Injunction.

Form of the injunction.

Injunction in

Massam v.

Thorley.

or for the erasure of the names or other badges, of any goods already marked with the deceptive names or badges, and in the possession or under the control of the defendant (1); and (iii.) damages in respect of the past interferences with the plaintiff's rights (m); or (iv.) an account of the profits made by the defendant by the sale of goods under the deceptive names or badges (n), or some one or more of these.

The general principles governing the grant of an injunction have been sufficiently considered in the last chapter.

The form of the injunction granted varies considerably, according to the nature of the deceptive representation which the defendant is shown to have made use of, or threatened to make use of.

Where he has imitated or adopted the plaintiff's tradename, the order may be an absolute injunction that he shall not carry on business under that name (0).

A very full form of order was adopted in Massam ▾. Thorley's Cattle Food Co. (p). It restrained the defendant company and their servants from selling, or procuring to be sold, and from in any manner representing any goods manufactured by them as the goods of the late Joseph Thorley or the plaintiffs, his successors; from in any manner repre senting, or doing anything which should lead to the belief that the defendant company were carrying on the business of the late Joseph Thorley; from affixing to their goods, or otherwise employing, any labels, wrappers, or marks used by him or the plaintiffs, or so contrived as to represent, or lead to the belief, that the goods manufactured or of sold by the defendant company were his goods or those the plaintiffs; and from using or circulating any circulars or advertisements, used or circulated by him or the plaintiffs, or which should in any manner represent or lead to

the belief that the defendant company had been or were carrying on the business of the late Joseph Thorley, or were his successors.

Only decep

tive use of open word,

But a device or name, which is not a trade-mark or the trade-name of the plaintiff, may always be used by the defendant in any way which is not calculated to deceive, &c. restrained. if such way can be found; and the injunction in passing off cases is usually drawn so as to preserve this right, the order not to use a particular device or word being qualified by the addition" so as to represent, or lead to the belief," that the defendant's goods are the plaintiff's (7).

Thus, in Massam v. Thorley's Cattle Food Co., the Lords Justices refused to prohibit the defendants from using the word Thorley in connection with cattle food altogether (r). And in Slazenger v. Feltham, the Court of Appeal modified the order of Kekewich, J., forbidding the defendants to stamp Demotic on their lawn-tennis bats, by adding the words "so as to represent that (they) are manufactured by the plaintiffs, or in any other way from passing off their lawn-tennis bats as the goods of the plaintiffs.'

So, where a word is an open word, although associated with the plaintiff's trade or goods, the form of injunction is sometimes directed to prevent the defendant from using it without clearly distinguishing his goods from the plaintiff's. This was the form adopted in the infringement cases Seixo v. Provezende (s), and Johnston v. Orr-Ewing (t), and in The Stone Ales Case, where the action was to restrain passing off, several of the Lords of Appeal referred to it as the proper form to adopt unless the plaintiff had a claim to the exclusive use of the word, name, or other mark in question (u).

(a) Slazenger & Sons v. Feltham & Co., 6 R. P. C. 531 (1889); Jay v. Ladler, 40 C. D. p. 656; 6 R. P. C. 136 (1888), Kekewich, J. (r) 14 C. D. 763.

(8) L. R. 1 Ch. 194 (1865), Wood, V.-C., and Cranworth, L.C.

(t) 13 C. D. 434; 7 App. Cas. 219, Fry, J., C. A., and H. L.

(u) Lord Watson and Lord Macnaghten, Montgomery v. Thompson, (1891) A. C. 217; 8 R. P. C. 361; see also Thompson v. Bent's Brewery Co., Ld., 8 R. P. C. 479 (1891), Chitty, J.

The Stone
Ales Case.

Interim injunctions.

In the last-mentioned case, however, the injunction to restrain the defendant (inter alia) from selling beer not of the plaintiff's manufacture, under the term Stone Ales or Stone Ale, or in any way so as to induce the belief that such ale was of the plaintiff's manufacture, was, under the circumstances, maintained, the Lords of Appeal, referred to above, holding that the Seixo v. Provezende form of injunction would be more stringent, as it would, in effect, prevent the defendant using the term Stone Ale at all (x).

And the defendant has, in some instances, been restrained from using a word or words which could not be used by him at all, except deceptively, so long as this should continue to be the case; for instance, from calling his bitters Angostura Bitters until he should find out how to make the real Angostura Bitters (y); or from using the name Radstock Colliery Proprietors until he should be able to sell coal from Radstock (r).

Interim injunctions are granted in passing off actions on the same terms and according to the same principles as in infringement actions (z).

8. Costs, Appeals, and Practice.

And the rules and principles in regard to costs (a), appeals (b), and practice (c), are also the same in both actions, except in so far as they depend upon registration and the Registration Acts, which do not extend to or affect passing off actions.

(x) See above, p. 408; and Braham v. Beachim, there cited.

(y) Siegert v. Findlater, 7 C. D.

801 (1878), Fry, J.

(2) Chap. XV., p. 352.

(a) Page 364.

(b) Page 371.

(c) Page 372; forms of pleadings, p. 643.

CHAPTER XVII.

WARRANTY OF TRADE-MARKS AND TRADE DESCRIPTIONS (a).

Indemnity to manufacturer employed to apply an infringing mark.. 437

Ir is provided by sect. 17 of the Merchandise Marks Act, 1887, that:

"On the sale or in the contract for the sale of any goods to which a trade-mark (b), or mark, or trade description (c) has been applied (d), the vendor shall be deemed to warrant that the mark is a genuine (e) trade-mark and not forged (ƒ) or falsely applied (g), or that the trade description is not a false trade description (h) within the meaning of this Act, unless the contrary is expressed in some writing signed by or on behalf of the vendor and delivered at the time of the sale or contract to and accepted by the vendee."

This section corresponds to sect. 19 of the Merchandise

(a) The references in this chapter are to the Merchandise Marks Act, 1887, which is set out and commented on in Book II.

(b) "trade-mark," sect. 3 (1), see next page.

(e) "trade description," sect. 3 (1), p. 476.

(d) "applied," sect. 3 (2), and sect. 5 (1), p. 473.

(e) "genuine," cf. sect. 2 (2) (a),

p. 511.

(ƒ) “forged,” sect. 4, p. 468. (g) “falsely applied,” sect. 5 (3), P. 474.

(h) "false trade description," sect. 3 (1), pp. 476, 478.

Trade-mark.

Implied warranty at common law.

Marks Act, 1862, but the older section applied only to trade-marks which were applied to goods sold, and the implied warranty was that the trade-marks were "genuine and true, and not forged or counterfeit, and not wrongfully used."

Trade-mark (g) here means registered trade-mark or trade-mark protected by law in any British possession or foreign state to which sect. 103 of the Patents, &c. Act, 1883, is applicable (). The section, however, imports a warranty of the genuineness of unregistered English trademarks, at any rate when the application of them to the goods is reasonably calculated to lead persons to believe that the goods are the manufacture or merchandise of the proprietor of the trade-mark, and also of any trade-mark, whether registered or not, which the mark applied to the goods purports to be, for in such cases the unregistered trade-mark is a false trade description applied to the goods (). "Mark," where it first occurs in the section, can hardly include an unregistered trade-mark, for the warranty implied is that the mark is a genuine trademark, that is, a genuine registered trade-mark, and that it does not purport to be. "Mark," where it occurs the second time, should be trade-mark or mark.

The several terms occurring in the section have the meanings given to them respectively by the sections of the Merchandise Marks Act, 1887, which are referred to in the notes (). The general effect of the implied warranty is that the trade-marks, or marks purporting to be trademarks, applied to the goods, are used with the assent of the proprietor of the trade-marks which they purport to be, and that the statements made or implied by the trade descriptions are true.

Apart from the statutory warranties implied by the Merchandise Marks Act, it is held, at common law (7),

(g) "trade-mark," sect. 3 (1),

p. 465.

(h) See Chap. XX., p. 454, and the list in the Appendix, p. 656.

(i) Sect. 3 (2), p. 478.

(k) See Book II., Chap. I., p. 460. (1) Warranties of the genuineness of marks are implied, in re