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Meaby and Co. Ld. v. Triticine, Ld., and Others

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In the Matter of the Registered Trade Mark, No. 52,389.

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"for Children and Infants and for all who require strengthening food. Meaby's "Triticumina' (Patent) Entire Wheat Meal Bread and Prepared Wheat Meal; then a little further on they quote Dr. Allinson's letter to them on the subject. "I have gone carefully into your process of preparing wheat meal, and have "watched the operations of bread making with great interest at your bakery, 5 "Queen's Road, Reading." Then he goes on to speak of the "most palatable "Entire Wheat Meal Bread,' without the use of soda or other injurious "chemicals." Then a little further on there is a fresh paragraph after the quotations from Dr. Allinson and Dr. Shea; and then comes this"Triticumina' Patent Prepared Wheat Meal. The meal can be ground 10 "to any degree of fineness, and is prepared in three qualities." It points to the three-coarse, medium, and fine-and then it says this: "As it is "prepared from the finest grown wheats, without the addition of any other "cereal, it is much more acceptable to the delicate organs of infants and 66 enfeebled persons than the many prepared foods of mixed cereals, in which 15 "each cereal requires a different degree of cooking and digestion." Then it goes on to speak of the chemical operation, which I need not stop to read. Then there is another quotation from Dr. Allinson and Dr. Shea, Dr. Allinson says the "Triticumina" Patent Meal is an excellent article of diet, and so on, and it is pointed out how much better it is than oatmeal and other meal. Now, 20 without going further, that derivation of the name, and that advertisement describing it by the person who brought it out, is conclusive to my mind as to what "Triticumina" is and what it is intended to designate. It is intended to designate these wheat meal products which are described in that advertisement and described over and over again in various other advertisements which have 25 been put in evidence. I have not the slightest doubt that it was intended to be by its name descriptive of the thing to which it was applied, and to point out how much better that thing was than other things in which the wheat meal was not contained at all, or at any rate not solely contained.

In my opinion, therefore, the Trade Mark is one which is not a fancy word as 30 used in the Act of Parliament, and is not, therefore, a good subject of a Trade Mark. I must therefore allow the motion to take it off the Register, and that motion must carry the usual consequences of costs to the successful party.

Terrell, Q.C.-As to the costs, will your Lordship order that we may take out the sum of £150, which is in Court as security, the Plaintiffs being a Company 35 in liquidation?

NORTH, J. Very well.

Sebastian. There was a motion for an injunction by the Plaintiffs, which was ordered to stand over and come on with the trial. I suppose, after what your Lordship has said, you will make us no Order on that?

NORTH, J.-I must deal with that by making the costs of that motion costs in the action. It will not help anybody, but that is the proper Order to make.

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In the Matter of Standfield's Patent.

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Before THE JUDICIAL COMMITTEE OF THE PRIVY COUNCIL.

Present: LORD HOBHOUSE, LORD MACNAGHTEN, LORD DAVEY, and

SIR RICHARD COUCH.-December 10th, 1897.

IN THE MATTER OF STANDFIELD'S PATENT.

Patent.-Petition for prolongation.-Earlier patents of the same Patentees disclosed on the hearing but not mentioned in the Petition.-Duty of Petitioners.

On the 28th of December 1883, a patent (No. 5889 of 1883) was granted to John Standfield for an invention of improvements in hydraulic lifts, floating docks, pontoons, and other floating structures, and in appliances connected 10 therewith.

A petition for the prolongation of this patent having been presented by the executors of the said John Standfield and others came on for hearing.

A. J. Walter (instructed by Machrell, Maton, Godlee, and Quincy) appeared for the Petitioners; Sir Richard Webster, A.G., Sutton, and Denniss appeared 15 for the Crown.

In the course of the examination of the Petitioners' witnesses, reference was made to two earlier patents of 1875 and 1878, which had been granted to John Standfield and Lattimer Clarke and were not mentioned in the Petition. After the case had proceeded a little further, the Attorney-General said that he could 20 not waive the fact that there had been no previous communication to the Committee of these patents, which to a considerable extent covered the same field, and submitted that that was a fatal objection to the Petition.

Walter (after a short adjournment to enable him to consider the matter with his clients) said there had been no intention on his clients' part to withhold 25 these Specifications from the Committee. The earlier patents related chiefly to different inventions, and the Petitioners had entirely forgotten that the earlier patents had anything to do with the invention forming the subject matter of the patent now before the Committee, and had never brought the earlier patents to the attention of their solicitors or counsel. The Petitioners, 30 now that the earlier patents had been brought to their attention, had considered the question with him, and he did not think he could establish the necessary degree of merit in the patent sought to be prolonged in view of what was disclosed in the earlier Specifications, and his clients had instructed him not to proceed with the petition.

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LORD HOBHOUSE.-I think it is also right to observe that, independently of the question whether the existence of the prior patents does not take away merit from the later one, it is incumbent upon all persons who come here petitioning for a prolongation that the whole history, everything bearing on the matter, should be stated on the face of the petition.

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Holophane, Ld., O'Clery, and Davis v. O. Berend and Co., Ld.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE KEKEWICH.-November 19th, 1897.

HOLOPHANE, LD., O'CLERY, AND DAVIS v. O. BEREND AND CO., LD.

Patent.-Action for infringement.-Motion for interlocutory injunction.Practise in case of recently granted patents.

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The Plaintiffs, as owners of a patent of 1893, the validity of which had not been established by legal process, brought an action for infringement, and moved an interlocutory injunction. The Defendants had advertised, but had not begun to sell any of the alleged infringing articles at the commencement of the action. In opposition to the motion, they challenged the validity of the patent on the 10 ground of anticipation by matters of common knowledge and by a prior patent.

Held, that an injunction ought not to be granted on Defendants undertaking to keep an account of their sales.

In 1893, Letters Patent (No. 19,185 of 1893) were granted to Spiridion Psarondaki and André Blondel for an invention of " Improvements in the 15 Diffusion and Distribution of Light."

This patent became vested by assignment in Keyes O'Clery and Hy. John Davis in trust for Holophane, Ld. On the 5th of October 1897, Holophane, Ld., and the said K. O'Clery and H. J. Davis commenced an action for infringement of the said patent against O. Berend and Co., Ld., claiming the usual relief. 20 The Plaintiffs gave notice of motion for an interim injunction to restrain the Defendants, until judgment or further order, from manufacturing, selling, offering for sale, or supplying the globes advertised by them under the title of "Heybrock's Opterophane" or "Opterophane," or any other globes made according to the Plaintiffs' patent.

On the motion coming on for hearing, Warrington, Q.C., and Jessel (instructed by Dixon, Watts, and Elkin) appeared for the Plaintiff's H. Terrell (instructed by C. N. and H. B. Taylor) appeared for the Defendants.

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Warrington, Q.C., and Jessel, for the Plaintiffs, asked for an injunction according to the notice of motion, notwithstanding that the patent was a recent 30 patent, and its validity had not been established by any action. The Defendants, when the action commenced, had not begun to sell, but were only advertising, so that on the balance of convenience it would be better to stop them at once, the Plaintiffs, of course, giving an undertaking in damages. The Defendants' goods, which were very inferior, were manufactured in Germany, 35 and were an obvious infringement of the Plaintiffs' patent, carrying out the same process only more roughly. The Defendants pleaded anticipation by matters

Holophane, Ld., O'Clery, and Davis v. O. Berend and Co., Ld.

of common knowledge and by a patent of 1883 of a Mr. Trotter, which was of a different character and only applicable to lanterns having a flat side. was not sufficient simply to challenge validity in this way.

The affidavits of both parties were read to the Court, but Counsel for the 5 Defendants was not called upon to argue.

KEKEWICH, J.-During the forty years over which my experience extends, and, I think, for a considerably longer period, the Court has acted on one uniform rule, subject, of course, to exceptions, in dealing with applications of this character. The rule, as I understand, is this: that where the proprietor of 10 recently granted Letters Patent, the validity of which has not been established by legal process, seeks an injunction against an alleged infringer, the Court declines to interfere by interlocutory injunction and leaves the Patentes to establish the validity by formal proceedings. Of course, forty years ago the motion for injunction had to stand over while the validity of the patent was established 15 at law. Fortunately we have got rid of that, and the injunction and the validity can all be determined and disposed of in one and the same action in one and the same Court; but the rule holds still.

Of course there are exceptions. I quite follow the argument that it will not do for a Defendant coming here as against the proprietors of Letters Patent 20 simply to say, "I challenge the validity." There must be something more than that. The Court must be satisfied that there is an honest intention of trying the question, and not only an honest intention of trying the question, but that there is something to be tried.

Now, I put aside altogether the infringement. It may be that I might con25 clude or I might not conclude at once that there is an infringement; but that is not the question. The question is whether there is an issue to be tried as regards the validity of the patent. Now, the Defendants' affidavits set up two defences. The first is common knowledge, which we all know to be a matter requiring considerable investigation. The second is anticipation by one prior 30 patent. I have heard argument which, I am told, ought to convince me that that alleged anticipation must fail-that is, Mr. Trotter's. But unfortunately, or fortunately as a matter of fact, having from time to time tried a good many cases where an anticipation has been set up, I know that those issues are extremely difficult, and require a large amount of expert evidence, and that 35 they are issues upon which it is not at all difficult to find expressions of different opinions, not only by experts, but by Judges. I cannot see that there is any reason here for supposing that the defence is a sham-that it is put forward simply to get rid of the present injunction, and to defy or defeat the Plaintiffs on this particular application. It does seem to me, although it may 40 turn out that the Defendants are entirely wrong, that at any rate it is an arguable case requiring the Court to listen to evidence, and to examine into the matter very thoroughly.

That being so, I have no power-no right—to interfere now, and to say that the Plaintiffs shall have the injunction, and restrain the Defendants from manu45 facturing and selling these globes, which after all may be legitimately put upon the market. The only answer to it is this: We, the Plaintiffs, are doing a considerable business; we have established ourselves in the market, and the Defendants are now coming forward. They have not sold any, or, if any, not many of their goods; it will be no great interference with them, and, on the 50 other hand, we say that theirs are inferior, and we may be seriously damaged if this trade is allowed to increase during the next six months or a year while this case is maturing for trial. The answer to that seems to me to be that the Court gives damages for infringement from the start, and the Court has in certainly two cases which occur to my recollection, the "Horse-shoe Nail" case 55 and the "American Braided Wire" case, carefully laid down the rules according to which damages are to be estimated.

Holophane, Ld., O'Clery, and Davis v. O. Berend and Co., Ld.

It must be taken for granted, I think, in this or in any other case, that the Plaintiff will get a verdict eventually for whatever damages ought to be paid by the Defendant by reason of infringement, if infringement be established against the Defendant, so that I cannot see myself that there is any particular balance of convenience in granting an injunction in this case, whereas, of course, it 5 would be a great hardship on the Defendants if they are right to say that they shall not prosecute a trade which, from that point of view, may be held to be legitimate.

Of course the Defendants will undertake to keep an account. What that account ought to be it strikes me as a little difficult to say. I repeat, as I have 10 said before, I have never myself seen the great advantage of the undertaking by the Defendant, alleged to be an infringer, to keep an account. He is bound to keep an account for his own protection, because if he does not keep an account, and he is afterwards held to be wrong, the sort of rule which is known as a diamond of the first water rule will be used against him, and he may find 15 himself in great difficulty by reason of his not being able to prove what he has sold. Still, it is the practice to keep an account, and if the parties can frame an account which will answer the purpose, I think an undertaking to keep an account of that kind ought to be given, but I know it is difficult to frame it in words which would apply to all possible results. I must refuse the motion, 20 and make the costs in the action.

Terrell, Q.C.-As your Lordship has pointed out, of course I keep accounts, and I will undertake to keep any account your Lordship thinks fit.

Warrington, Q.C.--I think, for the present purpose, it will be enough if my friend keeps an account of all "Heybrock's Opterophanes," as they are called, of 25 the particular shape as sold or imported by him.

KEKEWICH, J.-Very well. He will do that.

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