Chap. IX. The right to a trade mark may be lost by abandonment, but to constitute an abandonment an intention to abandon must Abandonment of trade mark. be shown. Mere non-user of a trade mark for a period of five years is not sufficient to constitute abandonment (m). The plaintiff must be owner of the trade mark and (subject Who may sue. to concurrent rights, if any) must prove that he is entitled to its exclusive use (n). An action to restrain the infringement of a trade mark with the usual claim for account of profits or damages being an action brought in respect of injury to the property of the owner of the trade mark, it may be continued after his death by his personal representatives (◊). It has been held that when a trade mark has been properly registered, the assignee of the registered proprietor can bring an action to prevent infringement without having registered the assignment (p). But this decision seems in conflict with a later case (g). It would seem that the plaintiff must be using or intending to use the mark or name. A man who does not intend to carry on business under a particular name cannot interfere with its being used by another. Accordingly, a mortgagee of the goodwill of a business including the right to use the name but who had not used, and did not intend to use such name, was held not entitled to restrain persons claiming under the mortgagor from using it (»). Where two or more persons are tenants in common in a trade mark, each of them has a right to sue alone in respect of the wrong done to himself (s), and several plaintiffs so entitled may join in one action, although their interests are distinct and separate (t). Chap. IX. Who may be sued. The owner of trade mark and his agent cannot sue jointly, although the name of the agent appears on the trade mark (u). A foreign manufacturer may bring an action to restrain the illegal user in this country of his trade mark and also for damages and an account (r). An action may also be brought in this country to restrain the export to a foreign port of goods fraudulently impressed with the plaintiff's mark (y). The Registration Acts make the registration of a trade mark by a foreigner a condition precedent to his right to sue (2). A foreign sovereign or state may, like an individual, have an injunction to restrain the undue or unauthorised use of his or its name (a). A mere importer has no title to sue for infringement of the trade marks of the consignor or producer (b). Nor has an exclusive purchaser of marked goods consigned to a particular district (c). An action for an injunction may be brought against an agent (d) or against a person employed in effecting only a part of the transaction, such as a person employed to engrave or print spurious labels or marks (e), or against an innocent person, such as a carrier (f), a shipowner (g), or a wharfinger who may have temporary possession of the articles impressed with a spurious trade mark (h), but a mere servant should not it seems be added as a defendant (i). A man who at the desire of another imposes upon goods a trade mark which (u) Delondre v. Shaw, 2 Sim. 237. (x) Siegert v. Findlater, 7 C. D. (y) Johnston v. Orr Ewing, ib. (a) Emperor of Austria v. Day, (d) Upman v. Elkan, 7 Ch. 132. (e) Guinness v. Ulmer, 10 L. T. O. S. 127. (f) Upman v. Elkan, 7 Ch. 150; Apollinaris Co. v. Wilson, 31 C. D. 633. (g) Orr Ewing v. Johnston, 13 C. D. 435. (h) Moet v. Pickering, 8 C. D. 372. Comp. Nobel's Explosive Co. v. Jones, 17 C. D. 742, 8 App. Ca. 5. (i) Daniel v. Whitehouse, 16 R. P. C. 77. belongs to a third party may be made a party to the action along with his principal (k). An innocent partner who has repudiated the wrongful act of his co-partner is not, it seems, liable to be sued (l). An agent for a manufacturer who has been deprived of his agency may be made defendant to an action to restrain him from representing himself as being in the same kind of relation to the manufacturer as he was in before (m). Chap. IX. The statement of claim must allege all the material facts Pleading. necessary to show that the right to maintain the action is vested in the plaintiff (n). The form in Appendix C. s. vi. (8) should be used when such form is applicable and sufficient (o). The statement of claim should allege in addition to the form. given there that the trade mark has been registered, or that sect. 77 of the Act of 1883 has been otherwise complied with, if the action be for the purpose of restraining the infringement of a trade mark. If the action be in respect of the illegal use of a trade name, the statement of claim should, if there has not been registration, allege that the trade name has been recognised in the market as designating the business of the plaintiff or goods made by him. It is not necessary to allege fraud in order to obtain protection (1). The defences generally set up are as follows:-(1) The plaintiff has no title to the trade mark in question : (2) The defendant has an independent or concurrent right to use the mark: (3) The plaintiff has not complied with sect. 77 by obtaining registration or refusal of the mark: (4) There is no infringement: (5) The plaintiff is debarred from suing by estoppel, acquiescence, delay, or because the trade mark is deceptive, or the plaintiff's trade fraudulent. The ordinary rules governing dicovery apply to trade mark Discovery (k) Collins Co. v. Reeves, 4 Jur. N. S. 865; Collins v. Walker, 7 W. R. 222. (1) Magnolia Co. v. Atlas Co., 14 R. P. C. 389. (m) Wheeler and Wilson Manufacturing Co. v. Shakespear, 39 L. J. Ch. 37. (n) Ord. XIX. 4. (0) Ord. XIX. 5. (r) Singer Manufacturing Co. v. Wilson, 3 App. Ca. 391, per Lord Cairns. Chap. IX. Trade mark must make no misstatement or tion. actions (s). But in trade mark cases the ordinary order for discovery may be very oppressive (t). The Court therefore will modify the common orders so that they shall cause no more inconvenience to the party interrogated than is necessary to ascertain the rights of his opponent (u). The Court has wide powers under Order 50, r. 3, and may make an order to enter the premises of the defendant for the purpose of inspecting and taking samples (x). A defendant in an action for an injunction against the use of a trade mark in connection with certain goods is not entitled to interrogate the plaintiff as to the sales made by the plaintiff during all the time that the plaintiff claims to have used the name (y). The interference of the Court to restrain the piracy of a trade mark being founded on pure equitable principles (2), a false representa- trader will not be protected if he is using a deceptive trade mark or if he is using his mark for the purposes of a fraudulent trade (a). A trader who falsely leads purchasers to believe that they are buying something different from that which in fact he is selling, or is guilty of any misrepresentation with respect to his goods as to amount to a fraud upon the public, disentitles himself as against a rival trader to that relief which he would have otherwise obtained (b). If a trade mark repre sents an article as protected by a patent, when in fact it is not so protected, such a statement amounts primâ facie to a misrepresentation of an important fact, which would disentitle the owner of the mark to relief against any man who pirated it (c). (8) Orr v. Diaper, 4 Ch. 92. (t) Wills' Trade Marks, (1892) 3 Ch. 201. (u) Carver v. Pinto Leite, 7 Ch. (x) Hennessy, &c., Co. v. Rohman, (z) Maxwell v. Hogg, 2 Ch. 307; (a) For cases as to what is a fraudulent trade, see Kerly, p. 409. (b) Pidding v. How, 8 Sim. 477; Perry v. Truefitt, 6 Beav. 76: Leather Cloth Co. v. American Cloth Co., 11 H. L. C. 523; Lee v. Haley, 5 Ch. 155; Re Wood's Trade Mark, 32 C. D. 264; Newman v. Pinto, 57 L. T. 31, W. N. (1887) 119. (c) Leather Cloth Co. v. American Cloth Co., 11 H. L. C. 543, per Lord Kingsdown; Flavel v. Harrison, 10 Ha. 467; Morgan v. M'Adam, 36 L. J. Ch. 228; Leather Cloth Co. v. Lorsont, 9 Eq. 352. Chap. IX. patent." In the case of Edelsten v. Vick (d), Lord Hatherley doubted whether the rule would be the same if there had been originally a patent, and the statement in the trade mark being true when first introduced, had been continued after it had ceased to be true. But there can be no distinction between the cases. If the word “patent" be not so used as to indicate Use of the word the existing protection of a patent, but merely as part of the designation of an article thrown into the market, nobody is meant to be deceived, and nobody is deceived (e). A patent may have expired and be known to have expired fifty years ago, and yet the name of patent may have become attached to the article, and be used in the trade as designating it (ƒ). But if the trade mark represents the article as protected by a patent, when in fact it is not so protected, there is no difference whether the protection never existed or has ceased to exist. If the true effect of the trade mark or label be to mislead the public, that is sufficient to debar the plaintiff from relief (g). But the use of the word patent is not to be taken as misleading where either it is shown that the market name of the goods comprises the word or where the goods are made according to an expired patent, and the word is so used as to be understood to refer to this, or wherein from the nature of the case it is unlikely to mislead (h). must not be used so as to deceive. The principle that a misstatement in a trade mark will A trade mark deprive a man of his right to apply to the Court for relief, does not apply to the case of the use of the name of a firm by successors in business of the original partners. The name of a firm may be used long after all the original partners have died, or have ceased to have any interest in the concern. By the usage of trade the name of a firm is understood not to be confined to those who first adopted it, but to extend to and include persons who have been afterwards introduced as (d) 11 Ha. 87. (e) 11 H. L. C. 544, per Lord Kingsdown. (f) Marshall v. Ross, 8 Eq. 651. See Cheavin v. Walker, 5 C. D. 862. (g) Leather Cloth Co. v. American Cloth Co., 11 H. L. C. 544; Chearin v. (h) Cockrane v. Macnish, (1896) |