In the Matter of Allison's Patent.

submitted that they ought to be put upon terms to bring no action in respect of past infringements, and that they ought to grant the Opponents a license. He mentioned the case of Westley-Richards and Co. v. Perkes, 10 R.P.C. 181. Sir R. B. FINLAY, S.G.-Has it been the practice to grant leave even if 5 the application were deferred till the patent was on the point of expiring? Moulton, Q.C.-I never knew an application refused if it were pure disclaimer.

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Terrell, Q.C.-I think my friend is right in that respect.

Sir R. B. FINLAY, S.G.-I do not think I need trouble you, Mr. Moulton. In this case an application is made either that leave to amend should be refused, or that special conditions should be imposed. I am very far from saying that where certain circumstances exist, a case might not be made out for refusing leave to amend, though it were merely by way of disclaimer, or for imposing some very special conditions such as are asked for here. If, for 15 instance, the defect in the Specification had formed the subject of discussion between the owner of the patent and the Opponent at a comparatively early date, if the owner of the patent had, by abstaining from taking proceedings, acquiesced in the assertior of the Opponent that the patent was a bad one, and the Opponent, on the strength of that, was shown to have created a business 20 which it was then afterwards sought to attack by an application for the amendment of the patent, I think it might very well be a case in which leave to amend might altogether be refused, or some very special conditions imposed. I should say that in any case I should feel very great difficulty in adopting as a condition one which was suggested by Mr. Terrell for his clients, namely, that 25 leave to use the patented process should be granted specially to the Opponents. It seems to me that if any case were made for such a license it would really be a case for refusal of the leave to amend altogether. But in the present case it seems to me that the facts do not bear out the statement that the Opponents have been induced to build up a large business on the faith of 30 the patent being bad. When these threats were made, in 1892, the assertion was not that the patent was bad, but that the process adopted by Messrs. Ellam and Co. was not an infringement of it, and so far from its appearing that, on the faith of there being nothing in these threats, the business has been built up, the last paragraph of Mr. Ellam's declaration states this: 35 "Owing to the threats made and repeated in 1892, and to the more recent threat "in 1896, as above stated, our business has been seriously interfered with." It seems to me, therefore, that in point of fact the foundation fails for the opposition to this amendment, or for the request for special conditions.

With regard to the opposition to the words "of the aforesaid material” with 40 reference to the bed at page 5, line 15, it seems to me that the omission of those words is really consequential on striking out from the patent the reference to the bed. I do not think that the striking out of these words extends the scope of the patent as amended at all, because it is for the stencil or sheet of paper saturated with wax, or petroleum, or some material of that sort, and the bed 45 is there merely mentioned as that over which the stencil is to be stretched.

I therefore think that the decision of the Comptroller was quite right, and this appeal must be dismissed, with five guineas costs.

Charles Henry Nevill and Others v. John Bennett and Sons.

IN THE CHANCERY OF THE COUNTY PALATINE OF LANCASTER.—

MANCHESTER DISTRICT.

Before VICE-CHANCELLOR HALL.-April 20th, 21st, 22nd, 27th, and 28th and May 2nd, 1898.

CHARLES HENRY NEVILL AND OTHERS v. JOHN BENNETT AND SONS.

Registered design.-Action for infringement.-Prior publication.-Novelty. -"Proprietor."-Patents, &c. Act 1883, Section 47.

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The Plaintiffs, as owners of a registered design to be printed or woven on textile piece goods, brought an action for infringement. The Defendants denied infringement, alleged that the Plaintiffs were not the proprietors of the design, 10 that it was published prior to registration, and that there was no novelty.

Held, that the Plaintiffs were proprietors of the design, that it was not published prior to registration, that it was a new and original design, and that the Defendants had infringed.

On the 20th of July 1894, the Plaintiffs registered a design (No. 236,297) in 15 Class 13, being an arrangement of red and blue flowers with green leaves in bunches placed regularly in parallel, perpendicular, and horizontal lines, forming a diagonal pattern. The design also contained a pattern with a festooning effect on the spaces between the bunches. The Plaintiffs had this design made in imitation of a Persian pattern which had been sent to them by 20 a customer in the East for use in the Eastern markets. In the years 1896 and 1897 the Defendants' design, which was the subject-matter of this action, appeared in the same market.

By their Statement of Claim, the Plaintiffs alleged that the Defendants had wrongfully applied, or caused to be applied for the purposes of sale, the 25 Plaintiffs' design, or a fraudulent or obvious imitation thereof, to goods of the class in which the said design was registered; that the Defendants had in their power rollers upon which the said registered design, or a fraudulent or obvious imitation of it, was engraved, and also goods of the said class, to which the said design, or a fraudulent or obvious imitation thereof, had been applied.

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The Defendants, by their Defence, did not admit that the Plaintiff's were the owners or registered proprietors of the said design, or that the said design was registered on the 20th of July 1894, in Class 13; they denied that the Plaintiffs' design was a new or original design, and alleged that it had been previous to the 20th of July 1894, published in the United Kingdom. They also denied 35 infringement, and the possession of any roller upon which the said design, or a fraudulent or obvious imitation thereof, was engraved, or goods to which the said design, or a fraudulent or obvious imitation thereof, had been applied. The action now came on for trial.

Maberly and Norris (instructed by Boote, Edgar, and Co.) appeared for the 40 Plaintiffs; and Radford and H. W. Carlton (instructed by Blair and Seddon) appeared for the Defendants.

Maberly opened the Plaintiffs' case. -The design published by the Defendants is obviously an imitation of the Plaintiff's in the grouping of the bunches, in the arrangement of the colours, and in the general effect. The Court has to 45 look at the general effect, and not simply compare detail with detail-Grafton v. Watson, 50 L.T. (N.S.) 420; Sherwood v. Decorative Art Tile Company,

Charles Henry Nevill and Others v. John Bennett and Sons.

4 R.P.C. 207. The Plaintiffs have complied with all the requirements of the Statute.

The following witnesses gave evidence for the Plaintiffs :-Charles Henry Nevill, Neville Clegg, Thomas Copeland Norris, Lennox Bertram Lee, George 5 Weyland Taylor, George Bolden, Samuel Kay, Samuel Jones Redfern, and George Merkland. The nature of their evidence sufficiently appears from the judgment.

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Radford opened the Defendants' case, and put forward the contentions raised by the Defence.

Evidence for the Defendants was given by William James Brothers, Thomas Bennett, Milner Gibson, William Forbes, Jonathan Ridgway, Joseph Waterhouse, James Rodier, David Whittle, Jules Buckmann, Albert Arthur Kuenemann, and Edmund Nicholas.

Maberly replied for the Plaintiffs.

HALL, V.C.-In this case Messrs. Nevill, Heape, and Norris, who trade as the Strines Printing Company, sue the Defendants John Bennett and Sons for an injunction to restrain the Defendants from infringing the Plaintiffs' registered design (No. 236,297 of the 20th of July 1894), for an account of profits or damages, and costs. The Plaintiffs are calico printers, and the Defendants are in 20 the same business, and the question raised is whether a certain design printed by the Defendants is or is not an infringement of the Plaintiffs' registered design. The Plaintiffs claim the Defendants' design to be a fraudulent or obvious imitation of the Plaintiffs' design, and in reply to that the Defendants have pleaded several defences. They say that the Plaintiffs are not the proprietors, 25 within the meaning of the Act, of the design which they registered; they say that if it is a design at all (which they do not admit) it is not a new design; that is to say, it was published prior to registration. They say, also, that it is not a new or original design, that is to say, that there is no novelty; and they say, also, that even if it is novel, at any rate the Defendants' is not an infringe30 ment. There were several other defences which were put forward in the pleadings, but were not maintained at the trial before me.

To take these defences in the order which I have mentioned, it is said that the Plaintiffs were not proprietors, and that there was a prior publication before registration. Those two were taken together, and it will be convenient in a sort 35 of way to discuss them in the same way together.

The origin of the Plaintiffs' design is this. It appears they have commercial dealings with a gentleman in Constantinople named Fotiadi, and their course of dealing is that Fotiadi sends designs over to the Plaintiffs which Fotiadi thinks would be desirable as designs to be applied to goods sold in Persia and the 40 district, and thereupon the Plaintiffs take the design obtained from Fotiadi, work it up into a suitable and practical form, that is to say, taking the idea which they receive from Fotiadi, they give it to their designer, who translates that design into what is called a suitable practical working design. Thereupon that is submitted to Fotiadi to see whether he approves, and if he approves, 45 then the design is given to an engraver and it is engraved, and the Plaintiffs then print it. Now, that is what took place in this particular instance. In 1894 Fotiadi sent a design to the Plaintiffs. They submitted it to their designer, Mr. Kay, a gentleman in an independent business, and he put that into what he calls a suitable working form, that is to say, a form from which it could 50 be printed in a reasonable working practical way. Then that being submitted to Fotiadi, he approved it, and thereupon the Plaintiffs gave it to their engraver, and that became the design which was ultimately registered. Then being registered, Fotiadi gave orders which the Plaintiffs executed, and the course of dealing then was, in this case as in other cases, that the Plaintiffs, 55 although they had gone to the expense of designing and engraving, limited the use of that design to Fotiadi for the Persian market, although it was their property, and for their sole use as they pleased in any other market.

Charles Henry Nevill and Others v. John Bennett and Sons.

The Defendants say that under those circumstances the Plaintiff is not the proprietor. According to Section 61, the author of any new and original design shall be considered to be the proprietor thereof, unless he executed the work on behalf of another person for a good or valuable consideration, in which case such person shall be considered the proprietor; and every 5 person acquiring for a good or valuable consideration a new and original design, or the right to apply the same to any such article or substance aforesaid, and so on, shall be considered the proprietor. In this case it was said that the proprietor was not the Plaintiffs, that it was Fotiadi. Now, assuming that Fotiadi was the author of the design, it seems to me that for a good and 10 valuable consideration the Plaintiffs acquired the right in that design. My opinion is that the actual design which was registered, being the design which was actually printed, was the result of the collaboration of Fotiadi, through his agent Stelfox, and the Plaintiffs, which resulted in that suitable working practical design, and under those circumstances it seems to me that 15 the Plaintiffs did become proprietors of this design. Then it was said that, under those circumstances, the relation between the Plaintiffs and Stelfox and Fotiadi being commercial-that was the expression used, being commercial-. and not confidential within the meaning of the cases, and this design being handed about in the way that it was, as I have mentioned, that constitutes prior 20 publication; and a number of cases were referred to, such as the American case and other cases, where persons had actually dealt commercially with goods bearing the pattern before an attempt was made to register. It seems to me that none of those cases cited have any bearing upon this case whatever. If a man chooses to put a design on goods, and place those goods upon the market, 25 and then, having used it and seen whether or not that design is likely to catch on (if I may use the expression), he afterwards attempts to register the design, I can quite understand that that is prior publication, and that is really the effect of all the cases which were cited befofe me. But in this case, where everything was private and there was mere collaboration between Fotiadi, 30 through his agent Stelfox, and the Plaintiffs, with a view to the design being put into a suitable and workable shape, which was to be the property of the Plaintiffs, but to be engaged, as was said, for the use of Fotiadi in the Persian market-to say that that private consultation, that private working together, amounted to prior publication, seems to me to be entirely unfounded. The idea 35 of prior publication, I quite believe, is where a matter of that kind has been thrown upon the public knowledge, and has become a matter of public knowledge, not necessarily extensively, but otherwise than in the way of private preparation which I have mentioned, and it seems to me that a publication of that kind is altogether a different matter to what took place on this occasion. It was said that their relationship was commercial as distinguished from confidential, and then at the same time it was said that one reason why I should infer that there has been prior publication was, that there was no evidence as to where the design came from-that it might have been in the hands of Fotiadi some time, or might have been in the hands of Stelfox, that really there was 45 nothing to show that they had not exposed this to the public generally, and that none of them were bound not so to expose it. But it seems to me that, although there was no precise evidence as to who originally drew the design which Fotiadi sent to Stelfox, and Stelfox delivered to the Plaintiffs, the Court must look at the evidence in a reasonable way, and it is ridiculous in 50 my opinion to ask me to suppose that Fotiadi and Stelfox and the Plaintiffs, working together to produce a new design with which they intended to capture the fancies of the young Persian females who were going to buy these calicoes, would do anything of the sort. To suppose that they with that idea would show their designs to other rival merchants and printers is absurd. Of 55 course they did nothing of the kind. When a new design has been worked up, the last thing that the persons who are making the design do is to expose it to

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Charles Henry Nevill and Others v. John Bennett and Sons.

rival dealers before protection has been obtained; and, therefore, there being no evidence to the contrary before me, and judging from the probabilities of the case, I am of opinion on this point that there was no prior publication of this design.

Well, then, passing away from that point, the question is whether this registered design is a new or original design, and if new or original, whether or not the Defendants have infringed. Now, as to the question of novelty. The way the evidence stands is this: there is a large body of evidence on behalf of the Plaintiffs, representative of the whole trade practically of printers and 10 merchants, and what they unanimously say is that this is undoubtedly a new and original design. It strikes them all as a fresh pattern. That is the expression used-it is a fresh pattern. It strikes them as new and original. That this was new and original is obvious from this, amongst other things, that the Defendants themselves, as soon as a piece of this design 15 came into their possession (on the instructions, of course, of Besso, who was a merchant trading in the same market), went to their designer and said, “Design us a design of this kind." What the designer's precise instructions were of course we do not quite know; it rests entirely on the evidence of the Defendants and their designer. But that the Plaintiffs' design was new 20 and original we have the strong clear evidence of the Plaintiffs' witnesses, with the evidence of the actions of Besso and the Defendants themselves, and in addition to that the Plaintiffs' evidence is corroborated by the witnesses for the Defendants. The witnesses for the Defendants say this. Take Mr. Milner Gibson. He says: "The Plaintiffs' pattern is a good design; the Plaintiffs' 25" pattern is a registrable pattern," and so on. Mr. Forbes says: "The Plaintiffs' "design is different from any of the others." Mr. Ridgway says: "This 66 arrangement is new," and so on. Without going through the whole of the evidence, what it comes to is that you have a strong and clear case on behalf of the Plaintiffs that it is a new and original design, and that evidence is corroborated, 30 I think 1 may say, by most of the independent witnesses called on behalf of the Defendants themselves. Under those circumstances I cannot have the least doubt that this is a new and original design. I am not to be misled by the evidence that was given by a number of the Defendants' witnesses, and suggested in the cross-examination of the Plaintiffs, that the details of the 35 Plaintiffs' design are old, that bunches of flowers are old, that the festooning effect is old, and that you cannot put your finger upon anything in the design itself, upon any detail in the design, which has not been reproduced somewhere before. That is not the question which is to be decided in a case of this kind. The question is not whether or not each detail is old; the question is 40 whether the design as a whole is old, or whether it is new. As I put in the course of the argument, taking each detail and saying, "This is old, and the "other is old," and so on, and so on, you may have all the details old, but the combination, the re-arrangement, may be such that the effect is new, that the design is new; and the conclusion which I have arrived at in this case is 45 that this arrangement is a new arrangement.

Then the other question, and the only remaining question, is whether or not, it being a new and original design, the Defendants have infringed it. Now, the evidence on that point is that undoubtedly the Defendants' design was produced with the Plaintiffs' design before the Plaintiffs' designer. That is, Besso 50 brought to the Defendants a piece of calico with the Plaintiffs' design, and said, "I want a design printed in this style." That was the expression used. Thereupon the Defendants took it to Mr. Waterhouse. Now, Waterhouse having produced a design which was delivered to the Defendants and printed by them, and in fact registered by them, the question is whether or not that design is 55 an imitation. If it is an imitation, a fraudulent or obvious imitation, then the Act applies and the Plaintiffs have been wronged.

Now, why did the Defendants, on the instructions of Besso, take this design