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SECT. 21. 1846, 10 Jur. 106; 7 L. T. 41; Rodgers v. Nowill, Wigram, V.-C., 1846, 6 Hare 325; Perry v. Truefitt, Langdale, M.R., 1842, 6 Beav. 66. And this rule seems only to have been disregarded when the fraud was so obvious as to render an action unnecessary : Croft v. Day, Langdale, M.R., 1843, 7 Beav. 84; Franks v. Weaver, Langdale, M.R., 1847, 10 Beav. 297 ; 8 L. T. 510; Edelsten v. Vick, Wood, V.-C., 1853, 11 Hare 78; 18 Jur. 7; and the cases above cited.
Consequently it was laid down that there was no exclusive right to a trade mark, but that the plaintiff's right was merely a personal right to be protected against fraud: Blanchard v. Hill, Hardwicke, L.C., 1742, 2 Atk. 484; Canham v. Jones, Plumer, V.-C., 1813, 2 V, & B. 218.
The practice of referring to the courts of common law for the trial of the legal right before the remedy by injunction would be granted, was abolished by Rolt's Act (25 & 26 Vict., c. 27); and it came at length to be considered that the jurisdiction of the Court of Chancery to interfere by injunction was based upon a right of property in the trade mark itself: Millington v. Fox, Cottenham, L.C., 1838, 3 My. & C. 338; Farina v. Silverlock, Cranworth, L.C., 1858, 6 De G. M. & G. 214; 26 L. J. Ch. 11; 2 Jur. N. S. 1008; 27 L. T. 277 ; 4 W. R. 731; Burgess v. Hills, Romilly, M.R., 1858, 26 Beav. 244; 28 L. J. Ch. 356; 5 Jur. N. S. 233; 32 L. T. 328; 7 W. R. 158; Clement v. Maddick, Stuart, V.-C., 1859, 1 Giff. 98; 5 Jur. N. S. 592; Edelsten v. Edelsten, Westbury, L.C., 1863, 1 De G. J. & S. 185; 9 Jur. N. S. 479; 7 L. T. N. S. 768; 11 W. R. 328; Hall v. Barrows, Westbury, L.C., 1863, 4 De G. J. & S. 150; 33 L. J. Ch. 204; 9 L. T. N. S. 561; 12 W. R. 322; Leather Cloth Co. v. American Leather Cloth Co., Westbury, L.C., 1863, 4 De G. J. & S. 137; 33 L. J. Ch. 199; 10 Jur. N. S. 81; 9 L. T. N. S. 558; 12 W. R. 289; Singer Manufacturing Co. v. Wilson, C. A. 1876, 2 Ch. D. 453; 45 L. J. Ch. 490; 34 L. T. N. S. 863; 24 W. R. 1026.
It is, therefore, necessary in a claim for an injunction to restrain the infringement of a trade mark to prove only that the trade mark has been taken: see per Jessel, M.R., in Singer Manufacturing Co. v. Wilson, supra.
Imposition on the public is indeed necessary for the plaintiff's title; but in this way only, that it is the test of the
invasion by the defendant of the plaintiff's property; for there SECT. 21. is no injury done to the plaintiff if the mark used by the defendant be not such as may be mistaken by the public for the mark of the plaintiff :" per Westbury, L.C., in Hall v. Barrows,
In other words, the court has to consider before granting an injunction, first, whether the defendant's mark is a colourable imitation of the plaintiff's mark, and secondly, whether the defendants have been selling goods so marked as to lead purchasers to believe they are the plaintiff's goods: per Thesiger, L.J., in Mitchell v. Henry, C. A. 1880, 15 Ch. D. 181; 43 L. T. N. S. 186.
As to what degree of imitation will constitute infringement, see sect. 5, ante, and sect. 72 of the Act of 1883, post.
It is not necessary, in order to obtain an injunction, to prove any instance of actual deception or any actual damage, for the very life of a trade mark depends upon the promptitude with which it is vindicated: Orr-Ewing v. Johnston, H. L. 1882, 7 App. Cas. 219; 51 L. J. Ch. 797; 46 L. T. N. S. 216; Dent v. Turpin, Wood, V.-C., 1861, 2 J. & H. 139; 30 L. J. Ch. 495; 4 L. T. N. S. 637; Braham v. Beachim, Fry, J., 1878, 7 Ch. D. 848; 47 L. J. Ch. 348; 38 L. T. N. S. 640; 26 W. R. 654; and see Blofield v. Payne, K. B. 1833, 4 B. & Ad. 410; 2 L. J. K. B. 68; Rodgers v. Nowill, C. P. 1847, 5 C. B. 109; 17 L. J. C. P. 52; 11 Jur. 1039; 10 L. T. 38.
An injunction will be granted against an innocent consignee of goods to which a spurious trade mark is affixed: Upmann v. Elkan, Hatherley, L.C., 1871, L. R. 7 Ch. 130; 41 L. J. Ch. 246; 25 L. T. N. S. 813; 20 W. R. 131; Moet v. Pickering, C. A. 1878, 8 Ch. D. 372; 47 L. J. Ch. 527; 38 L. T. N. S. 799; 26 W. R. 637; Upmann v. Forester, Chitty, J., 1883, 24 Ch. D. 231 ; 52 L. J. Ch. 946; 49 L. T. N. S. 122; 32 W. R. 28.
And, it would seem, the innocent infringer must pay the costs of obtaining the injunction although the plaintiff gives him no notice of the infringement before serving him with the writ in the action: Upmann v. Forester, supra; and see Wittman v. Oppenheim, Pearson, J., 1884, 27 Ch. D. 260.
For where an action is brought to enforce a legal right and there is no misconduct on the part of the plaintiff, the court has
no discretion to refuse him costs: Cooper v. Whittingham, Jessel, M.R., 1880, 15 Ch. D. 501; 43 L. T. N. S. 16; 28 W. R. 720.
The power to grant injunctions was given to the common law courts in certain cases by the Common Law Procedure Act, 1854, sects. 79-82, as amended by the Common Law Procedure Act, 1860, sects. 32 and 33; and in the Patent Law Amendment Act, 1852, sect. 42, there is an analogous provision to that contained in this section.
Now, by the Judicature Act, 1873, all the jurisdiction of the Court of Chancery has been transferred to the High Court of Justice, and by sect. 25 (8) it is provided that an injunction may be granted by an interlocutory order in all cases where it shall appear to the court just and convenient to make the order.
The jurisdiction of granting injunctions thus vested in the High Court is practically unlimited, and can be exercised by any judge of the High Court in any case in which it is just and right to do so, having regard to settled legal reasons or principles: Beddow v. Beddow, Jessel, M.R., 1878, 9 Ch. D. 89; 47 L. J. Ch. 588; 26 W. R. 570; Hedley v. Bates, Jessel, M.R., 1880, 13 Ch. D. 498; 49 L. J. Ch. 170; 42 L. T. N. S. 41; 28 W. R. 365; Anglo-Italian Bank v. Davies, C. A. 1878, 9 Ch. D. 275; Thomas v. Williams, Fry, J., 1880, 14 Ch. D. 864; 49 L. J. Ch. 605; 43 L. T. N. S. 91; 28 W. R. 983.
The principles, however, upon which injunctions were formerly granted have not been altered; Day v. Brownrigg, C. A. 1878, 10 Ch. D. 294; 48 L. J. Ch. 173; 39 L. T. N. S. 533; 27 W. R. 217; Gaskin v. Balls, C. A. 1879, 13 Ch. D. 324; 28 W. R. 552. And an injunction will only be granted when it is “just” as well as "convenient" to grant it: Beddow v. Beddow, and Day v. Brownrigg, supra; Read v. Richardson, C. A. 1881, 45 L. T. N. S. 54.
The provision in the Judicature Act may be regarded as a supplement to all Acts of Parliament, and therefore where a statute prohibits an act under a penalty the remedy by injunction still remains Cooper v. Whittingham, Jessel, M.R., 1880, 15 Ch. D. 501; 43 L. T. N. S. 16; 28 W. R. 720.
It must be borne in mind that in the case of trade marks registrable under the Act of 1883, registration thereunder, and in the case of any other mark in use before 1875, refusal of regis
tration, is made a condition precedent to a proceeding to prevent SECT. 22. infringement. See Act of 1883, sect. 77.
Costs.-Under the old practice a successful plaintiff in an action for a special injunction to restrain infringement, when to procure the injunction was the principal relief sought, was entitled to costs on the higher scale; but now, under Order lxv., R. 9, of the Rules of the Supreme Court, 1883, it is left to the discretion of the court to direct a taxation on the higher scale when special grounds are shown. The fact that the defendant submits unconditionally to a perpetual injunction with costs is not a special ground; for, if it were, the court would be inflicting a punishment on him for submitting at once: Hudson v. Osgerby, Pearson, J., 1884, W. N. p. 83.
22. In every case in which any person shall do or Persons cause to be done any of the wrongful acts following; by forgeries (that is to say) shall forge or counterfeit any trade damages mark; or for the purpose of sale, or for the purpose of guilty any manufacture or trade, shall apply any forged or counterfeit trade mark to any chattel or article, or to any cask, bottle, stopper, vessel, case, cover, wrapper, band, reel, ticket, label, or thing in or with which any chattel or article shall be intended to be sold or shall be sold or uttered or exposed for sale, or for any purpose of trade or manufacture; or shall enclose or place any chattel or article in, upon, under, or with any cask, bottle, stopper, vessel, case, cover, wrapper, band, reel, ticket, label, or other thing to which any trade mark shall have been fasely applied, or to which any forged or counterfeit trade mark shall have been applied; or shall apply or attach to any chattel or article any case, cover, reel, wrapper, band, ticket, label, or other thing to which any trade mark shall have been falsely
SECT. 22. applied, or to which any forged or counterfeit trade
mark shall have been applied; or shall enclose, place, or attach any chattel or article in, upon, under, with or to any cask, bottle, stopper, vessel, case, cover, reel, wrapper, band, ticket, label, or other thing having thereon any trade mark of any other person; every person aggrieved by any such wrongful act shall be entitled to maintain an action or suit for damages in respect thereof against the person who shall be guilty of having done such act or causing or procuring the same to be done, and for preventing the repetition or continuance of the wrongful act, and the committal of any similar act.
As to the meaning of "trade mark" and "person," see sect. I. And as to what amount of imitation constitutes forgery, see sect. 5. The "wrongful acts" are fully defined in sects. 2 and 3; and persons aiding and abetting their commission are as guilty as the principals: see sect. 13.
Action for Damages.-The oldest remedy for the infringement of a trade mark was, as has been previously noticed (see notes to sects. 1 and 21), by an action on the case in the nature of a writ of deceit per Westbury, L.C., in Edelsten v. Edelsten, 1863, 1 De G. J. & S. 185; 9 Jur. N. S. 479; 7 L. T. N. S. 768; 11 W. R. 328; and in Leather Cloth Co. v. American Leather Cloth Co., 1863, 4 De G. J. & S. 137; 33 L. J. Ch. 199; 10 Jur. N. S. 81 ; 9 L. T. N. S. 558; 12 W. R. 289; and per Mellish, L.J., in Singer Manufacturing Co. v. Wilson, C. A. 1876, 2 Ch. D. 448; 45 L. J. Ch. 490; 34 L. T. N. S. 863; 24 W. R. 1026.
To support such an action it was necessary to prove an intention to deceive, and consequently the questions for the jury were: (1.) Whether the defendant's mark bore such a close resemblance to the plaintiff's mark as to be calculated to deceive ordinary persons and to induce them to believe that the defendant's goods were of the plaintiff's manufacture; and (2.) Whether the defendant used