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Chap. VIII.
Sect. 10.

Delivery up of pirated copies.

Discovery.

account may be ascertained from affidavits made by or on behalf of the defendants (s).

The delivery up of the pirated copies depends entirely upon statute. There is not any common law right on the subject (t). The 23rd section of the statute 5 & 6 Vict. c. 45, which gives the registered proprietor of copyright in literary matter the right to have all the unsold copies of a pirated book delivered up, does not give him any right to more than the usual account of the net profits of all the copies which may have been sold. He has no right to an account of the gross proceeds. To recover the unsold copies he must proceed at law (u). At law he is entitled to have all the unsold copies delivered up to him for his own use without making any compensation for the cost of production and publication (x). The Court, however, has power under its general jurisdiction to order that the copies unsold which have been printed in violation of the right of the plaintiff shall be delivered up to be destroyed (y).

In a case within the Copyright of Designs Act, 5 & 6 Vict. c. 100, Knight-Bruce, L. J., made an order for the delivery up to the plaintiff, for the purpose of being destroyed, of all drawings and cards used by the defendant in applying his design, and also of all articles manufactured by the defendants to which the plaintiff's design had been applied (z).

The defendant must, if required to do so for the purposes of the account or the inquiry as to damages, set out the number of copies containing pirated matter which have been sold by him (a). The plaintiff is entitled to continue the suit until the discovery be given (b).

(8) Pike v. Nicholas, 20 L. T. 909; Kelly v. Hodge, 29 L. T. 387.

(t) Colburn v. Simms, 2 Ha. 560. (u) Delfe v. Delamotte, 3 K. & J. 581.

(a) Ib.; Hole v. Bradbury, 12 C. D. 903; Isaacs v. Fiddeman, 49 L. J. Ch. 412.

(y) Delfe v. Delamotte, 3 K. & J. 581; Prince Albert v. Strange, 2

De G. & Sm. 652; Kelly v. Hodge, 1
Set. 680; Hole v. Bradbury, 12 C.
D. 903.

(z) Macrae v. Holdsworth, 2 De G. & S. 497.

(a) Stevens v. Brett, 12 W. R.

572.

(b) See Colburn v. Simms, 2 Ha. 543; Kelly v. Hooper, 1 Y. & C. C. C.

197.

Sect. 10.

Damages.

The principle of assessing damages in all cases of literary Chap. VIII. piracy is that the defendant is to account for every copy of his book sold, as if it had been a copy of the plaintiff's, and to pay to the plaintiff the profit which he would have received from the sale of so many additional copies (c).

A man whose copyright is invaded is primâ facie entitled to Costs. an injunction with costs (d), but the Court will not as a matter of course order the defendant to pay the costs (e). The plaintiff is not bound to give notice to the defendant before serving him with the writ in the action: and it is immaterial that the defendant may have innocently infringed the copyright (ƒ). If the defendant do not, after injunction obtained, offer to pay the costs, and to give the plaintiff all the other relief to which he is entitled, the plaintiff may bring the suit to a hearing, and will be entitled to the costs of the suit, although at the hearing he may waive his right to the other relief (g). But if the defendant offers to submit to the injunction with costs, and to give the plaintiff all the relief to which he is entitled, the Court will not give the plaintiff his costs of the subsequent prosecution of the suit to the hearing (h).

The "full costs" provided by the statute 5 & 6 Vict. c. 45, s. 26, are only the ordinary party and party costs (i). But a plaintiff is entitled to High Court costs, though only forty shillings is recovered (k).

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Chap. IX. Jurisdiction.

Trade mark.

CHAPTER IX.

INJUNCTIONS TO RESTRAIN THE PIRACY OF TRADE MARKS AND
TRADE NAMES AND THE PASSING OFF BY A MAN OF HIS GOODS
AS THE GOODS OF ANOTHER.

THE jurisdiction of the Court in restraining by interlocutory injunction the piracy of trade marks or trade names and the passing off by one man of his own goods as being the goods of another is in aid of the legal right and is founded on the equity of protecting property from irreparable damage. The principles upon which the Court interferes in such cases are the same as those upon which it acts in other cases in protecting legal rights to property from violation (a).

A trade mark is a particular mark, brand or symbol used by a trader or manufacturer for the purpose of denoting that the article to which it is affixed is sold or manufactured by him or by his authority or that he carries on his business at a particular place. Where such a mark, brand or symbol comes by use to be recognised in trade as the mark of the goods of a particular trader or manufacturer so that thereby persons purchasing goods of that description know them to be of his manufacture, it becomes to that extent the exclusive property of that particular trader or manufacturer, and no other trader or manufacturer has the right to brand the same or a similar mark on goods of the same description. By doing so he would be substantially representing the goods to be of the manufacture of the trader who had previously adopted the mark or brand in question, and so would or might deprive him of the profit he might have made by the sale of the goods which the purchaser intended to buy. The law considers this

(a) Leather Cloth Co. v. American v. Henry, 15 C. D. 191. Cloth Co., 4 D. J. & S. 137; Mitchell

INJUNCTIONS TO RESTRAIN THE PIRACY OF TRADE MARKS, ETC.

329

Chap. IX.

to be a wrong towards the person whose mark is thus assumed for which he has a right of action (b). The right, however, to the exclusive use of a trade mark is limited to its use in connection with a particular class of goods. Apart from the particular use or application there is no right to the use of the symbol. The use of the same mark or symbol in connection with goods of a totally different character is not an infringement of the right (c). Nor can the right to a trade. mark be severed from the article indicated by it (d), nor from the goodwill of the business in which it has been used (e). Before the Registration Act of 1875 the right to a trade Mode of acquiring the right to mark could only be acquired by user. The right was by the a trade mark. general principles of commercial law established as soon as the particular article to which the mark or symbol was applied obtained acceptance and reputation in the market, and the mark or symbol gained currency in the market as an indication of superior value or some other circumstance that rendered the article to which it was applied acceptable to a purchaser (ƒ). But under that Act the registration of a trade mark is deemed equivalent to the public use of such mark (g). The registration of a person as proprietor of a trade mark is primâ facie evidence of his right to the exclusive use of the trade mark, and is, after the expiration of five years from the date of registration, conclusive evidence of his right to the exclusive use of the trade mark subject to the provisions of the Act (h). A trade mark must be registered before any action to Trade mark must The owner, be registered. prevent its infringement can be brought (i).

(b) Leather Cloth Co. v. American Cloth Co., 11 H. L. 338; Glenny v. Smith, 2 Dr. & Sm. 476; Seixo v. Provezende, 1 Ch. 192; Somerville v. Schembri, 12 App. Ca. 454.

(c) Edelsten v. Edelsten, 1 D. J. & S. 185; Leather Cloth Co. v. American Cloth Co., 4 D. J. & S. 137; Somerville v. Schembri, 12 App. Ca. 457. (d) Cotton v. Gillard, 44 L. J. Ch. 90; Macandrew v. Bassett, 4 D. J. & S. 384.

(e) 46 & 47 Vict. c. 57, s. 70.

(f) Macandrew v. Bassett, 4 D. J. & S. 380; Somerville v. Schembri, 12 App. Ca. 457.

(g) Re Hudson's Executors, 32 C. D. 311.

(h) 46 & 47 Vict. c. 57, s. 76; see Mitchell v. Henry, 15 C. D. 193; Orr Ewing v. Registrar of Trade Marks, 4 App. Ca. 495; Re Edwards' Trade Marks, 30 C. D. 455, post, p. 331.

(i) 46 & 47 Vict. c. 57, s. 77; see Orr Ewing v. Registrar of Trade

Chap. IX.

Registration of trade mark.

indeed, of a trade mark acquired by user cannot bring an action with respect to it prior to registration (k). The section (l) however has no application to actions for passing off. The principles on which the Court acts in preventing a man from passing off his goods as those of another person have not been altered by the Trade Marks Registration Act (m). Where the alleged infringement consists of using not the exact thing upon the register, but something similar to it, the Court must in considering whether or not there has been an infringement proceed on the old principle that a man must not pass off his goods as the goods of another (n).

A trade mark must for the purposes of the Trade Marks Act, 1888, consist of or contain at least one of the following essential particulars: (a) a name of an individual or firm printed, impressed or woven in some particular and distinctive manner; or (b) a written signature or copy of a written signature of the individual or firm applying for registration thereof as a trade mark; or (c) a distinctive device, mark, brand, heading, label, ticket (o), or an invented word or invented words (p), or a word or words having no reference to the character or quality of the goods and not being a geographical name.

There may be added to any one or more of these particulars any letters, words, or figures, or combination of letters, words, or figures, or any of them; but the applicant for registration must disclaim any right to the exclusive use of the added matter. He need not, however, disclaim his own name or its foreign equivalent or his place of business, but no entry of any such name shall affect the right of any

Marks, 4 App. Ca. 495, 498; Good-
fellow v. Prince, 35 C. D. 9, post,
p. 332.

(k) Re Hudson's Executors, 32 C.
D. 320.

(1) Section 77 of 46 & 47 Vict. c. 57.

(m) Mitchell v. Henry, 15 C. D. 190, per James, L. J.; Jay v. Ladler, 40 C. D. 649; Montgomery v.

Thompson, (1891) A. C. 217.

(n) Re Edwards' Trade Mark, 30 C. D. 470; Re Lyndon, 32 C. D. 109.

(0) See Re Wood's Trade Mark, 32 C. D. 247; Re James' Trade Mark, 33 C. D. 393; Re Hanson, 37 C. D. 113.

(p) Eastman Photographic Co. v. Comptroller-General, (1898) A. C.

571.

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