at all? In the following cases the several additions noted in small capitals were added in small letters to the plaintiff's name or trade-mark, or to an imitation of it: EQUAL TO Day & Martin's, injunction granted, Day v. Binning, C.P. Cooper, 489; LATE OF Lundy, Foot & Co., dismissed pending verdict at law, Foot v. Lea, 13 Ir. Eq. 484; FROM Thresher & Glenny, injunction granted, Glenny v. Smith, 2 Dr. & Sm. 476; FROM Hookham & Pottage, injunction granted, Hookham v. Pottage, L. R. 8 Ch. 91; AGENt for Mason & Brand's Essence of Beef, injunction granted, Dence v. Mason, W. N. (1877) 23; W. N. (1878) 42. 5. Defences. The defences commonly set up may be tabulated as The ordinary follows, that: (1.) The plaintiff has no title to the trade-mark in question (e); (2.) The defendant has an independent or a concurrent right to use the mark complained of; (3.) The plaintiff has not complied with the provision of sect. 77 by obtaining the registration or refusal of the mark (f); (4.) There is no infringement (g) ; (5.) The plaintiff is barred from suing the defendant for all or part of the relief he seeks by (a) an agreement or some personal estoppel (other than those next alluded to); (b) acquiescence or licence; (c) delay; or (d) because the trademark is deceptive, or his trade is fraudulent (gg). (1), (3), and (4) are traverses of parts of the plaintiff's case, but (1) may be something more. (e) Pages 301, et seq. 324. The question whether the mark concerned is a trade-mark at all, as to which see Chap. II., p. 24, seldom arises in practice, except on an ap plication to annul an entry on the (f) Chap. XII., p. 260. defences. Attack on Application to expunge or limit the plaintiff's registration. Determination of the plaintiff's title. Application to vary. (1) If the plaintiff's mark has been registered for five years (h), whether in his name or in that of his predecessor in title (i), the registration is conclusive evidence of his right to the exclusive use of the mark, subject to the provisions of the Act-that is, subject to his possessing the goodwill in the business in the goods to which the trade-mark is attached (k); and the defendant can adduce evidence to show (7), or he may show from the plaintiff's own evidence (m), that this condition is not complied with; but he cannot attack the plaintiff's title generally, for instance, by showing that the mark is not a trade-mark (n), or is not within the classes of registerable symbols enumerated in sect. 64, except on an application under sect. 90 (o). The application cannot be made by counterclaim in the action (p). It follows that the defendant in an infringement action, unless satisfied that the plaintiff's title cannot safely be attacked, generally moves to expunge the mark of the latter from the register, or to so limit it as to defeat the action, and, according to the usual practice, the application comes on for hearing with the trial of the action, or with the plaintiff's motion for an interlocutory injunction (q), if any. The Court will, in a proper case, adjourn the decision of the last-mentioned motion in order to enable the defendant to make his cross application to rectify or expunge (1). In any case, it is submitted, and notwithstanding that there is no application to rectify, the defendant may show that the plaintiff's right has determined by abandonment or otherwise (8). Concurrent Right. Where the Court has so decided, two or more persons Concurrent or may be registered as proprietors of the same mark for the independent right. same goods (t), and they will then have concurrent rights. But where more than three persons are independently entitled to use a mark for the same goods it is treated as common to the trade, so that if any of them has obtained registration, the entry ought to be expunged (u). The defendant, if he have an independent right, can therefore apply for registration himself, and in a proper case the Court will order a motion for an interlocutory injunction to stand over until his application is disposed of (r); or, if he allege that the mark is common, he can apply to remove the plaintiff's mark from the register. In Mouson v. Boehm (x), where the plaintiffs had inde- Mouson v. pendently adopted, and, in 1880, had registered, a mark Boehm. closely resembling a mark which the defendant had previously acquired for the same goods, and which he had never abandoned, the plaintiffs brought their action to restrain the defendant from using the latter mark. The defendant applied to register the mark as his, and moved to have the entry of the plaintiff's mark expunged from the register. The application to register came before the Court on a summons to proceed, and was heard, together with the motion for an injunction, at the trial of the action. Chitty, J., allowed the defendant to be registered as a proprietor of the mark, but he refused to order the (8) See Chap. XIV., p. 283. (f) Sects. 71 and 72. It must be a right to use the mark as a trademark; not, for instance, as a family crest, Standish v. Whitwell, 14 W. R. 512; Beard v. Turner, 13 L. T. N. S. 746, both (1866) Wood, V.-C. (a) Chap. X., p. 177. (v) Edwards v. Elkan, 5 R. P. C. 70 (1887), Stirling, J. (x) 26 C. D. 398 (1884), Chitty, J. A similar case of an old mark is cited by Mr. Sebastian, Re United Vineyards, &c. Co. (1889), Stirling, J.; and Re Bryant and May, 4 Times L. R. 675 (1888), Stirling, J., is another. Jackson v. The defendant should apply registration of the plaintiff's mark to be expunged, and he dismissed the action. Jackson v. Napper (y) is a similar case. There the defendant, in 1876, applied through an agent to register a mark as his trade-mark, and he supposed that it was registered accordingly, but, in fact, the application was not proceeded with and was, as the Court held, abandoned. In the next year the plaintiffs registered a similar mark, and more than five years after their registration they brought the action to restrain the defendant from using his mark, and thereupon the defendant took out a summons for a direction to the comptroller to proceed with the registration of his mark. Stirling, J., found that the defendant had acquired and used his mark as a trademark before the 13th of August, 1875, in respect of the goods in question, except one particular class (sheepshears), and he held that, notwithstanding that the five years' registration of the plaintiffs was conclusive evidence of their right to the "exclusive use" of their mark, he had jurisdiction to allow the defendant to be registered in respect of his own mark, upon the analogy of the rule that an entry on the register may be rectified, under sect. 90 (≈), after five years' registration. He accordingly directed the defendant to be registered as proprietor of his mark for the goods in question, other than the sheep-shears, and dismissed the action, except so far as regarded the lastmentioned goods, in respect of which he granted the injunction the plaintiffs sought. It will have been observed that in both the cases last to register his cited there was before the Court an application to register own mark or the defendant's mark, and, upon the analogy of the to expunge the plaintiff's. decisions cited above (a), that, in the absence of an appli cation to rectify, the registration of the plaintiff's mark is, after five years, conclusive proof of his right, it would seem that where the plaintiff's mark has been registered (y) 35 C. D. 162; 4 R. P. C. 45 (1886), Stirling, J. (2) Chap. XII., p. 258. for the period named, the defendant, if he wishes to plead an independent right, must apply either to register his own name, or to rectify the registration of that of the plaintiff. defendant a his mark It is assumed in the judgments delivered in the above- Registration cited cases, and is besides clearly implied by the Act, that gives the registration when properly made gives the defendant an right to use equal title to use the mark with the plaintiff, but only, of prima facie or course, according to the terms of the entry. It is just as conclusive. much an infringement for the defendant to use a registered mark for goods (b), or in a market in respect of which it is not registered, and the plaintiff's mark is registered, as if the defendant's mark were not registered at all. If the plaintiff alleges that the use of the registered mark of the defendant for the goods in respect of which it is registered is an infringement of his mark, his proper course is to apply in the first place to remove the defendant's mark from the register before commencing, or concurrently with (c), the action for infringement. If the defendant's mark has been registered for five years, on the principle referred to above (d), the plaintiff cannot question the right primâ facie conferred by the registration except upon an application to vary or expunge the entry; but, as in the corresponding case of the plaintiff's registered mark, where the registration is less than five years old, it appears to be open to the plaintiff to prove by evidence in the action that it does not, in fact, confer any right to the use of the mark (e). Registration for copyright purposes of a mark at Registration (b) Upper Assam Tea Co. v. Herbert, 7 R. P. C. 183 (1889), C. A. (e) As in Anglo-Swiss Condensed Milk Co. v. Metcalf, 31 C. D. 454; 3 R. P. C. 28 (1886), Kay, J., where the register was rectified by limiting the class of goods for which the defendant's mark was registered, and an injunction was (e) Read v. Richardson, 45 L. T. |