Reports of Patent, Design, and Trade Mark Cases

In the Matter of Finch's Patent.

and the nature of the invention, I ask for prolongation, if the evidence be satisfactory.

Sutton, for the Crown, referred to In re Hopkinson's Patent, 14 R.P.C., 5, (1897), A.C. 249, and Norton's Patent (1 Moo. P.C., N.S. 343), in addition to In re Bower-Barff Patent. Here the Patentee would derive no benefit. 5 [Lord DAVEY referred to In re Parson's Patent (15 R.P.C. 349); there the value of the Patentee's shares depended on whether the patent was prolonged.] Here the patent was sold out and out for 607. On that ground the Petition ought not to proceed.

Ryland, in reply.-The circumstances are the same as if the Petitioner had 10 assisted the Patentee. It is a case sui generis. [The evidence which the Petitioner proposed to call as to the circumstances under which he bought the patent was then referred to.]

Lord MACNAGHTEN.-Their Lordships are unable to recommend a prolongation in this case. There is more than one objection to this application. The 15 first inventor was a Mr. Finch; the present applicant is a Mr. Fernley, who bought his rights four years after the date of the original patent. Mr. Fernley did not assist Mr. Finch in making his invention, and it is quite plain that Mr. Finch can derive no benefit from an extension of the patent, Mr. Finch having sold his rights for 607., and there is an end of the case as far as he is concerned. 20 It has been the practice of this Court under those circumstances never to grant an extension of a patent. In the case of Bower-Barff's Patent, the judgment of the Board was delivered by Lord Watson, who said :-"There is no case in which this Board has granted an extension of a patent to an assignee which did not directly or indirectly tend towards the benefit of an 25 original inventor, who would, had there been no assignment, have been in a position to claim an extension himself." Now here, of course, as there has been an assignment, Mr. Finch would not have been in a position to claim an extension. In point of fact, this case is identical with the case of Bower-Barff, and with the subsequent case of Hopkinson's Patent. The application must, 30 therefore, be dismissed.

The Royal Baking Powder Company v. Wright, Crossley, and Co.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE ROMER.

April 26th, 27th, 28th, and 29th, and July 2nd, 1898.

THE ROYAL Baking Powder COMPANY v. Wright, CrossLEY, AND CO.

Trade libel.-Untrue statement.-Malice.-Authority of agents.-Special damage.

In 1897, two Trade Marks, registered by the R. Company, of New York, were expunged from the Register of Trade Marks by the order of the Court, at the instance of W., C., and Co. Both Trade Marks were labels containing prominently 10 the words "Royal Baking Powder." Shortly afterwards W., C., and Co. issued a circular referring to the said order, which circular, and the statements of travellers and agents of W., C., and Co., were alleged by the R. Company to be an intimation that the R. Company were not entitled to sell baking powder as Royal Baking Powder," and that W., C., and Co. intended to proceed against 15 persons using the labels to stop the use of those words. The R. Company commenced an action to restrain W., C., and Co. from representing that the Plaintiffs were not entitled to sell their Royal Baking Powder in the United Kingdom, and from maliciously threatening the customers of the Plaintiffs with legal proceedings in respect of their sales of the Plaintiffs' said baking 20 powder.

Held, that the circular represented what was not true with regard to the Plaintiffs' Baking Powder and trade, and was issued not in good faith in support of a claim or right really made or intended to be exercised by the Defendants, but maliciously, and had caused special and substantial damage to 25 the Plaintiffs. An injunction was granted in the terms of the first part of the writ, and an inquiry as to damages was also granted, with costs up to and including judgment; the costs of the inquiry were reserved.

On the 6th of August 1887, The Royal Baking Powder Company, of 106, Wall Street, New York, U.S.A., registered a Trade Mark under No. 66,683, for baking 30 powder, in Class 42; nine years' user before the 13th of August 1875, was claimed for such Trade Mark. On the 6th of February 1888, the same Company registered a Trade Mark under No. 66,684, for baking powder, in Class 42, no prior user being claimed for the same. Both Trade Marks contained prominently the words " Royal Baking Powder."* On the 12th of February 1897, Wright, 35 Crossley, and Co. gave notice of a motion to rectify the Register by expunging the said Trade Marks, on a variety of grounds. On the motion coming on for

* These Trade Marks will be found in 14 R.P.C., at pages 425 and 426.

The Royal Baking Powder Company v. Wright, Crossley, and Co.

hearing on the 9th of April 1897, before ROMER, J., The Royal Baking Powder Company did not appear, and an order was made expunging the two Trade Marks (In the Matter of the Trade Marks of The Royal Baking Powder Company, 14 R.P.C. 425). On the 20th of April 1897, Wright, Crossley, and Co. issued a circular, which was headed in red type, "Manufacturers of the 5 "Original Royal Baking Powder, 'Lion' Brand," and ran as follows:

"ROYAL BAKING POWDER.

"Dear Sir,-We beg to call your attention to the following order of the "Chancery Court of the High Court of Justice, made by Mr. Justice ROMER on the 9th April 1897 :

"In the High Court of Justice.-Chancery Division.

66 6

"Mr. Justice ROMER. (Friday, 9th day of April 1897.)

"Mr. CARRINGTON, Registrar. P. 320.

"In the Matter of the Registered Trade Marks numbered 66,683 and 66,684 "of THE ROYAL BAKING POWDER COMPANY, 106, Wall Street, New 15 "York, U.S.A., and

"In the Matter of the Patents, Designs, and Trade Marks Acts, 1883-1888. Upon motion this day made unto this Court by Counsel for Messieurs "Wright, Crossley, and Co., of 17, North John Street, in the City of Liverpool, "and upon reading affidavits, &c.:

66 6

"This Court doth order that the Register of Trade Marks be rectified by 'expunging therefrom Trade Marks Nos. 66,683 and 66,684, both in Class "No. 42. And it is ordered that notice of this order be given to the Comp"troller-General of Patents, Designs, and Trade Marks by serving a copy of "this order upon the said Comptroller, or by leaving the same with a clerk 25 "at the office of the said Comptroller, and at the same time producing the duplicate of this order passed and entered.'

66 6

"We are compelled to give notice to the trade generally that it is our inten"tion to proceed against anybody selling any American baking powder in tins bearing either of the labels which have been struck off the Register by the 30 "Court. The labels will be found on pages 452 and 453 of the Trade Marks "Journal, No. 524.

"We should be much obliged if you will assist us in our efforts to protect "British traders by bringing to our notice any instance of the sale of American "baking powder in tins bearing either of the above labels."

On the 12th of May 1897, The Royal Baking Powder Company commenced an action against Wright, Crossley, and Co. for an injunction to restrain the Defendants, their servants and agents, from maliciously representing that the Plaintiffs were not entitled to sell their " Royal Baking Powder" in the United Kingdom of Great Britain and Ireland, and from maliciously threatening the 40 customers of the Plaintiff's with legal proceedings in respect of their sales of the Plaintiffs' said baking powder. On the same day the Plaintiffs, by leave, gave notice of motion for an interlocutory injunction in the terms of the writ. The motion was ordered to be placed in the witness-list, with leave to crossexamine the persons who had made affidavits, and to adduce further evidence. 45 It was accordingly heard on the 26th, 27th, and 28th of April 1898.

Warmington, Q.C., Levett, Q.C., and S. Dickinson (instructed by Janson, Cobb, and Pearson) appeared for the Plaintiffs; Neville, Q.C., L. B. Sebastian, and Stewart Brown (instructed by Field, Roscoe, and Co., agents for Batesons, Warr, and Wimshurst, of Liverpool) appeared for the Defendants.

Warmington, Q.C., opened the Plaintiffs' case.-The Defendants knew that they could not interfere with the Plaintiffs in the carrying on of their trade as sellers of "Royal Baking Powder" under that name, but the use made of the circular shows that their agents attempted to induce the trade to think that the Plaintiffs were not entitled to sell "Royal Baking Powder.”

The Royal Baking Powder Company v. Wright, Crossley, and Co.

The Plaintiffs' affidavits filed on the motion were read, and some of the Deponents were called for cross-examination, and further witnesses were called. At the close of the Plaintiffs' case Levett, Q.C., summed up.-I submit that a case of trade libel, sometimes called threats, has been established. The theory 5 is really slander of title. The first point in such an action is proved here, namely, an untrue statement. The Defendants did not intend to prosecute people for using these labels; they could not prosecute under Section 105 of the Patents, &c. Act, 1883. There was a deliberate attempt to mislead. The threats were not made bona fide; also there is evidence of damage. There was a 10 stoppage of trade for a time.

Neville, Q.C., opened the Defendants' case.—I submit that no case has been made out. To do that it must be shown that what was stated was untrue, that it was maliciously stated, and that special damage has resulted. On the first two points the law is clearly laid down in Halsey v. Brotherhood, L.R., 19 Ch.D. 15 386. Then as to special damage, there is the decision of the House of Lords in Mellin v. White, L.R. (1895), A.C. 154. The action is merely a common law action, and no injunction can be granted unless special damage is shown. (Wren v. Weild, L.R., 4 Q.B. 730, and The Incandescent Gas Light Company, Ld. v. The New Incandescent (Sunlight Patent) Gas Lighting Company, Ld., 76 L.T. 20 (N.S.) 47, were also referred to.) There is no evidence that the persons who are alleged to have made the statements complained of were acting within the scope of their authority. [The evidence was then referred to.] Even although the word "Registered" was not on the label, the words "Trade Mark-Royal'" would be an intimation that that was an enforceable Trade Mark, and would 25 bring the Plaintiffs within Section 105 of the Patents, &c. Act, 1883. That argument would, at any rate, be a plausible one, as is shown by the fact that the Plaintiffs removed the words. I submit that no case has been made out. [ROMER, J.-I will hear the evidence.] As to the second Trade Mark, the reference to that made no difference to the Plaintiffs. [The affidavits filed by 30 the Defendants were then read, and some of the Deponents were cross-examined, and further viva voce evidence was taken.]

Neville, Q.C., summed up the Defendants' case; and on the question of the agents' authority, referred to Blake Odgers on Libel, page 430.

Warmington, Q.C., replied on the facts, and submitted that there had been 35 damage by interference with trade. [ROMER, J., referred to Ratcliffe v. Evans, L.R. (1892), 2 Q.B. 524.] Bowen, L.J., in that case, gave a definition of special damage on page 528. On the question of the agents' authority, The English Joint Stock Bank v. Barwick, L.R., 2 Exch. 259, was referred to.

Judgment was reserved, and was delivered on the 2nd of July 1898. ROMER, J.-The issue by the Defendants of the circular of the 20th of April 1897 undoubtedly seriously interfered with the Plaintiffs' trade in their baking powder, and, in my opinion, was unjustifiable. It is true that at that time the Defendants had, on grounds which it is not material now to consider, obtained an order of the Court removing the two Trade Marks referred to in the circular 45 from the Register. But the Plaintiffs were quite entitled to continue to sell in this country their powder as "Royal Baking Powder," and were also entitled to sell it under the label in which it was then being sold, being substantially the same as one of the labels struck off the Register, namely, that numbered 66,683, provided that the words "Trade Mark" were erased, which, of course, could 50 easily have been done without seriously interfering with the sale.

The

Plaintiffs are also entitled to sell their powder under the other label removed from the Register, namely, that numbered 66,684, without any alteration whatever. With these rights of the Plaintiffs the Defendants had no grounds whatever for interfering when they issued the circular. But they attempt to 55 justify the circular by alleging that it was only intended to stay the sale by

The Royal Baking Powder Company v. Wright, Crossley, and Co.

the Plaintiffs of their powder under the label in which it was then being sold without the words "Trade Mark" being expunged. This allegation cannot, in my opinion, be supported. In the first place, the Defendants have no ground whatever for representing (as they in effect do by the circular) that the Plaintiffs could not sell their powder under the label 66,684, or that they could 5 be proceeded against for so doing, and the allegation in the circular that it was the Defendants' intention to proceed against anybody selling any American baking powder in tins bearing that label was simply untrue. But, beyond that, I come to the conclusion that the circular would as a whole convey to the minds of most of the Plaintiffs' customers, and was intended by the Defendants 10 to convey the impression, that the Plaintiffs were not entitled to sell their powder in this country as Royal Baking Powder. If the two labels referred to in the circular are looked at, it is evident that their chief and common characteristic is that they contain prominently the words "Royal Baking "Powder," and could be well described as "Royal Baking Powder " labels, and 15 any ordinary person seeing these labels and having to form an opinion what they had in common which prevented them both from being used by the Plaintiffs, would, I think, inevitably come to the conclusion that it must be because of the use therein of the above words.

But the matter does not stop there. The circular is, in my opinion, so 20 framed, in other respects, as to lead persons reading it to the conclusion that what the Defendants were complaining of, and what they intended and were able to stop, was the sale of the Plaintiffs' powder as Royal Baking Powder." The circular is headed by the words, printed in red, "Manufacturers of the Original Royal Baking Powder," and then the reference to the order of the 25 Court and the threats of the Defendants all follow under the heading, "Royal "Baking Powder," which is printed in prominent type, in black, as governing the whole. This circular in this respect, in my opinion, represented what was not true with regard to the Plaintiffs' powder and trade, and was issued by the Defendants not in good faith in support of a claim of right really made or 30 intended to be exercised by them, but maliciously in the sense in which that word is used, as necessary to support actions of this class; and, indeed, with regard to the object and intent with which the Defendants issued the circular, additional light is thrown by the fact that when they found themselves confronted by a difficulty as to certain labels in which their goods were being 35 sold by their customers, similar to the difficulty in which the Plaintiffs were placed by their labels having the words "Trade Mark" upon them, the Defendants knew exactly how the difficulty could be speedily overcome without the sale of their goods being substantially interfered with or delayed, and they pointed this out by a letter sent round to their customers, and, if this 40 letter be compared with the circular of the 20th of April 1897, it is impossible to suppose that they honestly believed the circular would convey the impression that the Plaintiffs' goods must not be sold in their then labels, only by reason of the words "Trade Mark" being there, and only so long as those words remained unerased. And further, on this point, the Defendants' letters 45 to Messrs. Joseph Travers and Sons, Ld., must be borne in mind.

I further come to the conclusion on the evidence before me that that.circular did convey to many persons the impression it was calculated and intended to convey, and caused special and substantial damage to the Plaintiffs. By reason of the issue of that circular the sale of their goods was for a time stopped, or to 50 a great extent stopped, and indemnities had to be given and costs incurred before several of the customers would resume sale of the goods or buy further from the Plaintiffs, thus obviously causing considerable damage to them, whereas I am satisfied that no substantial damage could or would have been caused to them had the circular confined itself to a fair statement of the facts 55

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Reports of Patent, Design, and Trade Mark Cases, Volume 15