. Section 76. CARTER'S APPLICATION, p. 262. J. BATT & Co.'s TRADE MARKS, p. 534. Section 90. EASTMAN PHOTOGRAPHIC MATERIALS CO., LD. AND ANOTHER V. THE JOHN GRIFFITHS CYCLE CORPORATION, LD. AND THE KODAK CYCLE CO., LD. AND IN THE MATTER OF THE TRADE MARK NO. 207,006 (KODAK), p. 105. WRIGHT AND CROSSLEY'S TRADE MARK, p. 131. CARTER'S APPLICATION, p. 262. WRIGHT, CROSSLEY, & Co.'s TRADE MARK, p. 377. J. BATT & Co.'s TRADE MARKS, p. 534. Section 105. WRIGHT, CROSSLEY, & Co. v. WILLIAM DOBBIN & Co., p. 21. MACSYMONS STORES, LD. v. SHUTTLEWORTH, p. 748. PATENTS ACT, 1888. Section 10. EDWARD RIPLEY AND SONS' APPLICATION, p. 151. EASTMAN PHOTOGRAPHIC MATERIALS Co.'s APPLICATION, p. 476. Section 17. J. BATT & Co.'s TRADE MARKS, p. 534. PERSON AGGRIEVED. (See RECTIFICATION OF REGISTER, No. 1.) Motion to expunge. Applicants held not to be persons aggrieved, not having shown any possible way in which they might be damaged by the presence of the Trade Mark on the Register.--Motion to expunge." Person aggrieved."—Motion dismissed.-Appeal.-Patents, &c. Act, 1883, Section 90. In 1887, Wright, Crossley, & Co. registered "Wright, Crossley, & Co." as a Trade Mark, used prior to the 13th of August 1875, in Class 42. The Royal Baking Powder Company moved to rectify the Register by expunging this mark, the chief ground taken being that the words had not been used as a Trade Mark prior to the 13th August 1875. The Respondents objected that the Applicants were not persons aggrieved within Section 90 of the Patents, &c. Act, 1883. There had been litigation of various kinds between the Applicants and Respondents. On the hearing of the motion, it was held that the Applicants were not persons aggrieved, as they had not shown any practically possible way in which they might be damaged by the presence of the Trade Mark on the Register, and that the Trade Mark was not in itself illegal or improper within the meaning of the judgment of BOWEN, L.J., in Paine and Co. v. Daniells and Sons' Breweries, 10 R.P.C. 219. The application was dismissed, with costs. The Applicants appealed. The appeal was dismissed, with costs. WRIGHT, CROSSLEY, & Co.'s TRADE MARK, pp. 131, 377. PRACTICE. See also DIGEST OF DESIGNS CASES (COSTS). 1. Appeal from Comptroller referred to Court. Verification of statutory declaration by affidavit necessary.-On an appeal referred to the Court from a decision of the Comptroller-General on an application to register a Trade Mark, a statutory declaration used before the Comptroller must be verified by an affidavit made by the declarant himself in order to be admissible in evidence before the Court. KINGSFORD and SonS' APPLICATION, p. 198. 2. Where Plaintiff who was held entitled to an injunction admitted that he was not entitled to damages or an account he was awarded the costs of the action so far as it claimed an injunction and ordered to pay the costs so far as it claimed damages or an account.-Action for injunction.-Negotiations for settlement.-Insufficient offer by Defendant.-Excessive claim by Plaintiff-Costs. In 1890 H. registered a Trade Mark. In 1896 P., who had infringed the said Trade Mark without knowing of H.'s registration or user of it, communicated with H., asking for the date of registration and disclaiming any intention to infringe. Negotiations ensued between the parties, in which P. was ready to give the undertaking asked for by H. subject to a condition that H. should not advertise it. H. was ready to agree to such condition on P. agreeing to disclose the names of his customers to whom he had supplied the goods. P. would not so agree, and the negotiations fell through. H. issued a writ asking for an injunction, damages or an account of profits, and costs. P., by his defence, offered an undertaking, but made no offer as to costs. At the trial it was admitted that H. was not entitled to damages or an account of profits.-Held, that H. was entitled to an injunction and the costs of the action so far as it sought relief by way of injunction, but that the Defendant was entitled to the costs of the action so far as it asked for damages or an account, such costs to be set off. G. F. HIPKINS & SON v. W. & S. PLANT, p. 294. |