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the mark with intent to deceive purchasers and to supplant the SECT. 22. plaintiff: Crawshay v. Thompson, C. P. 1842, 4 Man. & G. 357; 5 Scott N. R. 562; 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; Sykes v. Sykes, K. B. 1824; 3 B. & Cr., 541; 5 D. & R. 292; 3 L. J. K. B. 46.
In equity, however, proof of knowledge and fraudulent intention on the part of the defendant was not in later times required; see notes to sects. I and 21. And by virtue of the Judicature Act, 1873, sect. 25 (11) the same rule will now prevail in an action at common law.
In any proceeding, therefore, for the recovery of damages for the infringement of a trade mark, the only questions to be considered are (1.) Whether the defendant's mark is a colourable imitation of the plaintiff's mark, and (2.) 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; see also per Jessel, M.R., in Singer Manufacturing Co. v. Wilson, 1875, 2 Ch. D. 434; 45 L. J. Ch. 490; 34 L. T. N. S. 858; 24 W. R. 1023.
As to what amounts to colourable imitation, see notes to sect. 5 of this Act, and sect. 72 of Act of 1883.
By sect. 77 of the Act of 1883 registration under that Act in the case of trade marks so registrable, and a refusal to register in the case of any other trade marks used before 1875, is made a condition precedent to any proceeding to recover damages for infringement.
Measure of Damages.-Even where no special damage can be shown, nominal damages for the invasion of the exclusive right will be given: Rodgers v. Nowill, C. P. 1847, 5 C. B. 109; 17 L. J. C. P. 52; 11 Jur. 1039; 10 L. T. 88; Blofield v. Payne, K. B. 1833, 4 B. & Ad. 410; 2 L. J. K. B. 68; see Orr-Ewing v. Johnston, H. L. 1882, 7 App. Cas. 219; 51 L. J. Ch. 797; 46 L. T. N. S. 216; and 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 this is the case when the goods sold under the deceptive trade mark are not inferior to the goods to which the genuine mark is affixed; Blofield v. Payne, supra.
Defendant obtaining a verdict to have full
Special damage will include loss of custom or profit, by reason of the unlawful use by the defendant of the plaintiff's trade mark ; but on an inquiry as to damages the onus lies on the plaintiff to prove such special damage, and it will not be assumed in the absence of evidence that the amount of goods sold by the defendant under the fraudulent mark would have been sold by the plaintiff but for the defendant's invasion of his right; Leather Cloth Co. v. Hirschfeld, Wood, V.-C., 1865, L. R. 1 Eq. 299; 13 L. T. N. S. 427; 14 W. R. 78.
Where the plaintiff on the defendant's order manufactured goods and marked them with the trade mark of another maker, and on a bill in Chancery being filed against him by the latter for an account, compromised the proceedings at great expense, it was held that he could maintain an action against the defendant for damages amounting to the sum he had paid under the compromise; Dixon v. Fawcus, Q. B. 1861, 3 Ell. & Ell. 537; 30 L. J. Q. B. 137; 7 Jur. N. S. 895; 3 L. T. N. S. 693; 9 W. R. 414.
23. In every action which any person shall, under the provisions of this Act, commence as plaintiff for or indemnity on behalf of her Majesty for recovering any penalty or sum of money, if the defendant shall obtain judgment, he shall be entitled to recover his costs of suit, which shall include a full indemnity for all the costs, charges, and expenses by him expended or incurred in, about, or for the purposes of the action, unless the court or a judge thereof shall direct that costs of the ordinary amount only shall be allowed.
As to the recovery of penalties by action, see sect. 15. On the plaintiff obtaining judgment, he will be entitled to his costs: sect. 17.
As to the effect of Order lxv., Rule 1, of the Rules of the Supreme Court, 1883, upon enactments similar to the above, see per Lord Blackburn in Garnett v. Bradley, H. L. 1878, 3 App. Cas. at p. 970; and see note to sect. 17, ante.
suing for a
24. In any action which any person shall, under SECT. 24. the provisions of this Act, commence as plaintiff for or A plaintiff on behalf of her Majesty for recovering any penalty penalty may or sum of money, if it shall be shown to the satisfaction pelled to give security of the court, or a judge thereof, that the person suing for costs, as plaintiff for or on behalf of her Majesty has no ground for alleging that he has been aggrieved by the committing of the alleged offence in respect of which the penalty or sum of money is alleged to have become payable, and also that the person so suing as plaintiff is not resident within the jurisdiction of the court, or not a person of sufficient property to be able to pay any costs which the defendant may recover in the action, the court or judge shall or may order that the plaintiff shall give security by the bond or recognisance of himself and a surety, or by the deposit of a sum of money, or otherwise, as the court or judge shall think fit, for the payment to the defendant of any costs which he may be entitled to recover in the action.
The plaintiff suing for penalties, if he obtain judgment, will be entitled to his costs: sect. 17.
As to the recovery of penalties by action, see sect. 15.
By Order lxv., Rule 6, of the Rules of the Supreme Court, 1883, it is provided that "in any cause or matter in which security for costs is required, the security shall be of such amount and shall be given at such times and in such manner and form, as the court or judge shall direct."
It has been held that a foreigner usually resident abroad, who is temporarily residing in England for the purpose of bringing an action, cannot be compelled to find security: Redondo v. Chaytor,
SECT. 25. C. A. 1879, 4 Q. B. D. 453; 48 L. J. Q. B. 697; 40 L. T. N. S. 797; 27 W. R. 701; and Ebrard v. Gassier, C. A. 1884, 28 Ch. D. 232.
Act not to
But if a plaintiff goes to reside out of the jurisdiction after action brought, security for costs will be ordered: see Massey v. Allen, infra; Edwards v. Burke, Kindersley, V.-C., 1863, 9 L. T. N. S. 406.
Where an Englishman and a foreigner join as plaintiffs in an action alleging a right to exist in both, or in the alternative in either of them severally, the two together are to be considered as the plaintiffs, and the foreigner will not be ordered to find security: D'Hormusgee v. Grey, Q. B. 1882, 10 Q. B. D. 13; for even if the English plaintiff alone is successful and the foreigner unsuccessful, the successful plaintiff will have to pay the costs of joining improperly the foreigner as co-plaintiff: Umfreville v. Johnson, C. A. 1875, L. R. 10 Ch. 580.
If security is not given in pursuance of the order the action will be dismissed for want of prosecution: Lagrange v. M'Andrew, Q. B. 1879, 4 Q. B. D. 210.
The application for security may be made at any time, the old Rule of the Court of Chancery, that it should be made promptly, having been abrogated by the above provision in the Rules of the Supreme Court: Lydney Iron Co. v. Bird, Pearson, J., 1883, 23 Ch. D. 358.
Security for past, as well as for future costs, may be ordered, but in this case the application should be made within a reasonable time after the costs have been incurred: Massey v. Allen, Hall, V.-C., 1879, 12 Ch. D. 807; 48 L. J. Ch. 692; 41 L. T. N. S. 788; 28 W. R. 243; Brocklebank v. King's Lynn Steamship Co., C. P. 1878, 3 C. P. D. 365; 47 L. J. C. P. 321 ; 38 L. T. N. S. 489; 27 W. R. 94.
25. Nothing in this Act contained shall be construed Corporation to affect the rights and privileges of the Corporation of of Hallam Cutlers of the Liberty of Hallamshire in the county of York, nor shall anything in this Act contained be construed in any way to repeal or make void any of
shire, nor to repeal 59
the provisions contained in the fifty-ninth George third, SECT. 26. chapter seven, intituled An Act to regulate the Cutlery Trade in England.
See, as to the registration of cutlery marks, sect. 81 of the Act of 1883.
26. The expression "The Merchandise Marks Act, Short title. 1862,❞ shall be a sufficient description of this Act.