956

MMILLINGTON 2'. FOX

IY. & CR. 338.

paid hy or on behalf of such apprentice to the bankrupt, ancl to the time during which such apprentice shall have resided with the baiikrapt previous to the issuing of the commission."

[338]

MILLINGTON v. Fox

i l h c h 16, 17, 33, 24, 1838.

[See Biwgess v. Burgess, 1853, 3 De. G. M. C ! G. 896 ; Followed, Ui:rcvn v. Fazccus, 1861, 3 El. & F1. 546. See Ainszoorth v. ll/nl/nsle!/, 1866, L. R. 1 Eq. 534. Distinguished, Tunye v. Ward, 1869, 21 L. T. 480. See TVotlwspom v. L ~ i w t i ~1870-72, ~, 3 3 L. T. 444 ; L. R. 5 H. L. 508. Followed, Ford v. Fostw, 1853, L. B. 7 Ch. 623 ; Singer Nanufmturing C'wryiay Y. Wiilson, 1876.77, 3 Ch. D. 454; 3 App. Cas. 391 ; Ov/.Ewing v. Registrar of Trade. i I f ~ ~ r1879, 6 , 4 App. Cas. -191. See Leiy v. W a l k w , 1879, 10 Ch. D. 448. Followed, A'in.gai ilhn.u&tiir.in,q C'onipcmy v. Loog, 1880-82, 18 Ch. D. 407 ; 8 App. Cas. 30. See BortfiziicA v. " 7 x 8 E,r.l.r.nin!y Post," 1888, 37 Ch. I ) .453. Distinguished, Proctor v. Buyley, 1889, 42 Ch. D. 390. See l/cilen.ti,ne Meat Juice C'ottipny v. Valentine Extract Cortqian!y, Lttl., 1899-1900, 17 R. P. C. 9, 673. Thyme v. ~VLoLw, 1890, 45 Ch. D. 581. Followed, Cflliiliir C'lotliing C'ariqay v. Mizxton cY; ilfurray [1899], A. C. 336 ; Boiwne v. S z c m CC Etlyir, Lid. [1903], 1 Ch. 223.1

The Court will grant a perpetual injunction against the use, 1)y one tidesman, of tlie trade marks of another, although such marks have h e n so usetl in ignorance o f their being any person's property, and under the belief that they were merely technical terms. As a general rule, the costs of the cause should follow the result, of the cause ; but an exception will be made mliere a party has estahlished his object by iiieans of an unnecessary degree of litigation. Thus, the Plaintiffs having filed a bill to restraiii the Deferirlauts from nsiiig certain trade marks, and for an account of the profits made by the sale of goods so marked, obt,ained an ex y m h iiijuriction. On the same clay, the Plaiiititt's received a letter from the Defetidarits' solicitor, iii which the I)efeiidrtrit,s statecl (through their solicitor) that they had uever usecl the rriarks since they were aware they were private property ; arid that they did not intencl to use them agniii ; ant1 they offered to compensate the Plaiiitiffs for auy iiijury they might have sustained. The Plaintiffs, however, prosecuted the cause to a hearing ; ancl then, by their counsel, ahanclonecl their title to the account, because it vas PO sniall as riot t'o he worth taking. The Lord Chancellor, although he made tlie irijunctiou perpetid, refused the Plaintiff's the costs of the suit. The bill, which was filed oii the 7th of August 1834, statecl that the Plaintifs, Crowley M i h g t o i i and Thomas Isaac Millington, carried on, arid had for iiiaiiLvyears carried on, the husiness of manufacturing steel for salc, at Swalwell, Witilatori Mill, and Team, all in the county of Durham, near Newcastle, ancl at Greenwich, in Kciit, and i n Thames Street, London ; ancl that the PlaiiitiRs' works at Swdwell were known as " The Crowley Works : " that the husiriess carried oii 11ythe Plaintiff's was origitially founded a t the end of the seventeenth century, or iii the early part of the eighteenth century, by a person of the riariie of Crowley, who irivcntecl or introtlucetl a particular mode of manufacturiiig steel, which has ever sit ice been folloivecl b y the Plaintifis and those whom they succeeded in husiiiess : that some rlescriptious of steel so manufactured were known as Crowley's German or shear steel, and the same and other descriptions, hy the name of Crowley steel : that about the year 1782 the Plaintiffs' grandfather, Isaiah Millington, became a partner iii t,he hsiness, arid that it has ever since heen carried on by him or his rlescentlaiits, eitlier alone or wit.11 partners ; and that, from the time at which [339] he entered the lriisiriess, thc firm has been known hy the name of Crowley, Millingtoii & Co., arid the steel manufactured by them has been kriowti in thc inarket hy the iianie of Crowley steel, or Crowley Millington steel : that the steel manufactured by the Plaintifs and their predecessors has always been distinguished hy certain marks upon the hars or pieces of steel 80 manufactured : that the principal of these marks was originally ' I Crowley," and afterwards " Crowley Millirigton," or one of those names : and that such marks

3 BEY. & OR. W.

~~LLING~z O 1 . N FOX

957

have been stamped on shear steel, faggot steel, cast steel, blistered steel, and coachspring steel : that the letters I. H. were, upwards of fifty years ago, ititroduced into the marks s t a m p e ~ on double shear steel made by the ~ l a i n t i ~firm, s beiiig the initials workman in that steel. of the name of John Heppel, their pI~~icipa1 The bill went on to state that the Defendants, James Fox and Samuel Fox, had, for more than six years before the filing of the bill, carried on at Sheflield the business of ~iaiiufacturersof steel, under the mxtie of Fox Brothers, or Fox Brothers Kr; Co. ; and that they had manufactured considerable quantities of steel, which they had marked with the Plaintiffs before-nieiitiotied marks ; atid that they had so niclrked steel manufactured by theni, in order that it niight he sold in the market as steel manufactured by the Plaintifb ; aiid, further, that other persoris besides the Defendants hacl marked steel with the Plaintiffs niarks ; and that the ~efe~iclants had bought the &eel so marked ancl sold it again. The hill charged that the r)efeIiclatits were still in the habit of selling, or sending for exportatiuti, great quantities of steel staniped with the Plahitiffs marks. The prayer of the bill was that the i)efendants might account to the PlaititiKs for the profits made by them E 3 4 0 1 by the sale of steel stamped with the PlaiIrt~Es beforementioned names or n ~ ~ k a si d , might clelker up to he destroyed a 1 1 steel riot niannfmtured by the Plaiutitfs, hut stamped wkh their iranies or marks, and all iiistrL~ments used or intenrlecl to he used in making such marks; aud that the i~i~ with the before~ e f e i ~ ~might ~ ~ i be t s restraiIie~tiy iirjiirictiori from s t ~ i i i ~ )steel metitioned names or marks, and from n~aii~ifactiiriirg or selling steel so stamped. The answer of Samuel Fox stated that, iri ,June 1834, hefore the hill was filed, James Fox welit to America, ancl hat1 not since returiied ; a i d that allout four or five nionths before the date of his (the present I)eferidsritb) ariswer, lie was, for the fiist turi~ uitcler Ig time, iiiforniect that the PlaiutiEs carried 011 the buuiuesu of I ~ ~ ~ i i ~ ~ f a csteel the firm of Crowley, ~ i l l i n ~ t octi n ,Co., siicli i1tforn~~~ti~)It havitig been abtaincd by the Dofeudant by meaiis of aii a~~ertiser~ieIit iu the Shefiield iiewspiapers, statiiig that BU injunction had been obtained hy Crowleg, Milliligt,on & Co. sgtiiist Messrs. Greares, to restrain the use of the tianies or words Crowley ~ t i ~ l i t i ~ t (on ~ I steel t n~anitfaet~~red by Messrs. Cmaves j and that ever siitce the Defendant itad liiic)wn anything of the m a n ~ ~ f a c of t ~ steel, ~ r ~ the term Crowley tiad fieen applied to steel iiianufectured from the liar>a~iclmade up in Imrdles of otie hurtrlr.ecl weight each called faggots ; the term Crowley having heen, for twetity years aid upwartls, and so l o ~ g as the endan ant hacl known the steel trade, lteeti coII~i~lere~1 sy~i(iiy~~ with the term faggot, and riot as designating the Ir~~~Ii~ifact~ire of titry particular persons ; ancl that one of the oldest mark-niakers iri the steel trade hacl 1)eeu for forty with the word Growley I for years arid upwards in the habit of nuikinq nix1 various houses engaged iii the manufacture ot steel ; arrcl that until the advertisement appeared, [341] the Defendant was not 1~(y;1rethat the ternis C r o ~ l e y and Crowley ~ ~ l l i t ~gwere t o ~ariy other thart niarks ~ e s ~ g t ~ a partic~ili~r t ~ t r ~ k i d s of steel, such marks having beeu used gonerally, if nob i ~ r i i ~ ~ e r s in a~ the l ~ ,steel trade for very many years : that by the tertn Crowley steel the Defenclaiit always uriderstood tilted, rolled, or single sbenr, or sheared steel, macle up i11 :I ltunrlle of one ~ u n c l r e ~ ~ , e i and ~ h t ,~ 1 B l I ~ l from ~ ~ ~a G ]tar ~ lof~ steel; ~ ~ ~ arid ~ by the term Crowley ~ i l l i ~ i ~ o steel, t r shear or sheared steel, niacle up irt ~ ; ~ ~ i i c ~ ofl e one s hundred weight aiid manufactured from several tars ; iliid that 110 marks were requisite more particularly to designate ttient ; the mark Crowley I I B V B ~ ,ttt the ed helief, ~ ~ lteiiig usecl upon any kind of steel, hot that made Defendants k ~ o ~ r l or from a bar or two bars , and put u p in huritlles of one huwlred weight each ; and the names Crowley Millington ~iever, to the Deferidants knowledge or belief, being usecl by auy persons in the steel trade upon atiy steel but such a s ht~dheerr. sheared ; that is to say, made from a number of bars aircl tlieri made up in bunilles of one hundred weight each : and that the marks or names were in nu oiie iristaiice supposed to clesigt~ate a makers name, hut merely the quality or kind of article : that the Defeiiclartt iiever knew or believed, or was iuforrnect, that the letters I. H. had aiiy other signification than as being one of the ordinary marks used amoug steel rnanufacturers throughout the kingdom for it Iong course of years ; arid that he iiever knew or heard of such a person as John Beppel. The Defendant also stated that he hclierecl he hacl never usecl the marks mentioned

958

mxmcmoh+ 8.

FOX

3 ray. Q; CR. 3p2.

in #he bill, ~vithout the worcls (Fox Brothers also, and denied that steel so nmrked as in the bill mentioned was, by retison of such marks, considered in the market to be mauufactrrred by the PlaintiEsfirm; aid that nrttil about the month of [342] July 1834, he never even heard that there was any such firm in the trade ag Crowley, ~iliington CYS Co.: That, in or about the year 1831, the Deferidaiit and his brother became partners, as merehatits in the steel trade, ailcl from that time until in or about the year 1x32, had a steel converting furnace ; hut since that period hart riot ~ n a ~ i ~ ~ f a c ariy t i ~ rsteel ed ; arid that their fimi hacl mat~Lifacture~ some small ancl very iii~onsider~~)le ~ ~ ~ i of t ~ steel, and bars of steel, marked ( ~ n i o n ~ other st marks) with the mnrks or stamps mentioned in the bill to be used by the Plaintiffs, hit with the words Fox Brothera always added ; and also some small atid inconsiderable quantity of steel and 1);~rs of steel shmpecl. with some material parts of those ~ a r k stogether , with the words Fox Brothers ; and that, partic~Ilar~y, they h d also ~ian~~fac~,Lired a small tlnd very i11c5~isi(~erahle quantity of steel and bars of steel stamped with the marks Ckowley ~ i l l ~ n gtand o ~ the letters I. E, He denied that he or his partner hacl so marked steel nta-ntifactrrred liy them in order that it might he sold in the market t ~ ssteel n~anufacture~l by the Plaintitfs ; the D e f e n r ~ ~ ~ haviirg, nt cluririg the whole time that any steel with those marks was mar~iifacturerl or sold hy his firm, heerr wholly ~ ~ ~ ~ o of the existence of the Plaintiffs, or of their firm, as itiaii~~factiirers of steel, awl always adding other marks, bcsicles those mentioned in the hill ; m r l also the worttn Fox Brothers : that the Referi~at~ts did not sell any srteh steel in tile ~ I ~ market, as their b~isinesslay entirely with North Americil, whither they exportt:ci and ~ ~hetievecl that the marks in question were i n steel : that he had been i ~ f o i , m getreral w e iri Mheffield and its neighbourhood, until the injunction vas ohtairietl against Messrs. Greaves ; atid that, since hearing of the ittjuiictiori ol)tairxed agqitist Messrs. Greaves & Co., the ~ e f e ~ i c ~ [343J r i t a i d his piwtner hacl eiitirely abskiiiicd from selling ariy steel marked with the marks in 4iuestio~, or ariy of them : That the PlaiI~t~ffs having, by some meam urtknown to the ~ e f e r ~ colhinatl ~~~i~t the bef~re-mentiQ~ied irijuirctioit against Messrs. Greaves, the Ilefendant, not than knowing the grounclu on which the same had heeri granted, 01 on which the claim ptit forth b y the hill was founded, and IieiiiG alnrmcd a t the prusppect of the vesatioti, harass~e?kt, and expense of a chancery sitit, eanserl his solicitor, OH or idtotit the 3d of August 1834, and some time hefore the hill was filed, to write ~ i r lsend to the Plaintiffs the following letter :

Ls ~ ~ e August ~ e 2, ~ 1834. ~ -Gentlemen,--Messr-s. , Fox Brothers of this pl;lce, niercha~t,s, and who are clients of mine, arid who some time t ~ g ocarried oit the &eel trade, hiit who have riow entirely discorttinuerl it, have heeri irrfornierl that titi iritetition exist8 oti your part of taking proceedings q p i n s t them for the USB of marks clilirued by you ss yours only, naniely, the words Growley and M~lli~tgtoti.Until tltey were ap~risecl, by the ~ v e r t i ~ e ~ a eiri ~ no t ~i~ici the ~ t ~j ~ ~ j ~ ~ ~ ~ b c tt a ii o~ i~ iagabimt ed Messrw Greaves, they had not the most distant idea that those nirwks were the property of ally iIr~ividi~a~, but merely a d i s t ~ ~ i ~ u i mark, ~ h i n used ~ as the word. Germati, or any other kincl of steel. Uricler this impression I admit (without prejudice to iuy elients) tkat they had usecl the mark on a very small ~ ~ i ~ a t of ~ti steel t y sokd by them sinae they ~ m m e n c e db~~si~iess, ~ ~ a ~ i esince l y , 1831. The nionieIit they vere :~\vitre that they might be considered as iiifr~rr~~rig an ixic~~~~~dLials mark, they ceased to tine it, and Iiave never sixice done ,so, nor ever intend to do so ; iudeecl, $18 before statecl, they have giver1 lip the steel trade. [34$] To represent these facts 1: called upon JIr. ~ t t~ ~ c l,e r s ~hacl o d been e m p ~ o ~ ~ r~ o t~~ e ~ s i oby ~ ~you, a l ~ancl y s h ~h w i e~ ~ ~ i ~who ~ Ie done then, what, in co?iseqi~e~ice of his al)seiice, I do IIOW, offer to shew to Mr. Milrtar or any other party you may wish, thc amount of all steel sold hy them having marks calculated to injure you, and to submit either to the decision of any indifferent p r t y , what remuneration aright to he allowed to you for their hnvixig thus, throu h ignorance, clone tbat which was cs~cul~tecl to injure you, or otherwise to try to sett e the matter with yourselves, or with Mr. Nilner on yonr hehalves. This oger is made from the desire which my elients have to l i ~ ~ i i ~any ~at loss e which they may have occasioned, however intiocently it has h e n doiie on their part ; atid I trrist the spirit in which it is made will be correspondiirgly met. I beg to observe, that it i s i n co~~se(fi~e~ice of
(

s m. & GB. W.

MILLINGTON

U .

FOX

959

your s o l i c i ~ r (NE ~ ~ i l n e r absence ~ ~ from home that I address you ;~ithoutfirst coinmunicating with him : I feared delay might be injurious; but I will aee Xr. Milner on his return, and communicate what I have done.-I am, gentlemen, your obedient servant, LUKEPALFREYXAN. Messrs. Miliington, Crowley & Company, Newcastle.

After this answer had been put in, the Plaintiffs amended their bill, by stating that the business which the Defendants had carried on a t Sheffield, for more than six years past, w&3 that of merchants and dealers in steel ; and that they formerly, and until about three years ago, carried on, under the tame firm, the busitress of manufacturers of steel, which, however, they had since given up. The amerrclecl bill conbained a variety of charges, framed for the purpose of meetirtg the sbtements contained in Samuel Foxs answer; and, amongst other things, it alleged that the Plaintiffs marks had been fraudulently used by the Defendants on steel manu-[345]factured o r soZd by them, and charged that the Defeiidarits were [not aye] in the habit of ~ l i s h i steel, n ~ and afterwards causing the K ~ a ~ e Crowley, s M i l l i ~ ~ g or t oone ~ ~ of ~ them, to be sf;amped thereon; and that part of the steel marked with the tiames Crowley, MiIlington, or one of them, which had been sold hy the Defentlants, was of inferior quality : by which means they iiijured the repute of the Plaintiffs manufacture. James Fox having afterwards returned from America, the two DefcLndants put irr a joint and several answer to the amerided bill, in which the Defendant J m c s Fox statecl that he went to America in or about July 1834 ; awl that he had lately returned ; and that, since his return, he had been for the first time inforIned, and for the first time steel for sale, bdievecl, that the Pla~i~tiffs carry 011 the business of maiiufact~~ririg under the firm of Crowley, M i l l i ~ j ~ ok I i Co., or that there was auy such firm i r i the trade z ~ 9(Crowley, Nillingtori ;G Co.* By this auswer the two Defedants admitted that they now carried on, and that they had for the period in that behalf in the bill mentioned carried on a t Sheffield, the business of merchaiits and dealers in steel and files, under the firm of Fox Brothers ; arid that they formerly, a d until about three years before the clate of the present answer, also carried on, under the same firm, the business of niannfactnrers of steet ; and that they had since given up such business; arid that they had not themselves a t any time since Xay 1832 been manufaoturers of steel, hut since that time had had, and still had, their iron converted into steel, arid tilted, shearecl, rolled, arid finishecl by other nianufacturers for hire ; and, therefore, were now (except as before mentioned) nierely merchants ancl dealers in steel. The Defendants denied that any steel sold by them, arid matkecl with the or either [346j of them, was of inferior qu;&ty, or names Crowley, M i l l i n ~ n , injured the repute of the P l a i i ~ t i ~ maiiufacture. s The Defendant, Janies Fox, supported, in precisely similar terms, all the before-me~itionedstatemerits corttaiited in the sepwate aaswer of Samuel Fox. It appeared, from the second schedule annexed to these anm-ers, that the profits m d e by the Defendants upon steel soltl hy them, aitd bearing the marks iti clnestion, o r one of them, amounted to .6, 10s. 1ld. ; ancl that the ~ e f e n ~ a nhac1 t s sold certain steel, which was ordered under the name of Crowley, or (Cromley, ~~illirigtoti, but was not rmrked with either of such names ; arid that the profits upon such Iastmentioned steel amounted to 3 6 , lls. 5gcl. It appeared also from the same schedule, that the last order for the steel which had heen so marked was dated from Quebec, on the 19th of June 1833 ; and that the last order for the steel which hacl beeu ordered by the before-mentioned names, but had not been marked with them, was dated from Quebec, in Decemlser 1833. on 130th sides, The pleadings were long ; and numerous witnesses were examiiiec~ ~vi~tenc e given to shew that the Plai~~tiffs was had carried on hiwiness as maritifacturers of steel, under the name of Crowleg, ~ i l l i I ~ g t o & x~ CO., for maiiy years ; and that they used the marks mentioned in the bill ; ancl that the firm of Crowleg, Millington & CO, had been known in the steel trade for fifty years aid upwwds, as manufacturers of steel. Orie of the Plaintiffs witnesses, however, stated that many years hefore he heard o f the proceedings a g a i ~Greaves ~t & Son, he had heard of other r n ~ i ~ t ~ ~ f ~ c t [37] u~.e~,s stamping the marks Crowley, MiIliti~to~~, a r i d Crowley upon steel not nian~ifacturerl by the Plaintiffs firm.

9 60

MILLINGTON 21. FOX

t Iw.& CR. 848.

William Pashley Milner, of Sheffield, attorney-at-law, stated, in evidence, that on the 28th of July 1834 he made an application to the Defendant, Samuel Fox, to know whether his firm had stamped or marked the names, Crowley, Millington, or either of them, upon any kinds of steel manufactured by them ; arid that Samuel Fox would make no direct admission that his firm had used the Plaintiffs marks, but said that he would not interfere; and that the Plaintiffs might file a bill against theni if they pleased. It appeared, by this witnesss evidence, that, a few clays after t,he filing of the bill in this cause, another steel manufacturer hacl admitted to hini that he had used t.he Plaintiffs marks, but begged that no proceedings might he taken against him ; arlcl that another manufacturer had, on the 30th of J d y 1834, adniitted to him that, although his firm hacl not used the Plaintiffs marks, they had ordered some of the Plaintiffs marks of a mark-maker. One of the Defendants witnesses stated that he had, thirty years before, worked for four years and upwards for the Plaintiffs predecessors at IFinlaton Mill, and had known t.he riames or marks Crowley, Crowley, Millington, arid I. H. as used on steel for thirty-eight years past ; and that such marks were used on steel manufactueecl by the Plaintiffs predecessors, when he was in their service: and that he helkvecl that the PlaintiEs were, iri the year 1816, aware that those marks mere used h y other persons in the trade, and were in general L I S ~ amongst persons in Sheffield ; arid that the reasori for such his belief was, that he did, in that year, inform Mr. John Smith, of Shoreditch, London, the agent there of the Plaintiffs, or their predecessors, that their [348] marks were used by persons engaged in the manufacture of steel in Torkshire ; and that Mr. Smith repliecl,-- I f we hacl known that, we should follow the law upon them, and prosecute them; arid that a further reason for such his Iielief was that, up\vards of fourteen years ago, the facts of such marks bein so used lis other persons in Sheffield was ofbn the subject of conversation amongst t e workmen in the shear steel trade in Shefield. Several witnesses proved that the words Fox Brothers were always marked on the steel manufactured by or for the Defendants, and that none of the marks, Crowley, Crowley, Millington, and I. H., was ever put on without the words Fox Brothers. Another witness deposed that the marks Crowley and I. H. were known as denoting, not the makers, hut the kind of steel ; and that those marks had been publicly arid generally used by the manufacturers of steel in various parts of England and Wales. Another witness deposed to the same eifkct with reference to the marks Cromley, Millington, as well as Crowley, and i I . H. A mark-maker of Sheffield deposed to having, for thirty years last and upwards, openly made marks or stamps for marking the words or letters Crowley, Crowley, Millington, ancl I. H. It was proved that the marks were imposed, not secretly or at the Defendants warehouse, but at the forge where the steel was sheared. Another witness statecl that he believed that tlie Plaintiffs were, eighteen years before the year 1834, inforniecl or aware that the mark Crowley, Millirigton k Co. WLLS used by persons iii the steel trade or manufa.cture at Sheffield, or in general use there, the witness having, in the year 181G, a t the Plaintiffs works at Bwalwell, informed three persons who mere then all in the employ of the Plaintirs, as managers or ,%erits, to that effect, when one of them replied, he 1)clievecl it was clone ; and the witness added that in the year 1824, he again in-[349]-formerl one of tlie same three persons to the same effect ; when he replied that he knew the Plaintiffs mark was forgecl in Shefield ; but that tlie purchasers knew that the mark was forged, arid it did not clo them any injnry. Another witness stated that the use of the three marks hefare mentioned by Messrs. Greaves c k Sons, of tlie Sheaf Works a t Sheffield, was Iiotorious, for the last ten years, amoiig persons engaged in the steel trade. A manufacturer of steel, wvtio had been such for eleveii years, deposed that at the time at which he conimeiiced husiiieas iri the steel trade, several of the old-established houses in that trade in SheKielcl and the neighhonrhoocl were in the habit of iriserting (Cromley, or Faggot Steel, in their lists of prices which they circulated amongst their customers ; ancl that,, before the year 1834, at which time legal proceedings were taken by the Plaintiffs against Messrs. Greaves & Sons respecting the use by them of the name Crowley, that name did not denote, ant1 was not known in the market as deriotirig, the iiame of the person by whom it wc28 impressed, but the particular kind of steel called faggot steel ; and that the name I Crowley was publicly and generally used by manufacturers of steel. These statements were corroburated by other witnesses.

MY. d; CR. 860.

MILLINGTON

U.

FOX

96 1

A witness named M a ~ h a I l who , had been a steel ma~ufacturerfor forty years up to the year 1830, deposed that the names Crowley and $Crowley, ~ i l l i n g ~ * , were in general use in the steel t r d e and ~ o i ~ g the s t manufacturers of steel for thirty year8 previously to the year 1830, and that they were not used to denote the makers names, but the description of steel. This witness, upon cross-examination by the Plaintiffs, stated that he had, when in the steel trade, manufactured steel 3503 at S h e ~ e ~ which d, he had marked Marshalls Crowley aid M a ~ h a l ~ browley ~s ~i~1in~on Another .l~ of the ~efenclaIits witi~esses,formerly a merchant, deposed, upon c r o # s - e ~ ~ m i ~ a tby i o nthe PlkLintiffs, that he had soid steel, marked U ~ a r s h a ~ ~ Crowley, best, No. 3 ; I Marshalts hest Crowley Mill~Iigton ; Marshalls Crawley ; Marshalls Crowley Millington, No. 3 ; (Naylor arid Sandersons Marshalls Crowley, warranted Crowley steel ; I Drabbles Crowley, No. 3, best ; ( best (with the mark of a pair of shears). o n the 9th of August 1834, two days after the filing of the bill, the Plair~tiffs obta~~ie an d injunctiorr against the nse of the marks in questioIi by the Defendants. upon t e the , a ~ d a v i of t ~one of the ~ ~ a i r i t i f arid fs This injunction was obtained ez ~ ~ ~ of Mr. Milner, and the ~ e f e n d a n t itever s attcmptec~ to dissolve it. The muse now came on to be heard. Mr. Wigram and Mr. James R ~ ~ s e argued ll the case for the Plaintiffs. THESOLICITOR-GENERAL [Rolfe and Mr. Stuart, on hehalf of the Defendants, contended (amongst ather things) t i a t the P l a ~ ~ ~ mere t i ~not s entitled to the relief they asked, i i i a s ~ ~ u c h it had not been proved that the ~efe!tdaIitshad made use of as the P l ~ ~ n t imarks ~ s knowirigly and wilfully ; and t h a t as there wav no evidence that the Defendants intended to continue the use of those marks, the Plaintif& had no right to prosecute this suit to a hearing for the purpose of making the injunction perpetual ; arid that, as the Plaintiffs were not now entitled to perpetid injunction, they were not entitled to the acconat ; Bail!/ v. Taylor (1 Russ. CPS Mylne, 73) ; and that, even if there [361] were not that objection to their title to the accoiitit, yet the sum to which. they would be entitled, on &king the aceourit, was so small that the Court would consider it an a l m e of i t s jiiris~~ictioti to bring the cause to a hearing ~ ~~ ~ for such a paltry SUm, and would dismiss the bill, with costs ; ~ ~ ~ ~v. ~ (2 Swanst. 428). They also stated that the ~ ~ f e I ~ c l acould n t s have Itad no object in moving to dissolve the injunction. Mr. Wigram, in the course of his reply, upon being asked hy the Lord Chancellor whether he persisted in asking for the account, said that he dict not think it vorth while to do so. THELORDC ~ A N C E L L [C Oo ~t t e n ~ a expressed ~~ an opinion that the P l ~ ~ ~ ~ i had tiffs iiiade out a case which entitled them to an injunction, but said that he doubted whether they were entitled to costs as agairist the Defendants, and should wish to hear the Plaintiffs counsel further on that point, atid to look into the pleaditigs. Mr. Wigram then contended that the Plaintiffs were entitled to the costs of the suit; aud stated that the letter of the 2d of August 1x35 was directed to the P l ~ ~ ~ t works ~ffs near Newcastle ; and that, the Plaintiffs being then in London, the letter did not reach them in London until the 9th of August, the clay on which the iiij~~rietion was obtained. LLOR Mwc& 24, 1838. THE LORDC ~ ~ ~ N C ~ [Cottenhain]. The soIe object 1 had in loolrirrg into the pleadings in this catme was to satisfy myself 11s to what ought to he [362J clone with respect to the question of costs ; having previortvly come to the conclusion that there was sutficient in the case to shew that the P~aiI~tiffs had a title to the marks in question ; and they Lt?iclou~)te~ly had a right to the ~ssistarice of a, Court of Equity to errforce that title. A t the same time, the case is very d~ffer611t from the cases of this kind which usually occur, where there has been a fraudulent us0, by one person, of the trade marks or names used tty another trader. I see uo reason to believe that there has, in this case, tieen a fraudulent w e of the Plaintiffs marb. It is positively denied by the answer ; and there is no evidence to shew that the Defendants were even aware of the existence of the PlaintiEs as i~ company mau~ifact~ring steel ; for although there is no evidence to shew that the terms I Crowle~ *and C L CrowIey ~ i l l i ~ t g t o were ~ i merely technical terms, yet there is s ~ i ~ c i e to n t shew that they were very g e ~ ~ e r a used, l l ~ in co~iversatiotiat least, as clescriptive of p&icular qualities of steel. In short, it does not appear to me that xx.-32

c.

962

MILLINGTON V. FOX

9 BIY. &

CR. 3U3.

there was any fraudulent intention in the use of the marks. That circumstance, however, does not deprive the Plaintiffs of their right to the exclusive use of those names; and, therefore, I stated that the case is so made out as to entitle the Plaintiffs to have the injunction made perpetual. With regard to the other part of the case, namely the account, it is of so infinitely minuta importance that the Plaintiffs have (very discreetly, in my opinion), abaadorred it. The question remains, What is to be done as to the costs? Now, the question of cosh in Chancery is left to the discretion of the Court. That discretion ought to [353] be exercised, as far as possible, according to some priiiciple; and I am very much disposed, as a general rule, to make the costs follow the result ; because, however doubtful the title may be, or however proper it may be to dispute it, it is but fair that the party who really has the right should be reimbursed, as far as giving him the costs of the suit can reimburse him. But, then, there is another object which the Caurt must keep in view, namely, to repress unnecessary litigation, arid to keep litigation within those bounds which are essential to enable the parties to vindicate and eshblish their rights. I find no fault with the filing the bill, provided the parties had not then had the letter of the 2d of August, which has been referred to ; for it appears that there was, on the 28th of July, an application by the Plaintiffs, which \vas met, by the Defendants in a manner which justified the Plaintiffs in filing the bill. I f that cireumstance had been stated in the bill, it might have giveri the Defendants some means of explaining i t ; but, a t all events, it is in evidence. On the 2cl of August, however, the Defendants took a very different view of the case, and, on that day, they wrote a letter to the Plairitiffs, first of all attempting, as it is stated in the letter, to find the person who acted as agent of the Plaintiffs at Sheffield; ancl not being able to find him, they wrote a letter to Newcastle, the place where the Plaintiffs manufactory was carried on. By some accident, or in coilsequence of the neglect of those who carried on the business of the Plaintiffs at Newcastle, the letter did riot reach London, where the Plaintiffs then were, until the 9th of August, two days after the bill was filed, and the very day upon which the injunction was applied for arid obtained. That was not the fault of the Defendants. They clid, as early as the 2cl of August, all that it was in their power to do to remccly the fault they had committed on the 28th of July. If the letter had been re-[354]-ceived in London before the bill was filed, the bill ought not to have been filed. That letter gives the Plaintiffs everything they could be entitled to. It states-what the answer also states-that from the time at which an injunction had been obtained against another party (with whom the Defendants had no connection) they ceased to use the marks, and had never since used them, and did not intend to use them. The letter, therefore, was an entire abandonment of that which constituted the Plaintiffs demand ; and it also states that, as to what had passed-ignorantly as they my-they were willing to make compensation for any injury which the Plaintiffs might have sustained through the use of the marks in question by the Defendants. It therefore gave the Plaintiffs everything which they clid or could ask for hy the suit which they had instituted when the letter was received, hut which they had riot instituted when the letter was sent. I am told that some subsequent communicatiou took place, which, if before me, would take off the effect of that letter ; but no such communications are in evidence ; and, seeing that letter in the answer, it was quite competent for the Plaintiffs so to deal with this cause as to bring those facts before the Court. I can, however, only deal with the case as it comes judicially before me. Now, I say, that having received that letter, it was not prnper for the Plaintiffs to apply, ex parte, for the injunction; or, if they had obtained an orcler for it, they should not have &awn up the order. That letter made it, as to costs at least, incumbent upon the Plaintiffs to put to the test whether the Deferidauts were sincere in their offer, and not to go on with the suit unless they found that they were insincere. The injunction was obtained, aricl has not been displaced. No attempt has [356] been made by the Defendaiits to displace it. That is quite consistent with what is stated in their answer, and in the letter to which I have referred. For what purpose, then, was this suit prosecukd? Why, simply ancl only, for the sake of the acccrunt ; which is so small that the Plaintiffs ahandoi~ it at the hearing. Here, then, haa been a very expensive suit, with no possible object but the account ; which, whet1

3 BY. & CR, Saa,

KIAS II. ~

O R T AND ~ ~~ ~A N ~ RAILWAY T E ~ CO. ~

963

the cwse comes 0x1 for hearing, the ~ l a ~ ~ k t corinsel ~ f f s J very properly n~)atido~is.Xow, think that a reat deal of very useless 1itigat~oI~ under these ~ i r c ~ ~ ~ s t a I iI ce s, hM been carried on, arid that a great deal of v ii~properexpense has heen incurred. It strikes me, therefore, that this i s exactly n case irr which the Court is repressing tiseless liti ation hy refusing the Plaintiffs the costs of the cause. They waive the ~4ecou~it.$hey ~ u s have t a p~rpetuali~ijuKict~on agai~lstthe use of the n m k s in question, but ~ v ~ t h o the u t costs of the canse.

XKAS tt THENORTHERN AND BASTERN RAILWAY CONPANY, &rch 38,

1838.

~~~~~~, 1846, 1 De a. ctk S. 27 ; .Whet

v. ~

~1873, L. ~ 1%. 8~ Ch. 367.1 ~

A case for the opiuiori of cousel, stated by the aiiswer to have reference to the matters in ii~Ieatioii $11 the cause, arid to have I)een sL~hrn~~ted to couxisel after the matters in clispuk in the cause had ariseit, is a p r ~ ~ i l e ~coiiimi~r~icatioIi, ecl which the ~ ~ e f e i ~ c ~ a is iiot ~ o to ~ u~ a d ~u c e~ .

The PlaintiE moved, by way of appeal from the Master of the Rolls, who had refused the a ~ ~ l i c a tthibt ~ a ~the , Deferi~aritsmight produce arid deposit with their clerk in Court a ease which t h y hail laic1 ~ e f o r e cwnsel, aid q o t i an o p i i ~ i ~ ~ had h e n ~ v e d n ~~ ted the 12th of ~ e c e m ~ 1836. er f366]The bill was filed on the 4th of May 1837, arid prayed that the Defeii~~an~s might be decreed specifically to perform a coiltract which they had entered itito iu May 1836 for the urchase of certaiik leasehold premises at Islirrgtou belonging to the PlaintiR. The eferidnrits, i t 1 a schedule to their answer, set forth a list of the sever2~1 books, documents, mid papers iri their ~ s s e s swhich ~ ~ ~ related ~ , tu the triatterv mentioned in the bill, iticluding, artioiig others, the case in qtiestioa ; but they w i t 1 that the cases for the opiniori of coutnet set forth in the schedule Imd ~ e ~ e r e ~ to ~ce the m ~ ~ t t ein rs ~ ~ ~ e ~ in ti the on cniise, arid were s i ~ b m i t t ~ to c~ ~ o ~ ~ after i i the s ~ s~ e~eral m ~ t t in ~ dispute r ~ in the c;Luse had arisen, arid Itore refereIice thereto ; and, t ~ ~ e r ~ ~ they ~ ~ that the same ~ ought)not to be ~produced. ~ ~ t ~ The argument atd judgment 011 the original motiari are reported by Mr ICeen ( 2 Keen, IS}. Mr. ~~i~~ ard Mr. U. ~ ~ ~ ~ for ~ ethe ~ appeaat ~ a r motion, i , said that hat for the case of ~ ~ v, Z T& ~ ~ ~ uo ~ ~ ~of ~ ~ ~ i ~~ (1 ( ~ ~y l~i~i e k o Keen, ~~ 88), i hy the~ ~ ~ i ~~~ h ~ r of which the ~ ~ s t e of 1 . the Rolts considerecl himself honnd, his TJordship ~ i i t i m a t ~ ~ that he wonld have granted the a p ~ ~ i c ~ tThat ~o~ case ~ . carried the pririciple of protection further than i t had ever heeri carried before; and i t was not easily to be Y. Caw (1 JI. LPC Jew. 375). At all everitn, in order t o conic recoilcited with within the a u ~ o r i t y of E ~ Y, 27% l ~~~~~u~~~ ~ ~ of ~ ~ u ~ ~ it zwas j ~rieoessary u ~ , that the case should be one stated and submitted with refererice to R litigation, either theii of the parties, a d should be c~istiric~y actually ~ e n ~ or ~ in n the ~ , ~Qntemplat~ot~ m not e t ~ o u ~ to h [3W] say, as these ~efe?idiai~ts alleged so to be by the answer. It w said, that the case had refere~iceto the ~ a t t e in ~ s~ ~ u ~ t i ~ no the I i cause, arid ivw s ~ ~to courlsel ~ ) after ~ the ~ matters t ~ in ~ r l ~ s p u tia ~ the cause had ariseit. There was a ~ u b s ~ ~ difference t i ~ l between n cjrtestion iri dispute and a qrtestion in Iitigatio~~. S'twep v, h d Jofilz Gmge Lemm (1 Myltie & Craig, 525) estal~lishedthat IL pirty, seeking to ~vithho~d the pro[~i~ct~o~i of c ~ o c ~ ~ ~on e rthe !t~ grouiicl of their bciug ~ r i ~ i I e ~ e c 1 comm~i~~~t was io~ bowid ~ s , ta do so by the niost nice and precise excep~io~i, clearly b r i i ~ ~ them ~i~g within the Iirie of p r o t ~ c t i ; ~ arid i ~ the Deferdmits had tiot dorie so here. THE LORDCHANCELLOR [Cottenham], (without calling oti the counucl for tho DefeIl~ar~ts}.1 never e r i t e r ~ i ~ the ~e least ~ doubt as to the p r o ~ r ~ e of t y the clecision in ~ o Y. T h le ~ ~ of' ~ i i ~ (1 e Mylrte ~ ~ & ~ XCeeri, l 88). The true ~ r ~ i ~ ~ oIt iple which that Cage proceeds is, that parties are to he at liberty to ~ ( ~ I ~ ~ ~ ~ with ~nic~ their professional advisers with respect to mattevs which heconte the subject of iitigptiotr, ~ v ~ t h ~ o~ ~ t~~t i e t and ion w~ i t ~ the ~ ~ ~~ ~ ~~ t ~ of ) being i ~ iafter~~~~~r(1s ~ t y ciiHtd upon to produce or d i s c o ~ e what ~ they shall so hive c o ~ ~ ~ i ~ ~ r ~ T'Vhetber icat~da . bill is or is iiot actually filed iat the time is to my mincl rz matter of perfect iatliRcrcnce. T t is
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