Use of the trade-name of a secret CHAPTER XIX. TRADE-SECRET AND TRADE-NAME. Use of the trade-name of a secret preparation The use of the name or secret may be a breach of contract or of PAGE 448 449 .. Ir has been shown that anyone is entitled to use a name or mark for the goods to which that name or mark is propreparation. perly applied (a). Thus, anyone who is in possession of goods made or sold by the owner of a trade-mark or tradename, may apply the trade-name or trade-mark to them (b), and may, for instance, replace the old labels upon goods by new ones (c). So, the name of a secret preparation may be used by anyone for goods actually prepared according to the recipe (d), for they are the goods indicated by the name, whether prepared by the original inventor of the recipe, or his successors in business, or not. Until (a) See Chap. II., p. 32, and Chap. XV., p. 309. (b) Condy v. Taylor, 56 L. T. 891 (1887), Kekewich, J. (c) Farina v. Silverlock, 6 De G. M. & G. 214; 26 L. J. Ch. 11 (1856), Cranworth, L.C., cited, p. 32. (d) Canham v. Jones, V. & B. 218 (1813), Plumer, V.-C., (Velno's Vegetable Syrup); James v. James, L. R. 13 Eq. 421 (1872), Romilly, the M.R., (Lieutenant James' Horse Blister); Condy v. Mitchell, 37 L. T. N. S. 268, 766 (1877), Bacon, V.-C., and C. A., (Condy's Fluid); and see the injunction in Siegert v. Findlater, 7 C. D. 801 (1878), Fry, J., cited p. 309, (Angostura Bitters). In Benbow v. Low, 44 L. T. N. S. 875 (1881), Bacon, V.-C., held that an outgoing partner who retained the receipt could use the name of a secret preparation. the secret is discovered or betrayed the goods of the original inventor or his successors can be the only goods to which the name is applicable, or which are denoted by it; but when other people can make them, the difficult question of fact, discussed in a previous chapter of this book (e), arises, whether the name is merely that of the goods themselves, or that of goods of the kind prepared or sold by the original inventor or his successors in business. This was well put by Fry, J., in the Angostura Bitters Case (f). "I cannot say," the learned judge said, “that Meinhard (g) may not, if he can, make a bitter identical with the plaintiffs', and, if he does, I cannot prevent him from selling it as Angostura Bitters. It is to be observed that the person who produces a new article, and is the sole maker of it, has the greatest difficulty (if it is not an impossibility) in claiming the name of that article as his own, because, until somebody else produces the same article, there is nothing to distinguish it from. No distinction can arise from using the name of the class, so long as the class consists of only one species, for then the name of the species and the name of the class will be the same." But, as regards any particular person or persons, the use of a mark or name which is open to the world at large may be restrained by reason of a contract he has entered into, or of circumstances which make it contrary to conscience for him or them to avail themselves of their general right. Putting aside cases of express contract,—as where, for instance, a partner or servant has covenanted not to use the firm name, or any particular name or marks, or not to engage in any particular business, after the determination of the partnership or employment, the most important cases of this kind are cases of trade secrets. The law relating to trade secrets does not properly fall within the scope of this book, but as it touches upon the (e) Above, pp. 36 et seq. (f) Siegert v. Findlater, 7 C. D. p. 813. (g) The maker of the defendant's bitters. K. G G Information obtained by breach of contract or of confidence. limitation of trade-mark and trade-name rights referred to above, it is convenient to shortly refer to the leading cases on the subject. Wherever a secret information has been obtained under circumstances which import a contract not to disclose or make use of it, or by breach of confidence, or under other circumstances which make the disclosure, or the use of the information, contrary to conscience, the Court will restrain the person who has obtained it, or anyone to whom it has been communicated by him, from using or disclosing it. Thus, in Prince Albert v. Strange (h), the publication of a catalogue of a number of etchings made by the Queen and Prince Albert for their private use and amusement, and never published or authorized to be published by them, and the exhibition of the etchings, was restrained, the copies of the etchings which had passed into the defendant's possession having been obtained surreptitiously and in breach of confidence from or through a printer employed to print them. And in Morison v. Moat (i) the defendant, who had obtained the secret of manufacturing Morison's Universal Medicine from his father, was restrained from using it. Both the defendant and his father had formerly been in partnership with the plaintiff, but the father of the plaintiff, to whom alone the original inventor had disclosed the secret, had entered into a covenant not to divulge it to any other person. The injunction restrained the defendant, his agents, &c., from selling, under the title of Morison's Universal Medicine, any medicine made by him or under his directions, and also (h) 2 De G. & Sm. 652; 1 Mac. & G. 25; 18 L. J. Ch. 120 (1849), Knight-Bruce, V.-C., and Cottenham, L.-C. (i) 9 Hare, 241; 20 L. J. Ch. 513; 21 ibid. 248 (1851), Turner, V.-C., and Knight-Bruce, and Lord Cranworth, L.JJ., App., p. 648. The case of Canham v. Jones, 2 Ves. & B. 219, was distinguished by Turner, V.-C., on the ground that it was not put forward as one of breach of confidence or contract; but the report shows that the bill stated the employment of the defendant, and that the plaintiff's counsel, on the demurrer, to some extent rested their case on breach of confidence. The case would now be differently decided on the alleged facts. from making any medicines according to the secret, or in any manner using the secret of compounding the medicines, or any part thereof. engineer's 451 Injunctions have been granted on the same principles Information obtained by a to restrain the use or publication of secret information clerk;" obtained by a clerk or servant in the course of his employment (), and it is said that "every clerk employed in a merchant's counting-house is under an implied contract that he will not make public that which he learns in the execution of his duty as a clerk "(); of a table of details table of dimensions by of the dimensions of machinery designed by, or for the plaintiffs, collected from their plans by one of their drafts- draftsman ; men, although the details could all have been gathered from the machines made according to the designs and sold, if access could have been obtained to them (m); of materials book of adfor the construction of a book of advertisements collected by the plaintiff's advertising canvassers (n); of lectures lectures; delivered to a class of students, and not published or authorized to be published by the lecturer (o); of private private letters written by the plaintiff, or by a person whose estate the plaintiff represents (p); of copies of the plaintiffs' copies of pictures by pictures, delivered to the defendants for the making of lithographer; copies, in excess of the number made for and delivered to the plaintiffs (7); and of prints from a photographic photographs negative likeness of the plaintiff, which the defendants tiff. had been employed by the plaintiff to take (r). (k) Youatt v. Winyard, 1 Jac. & W. 394 (1820), Eldon, L.C. (1) Per Wigram, V.-C., in Tipping v. Clarke, 2 Hare, 383 (1842); and per North, J., in Pollard v. Photographic Co., 40 C. D. 345 (1888). (m) Merryweather v. Moore, (1892) 2 Ch. 518, Kekewich, J. The defendant had been apprenticed to the plaintiffs, and had remained in their employment after his articles expired; cf. Reuter's Telegram Co. v. Byron, cited below, p. 452. 462; (1893) 1 Ch. 218, Chitty, J., (0) Abernethy v. Hutchinson, 3 (p) Perceval v. Phipps, 2 Ves. & B. 19 (1813), Plumer, V.-C.; Earl of Lytton v. Devey, 54 L. J. Ch. 293 (1884), Bacon, V.-C. (9) Tuck and Sons v. Priester, 19 Q. B. D. 629 (1887), C. A. (r) Pollard v. Photographic Co. note (7). (n) Lamb v. Evans, (1892) 3 Ch. vertisements by canvasser; letters; of the plain The jurisdiction rests on implied contract. Use of agent's information where no breach of contract or confidence. "Different grounds have been assigned for the exercise of the jurisdiction. In some cases it has been referred to property, in others to contract, and in others, again, it has been treated as founded upon trust or confidence, meaning, as I conceive, that the Court fastens the obligation on the conscience of the party, and enforces it against him in the same manner as it enforces, against a party to whom a benefit is given, the obligation of performing a promise, on the faith of which the benefit has been conferred" (s). But it is submitted that the true ground is always implied contract (t), for if information, which both parties understand the present possessor intends to be kept, and to remain secret, is communicated by him to another, or the means of obtaining it are placed by him within the reach of another, for particular purposes, for instance, in the course of an employment, an undertaking not to use or disclose the information ought almost necessarily to be inferred. The mere fact that the defendant obtained the information in question as, and while he was the agent of the plaintiff, is not a sufficient ground for restraining him from using it, provided there is nothing of a secret character in the information itself, or confidential or surreptitious in the manner in which it was communicated or obtained, so that a contract not to communicate or use Reuter's Co. v. it can be implied. "The plaintiffs here do not seek to restrain the defendant from publishing anything," Jessel, M.R., said, in Reuter's Telegram Co. v. Byron (t), “but from making use of knowledge acquired while the relation of principal and agent subsisted, after that relation had terminated. Now I am not aware of any authority in which this has been done in the absence of a contract, expressed or implied." But he added, "that being so, the jurisdiction of the Court cannot be stretched on an Byron. (s) Per Turner, V.-C., in Morison v. Moat, 20 L. J. Ch. p. 522. So, per Kekewich, J., in Merryweather v. Moore, (1892) 2 Ch. p. 522. (t) Merryweather v. Moore, supra; Reuter's Telegram Co. v. Byron, 43 L. J. Ch. 661 (1874), Jessel, M.R. |