5 66 66 F. Pinet and Cie. v. Maison Louis Pinet, Ld. present time, on the door of their City Office, at 34, Gresham Street, E.C., "designate the Defendant Company as Maison Pinet and Cie., Ld., alone, which corresponds with the name by which they designated the Defendant Company "in, and upon, the contracts of the 18th and 19th of October 1897, respectively.' Swinfen Eady, Q.C., and Sebastian-Moulton, Q.C., with them-(instructed by Wilson, Bristows, and Carpmael) appeared for the Plaintiffs; Vernon R. Smith, Q.C., and Brodie Cooper (instructed by B. Wickes) appeared for the Defendants. Swinfen Eady, Q.C., and Sebastian for the Plaintiffs.-The facts of the 10 case speak for themselves, and the only point to question is how far the relief should go. We submit that the case is one in which the injunction to be granted should be absolute, and should not be limited by the addition of any words such as " without clearly distinguishing." In Burgess v. Burgess, 3 DeG.M. & G. 905, Turner, L.J., divided the cases into two classes15 the one containing the cases in which a Defendant has adopted a name which he has no excuse for using, but which is known in connection with the Plaintiff, in which case fraud may be presumed; and the other containing cases in which the Defendant is selling under his own name, which happens to be the same as that of the Plaintiff, in which case fraud cannot be presunied. 20 The cases in which no injunction at all, or only a limited injunction has been granted, are confined to those which fall within the principle of the second class there distinguished, as Turton v. Turton (42 C.D. 128), where it was the Defendant's own name; Montgomery v. Thompson (8 R.P.C. 361), where the Defendant's ales were brewed at Stone; Reddaway v. Banham (13 R.P.C. 218), 25 where the Defendant's belting was made of camel-hair. Here the question is not one of a name which the Defendants could use either fairly or unfairly. It was simply appropriated from the Plaintiffs, and all use of it cannot but be unfair. In John Brinsmead and Sons v. T. E. Brinsmead and Sons, Ld., 12 Times L.R. 631, 13 ib. 3, the injunction was to restrain the Defendants 30 from using the name of Brinsmead without adding a statement that they were not connected with the Plaintiffs. The Defendants here have inserted a statement to that effect in two places in their prospectus, but that does the Plaintiffs more harm than good, as the only result is to represent that the Defendants are the original firm. But there the Defendant's real name was 35 Brinsmead, here it is not. [NORTH, J.-I do not consider this case to be within that decision.] The Defendants other than Dutch can have acquired no right from him, for, as Rigbg, L.J., pointed out in T. E. Brinsmead and Sons, Ld., L.R. 1897, 1 Ch. 406-411, the fraudulent use of a name cannot make it a valuable asset of the copyist. The injunction should, therefore, be absolute 40 against all the Defendants. Vernon R. Smith, Q.C., and Brodie Cooper for the Defendants.-The Defendants, other than L. M. Pinet, knew nothing of his change of name, and acted bonâ fide all through. At the same time, now that the facts have come to light, the Defendants do not resist an injunction in the modified form 45 approved in the "Stone Ales" and "Camel-hair-belting" cases, and others. In those cases, and also in the "Yorkshire Relish" case, it was clear that the intention of the Defendants was fraudulent, and yet the injunction was against their use of the words "without clearly distinguishing." Here the Defendants acted bona fide, and the injunction should go no farther. It will be quite 50 sufficient for the Plaintiffs' protection to repeat the injunction granted by the Court of Appeal on the motion in the first action in this litigation. L. M. Pinet took the name of Pinet years ago with all necessary formalities, and he, and persons claiming through him, cannot now be absolutely restrained from using it fairly in any business into which he may have engaged. The last of the 55 three actions was quite unnecessary, and ought not to have been brought. No reply was called for. 66 66 66 66 66 F. Pinet and Cie. v. Maison Louis Pinet, Ld. NORTH, J.-I think the case is a very clear one. As regards this man, who began life as an Irish solicitor under the name of Dutch, who has since changed successively to the trades of moneylender and manufacturer of boots and shoes under various names, who, when he wants to deal in money in Pall Mall, takes the name of Ransom, and then changes subsequently to Gower, then again to 5 Forbes Gower, then when he goes into boots takes the name of Pinet, for reasons which everyone knows, I think he is utterly wrong. He has been guilty from first to last of a commonplace clumsy fraud, and I think I should be wasting public time if I were to give any more words to the position he has in the matter. As regards the other Defendants, there is a little more to be 10 said. In the Company which has been called the old Company, formed in the beginning of the year 1897, Mr. Eastmead and Mr. Dutch, or Pinet, were directors. In the Company which has been formed in 1897 there are four directors-Mr. Potter, Mr. Phillips, Mr. Eastmead, and Mr. Pinet. Mr. Pinet I put aside altogether. Of the other three only one makes an affidavit, namely, 15 Mr. Phillips. He says this: "In taking part with my Co-Defendants Frederick "Westwood Potter and Arthur Joshua Eastmead in the formation of the "Defendant Company, I was and I am informed by my said Co-Defendants and verily believe they all also were solely desirous of introducing to the public "and extending the sale of what we regarded as a clever invention of the 20 "Defendant Louis Marius Pinet, viz., boots and shoes of a special nature skilfully constructed either to increase the height of the wearer, or equalize unequal length of limb without presenting an unusual appearance.' Then he refers to two or three details, and then says in the last paragraph: "Neither I nor, as I am informed by my said Co-Defendants and believe, were they, or 25 any of them, aware at the time of forming the Defendant Company that the Baptismal name of the Defendant Louis Marius Pinet was other than Pinet, "and I entirely disclaim on my own behalf, and, at their request, on behalf "also of my Co-Defendants, any intention to compete in trade with the Plaintiffs, or to deprive the Plaintiffs of the benefit of their trade reputation, which we 30 "fully admit." I see that as to that Deponent, and as to Mr. Potter, they were not, as I said, directors of the old Company. Mr. Eastmead was. He has not made any affidavit; but I should be quite willing to accept, on behalf of these three, the disclaimer of any fraud on their part contained in the paragraphs of the affidavit that I have read if they had given evidence of their 35 bona fides in such disclaimer by saying they did not resist for a moment the application made on behalf of the Plaintiffs. They have not taken that course, and I am sorry for it. I hope that the justification which they put forward is well founded; but, in my opinion, it is not nearly enough for their purpose in regard to what is proved in this case. When the matter was before the 40 Court of Appeal not very long since in the old action it was asserted, on behalf of Mr. Pinet, and the contrary was apparently not known to or suspected by anybody else-it was believed on the part of all persons, and by the Court itself, as appears from the judgment—that Pinet was the real name of the Defendant, and the case was dealt 45 with on that footing, as a case in which he had a name of his own which he could not be restrained from using. The facts now proved show that it is nothing of the sort, and that that basis was entirely wrong. No doubt a man may by law change his surname if he likes. He cannot be prevented from doing it. An Act of Parliament is not necessary for the purpose; but if 50 he wants to have the benefit arising from any such change, it must be an honest change-it must not be changed, that is, for the purpose of putting on the semblance of somebody else, and passing off his goods as the goods of that other person. It is quite clear to me in this case that the parties cannot get any benefit from the fact that a short time since Mr. Pinet took that name when it 55 was not his own, and they cannot have any advantage from that any more than 66 F. Pinet and Cie. v. Maison Louis Pinet, Ld. they would have had if he had never taken that name at all, and they were doing now all that has been done, his name of Dutch being retained and nothing else substituted for it. It seems to me quite clear it is a case in which the Plaintiffs are entitled to have an order against the Defendants to restrain 5 them from interfering with the thoroughly well-known trade of the Plaintiffs under the name of Pinet. In the last words that I read of Mr. Phillips' affidavit he referred to the reputation of the Plaintiffs, which is thoroughly established, as well as any trade reputation could be, by an abundance of evidence, and it is quite clear why this name Pinet has been assumed by the 10 defendants. The injunction was granted by the Court of Appeal to restrain the old Company from using the name without distinguishing and pointing out that they were not the Plaintiff Company. The fact that such an order has been granted does not deter the new Company from attempting to do the very same thing. Under those circumstances I think they must have an injunction 15 granted against them to restrain them from using the name Pinet at all, in connection, of course, with the manufacture or selling of boots and shoes. Of course I do not go beyond that, or restrain them from using the name for any other purpose they think fit which is within their Memorandum of Association. The case is very like that of Brinsmead and Sons, with one element, which 20 makes it worse. In that case there were two or three (I forget which) persons concerned in the matter who really were Brinsmeads. In the present case there is nobody who is really Pinet at all, although one Defendant has assumed that name, and has adopted it recently for a fraudulent purpose. That being so, I must restrain the Defendants from using the name Pinet at all in 25 the manufacture or sale of boots or shoes. His Lordship then considered the form of injunction, and directed that there should be one Order on both motions, and the Defendants submitted to treat the motions as the trials of the actions, and to make the injunction perpetual. The judgment, as finally entered, was in the following terms : 66 30 Upon the two several motions for injunction this day made unto this Court "by Counsel for the Plaintiffs in the respective actions, and upon hearing "Counsel for the Defendants in both actions, and upon reading (the writs in "both actions, the Order of the Court of Appeal in the previous action, and the "various affidavits and exhibits in both actions), and the Plaintiffs and 35" Defendants in both actions by their Counsel consenting that the hearing of "the said motions should be treated as motions for judgment in the respective "actions, and the Plaintiffs by their Counsel waiving any claim for damages. "The Court doth order the Defendant Frederick William Shepherd, the "liquidator thereof, be perpetually restrained from transferring, selling, or deal40 ing with any right to the name Pinet,' or any title or description including "that name in connection with the manufacture or sale of boots or shoes. 66 66 "And it is ordered that the Defendants Maison Louis Pinet, Ld., Frederick "Westwood Potter, William Alfred Phillips, Arthur Joshua Eastmead, and "Louis Marius Pinet, and Maison Pinet, Ld., Frederick William Shepherd, 45 "and Walter Kelsey be perpetually restrained from using the said name 'Pinet,' or any such title or description as aforesaid in such connection as aforesaid, "and from doing any other act or thing conferring, or purporting to confer, "either directly or indirectly, upon any other person or persons any right to "use the said name or other such title or description as aforesaid in such con50 "nection as aforesaid, and from selling or offering for sale any boots or shoes "not of the Plaintiffs' manufacture under the name of Pinet's Special Boots "and Shoes' or 'Pinet's Boots and Shoes.'" [Then followed an order on the Defendants in each action to pay the taxed costs of such action.] The Pneumatic Tyre Company, Ld. v. The Tubeless Pneumatic IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION. Before MR. JUSTICE ROMER.-December 7th and 8th, 1897. THE PNEUMATIC TYRE COMPANY, LD. . THE TUBELESS PNEUMATIC TYRE AND CAPON HEATON, LD., AND OTHERS. Action for infringement of three patents.-One only relied on at the trial.- 5 Validity not contested.-Infringement not found.-Judgment for Defendants, with costs, and certificate that the Particulars of Objections to the two abandoned patents were reasonable and proper. The P. Company brought an action against the T. Company for infringement of three patents for improvements in pneumatic tyres, one being a patent 10 by B. for a tyre consisting (inter alia) of an inner inflatable tube. At the trial, the question resolved itself into one of infringement of this patent, the case as to the other two patents being abandoned by the Plaintiffs. The Defendants had no inner inflatable tube, but the Plaintiffs contended that part of the Defendants' construction was equivalent to an inner inflatable tube. Held, that the Defendants had not infringed, and judgment was given for them, with costs, and a certificate that the Particulars of Objections to the two abandoned patents were reasonable and proper. 15 On the 21st of October 1890, a patent (No. 16,783 of 1890) was granted to William Erskine Bartlett for an "Invention of improvements in tyres or rims 20 "for cycles or other vehicles." The Complete Specification of this patent (which will be found set out in full in 14 R.P.C., page 283) was, so far as material for this report, as follows:-"This invention relates to tyres which consist of a "flat endless band of india-rubber wider than the dovetailed groove into which "it is inserted, so that it assumes an arched form when in place. I introduce 25 "between the arched outside tyre and the circular bottom of the metal rim a "tube constructed of cloth and india-rubber provided with a branch for filling "it with compressed air." The first claim was: "The combination of a grooved "rim or metal tyre, and an arched tyre of india-rubber or other flexible "material held in the groove by the pressure of an inflated tube within the arch, 30 "which forces its edges against the sides of the groove substantially as "described." An action was brought by The Pneumatic Tyre Company, Ld., to restrain infringement of this and two other Letters Patent, of which they were the proprietors, viz., No. 10,607 of 1888, granted to J. B. Dunlop, and No. 19,990 of 35 1890, granted to Wm. Golding. All three patents were for improvements in pneumatic tyres. The breaches complained of were the sale of certain tyres alleged to be made in accordance with the said inventions. These tyres were known as "Fleuss "tyres. The Defendants denied infringement, and also the validity of the several Letters 40 Patent on various grounds, which were, as against Bartlett's patent, as follows:— "As to Bartlett's Letters Patent (No. 16,783 of 1890), the Defendants say "that if the invention comprised therein be held upon the true contruction of "the Complete Specification of the said patent to include the tyres alleged to be 66 66 66 The Pneumatic Tyre Company, Ld. v. The Tubeless Pneumatic infringements thereof in this action, the said patent is invalid for the following reasons, viz.:-(1) The said W. E. Bartlett was not the true and first inventor "of the alleged invention comprised in the said Letters Patent. (2) The said alleged invention was not new at the date of the said Letters Patent, but 5"previously thereto was published within this realm in the following publica"tions: The Specifications of the following Letters Patent: Carmont, "No. 2896 of 1881; Fox, No. 3065 of 1883; Kearsley, No. 4352 of 1883; Burbidge and Oakley, No. 13,997 of 1884; Shaw, No. 11,204 of 1886; "Andrews, No. 1777 of 1886; Jeffrey (U.S. Patent), No. 383,129 of 1888; 10" Thomas (U.S. Patent), 399,356 of 1889; Thomas, No. 4350 of 1889; Bartlett, "No. 11,800 of 1889; Bartlett, No. 16,438 of 1890. (3) The said alleged "invention is not proper subject-matter for valid Letters Patent. (4) The said "Letters Patent are invalid by reason of the prior grant of the patent of "Bartlett (No. 16,348 of 1890) above mentioned. (5) The Complete Specification 15" claims an invention different from, and larger than, the invention described "in the Provisional Specification, if, on the true construction thereof, the thickening of the edges of the cover, or the holding of the cover to the rim by "any dovetailing or hooking action, are part of the invention claimed, inasmuch as the Provisional Specification in no way describes such thickening or any 20"such action." 66 66 The action now came on for trial. Moulton, Q.C., Roger Wallace, Q.C., J. C. Graham, and A. T. Walter (instructed by J. B. and F. Purchase) appeared for the Plaintiffs; T. Terrell, Q.C., Astbury, Q.C., Jenkins, Q.C., and Rylands (instructed by Field, Roscoe, and Co., agents for Smith, Pinsent, 25 and Co., of Birmingham) appeared for the Defendants. Moulton, Q.C., for the Plaintiffs.-This action will only concern two of the three patents mentioned in the pleadings, the Plaintiff's not proposing to go into the case as regards infringement of Dunlop's patent. The Bartlett patent has been before the Courts on other occasions, and has 30 been supported by your Lordship, 11 R.P.C. 409; Mr. Justice North, 13 R.P.C. 691; and by the Court of Appeal, 14 R.P.C. 283. I may take the decision of the Court of Appeal on the Gormully tyre for the purposes of this case. [Counsel then explained Bartlett's invention.] As to the infringement; what the Defendants have done is this: they have taken Gormully's tyre, and 35 they have then cemented the inner tube to the inside of the cover; it is a complete tube, but they have not cemented it up into a complete tube; it is made to simply overlap, and soft soap is put on the portion which overlaps, so that as soon as the tyre is blown up and pressure comes upon the flap it becomes a complete tube. If this inner skin were separated from the cover, and the over40 lapping parts solutioned together, which is the ordinary way of making an india-rubber tube, you would then have precisely the Gormully tyre without any difference whatever. I do not think any witness will dispute that the Defendants' tyre is held on by exactly the same forces, and in exactly the same way as the Gormully tyre. It was not until Bartlett's invention that it was 45 possible to have an inner tube which required no strength; it was his invention of the locked outer cover which made it possible to dispense with any other quality than air-tightness in the inner lining, strength being given by the outer cover and the rim. This being Bartlett's invention, I contend that this is a tube within the meaning of his claim; and, further, that when in action this is 50 actually a tube. If the soft soap, or some equivalent material, is not put in the overlapping portion of the lining, so as to make a tube, the tyre fails. Counsel then went on to explain Golding's invention, which was an improvement on Bartlett, having lugs on the edges fitting into recesses in the rim ; but this patent was withdrawn at a subsequent stage, it being admitted 55 that the step taken by Gormully in his tyre did not prevent that tyre being an infringement of Bartlett's, and that the judgment of the Court of Appeal in that case was binding. |