A licence by the plaintiff to the defendant to use the Licence. mark would be proof of acquiescence in user falling within the terms of the licence, and would be a defence (b). Any registered proprietor can grant licences to use the mark, subject to any equities affecting it (c), unless, for instance, he has agreed with the plaintiff not to do so (d). But it is submitted that a licence by some registered proprietor, other than the plaintiff, would not be a defence unless the defendant were possessed of the goodwill of the business, or part of it, to which the trade-mark was attached (e). right of (c.) Mere delay, after knowledge of the infringement, to Delay does take proceedings, not sufficient to call the Statutes of not bar the Limitation into operation, is no bar to the action. Before action; the Judicature Acts it might have furnished an answer to an application for an injunction (ƒ), at least until the plaintiff had established his rights by recovering damages in an action at law, unless the deception resulting from the use of the defendant's mark were still continuing (g); but both branches of the Court now enforce legal and equitable rights together, and consequently, wherever an injunction could have been obtained after an action for damages, it can now be obtained at once or concurrently with the judgment for damages. The rule is not peculiar to trade-mark cases, but is part of the general law (h). & G. 614; 22 L. J. Ch. 404 (1853), per Turner, L.J. As to what constitutes acquiescence, see Proctor v. Bennis, ante, p. 331; "delay," section (c); and Hogg v. Scott, L. R. 18 Eq. 444, Hall, V.-C., Weldon v. Dicks, 10 C. D. 247, Malins, V.-C. (copyright); and Smith v. Smith, L. R. 20 Eq. 500, Jessel, M.R. (ancient lights). (b) Kinahan v. Bolton, 15 Ir. Ch. 75 (1863), Brady, C. (c) Sect. 87. Game, Harrison and Larner, Ld., 9 R. P. C. 186 (1892), (e) See Chap. XIII., p. 281, and (f) Hovenden v. Lloyd, 18 W. R. 1132 (1870), Bacon, V.-C., fifteen months' delay; Estcourt v. The Estcourt Hop Essence Co., 10 Ch. 276 (1875), Cairns, L.C. and L.JJ., seven months' delay. (g) Rodgers v. Rodgers, 31 L. T. N. S. 285 (1874), L.JJ. (h) See The Three Towns Banking Co. v. Maddever, 27 C. D. 533 (1884), C.A. but may modify the It was stated by Fry, J., in the following terms, in Fullwood v. Fullwood (2) (i): "In my opinion that delay" (from early in 1875, when the plaintiff first knew of the infringement, till November, 1876, when he commenced his action) "-and it is simply delay-is not sufficient to deprive the plaintiff of his rights. The right asserted by the plaintiff in this action is a legal right. He is, in effect, asserting that the defendants are liable to an action for deceit. It is clear that such an action is subject to the Statute of Limitations, and it is also clear that the injunction is sought merely in aid of the plaintiff's legal right. In such a case the injunction is, in my opinion, a matter of course, if the legal right be proved to exist. In saying that I do not shut my eyes to the possible existence in other cases of a purely equitable defence, such as acquiescence or acknowledgment (k), and the various other equitable defences which may be imagined. But lapse of time, unaccompanied by anything else (and to that I confine my observations), has, in my judgment, just as much effect, and no more, in barring a suit for an injunction as it has in barring an action for deceit. In my judgment, the same rule applies since the Judicature Act as formerly applied in the Court of Chancery when the legal right had to be determined in an action at law" (1). But delay may affect the nature of the relief granted. relief granted; It may cause the Court to refuse the ordinary interlocutory injunction, either on terms of the defendant keeping an account, or absolutely (m), or to refuse to give damages, or to direct an account of profits in lieu of damages, or to restrict such account to profits made since the beginning of the action (n). And in a case where the plaintiffs took no action on hearing that the defendant had received a small consign (i) 9 C. D. p. 178 (1878). (1) Cf. the judgment of Mellish, L. R. 7 Ch. p. 632. (m) See below, "Interlocutory injunction," p. 353. (n) See below, "Account," p. 360. ment of spuriously marked goods, preferring to wait until he received a larger consignment, Malins, V.-C., ordered the injunction to be directed to future receipts by the defendant only (o). Unless, however, this case can be supported on the ground of acquiescence, it is submitted that it is inconsistent with the rule established by the cases cited above. amount to But delay to pursue infringers, where the infringements and may are numerous and notorious, may amount to abandon- abandonment. ment (p) of the trade-mark, and lead to its becoming publici juris (q). And, as already pointed out, it may have an important It has a bearing on bearing on the weight of the evidence in the case, for if, in the weight spite of long user by the defendant of the alleged infring- of evidence. ing mark, no case of actual deception is proved, and the absence of this evidence is not otherwise accounted for, it may be difficult for the Court to believe that the defendant's mark is calculated to deceive. It has been suggested that, where the infringement has lasted a number of years, it is necessary for the plaintiff to prove that some persons have actually been deceived (»), but this is not, it is submitted, a rule of law (s). Moreover, lapse of time may prevent conduct which would at first be an infringement being calculated to deceive. Thus, in The Marquis of Londonderry v. Russel (t), an action against the defendant, for sending coals to the London market as "Londonderry Wallsend Coal," was dismissed because the defendant had used the name for twenty-five years, and the plaintiff had long known of his use of it. (0) The Anglo-Swiss Condensed Milk Co. v. The Swiss Condensed Milk Co., (1871) W. N. 163. (p) Page 289. (9) As in Hyde & Co.'s Tm., 7 C. D. 724 (1878), Jessel, M.R., (Bank of England Sealing Wax); Chap. XIV., p. 284. (r) Rodgers v. Rodgers, 31 L. T. N. S. 285 (1874), per Mellish, L.J.; Isaacson v. Thompson, 41 L. J. Ch. 101 (1871), Bacon, V.-C. (8) See "Proof of Actual Deception," p. 206. (t) 2 Times L. R. 843; 3 Times L. R. 360 (1886), Bacon, V.-C., and C. A. Deceptive trade-mark and fraudulent trade. Deceptive trade-marks Whatever might have been the result had the plaintiff applied in 1861 to restrain the defendant from selling his coals under the name, it was clear, the Court of Appeal held, that at the time of their judgment the defendant's conduct could not be taken to amount to any representation that his coals came from the plaintiff's Londonderry collieries. (d.) The Court will not interfere to protect the use of a deceptive trade-mark, or to assist a trader who is using his mark for the purposes of a fraudulent trade. This principle was well established in the Court of Chancery, and, although no case seems to be reported upon the point, it would no doubt have been recognized also in the Courts of Common Law before the Judicature Acts, had any case arisen, for the maxim ex turpi causa non oritur actio is a rule of law (u). The plaintiff, Lord Westbury said, in The Leather Cloth Case (x), "desires to restrain the defendant from selling his own goods as the goods of another person; but if, by the use of the trade-mark in question, the plaintiff himself is representing and selling his goods as the goods of another, or if his trade-mark gives a false description of the article, he is violating the rule upon which he seeks relief against the defendant." The deceptive mark, in Sir Roundell Palmer's phrase, are outlawed. adopted by James, V.-C., in The Leather Cloth Co. v. Lorsont (y), is "outlawed." Collateral tation. The earliest of the cases commonly cited, in which the misrepresen- Court of Chancery refused to interfere, on the ground of the plaintiff's own deceptive conduct, until the plaintiff had established his right by action at law, is Pidding v. How (2), and the leading authority on the subject is the Ford v. Foster. judgment of Mellish, L.J., in Ford v. Foster (a). There it (u) See per Mellish, L.J., in Ford v. Foster, L. R. 7 Ch. p. 631 (1872). (x) 4 De G. J. & S. 137; 33 L. J. Ch. 199 (1863). (y) L. R. 9 Eq. p. 352 (1869). (z) 8 Sim. 477; 6 L. J. Ch. N. S. 345 (1837), Shadwell, V.-C. Lying advertisements as to the origin of tea (Howqua's Mixture). (a) L. R. 7 Ch. 611 (1872), (Eureka Shirts). The judg ment of was objected by the defendants that the plaintiff in certain invoices and advertisements had falsely described himself as a patentee; but as the false description was collateral and did not appear in the mark in question, and the plaintiff's trade was not shown to be fraudulent, the Court decided that the plaintiff's legal right of action in respect of the defendant's infringement was not barred, and that he was consequently entitled to an injunction, with an account from the filing of the bill, and costs. If the false representation had been in the trade-mark itself, the Lord Justice held, no Court of Equity, and, according to his opinion, no Court of law, would have entertained the plaintiff's action, and the same rule would apply if the trade were fraudulent; but, he said, "where the trade is, as in this case, a perfectly honest trade, and where the trade-mark is, as in this case, a perfectly honest trademark, I am clearly of opinion that there is no common law principle upon which it is possible to hold that the fact that the plaintiff has been guilty of some collateral fraud would be an answer to an action. It would be impossible to plead at law as a justification for the defendant's committing the fraud, that the plaintiff had committed a fraud on some one else." "It is true," he added, "that in this case the bills containing this false representation as to its being a patented article are proved to have been given to the defendants themselves; but there is not the slightest evidence, or the slightest reason for supposing, that the defendants were ever deceived by that representation, because they knew perfectly well that there was no patent for these shirts." The following are some miscellaneous examples of cases Examples of where objections to the plaintiff's case on the ground of collateral misrepresentation failed: title of a magazine tations. protected, although the magazine purported to be written by someone other than the author, Hogg v. Kirby, 8 Ves. 215; similar cases with regard to songs, Chappell v. Sheard, 2 K. & J. 117; Chappell v. Davidson, 2 K. & J. 123; 8 De G. M. & G. 1. "Holloway's pills and ointment" protected, K. collateral misrepresen |