G. F. Hipkins and Son v. W. and J. Plant.

the Plaintiffs' solicitors of the 24th of August 1896: "We here with send you "undertaking with slight alterations, of which we hope you will approve. "Our client declines to supply particulars of the sales which he has made of "the corkscrews marked Commercial.' It would be almost an endless task, "and we do not see what good end can be gained by your client. With regard 5 "to the request that he should send notices to his customers that he cannot in "future supply these particular corkscrews marked Commercial,' the same "remark applies. He will, however, in accordance with the undertaking, "rescind any orders for corkscrews marked Commercial,' and decline to "execute such orders. He will erase the word 'Commercial' from the four 10 "dozen corkscrews so marked which he has in stock." (4) A letter from the Plaintiffs' solicitors to the Defendants' solicitors of the 26th of August 1896 : "We have seen our clients, who see no objection to the alterations in the "undertaking; but, at the same time, they decline to take it unless your clients "will give the information asked for in our letter of the 21st inst., and also 15 "notify their own customers. We are instructed to say that if your client will "not give the particulars required, all negotiations for a settlement must be at an end."

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G. Henderson (instructed by Spencer Whitehead, agent for Balden and Son, Birmingham) appeared for the Plaintiffs; A. J. Walter and J. H. Gray 20 (instructed by Miller, Smith, and Bell, agents for Thorne, Smith, and Thorne, Wolverhampton) appeared for the Defendants.

Henderson for the Plaintiffs.-We are entitled to an injunction and costs. The Defendants refused to give the names of their customers, and this the Plaintiffs were entitled to; Upmann v. Elkan, L.R. 7 Ch. 130. It was the duty 25 of the Defendants to furnish all proper information. Although the Defendants did undertake not to infringe, yet the Plaintiffs were entitled to come to the Court for protection; Jenkins v. Hope (1896), 1 Ch. 278. We want to be able to stop the sale of the goods. (Geary v. Norton, 1 De G. & Sm. 9, was also referred to.)

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Walter. The action is oppressive. They imposed as a term of settlement the disclosure of the names of our customers. We have carried on the business since 1881. We submitted to the letter of the 10th of August 1896. In the letter of the 21st of August 1896, they do not ask for damages or profits, but for information. Our profits since 1885 are £3. [BYRNE, J.-It is admitted that 35 the Plaintiffs cannot claim damages or an account.] They consented to accept an undertaking, but they wanted something in addition. (BYRNE, J., referred to the letter of the 26th of August.) We voluntarily approached them. (BYRNE, J., referred to Upmann v. Forester, 24 Ch.D. 231.) Upmann v. Elkan covers this case, and is in my favour. (Henderson referred to Wittman v. Oppenheim, 40 L.R. 27 Ch.D. 260, and Kelly v. Hooper, 1 Y. & C. (Ch.) 197.) [BYRNE, J.-As to the last case, you have admitted you have no claim for an account.] There is no right to a list of customers; it is only ancillary to a claim for damages or profits. In Wittman v. Oppenheim there was no notice before writ. Henderson, in reply.-The Plaintiffs, in accepting an undertaking, were 45 contented with less than they were entitled to. We wished to see that the goods that they had sold were not on the market. It was reasonable to ask this. We did not get complete redress before action. They never offered all they ought to have offered. We asked for something more than our rights on one point, but we did so in consideration of taking something less than our rights 50 on another point.

BYRNE, J.-In this action I have a somewhat difficult point to determine-how I should deal with the costs. The case is this :-There is an action brought, seeking for an injunction to restrain the Defendants from infringing a certain registered Trade Mark of the Plaintiffs. It asks, also, for damages or an 55 account of profits, and it asks for costs, which of course it need not do, but it does as a matter of fact. In their Defence, the Defendants say that "They are

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G. F. Hipkins and Son v. W. and J. Plant.

willing, as they always have been willing, since the date when they first "heard that the Plaintiffs were owners of the said Trade Mark, to undertake "not to use the same. The Defendants have obliterated the said Trade Mark "from all corkscrews-four dozen in number-in their possession when they "received the said notice from the Plaintiffs, and have obliterated the said "Trade Mark from all price lists and catalogues bearing a representation of the "said Trade Mark."

The state of the circumstances is this :-The Plaintiffs are entitled to their Trade Mark, and to restrain other persons from infringing that Trade Mark. On the 10 other hand, it is not suggested that the Defendants are other than what I may term innocent users of the Trade Mark; that is to say, they have not taken it with the object of passing off their goods as goods of the Plaintiffs, and as clear evidence of their bona fides, they themselves, when their attention is drawn to the fact, at once communicate with the Plaintiffs, so that they are acting with 15 perfect bona fides in the matter. Nevertheless, they have been guilty of a legal wrong which, apart from any other circumstance, would have entitled the Plaintiffs to come to the Court asking for relief in the way of injunction. A correspondence took place before action, and it is to be regretted very much that terms were not finally arranged between the parties. I think the result of 20 the correspondence before action is this: that the Defendants were willing to give, and the Plaintiffs were willing to take, an undertaking which would have effected, so far as the injunction is concerned, all that the Plaintiffs wanted; but the Defendant, Plant, stipulated that there should be a condition on his signing the undertaking, which was a condition that in point of law he was not entitled to 25 insist upon. The Plaintiffs were willing to take it with this condition upon certain other conditions which the Plaintiffs were probably not entitled to enforce, as events have turned out. In that state of circumstances, the Plaintiffs' solicitors write and say that the negotiations for a settlement are at an end, and the writ is issued. The writ, as I have said, asked not only for an injunction, but 30 also for damages or for an account. It is admitted by the Plaintiffs that they are not entitled either to damages or to an account, and that their action so far, therefore, was misconceived. They say, however, they have established their right to an injunction, and therefore they are entitled to the costs of the action. If the Defendants, by their Defence, had offered to pay the costs of the 35 action as well as to give the undertaking which they offer in paragraph 7 unconditionally, they would have been in a different position from what they are now. In point of fact, they did not offer to pay the costs of the action up to the date of the Defence; nor did they, after writ issued, offer to give an undertaking in the face of the Court, or to submit to injunction as asked.

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In the result, and endeavouring to do justice as best I can between the parties, I think that the Plaintiffs are entitled to the costs of the action so far as it seeks relief by way of injunction, but that the Defendants are entitled to the costs of the action so far as it asks for damages or an account, and I think that those costs ought to be set off, upon taxation, the one against the other. There 45 will be an injunction to restrain the Defendants from infringing the Plaintiffs' Trade Mark No. 97,027.

Allen v. Oates and Green, Ld.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE KEKEWICH.-April 28th and 29th, 1898.

ALLEN v. OATES AND GREEN, Ld.

Patent.-Action for infringement.-Construction.-Subject-matter.—Novelty. -Patent held invalid.

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In 1885, Letters Patent were granted to A. for "The use of earthenware pipes "in place of brickwork or other material in the formation of self-flushing "water closets." The claim (as amended) was for "The use of pipes of the above "form, constructed of earthenware to form, as hereabove stated and described, a direct communication of the water closet seat with the main drain." The 10 Patentee brought an action for infringement, in which the Defendants alleged (inter alia) non-infringement, want of subject-matter, and want of novelty. The Plaintiff alleged that his invention consisted in a combination of pipes performing a function not performed by the parts separately.

Held, that the claim was for the use of the pipes in combination, that it was 15 useful, but that the patent was invalid for want of subject-matter, since the combination performed no function not performed by the parts separately, which functions so performed were not novel, and that even if this were not so, the combination was not novel. The action was dismissed, with costs. Observations as to Particulars of Objections.

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On the 20th of October 1885, Letters Patent (No. 12,505* of 1885) were granted to William Thomas Allen for an invention of "The use of earthenware pipes in the place of brickwork or other material in the formation of self"flushing water closets." The Complete Specification (as amended on the 16th of November 1887) was as follows:-"I William Thomas Allen, Uffington 25 "House Tamworth Road, Erdington in the county of Staffordshire, Builder "do hereby declare the nature of my invention for the use of earthenware pipes of novel-form in place of brickwork cement, slate, stone concrete, or "other material in the construction of self flushing water closets, and in what "manner the same is to be performed, to be particularly described and ascer"tained in and by the following statement::

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"It consists of pipes of earthenware of round, oval, octagonal, hexagonal, square or other required section, which connect the aperture of the seat of the "water closet with the main drain, in a manner to make the main drain a direct receptacle for excreted matter and the main drain will be flushed by waste or 35 "surface water by an automatic syphon and collecting cistern as in the ordinary 66 manner.

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"The pipes are to be applied as follows viz-N° 1 A horizontal pipe to connect "the main drain and having a socketted aperture to receive end of a vertical "pipe. N° 2 A vertical taper pipe contracting from diameter at aperture of 40 "seat to socketted aperture of N° 1 pipe. N° 3 A vertical pipe of straight "section of length required to complete height to underside of seat.

Allen v. Oates and Green, Ld.

“Having now particularly described and ascertained the nature of my said "Invention, and in what manner the same is to be performed, I declare that "what I do not claim as novel pipes 1, 2 and 3 respectively, but I claim is-÷

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"1. The use of pipes of novel the above form, constructed of earthenware to 5 form, as hereabove stated and described, a direct connection of the water "closet seat with the main drain."

Subjoined is a reproduction of Figure 1, except that A is substituted for N° 1, B for N° 2, and C for N° 3 :

In 1897, W. T. Allen commenced an action for infringement of the said 10 Letters Patent against Oates and Green, Ld., claiming the usual relief. The Statement of Claim alleged :-(1) That the Plaintiff was the registered legal owner of the said Letters Patent, and (2) infringement by the Defendants. The Particulars of Breaches alleged :-(1) That the Defendants had manufactured and sold water closets constructed in accordance with the said invention; (2) 15 that, in particular, on or about the 29th of November 1896, the Defendants sold three water closets, constructed as aforesaid, to the Plaintiff, or his agent on his behalf.

The Defendants, by their Defence, (1) did not admit that the Plaintiff was owner of the said Letters Patent, (2) denied infringement, and (3) alleged 20 invalidity, for the reasons set forth in the re-amended Particulars of Objections delivered therewith. The Defendants, by their re-amended Particulars of Objections, alleged :-(1) That the Plaintiff was not the first and true inventor of the invention, in respect of which the said Letters Patent were granted, inasmuch as the said alleged invention was communicated to the Plaintiff by 25 Alfred Hill, M.D., Medical Officer of Birmingham, at the office of the said Alfred Hill, in the Town Hall, Birmingham. The date of such communication, to the best of the Defendants' knowledge, was August 1885. (2) That the said alleged invention was not a new invention at the date of the said Letters Patent, but had been published in the manner following:-(a) By the 30 erection of closets at Westfield Terrace, Lightcliffe, Halifax, about the year 1880, and still in use; by the erection of closets at Christchurch Day Schools, Crewe, prior to the year 1882; by the publication by J. Parker, now Inspector of Nuisances at Birmingham, and F. W. Lloyd, now of 50, New Street, Birmingham, in September and October 1885, to the Health Committee of the 35 Birmingham Town Council, of drawings of proposed water closets; by the erection of a closet in the premises of John Spencer, Maltster, Cross Lane, Upper Worley, Leeds-this closet was erected and used for several years prior to the Plaintiff's patent, and was still in use; by the erection of several closets in Rockley Hall Yard, Sowerhead Row, Leeds, about the year 1880, but since

Allen v. Oates and Green, Ld.

removed. (b) And had been published, by the manufacture of closets connected direct to the drain, by the persons at the dates and places following :The Farnley Iron Company, Ld., Leeds, in the year 1880; Jennings, George, of Lambeth, in the year 1880. (c) And by the publication by the Crewe Town Council of plans showing a form of closet proposed to be adopted by that 5 body in the year 1882. The plans were prepared by the borough surveyor in the year 1882, and by the erection of such closets in Crewe shortly afterwards. (3) That the said alleged invention was not a new invention, but had been published before the date of the Plaintiff's Letters Patent in the following Specifications:-Tayler, William Henry, No. 3388 of 1871. The Defendants 10 rely on Figure 2. Kolb, Adolph and Allsop Coleridge, No. 316 of 1873. The Defendants relied on part of Figure 4, where the direct connection is shown to a cesspool or drain, and on line 33, page 4, and descriptions in lines 4 to 6, page 5. Liernur, Charles Theim, No. 3168 of 1873. The Defendants relied on the part of Figure 4, showing two plans connected to drains. Jennings, George, 15 No. 4935 of 1876. The Defendants relied on Figure 8 and the printed matter relating thereto, and page 5. Fowler, Alfred Mountain, and Husband, Richard, No. 1528 of 1874. The Defendants relied on the whole of the Specification. Fowler, Alfred Mountain, No. 2299 of 1874. The Defendants relied on the whole of this Specification and the drawings thereto. Stidder, James George, No. 569 20 of 1878. The Defendants relied on Figure 43 and the letterpress relating thereto. Cross, Benjamin Croker, No. 2324 of 1878. The Defendants relied on the drawings, sheet 1, to the said Specification, and the letterpress relating thereto. Marks, Hubert Noel, No. 16,860 of 1884. The Defendants relied on the whole of this Specification and the drawings thereto. (4) That the said alleged invention 25 was not proper subject-matter for the grant of valid Letters Patent, inasmuch as closets connected direct to drains were known, and in public use at the date of the said Letters Patent, No. 12,505 of 1885, and it required no invention either to make the pipes of earthenware, or of any particular shape or form, or to connect them so that the main drain becomes a direct receptacle for 30 excreted matter. (5) That the Specification, filed in pursuance of the application for the said Letters Patent, as amended, did not particularly describe and ascertain the nature of the invention. The Specification, as amended, was ambiguous, and did not ascertain what the invention was which was claimed. Further Particulars as to paragraph 2 (a) (b) and (c) of the re- 35 amended Particulars of Objections were subsequently given.

This was the trial of the action.

T. Terrell, Q.C., and A. J. Walter (instructed by Pepper and Tangye) appeared for the Plaintiff; Moulton, Q.C., and J. C. Graham (instructed by Chester and Co., agent for W. H. Boocock, Halifax) appeared for the 40 Defendants.

T. Terrell, Q.C., for the Plaintiff.-The main points in this case are infringement, anticipation, and an allegation that the invention was made by Dr. Hill, of Birmingham.

In addition to the Plaintiff himself, Messrs. Boult and Duckett gave evidence 45 for the Plaintiff. Mr. Boult said that the invention consisted in the arrangement of the straight drop and the small flushing pipe at the bottom. This gave the two advantages of no adhesion of matter to the sides and a rapid flow of water.

Moulton, Q.C., for the Defendants.-There was an action on this patent before 50 amendment.* It is a patent for the special shape of pipes in combination. The claim says "the use of pipes of the above form." The amendment consisted of the substitution of the words "the above" for "novel." The Plaintiff cannot now turn this into a claim for a principle. It is not suggested that we have No. 1 pipe or No. 2 pipe. We shall show what was done before the date of the 55

* Allen v. Doulton & Co., 4 R.P.C. 377.