Interests of innocent persons in the marked goods unaffected. Lien for costs. The duty of the bailee of infringing goods. Slazenger v. Feltham (n), where the word Demotic, an infringement of the plaintiffs' mark Demon, was stamped upon the defendants' tennis racquets, the order of Kekewich, J., for the destruction of the racquets, was varied by the Court of Appeal, upon it being pointed out that the spurious mark could be planed off; and it was ordered that the defendants should make an affidavit verifying the number of the racquets, and that they should either deliver up the racquets to the plaintiffs, to be destroyed, or satisfactorily erase from them the name Demotic, in the presence of the plaintiffs or their agent. The lien of a wharfinger for his charges in regard to goods deposited with him, including the costs he is put to by being made a defendant in a trade-mark action, is not destroyed if the goods turn out to be spuriously marked (0); and although, in some earlier cases (p), the plaintiff was adjudged to have a lien upon the goods, subject to that of any wharfinger or mortgagee who had an earlier charge, and who was innocent in regard to the infringement, the Court of Appeal, in the case last cited (o), expressed considerable doubt whether such a lien could be supported. Of course, neither the wharfingers nor any other persons. interested in the goods would be allowed to sell or dispose of the goods until the spurious marks were removed. A wharfinger, transport agent, or other bailee who finds that goods committed to his charge are spuriously marked, therefore, is justified in refusing to deliver them up until the objectionable marks have been erased (q). And, further, to her Majesty, and it contains a (n) 6 R. P. C. 531 (1889), Keke- (0) Moet v. Pickering, 6 C. D. (p) Ponsardin v. Peto, 33 Beav. 642; 33 L. J. Ch. 371 (1863), Romilly, M.R.; Upmann v. Elkan, L. R. 12 Eq. 140; L. R. 7 Ch. 130 (1871), Romilly, M.R., and Hatherley, C. (q) Hunt v. Maniere, 34 Beav. 157; 34 L. J. Ch. 142 (1864), Romilly, M.R., and L.JJ. Action by indorsee of dock warrants against wharfingers restrained. he is entitled to an indemnity from the bailor against the damages and costs incurred by him by reason of his dealing with the goods at the latter's request (r). His proper course, on being informed by the owner of the trade-mark infringed, or his agents, that goods in his possession are spuriously marked, is to give all necessary information to enable them to stop the infringement, to undertake that the goods shall not be removed or dealt with until the spurious marks have been obliterated, and to give the persons injured all requisite facilities for that purpose (s). If he takes this course, the costs of any proceedings subsequently taken against him by the plaintiff will be ordered to be paid to him (t); but he must pay the costs of proceedings previously taken, even though in an action commenced without notice to him (u), unless the value of the infringing goods in his possession is trifling (x). (iii.) Damages. It was long ago decided at common law, that the mere Nominal proof of an infringement entitles the plaintiff to nominal damages. damages (y), and that, consequently, no allegation of special damage is a necessary part of his case (). And the natural consequence of an infringement, even though it be made in complete ignorance of the plaintiff's rights, is that the infringer must pay at least nominal damages, and the costs of action, so that, if he acted under the direction Indemnity to of a third person, he may reasonably compound with the agent or proprietor of the trade-mark on these terms, and claim an indemnity from his employer (a). (r) Dixon v. Fawcus, 3 E. & E. 537; 30 L. J. Q. B. 137 (1861). (8) Upmann v. Elkan, L. R. 12 Eq. 140; L. R. 7 Ch. 130 (1871), Romilly, M.R., and Hatherley, C. (t) Last case, and Moet v. Pickering, 6 C. D. 770; 8 C. D. 372 (1877), Fry, J., and C. A. (e) See last cases, and Upmann v. Forester, 24 C. D. 231 (1883), Chitty, J. (x) American Tobacco Co. v. (1892) 1 Ch. 630; 9 R. P. C. 218, (y) Blofeld v. Payne, 4 B. & Ad. (z) Rodgers v. Nowill, 5 C. B. 109; 17 L. J. C. P. 52 (1847). (a) Dixon v. Fawcus, 3 E. & E. 537; 30 L. J. Q. B. 137 (1861). As to implied warranty by the use of a trade-mark, see below, Chap. XVII., p. 432. purchaser. Onus of showing substantial damage lies on the plaintiff. Plaintiff not solely entitled But, if the plaintiff claims substantial damages, the onus of showing that he has incurred them through loss of custom, of trade reputation (b), or otherwise, by reason of the defendant's conduct, lies upon him; and it will not be presumed, in the absence of evidence, that the amount of goods sold by the defendant under the fraudulent trademark would have been sold by the plaintiff but for the defendant's unlawful use of the plaintiff's mark (c). The proper form of an order for an inquiry as to damages occasioned by the infringement of a trade-mark is, therefore, what damage (if any) has the plaintiff sustained (d). If the infringement is a continuing one, the damages ought to be assessed down to the time of the assessment (e). It has been held, that the plaintiff is entitled to the to the mark. ordinary inquiry as to damages or account of profits, though he is not the only person entitled to the use of the infringed mark (ƒ). (iv.) Account of Profits or Inquiry as to Damages. When the plaintiff has succeeded in establishing that his trade-mark rights have been seriously infringed, a recurrence of the wrong is forbidden by the grant of an injunction, and by way of redress for the injury, if any appears to have been caused, which has already been occasioned to him, the plaintiff may, in general, make his choice of either an account and payment to him of the profits which the defendant has gained by his wrongful conduct, or an inquiry as to, and payment of, the damages occasioned to the plaintiff by reason of it, that is, unless the case is tried before a jury and damages are assessed (b) Sykes v. Sykes, 3 B. & Cr. 541; 3 L. J. K. B. O. S. 46 (1824). (c) Leather Cloth Co. v. Hirschfield, L. R. 1 Eq. 299 (1865), Wood, V.-C. (d) Davenport v. Rylands, L. R. 1 Eq. p. 308, per Wood, V.-C. (e) O. 36, r. 58. (f) Southorn v. Reynolds, 12 L. T. N. S. 75 (1865), Wood, V.-C.; see also Dent v. Turpin, 2 J. & H. 139; 30 L. J. Ch. 495 (1861), Wood, V.-C. by the jury at once, or assessed by the judge sitting alone, acting as a jury. profits and The account and inquiry are alternative remedies (g), Account of for, though in some of the earlier cases they were both damages are allowed, they are now considered to be inconsistent. "If alternative. you take an account of profits, you condone the infringement," Lord Westbury said, in a patent case (h), and the same rule applies in trade-mark cases also. But neither an account nor an inquiry as to damages Account or will be granted if the evidence of sales under the objec- granted if inquiry only tionable mark is not sufficient to make it worth while (i), substantial or if it appears that the defendant has only used his mark shown. damage is for a short time (k). For instance, no account or damages was allowed or given in a case where the only infringement proved was by the defendant, at the request of a customer, filling with lime-juice, of his own make, a bottle embossed with the plaintiff's mark, removing the plaintiff's label, and replacing it by his own (7). years; Damages can only be recovered, and the profits to be They only go included in the account can only be reckoned, in respect back for six of infringements occurring within six years from the issue of the writ (m). against inno It has been shown that it is no answer to the claim for an and, as injunction that the infringement was effected innocently, cent purchasin ignorance of the existence of trade-mark rights; but ers or bailees, damages or an account of profits are only calculated as of infringeonly to notice against an innocent dealer in, or purchaser of, the ment. spuriously marked goods, in respect of sales, dealings, or other infringements, if any, of which he is guilty after becoming aware of the plaintiff's rights (n). (9) Per Cotton, L.J., in Lever v. Goodwin, 36 C. D. 1; 4 R. P. C. 492 (1887). (h) Neilson v. Betts, L. R. 5 H. L. 1 (1871); followed in De Vitre v. Betts, L. R. 6 H. L. 319 (1872). (1) Sanitas Co., Ld. v. Condy, 4 R. P. C. 530 (1887), Kekewich, J. (m) Per Mellish, L.J., in Ford v. Refused because of delay or acquiescence. Limited because of misrepresentation. Form of order for account. The case of a manufacturer who copies a mark he finds on goods which he knows are not his own is different. He may not know whose mark it is, and may possibly be in doubt whether it is a trade-mark or not, but he knows that he has no right to the mark, and the damages or account are therefore calculated as against him from the first infringement, within six years of the writ (o). The Court has refused, in some cases, to order an account of profits where the plaintiff has neglected to take proceedings after becoming aware of the infringement (p) ; and it may be assumed that it certainly would not assist the plaintiff to recover profits which he had deliberately allowed the defendant to earn in the expectation of obtaining them from him (q). But delay to obtain evidence necessary to establish his case would not bar the plaintiff of his ordinary remedy (r), nor, it is submitted, would any reasonable delay in the hope of avoiding litigation after a definite warning to the defendant. In a case where there had been some delay, and some amount of misrepresentation in his business, on the plaintiff's part, and the defendant's proper trade was larger than that of the plaintiff's, the account was limited to profits earned since the commencement of the suit, and Mellish, L.J., said that it was a case where a jury would have given forty shillings damages only (s). The ordinary form of the order for an account directs an account of the profits made by the defendant in selling or J. & S. 185 (1863), Westbury, L.C.; (0) Moet v. Couston, supra; Cartier (p) Harrison v. Taylor, 11 Jur. N. S. 408; 12 L. T. N. S. 339; Beard v. Turner, 13 L. T. N. S. 746, both (1865), Wood, V.-C. (g) Cf. Anglo-Swiss Condensed Milk Co. v. Swiss Condensed Milk Co. (1871), W. N. 163, Malins, V.-C., cited above, p. 351; Beard v. Turner, supra. (r) See Cave v. Myers (1868), Seb. Dig. p. 181, Giffard, V.-C.; and Lee v. Haley, 21 L. T. N. S. 546; L. R. 5 Ch. 155 (1869), Malins, V.-C., and Giffard, L.J. (s) Ford v. Foster, L. R. 7 Ch. p. 633 (1872), L.JJ. |