66 66 5 " 66 The Pneumatic Rubber Stamp Company, Ld. v. Lindner. he contemplates that they should form a series of some sort. It is the second claim that is said to be infringed, and the second claim is as follows:-" The improved foundation or base for rubber stamps, consisting of a series of compartments or cells of any suitable configuration, provided on one side with a backing, on which backing the foundation is secured to the characters, the open side of the cells being secured to the stamp handle or to the strip of "rubber or other material mounted upon the said handle substantially as shown “and described." It is true, as claimed by the Plaintiffs, that a stamp constructed in accordance with this invention does, under pressure, have a certain pneumatic 10 action; and it is also true with reference to the Defendant's stamp, that in use it also has a certain pneumatic action, but I think what the Defendant constructs under his invention is a number of cells or bubbles of any configuration superimposed on one another, and not following in order of arrangement, and with their axes at any and irregular angles. 15 I think it is reasonably clear that the Patentee contemplates his cells being so constructed as to be capable of being closed and rendered airtight, or practically airtight, by a material cemented or fastened at the handle side and at the stamp side of the stamp. He does not contemplate the super-position of one series of cells upon another. He contemplates, I think, one layer of cells, and those of a 20 symmetrical character-not necessarily at right angles, but at some angle or angles to the plane of resistance. He does, in my opinion, contemplate having the benefit of the resistance of the air confined in the cells when pressure is exerted on the stamp so as to ensure elasticity, but only as I think in combination with such a series of cells as I have mentioned. 25 He has not patented the pneumatic principle, and in point of fact I should say it was not what he intended to patent. I mean this-he speaks of his invention being applicable to one cell, but I think he would be the last to say that he thereby meant to patent the use of an ordinary air-cushion as a backing for the stamp which he proposed to produce. I think that the two inventions 30 are really essentially different. It would be impossible, so far as I can see, to construct, in accordance with Hales Smith's invention, cells in such a way that you could close them at top and bottom by the super-position of ordinary indiarubber or other substances on the handle side and on the stamped side. I have given the best reading I can to the Specifications, and I have considered what 35 was said to me by the various witnesses who came in explanation of the different stamps produced, and the conclusion 1 have come to is that though the pneumatic principle is more or less involved in each of these inventions, yet that stamps made in accordance with Hales Smith's invention as they are made and imported into England by the Defendant do not constitute an infringement 40 of Buck's patent. Well, that leaves a curious point to be decided under these circumstances with reference to the second injunction sought for. The second injunction sought for is to restrain the words "Licensed Buck's Patent" stamped upon the stamps imported into this country by the Defendant. He so stamps them, and 45 his stamps as they are at present existing and sold, I think, are calculated to induce people to believe that they are made under the patent which is known in this country as Buck's patent. The Defendant has expressed his willingness for the future so to impress his stamps as to show that the patent under which he is licensed is the United States patent only. I do not see how any reason50 able objection could be raised to that, because I do not understand it to be an assertion that the stamp itself is made in accordance with Buck's English patent; but it is to assure persons purchasing from him that they need not be afraid of attack from Buck, or the owners of Buck's American patent in respect of its being an infringement of the American patent. And, of course, though I 55 know, having seen it, that substantially the American patent and the English patent are the same, yet it is quite possible that an American Court, following American rules, might come to a different conclusion from that which I have The Pneumatic Rubber Stamp Company, Ld. v. Lindner. come to, and that a purchaser in America might be rendering himself liable to an action at the suit of Buck raising a question which has not been raised over here. I have considered, inasmuch as the point has been raised, that as this is not an infringement of Buck's English patent, whether it would be calculated to deceive persons to leave on the words "Licensed Buck's Patent even if it 5 were the American patent, but I do not think that those words could be reasonably complained of or cause real difficulty; and in point of fact I do not understand that the Plaintiffs would seek a larger injunction than to restrain him from representing that he is licensed under the English patent. [Wheeler.— My contention is that there should be no reference at all to Buck's patent.] 10 No reference at all! I do not see my way to grant an injunction, on his undertaking not to use any reference to Buck's patent if he shows that the patent he refers to is the American patent. He is licensed under it, and it would prevent, as I say, persons being fearful of attack from the owners of the American patent. 15 Now, with reference to the rest of the case on the use of the word “Buck.” A great deal of evidence was adduced before me as to the danger of passing off goods of the Defendant as the goods of the Plaintiff. The Plaintiffs always in their invoices and catalogues advertise theirs as a pneumatic rubber stamp-I have not got the exact words, but they were to that effect-and not 20 in any way in connection with the word " Buck," but they do on their stamps as sold put a mark to this effect-" Buck's Patent, 1st April 1892." That is the English patent. Then they put "P. R. Stamp Company, Ld.," which is the short form for The Pneumatic Rubber Stamp Company, Ld.—their name. A certain number of persons, but a very small number compared with the 25 number of letters received by the Plaintiffs, have, reading that stamp, come to the conclusion that if they address an order to Messrs. Buck, or to “Buck taking the address that is on the stamp, the order would reach. Those are, no doubt, persons who have actually purchased the stamps, and have not noticed the short name of the Limited Company, which is given, and which 30 is, of course, what is really applicable to the address. If it had been made out to my satisfaction that these stamps had become generally known upon the market or to the public as "Buck's Patent," a different element would have arisen for consideration; but having heard the evidence adduced on behalf of the Plaintiffs which was the evidence of the manager, and having 35 heard the evidence which was adduced on behalf of the Defendant, I think they have failed to make out any such case as that-in fact, they have advertised and issued their catalogues under their own name and have sought to connect their stamps rather with the name of The Pneumatic Rubber Stamp Company than with the name of Buck. 40 Then, under those circumstances, what ought I to do with reference to the past in this matter? It is difficult for me to think that anything like substantial damage has been suffered by the Plaintiffs by the use of the words by the Defendant which are complained of, and which I do not think he was justified in using in England in the form in which he did use them; and, in strictness, 45 I am bound, if asked for it, to direct an inquiry as to damages in respect of injury occasioned to the Plaintiff by the use of those words; but I would suggest that a more reasonable thing to do would be, if the parties are willing to leave it to me, to name some small sum, rather than go to the expense of what might be a long, troublesome, and expensive inquiry, the costs of which would 50 have to be dealt with hereafter. Mr. Wheeler, would you be prepared to leave it to me? I should not propose to name a large sum, I tell you. Are you willing, Mr. Cross? The matter being left to the learned Judge, he awarded 40s. damages to the Plaintiff. 55 BYRNE, J.-On the issue of infringement the Defendant succeeds; therefore, he is entitled to the costs of the action so far as that issue is concerned. On The Pneumatic Rubber Stamp Company, Ld. v. Lindner. the issue as to novelty, I have given no actual decision at all. It was a question raised by the Defendant, because he thought that it would be useful to him in a certain event; but, having given no decision upon that, I do not very well see how I can do anything with reference to the costs of that, except to say 5 that there will be no costs so far as the question of novelty was raised. It has become unnecessary to decide it in the view I have taken of it. That leaves the question of injunction which the Plaintiffs ask for. With reference to that, I have gone alone upon the use of the words being misleading, as referable only to the American invention, and not as to their being calculated to deceive. 10 Therefore, the Plaintiffs are entitled to the costs of that issue, but not to the costs of the evidence. I think, on the whole, I should deal most fairly with that by saying no costs, because a great deal of the evidence was devoted to meeting the Plaintiff's case that his stamps were known upon the market as "Buck's Patent,' so I say no costs as to that. Then I take the undertaking 15 mentioned. 20 Wheeler.-I ask your Lordship then to give the order in this form. The order will be :-The Defendants giving an undertaking to put words on showing that Buck's American patent only is referred to, the Plaintiffs to have 40s. damages and costs of the action, save and so far as they are increased- BYRNE, J.-No, I have divided the action into the different issues. I do not mean to give you the general costs. You have failed on the main issue-the issue of infringement. I have dealt with the different issues. If there are any other issues, the costs of which ought to be dealt with, let me know. Wheeler.-Then the Defendants will have their costs on the issue of 25 infringement. On the issue of novelty there will be no costs. 30 35 BYRNE, J.-On either side. Ashton Cross.-As to the injunction, I ask your Lordship to consider whether we are really not entitled to those costs, because the Plaintiffs have forced on that question. BYRNE, J.-You say you ought to have the costs of that so far as they have been increased by the evidence called to show that there has been passing off. I think the Defendants ought to have those costs. But the Plaintiffs get the costs of that issue, except the costs of the evidence relating to passing off. There will be set-off all round. A certificate that the validity of the patent came in question was granted. In the Matter of the Registered Trade Marks Nos. 27,850 and 72,790 of J. Batt and Co. IN THE COURT OF APPEAL. Before THE MASTER OF THE ROLLS, and LORDS JUSTICES CHITTY and IN THE MATTER OF THE REGISTERED TRADE MARKS Nos. 27,850 AND 72,790 OF J. BATT AND CO. Trade Mark. Application for registration. - Comptroller's refusal to register by reason of resemblance to registered marks.-Motion to expunge such marks.-Marks registered without a bonâ fide intention to use.-Marks expunged.-Appeal dismissed.-Patents, &c. Act, 1883, Sections 65, 72, 75, 76, and 90; and Patents, &c. Act, 1888, Section 17. 5 10 On an application for registration of a Trade Mark in Class 42 for oats, the Comptroller refused registration on the ground of the similarity of two marks registered, one in 1882 and one in 1888, for the whole of Class 42. The Applicants moved to expunge these marks, and at the hearing asked alternatively to limit the registration of them to goods other than oats, and moved also that 15 the Comptroller should be directed to proceed with their application to register. The owners of the two marks appeared to oppose the motions. Held, by Romer, J., that there had been no real user of the Respondents' marks before or since registration, and that they had been registered in Class 42 without any bonâ fide intention to use them in that class, and that the marks 20 must be expunged as to the whole of Class 42 from the Register. The Comptroller was directed to proceed with the application to register. The Respondents were ordered to pay the costs of the motion to rectify. The Respondents appealed from the order to expunge. The appeal was dismissed, with costs. A Trade Mark cannot properly be registered for goods in which the Applicant does not deal or intend to deal. If an entry as to a Trade Mark is on the Register without sufficient cause, it can be removed under Section 90 of the Patents, &c. Act, 1883. 25 W. H. Dunnett and E. J. Beale, trading as James Carter and Co., and also 30 as Carters (hereinafter called the Applicants), who carried on business as seed merchants, applied for registration as a Trade Mark in Class 42 for oats of a device consisting of two wings of a yellow butterfly, fancifully ornamented and not drawn from nature, and attached in an upright position to the sheath of an oat. This application was numbered 207,397. On the 14th of September 35 1897, a notice was received from the Comptroller calling attention to two marks (No. 27,850 and No. 72,790), the property of John Batt and Co., registered in 1 In the Matter of the Registered Trade Marks Nos. 27,850 and 72,790 of J. Batt and Co. Class 42, and intimating that, in accordance with the provisions of Section 72 of the Patents, &c. Act, 1883, as amended by Section 14 of the Patents, &c. Act, 1888, the Applicants' mark appeared incapable of registration, and that their applications could not be proceeded with. On the 8th of November 1897, the 5 Comptroller refused to register the Applicants' mark. The mark No. 27,850 was registered by J. Batt and Co. in July 1882, and the mark No. 72,790 in August 1888, the dates of application being the 13th of March 1882, and the 16th of February 1888, respectively. Both marks included the representation of a butterfly. On the 11th of December 1897, the Applicants gave notice of 10 motion for an order that the Register of Trade Marks might be rectified by removing therefrom the said Trade Marks Nos. 27,850 and 72,790, or that such further or other order might be made for the rectification of the said Register as to the Court should seem just. On the same day the Applicants also gave notice to move that the Comptroller might be directed to proceed with the 15 said application, notwithstanding the registration of J. Batt and Co.'s Trade Marks Nos. 27,850 and 72,790 in Class 42, or for such further order as to the Court might seem fit. Affidavits in support of the first motion were made by Messrs. G. E. C. Beale, the Applicants' manager, J. P. Mann, W. W. Horn, V. Lazarus, H. C. 20 Fowler, and W. J. Hartley. 66 66 Mr. Beale in his affidavit, after stating the facts above set forth, stated :— (6) In consequence of the notification of Messrs. J. Batt and Co.'s ownership "of marks which the said Comptroller-General deemed resembled Messrs. Carters', I instructed Messrs. Horn, Son, and Co. to apply to, and they accord25" ingly applied to, Messrs. J. Batt and Co. for their consent, either to the "registration of Messrs. Carters' proposed marks or to the cancellation of their "above-mentioned marks; but such consent was refused. I subsequently "instructed my solicitors to repeat the application, but they also met with a "refusal. (7) I have during the last few weeks myself made enquiry of 30 "merchants and others, and through the usual sources of trade enquiry, and I "have ascertained the following facts with reference to Messrs. John Batt and "Co. Messrs. John Batt and Co., although describing themselves as general "merchants, are, in fact, shippers or exporters to East India, China, and Japan; "their business is mainly, if not entirely, confined to shipping hardware and 35"machinery goods; they have occasionally shipped woollen and similar goods, "and also candles and matches; they have applied to shipments of candles and "matches in packets the above-mentioned marks (which are registered in a great number of classes), but they have never used the said marks in connec"tion with any goods in Class 42, and they have, as I verily believe, never had 40 any bona fide intention of using the said marks in connection with any goods "in Class 42. I have, in particular, been informed by a gentleman who has "had business relations with Messrs. Batt and Co., that the said marks were "only used for candles and matches, and were never in fact used for food or "food stuffs." 45 66 66 66 Affidavits in opposition to the first motion were made by G. A. Kottgen, a partner in the firm of J. Batt and Co., and by Joseph Greimer, their manager. The former stated in his affidavit (inter alia) :-" (1) My said firm are exporters of and dealers in every kind, including articles of food; the turnover "varies between 500,000l. and 1,000,000l. per annum. (2) In or about the 50 year 1882, we decided to register all the Trade Marks used in our business, and "in making such registration we registered in all those classes in which we "had used or intended to use the marks in the course of our business. Our "business including goods in almost all classes, it was necessary for us to register in many classes. (3) For some time prior to the year 1882 we had 55" been using as a Trade Mark a butterfly with outstretched wings; and in 66 |