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properly affixed thereto : Taylor v. Ashton, Ex. 1843, 11 M. & W. 401; 12 L. J. Ex. 363; 7 Jur. 978; Reese Silver Mining Co. v. Smith, H. L. 1869, L. R. 4 H. L. 64; 39 L. J. Ch. 849; Behn v. Burness, Ex. Ch. 1863, 3 B. & S. 751; 32 L. J. Q. B. 204; 9 Jur. N. S. 620; 8 L. T. 207.
But of course this would not be the case if the vendor had reasonable grounds, when selling, for believing that the trade mark was properly affixed: Collins v. Evans, Ex. Ch. 1844, D. & M. 669; 5 Q. B. 805; 13 L. J. Q. B. 180; 8 Jur. 345; Shrewsbury v. Blunt, C. P. 1841, 2 Man. & G. 475; 2 Scott N. R. 588.
If fraud is relied upon, it must be distinctly alleged and proved : per Thesiger, L.J., in Davy v. Garrett, C. A. 1878, 7 Ch. D. 489; 47 L. J. Ch. 218; 38 L. T. N. S. 77; 26 W. R. 225. See also Barley v. Walford, Q. B. 1846, 9 Q. B. 197; 15 L. J. Q. B. 369, and Taylor v. Ashton, supra.
And it must also be shown that the misrepresentation actually induced the purchaser to purchase and so act to his prejudice : Smith v. Chadwick, C. A. 1881, 20 Ch. D. 27; 51 L. J. Ch. 597 ; 46 L. T. N. S. 702; 30 W. R. 661.
It is possible also that, irrespective of the above enactment, some cases of the sale of goods with trade marks might be brought within the rule that where the contract is to supply goods of a specified description which the buyer has no opportunity of inspecting, the goods must not only, in fact, answer the specific description, but must also be saleable under that description: Jones v. Just, Q. B. 1868, L. R. 3 Q. B. 196; 37 L. J. Q. B. 89 ; 18 L. T. N. S. 208; 16 W. R. 643; Bigge v. Parkinson, Ex. Ch. 1862, 7 H. & N. 995; 31 L. J. Ex. 301; 8 Jur. N. S. 1014; 7 L. T. N. S. 92; 10 W. R. 349.
Now, in addition to the above remedies, a warranty that the trade mark is genuine is to be deemed to be implied in the contract for sale of the goods to which it is affixed. This renders proof of fraud unnecessary.
Action on the Warranty.-When fraud is proved, the contract of sale is voidable, and the purchaser has a right to disaffirm it, and by returning the goods, to reinstate as far as possible the vendor, and if the goods have been paid for to recover back the price in an action for money had and received: Dawes v. Harness, C. P. 1874, L. R. 10 C. P. 166; 44 L. J. C. P. 194; 32 L. T.
SECT. 20, N. S. 159; 23 W. R. 398; Morrison v. Universal Marine Ins. Co., Ex. Ch. 1873, L. R. 8 Ex. 197; 42 L. J. Ex. 115; 21 W. R. 774 ; Clough v. L. & N. W. R. Co., Ex. Ch. 1871, L. R. 7 Ex. 26; 4o L. J. Ex. 17; 25 L. T. N. S. 708; 20 W. R. 187.
If, however, the action be upon the implied warranty, the purchaser cannot force the vendor to take back specific goods: Street v. Blay, K. B., 1831, 2 B. & Ad. 456; Gompertz v. Denton, Ex. Ch. 1832, 1 C. & M. 207; 1 D. P. C. 623; Dawson v. Collis, C. P. 1851, 10 C. B. 523; 20 L. J. C. P. 116; Heyworth v. Hutchinson, Q. B. 1867, L. R. 2 Q. B. 447; 36 L. J. Q. B. 270 ; Poulton v. Lattimore, K. B. 1829, 4 Man. & R. 208; 9 B. & C. 295.
But if, at the time of purchase, the goods were not ascertained, he can, on discovering the breach of warranty, refuse to receive them, or even send them back within a reasonable time: Street v. Blay, supra; Heilbutt v. Hickson, C. P. 1872, L. R. 7 C. P. 438; 41 L. J. C. P. 228 ; 27 L. T. N. S. 336; 20 W. R. 1035; Azemar v. Casella, Ex. Ch. 1867, L. R. 2 C. P. 677; 36 L. J. C. P. 263; 16 L. T. N. S. 571; 15 W. R. 998. Measure of Damages. "When the thing sold has been returned, and no special loss has accrued, the damages consist of the price paid. If, however, no price has been paid the damages could, it is apprehended, be merely nominal. As the contract is rescinded, no claim for the price could ever be made, and the hypothesis assumes that no other injury has taken place:" Mayne on Damages, p. 180, and see Heilbutt v. Hickson, supra. "Where the article has not been returned, the measure of damage will be the difference between its value with the defect warranted against, and the value which it would have borne without the defect:" Mayne, ibid.; Sedgwicke on Damages, p. 325; Jones v. Just, supra.
In other words, the damages will be the difference between the actual value of the goods sold, and what would have been their value if the trade mark had been genuine.
20. In every case in which at any time after the 1863 vendor thirty-first day of December one thousand eight hundred and sixty-three any person shall sell or contract to sell
of an article with de
upon it of
contract that the de
(whether by writing or not) to any other person any SECT. 21. chattel or article upon which, or upon any cask, bottle, scription stopper, vessel, case, cover, wrapper, band, reel, ticket, its quantity label, or other thing together with which such chattel deemed to or article shall be sold or contracted to be sold, any scription description, statement, or other indication of or respecting the number, quantity, measure, or weight of such chattel or article, or the place or country in which such chattel or article shall have been made, manufactured, or produced, the sale or contract to sell shall in every such case be deemed to have been made with a warranty or contract by the vendor to or with the vendee that no such description, statement, or other indication was in any material respect false or untrue, unless the contrary shall be expressed in some writing signed by or on behalf of the vendor, and delivered to and accepted by the vendee.
Compare with this section, sects. 7 and 8. As to the general effect of this implied warranty, see notes to preceding section.
law or in equity against per
using forged trade
21. In every case in any suit at law or in equity In suits at against any person for forging or counterfeiting any trade mark, or for fraudulently applying any trade mark to any chattel or article, or for selling, exposing for sale, marks, or uttering any chattel or article with any trade mark order article falsely or wrongfully applied thereto, or with any forged stroyed, and or counterfeit trade mark applied thereto, or for injunction, preventing the repetition or continuance of any such wrongful act, or the committal of any similar act, in
to be de
may award &c.
SECT. 21. which the plaintiff shall obtain a judgment or decree
against the defendant, the court shall have power to direct every such chattel and article to be destroyed or otherwise disposed of; and in every such suit in a court of law the court shall or may, upon giving judgment for the plaintiff, award a writ of injunction or injunctions to the defendant, commanding him to forbear from committing and not by himself or otherwise to repeat or commit any offence or wrongful act of the like nature as that of which he shall or may have been convicted by such judgment, and any disobedience of any such writ of injunction or injunctions shall be punished as a contempt of court; and in every such suit at law or in equity it shall be lawful for the court or a judge thereof to make such order as such court or judge shall think fit for the inspection of every or any manufacture or process carried on by the defendant in which any such forged or counterfeit trade mark, or any such trade mark as aforesaid, shall be alleged to be used or applied as aforesaid, and of every or any chattel, article, and thing in the possession or power of the defendant alleged to have thereon or in any way attached thereto any forged or counterfeit trade mark, or any trade mark falsely or wrongfully applied, and every or any instrument in the possession or power of the defendant used or intended to be or capable of being used for producing or making any forged or counterfeit trade mark, or trade mark alleged to be forged or counterfeit, or for falsely or wrongfully applying any trade mark;
and any person who shall refuse or neglect to obey any SECT. 21. such order shall be guilty of a contempt of court.
As to what is a "forged or counterfeit" trade mark, see sects. I and 5.
Injunction. The remedy by injunction was in its origin an equitable remedy, peculiar to the Court of Chancery. The jurisdiction rests upon the ground of injury to property, actual or prospective: per Turner, L.J., in Att.-Gen. v. Sheffield Gas Consumers' Co., C. A. 1853, 4 De G. M. and G. 320; 22 L. J. Ch. 811; 17 Jur. N. S. 677; Emperor of Austria v. Day, C. A. 1861, 3 De G. F. and J. 253; 30 L. J. Ch. 690; 7 Jur. N. S. 639; 4 L. T. N. S. 494; 9 W. R. 712; and see Kerr on Injunctions, p. 1.
There is no jurisdiction to prevent by injunction the commission of illegal or criminal acts, unless they affect rights of property: Gee v. Pritchard, Eldon, L.C., 1818, 2 Swans. 413; Emperor of Austria v. Day, supra; Springhead Spinning Co. v. Riley, Malins, V.-C., 1868, L. R. 6 Eq. 551.
But, under certain circumstances, the courts of equity have been accustomed to interfere by injunction to enforce a right which the law acknowledges in principle to be a legal right, but which, owing to infirmity of legal process, the law cannot enforce: Emperor of Austria v. Day, supra; and see Kerr on Injunctions, p. 3. It was upon this ground that originally the Court of Chancery interfered to protect trade marks. Its interference was only ancillary to the legal right, and, as we have seen (see notes to sect. 1), the jurisdiction of the common law courts was founded upon the fraud of the defendant, which had to be pleaded and proved: Crawshay v. Thompson, C. P. 1842, 4 Man. & G. 357; 11 L. J. C. P. 301; Rodgers v. Nowill, C. P. 1847, 5 C. B. 109; 17 L. J. C. P. 52; 11 Jur. 1039; 10 L. T. 88 ; Edelsten v. Edelsten, Westbury, C., 1863, 1 De G. J. & S. 185; 9 Jur. N. S. 479; 7 L. T. N. S. 768; and see judgment of Mellish, L.J., in Singer Manufacturing Co. v. Wilson, C. A. 1876, 2 Ch. D. 453; 55 L. J. Ch. 490; 34 L. T. N. S. 863; 24 W. R. 1026.
Consequently, as a rule, before interfering by injunction, the courts of equity required the plaintiff first to prove his right in an action at law: Motley v. Downman, Cottenham, L.C., 1837, 3 My. & C. 1; 6 L. J. Ch. N. S. 308; Hine v. Lart, Shadwell, V.-C.,