The Montreal Lithographing Company Ld. v. Sabiston. Hyde. On the 1st of May 1896, the Respondent, Malcolm Macleod Sabiston, signed a declaration, duly registered on the 9th of May 1896, of his intention to carry on business in Montreal as printer, lithographer, and publisher under the name, style, and firm of Sabiston Lithographing and Publishing Company. 5 The Respondent's brother, Alexander Sabiston, who had been manager of the dissolved Company, took an active part in this new business. On the 13th of May 1896, George Hyde purported to sell the assets of the liquidated Company to a private firm doing business at Toronto under the name of The Toronto Lithographing Company. In or about September 1896, 10 the Appellant Company was incorporated and took over the assets of the liquidated Company. It did not assume the name of the dissolved Company, but sought and obtained incorporation under the name of The Montreal Lithographing Company, Ld. This Company applied for and obtained from Mr. Justice de Lorimier an injunction in the terms that the 15 Respondent "be enjoined, restrained, and prohibited from continuing to carry "on business under or exhibiting or making use of the name Sabiston "Lithographing and Publishing Company, or any other name or style so "framed as to be a colourable imitation of the name of the said dissolved "Sabiston Lithographic and Publishing Company, or so as to deceive the 20"public or lead to the belief that the business carried on by the said "Respondent is the same business as that hitherto carried on by the said "dissolved Sabiston Lithographic and Publishing Company, or that his "business is the successor of that said dissolved Sabiston Lithographic and "Publishing Company." Damages of 100 dols, and costs were also given against 25 the Respondent. On Appeal the Court of Queen's Bench, consisting of the Hon. Sir Alexander Lacoste, C.J., Mr. Justice Bossé, Mr. Justice Blanchet, Mr. Justice Hall, and Mr. Justice Wurtele, reversed the decision of Mr. Justice de Lorimier on the grounds that The Sabiston Lithographic and Publishing 30 Company by its dissolution terminated its existence, and that although the liquidator was authorised to sell, and did sell, the goodwill of the said Company, nevertheless the said sale could not, and did not, transfer to the purchaser the right to use the name of the said Company after its dissolution, a right which could only be granted by the Crown; that it was not alleged that the Defendant 35 was a party to the said sale, and that he never agreed expressly or tacitly either to assign the goodwill of the said Company to the Plaintiffs or to refrain from using its name or soliciting its custom; and also that the Plaintiffs have never used, or intended to use, the said Company's name. The Plaintiffs appealed from this decision, and on the hearing of the Appeal 40 Sir Robert Reid, Q.C., and Herbert Cowell (instructed by Parker, Garrett, and Holman) appeared for the Appellants; and the Hon. Edward Blake, Q.C., and Duclos (instructed by S. V. Blake) for the Respondent. Sir Robert Reid, Q.C., and Cowell, for the Respondents, referred to the following cases :-Trego v. Hunt (1896) App. Cas. 7; Labouchere v. Dawson, 45 L.R. 13 Eq. 322. Counsel for the Respondent were not called upon. Lord DAVEY.-In the year 1889 a Company was incorporated under Letters Patent of the Province of Quebec with the name of The Sabiston Lithographic and Publishing Company. That Company carried on business at the Gazette 50 Building, Montreal, until the 13th of April 1896, when a winding-up Order was made against it, and a liquidator was appointed. One Alexander Sabiston was the managing director or manager of the Company until a short time before it went into liquidation. On the 28th of April 1896, the assets of The Sabiston Company, including 55 the goodwill, were sold by public auction to Mr. Hyde, who forthwith transferred the same to two persons carrying on a similar business at Toronto under the name of The Toronto Lithographing Company. Those persons on the following The Montreal Lithographing Company Ld. v. Sabiston. 30th of September registered the Appellant Company with the name of The Montreal Lithographing Company, Ld., and transferred to them the assets, including the goodwill, of the old Company. It appears that the business continued to be carried on under the direction of the liquidator until the formation of the Appellant Company, and has since been carried on at the 5 Gazette Building, Montreal. On the 1st of May 1896 the Respondent, who is a brother of Alexander Sabiston, signed a declaration that he intended to carry on business in Montreal as printer, lithographer, and publisher under the name of The Sabiston Lithographing and Publishing Company, and he has since carried on that 10 business with the assistance of his brother at 457, Paul Street, Montreal. On the 9th of December 1896, the Appellants commenced the present action by Petition, in which they alleged that the Respondent was fraudulently and wrongfully carrying on business as printer, &c., under the name and style of The Sabiston Lithographing and Publishing Company, and was fraudulently 15 leading the public to believe that the business carried on by him was that of the dissolved and liquidated Company. The prayer of the Petition was that a Writ of Injunction be issued to restrain the Respondent from carrying on business under the name Sabiston Lithographic and Publishing Company, or any other name so framed as to lead to the belief that the business 20 carried on by the Respondent is the same business as that heretofore carried on by the dissolved Company, or that his business is the successor of that of the dissolved Company. Mr. Justice de Lorimier in the Superior Court granted an injunction in the terms of the prayer of the Petition. But that decree was reversed by the Court 25 of Queen's Bench, and the present appeal is from the decree of the latter Court. The judgment of the Court of Queen's Bench was delivered by Mr. Justice Blanchet, and proceeded on the grounds that the liquidator could not transfer the right to use the name of the dissolved Company, which was a grant from the Crown, and the liquidator could only give the assets as he found them, and 30 the pretended sale of the good will made by him even judicially authorised could not bind the shareholders, and could not transfer to the new Appellants a right which had then no real and actual existence. Their Lordships agree with the Court below that the Appellants have no right to restrain the Respondent from using the trade name under which he is 35 carrying on his business, but they are not prepared to concur in all the reasons given by the learned Judge for the judgment of the Court. They have not found it necessary to hear the Respondent's Counsel. Subject to this observation they see no reason to doubt that it was competent for the liquidator to sell the goodwill of the old Company together with its other assets. But the extent 40 of the rights conferred by a transfer of a good will may depend upon circumstances. No doubt the Appellant Company could not acquire any corporate name except by grant from the Crown; but the promoters of the Appellants might have applied for incorporation under the same name as the old Company subject to any objection which might be urged by the Respondent. As already 45 stated, no such application was made. The facts are that for upwards of seven months the Respondent carried on his business under the present name with the acquiescence of the liquidator of the old Company, and, until the present action was commenced, of the purchasers of its goodwill. There appears, indeed, to have been some correspondence with the solicitors of the liquidator 50 in May 1896, but it did not result in any proceedings being taken. The Appellants, on the other hand, were incorporated and registered, and have since carried on their business under a quite different name, and do not allege any intention of using-and indeed have no right to use-the old Company's name as their trade mark or firin name. But the Appellants have the right to describe 55 themselves as the successors of the old Company, and as carrying on the same business, and they have availed themselves of that right in their trade circulars, The Montreal Lithographing Company Ld. v. Sabiston. The Respondent, on the other hand, has no right to hold himself out as successor of the old Company. But their Lordships cannot find on the evidence in the case that the Respondent has done so. There is no representation to that effect in his trade circulars. The case of an order from 5 customers named Pickford and Black was relied on by the Appellants. But it is to be observed that the order was in the first instance received by the liquidator of the old Company, who opened the letter containing it and forwarded it to the Respondent-for whom he considered, though wrongly, it to be intended-and the customers when made aware of the 10 facts elected to leave the order with the Respondent. In the case of Norris, another customer, the Respondent's manager himself caused the mistake to be communicated to the Appellants, who got the order. Again the Respondent was not shown to have been responsible for the terms of the entry in Lovell's Directory. It may have been a pardonable mistake by the compiler of the 15 Directory, who was not called by the Appellants to clear up the matter. The evidence and argument all come back to the mere use of the name, and their Lordships have already expressed their opinion that the Appellants are not entitled to an injunction on that ground alone. Their Lordships will, therefore, humbly advise Her Majesty that the Appeal 20 be dismissed, and the Appellants must pay the costs of it, 25 IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION. Before MR. JUSTICE STIRLING. June 16th, 1899. ACTIEN GESELLSCHAFT FUR CARTONNAGEN INDUSTRIE v. TEMLER Patent.-Action for infringement.-Motion for interlocutory injunction.— Delay-Injunction refused. The Plaintiffs in May 1899 commenced an action for infringement of Letters Patent and moved for an interim injunction. The ownership of the Patents 30 had been the subject of litigation in Germany, but in October 1898, judgment was given against R. in favour of the right of the Plaintiffs to an assignment from him of the Patents, and an appeal from that judgment was disposed of in January 1899. T., one of the Defendants, claimed the right to work the invention under a license granted by R., and he had so worked since 1894, 35 but, as alleged by the Plaintiffs, with notice of their title. Held, that assuming that the Defendant T. had notice of the Plaintiffs' title, yet in view of the delay on the part of the Plaintiffs (who knew of the Defendant's working) in asserting their rights, and on the Defendant T. undertaking to keep an account, no order ought to be made on the motion; the costs 40 of the motion were reserved, Actien Gesellschaft fur Cartonnagen Industrie v. Temler and Another. On the 10th of May 1899, the Actien Gesellschaft fur Cartonnagen Industrie commenced an action against Josef Temler for infringement of Letters Patent (No. 12,043 of 1892 and No. 23,735 of 1892) granted to Teodor Remus. Charles Christian Seeman an agent of Temler, was subsequently made a Defendant to this action. On the 15th of May 1899, the Plaintiffs gave notices of motion 5 for an interlocutory injunction against each Defendant. The evidence filed on the motions sufficiently appears for the purposes of this report in the judgment. Moulton, Q.C., and O. Leigh Clare (instructed by W.J. and E. H. Tremellen. agents for Blair and Seddon, of Manchester) appeared for the Plaintiffs; Jenkins, Q.C., and A. J. Walter (instructed by Hutchinson & Son) appeared for the 10 Defendants. STIRLING, J.-This is a motion to restrain the Defendant and his agent from infringing two Patents. To these the Plaintiffs at the present moment have only an equitable title. The equitable title is derived under an agreement with one Remus, who is resident in Germany, and the Courts in that country have, in 15 an action brought against him by the present Plaintiff's, held that he is bound to assign these Patents to them. Consequently they have an equitable title, although the assignment has not yet been made by Remus. Proceedings are -being taken in Germany to enforce the Order of the Court there, but as yet they have not resulted in an assignment being executed by Remus. Now the 20 Defendant Temler claims from Remus under an agreement, which was made in 1893, for the sale by Remus to Temler of a business, including the right of working under certain Letters Patent; and in pursuance of that in September 1894, and on the 10th of October 1896, licenses were granted by Remus to Temler of these two Letters Patent, and under these, from that time down to 25 the present, the Defendant Temler has been working. That has been going on at any rate since September 1894, according to the evidence. Now, it is alleged by the Plaintiffs that the Defendant Temler had, at the date of that agreement, notice of the document under which the Plaintiffs have established their title in Germany. The Defendant Temler, in his affidavit, has sworn in general 30 terms that, "At the date of my purchasing such business no claim had, to my "knowledge, been made to Mr. Remus by the Plaintiffs that these Patents "should be handed over to them "--which is probably true-" and neither had "I any knowledge of any agreement between Mr. Remus and the Plaintiffs.” It is quite clear that he had knowledge of some of the agreements, because in 35 the very document on which he bases his title from Remus he says that the vendor, being compelled to return to Germany under an agreement with the firm or Company there-which is admitted to be the Plaintiffs'-he is desirous of selling the business. It is quite clear, therefore, that he had notice. But, moreover, in an action which has been brought by Remus to enforce the title 40 in himself as exclusive licensee to this very Patent, he has confessed a defence which, it seems to me, contains a material statement, namely, this: "The "Plaintiff Temler in this action derived such title to or interest in the said "Letters Patent as he may possess from the Plaintiff Remus at a date subsequent "to the date when the Plaintiff Remus contracted to assign the same to the 45 "Actien Gesellschaft, and with full knowledge of the said contract." I think that that is a material allegation, having regard to the allegation in the Statement of Claim that Temler was granted an exclusive license to use the said inventions. In point of fact, however, Temler is not an exclusive licensee on the documents which he has himself put in evidence. On the materials 50 before me, although the evidence is not quite so clear as I should like, I have a strong belief that the Plaintiffs will at the trial be able to establish that Temler took with notice of this agreement, which the German Courts have held to constitute the title of the Plaintiffs to an assignment of the Patents in England. Now, assuming that, ought I to grant an injunction in this case? The Defendants have been carrying on business ever since 1894, and no step has 55 66 Actien Gesellschaft fur Cartonnagen Industrie v. Temler and Another. been taken against Temler by the Plaintiffs down to the 9th of May in the present year. Well, it is said that in 1896 the Plaintiffs gave notice of their claim, and so they did. They issued on the 11th of February 1896 a circular, in which they stated, "We hereby give you notice that by the same agreement 5" we claim other inventions of Mr. Remus, including the bending machine, English Patent No. 12,043, on which we are about to commence an action in "Germany to secure possession," and that document no doubt came to the notice of the Defendants. Now, the litigation in Germany was going on from 1896 apparently, and first of all results in Remus being successful; but after10 wards, on the 27th of October 1898, judgment was pronounced by a higher Court, by which the judgment of the Court below was reversed and the title of the Plaintiffs to an assignment was established. There was a further appeal, but that was disposed of in January of the present year. Now, allowing that the Plaintiffs could not have usefully brought their action 15 down to October 1898, it does not seem to me that time ought to run in favour of the Plaintiffs after that date, and certainly not after the final appeal was disposed of in January of the present year. During all that time the present Defendants have been allowed to go on. Persons who assert legal rights are bound to come promptly, and à fortiori persons who 20 assert only equitable rights. I think, under these circumstances, upon the Defendants undertaking to keep an account, the proper Order is to make no Order on the motion. I shall reserve the costs to be dealt with at the trial; and, having regard to the circumstances, I shall, as far as possible, be disposed to accelerate the trial of the action. 25 By consent further proceedings were stayed against the Defendant Seeman ; the undertaking to keep an account being given by the Defendant Temler. 30 IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION. Before MR. JUSTICE BYRNE. July 7th, 1899. CHATWOOD'S PATENT SAFE AND LOCK COMPANY, LD. AND OTHERS v. Patent.-Action for infringement.—Application for leave to apply to amend Specification.-Leave granted.-Patents, &c. Act, 1883, Section 19. Letters Patent having been granted to C. relating to improvements in safes, 35 the owners of the Patent commenced an action for infringement, and subsequently moved that they might be at liberty to apply at the Patent Office for leave to amend their Specification by way of disclaimer. The Defendants opposed the application, urging that the proceedings were only at an early stage, and that it was a case in which leave should not under the circumstances be given, |
