thereof, and the purchaser got all he was entitled to if he described himself, not as A. B., but as C. D., the successor of A. B. They submitted that there was great good sense in the doctrine enunciated in Partridge v. Menck.

The trade-mark must be taken as a whole; and so taken, it represented that the article to which it was affixed was a tanned article, a patented article, and that J. R. and C. P. Crockett were the manufacturers —each of which was a false representation in a material particular.

As to the argument that any one could see for himself that the leather cloth was not tanned, and that therefore no one could be deceived, it was sufficient to observe that, consistently with the specification of the patent, the tanning might be one side only of the cloth, and that the side which was subsequently covered with the composition which gave it the appearance of leather; consequently it was not apparent to a purchaser whether he was buying the tanned or the untanned article.

Moreover, the statements contained in the plaintiffs' mark were untrue ab initio, for it was admitted that the mark had from the outset been affixed to the untanned article, i. e. to nine-tenths of their whole manufacture; and since the patent was dated in 1856, after Messrs. Crockett had ceased to carry on their business, and the adoption of the mark was subsequent to the grant of the patent, the assertion "J. R. and C. P. Crockett, Manufacturers," was also untrue ab initio.

Lastly, the plaintiffs' patent was for tanned leathercloth; their trade-mark denoted the tanned and patented leather-cloth, and was confined to that specific kind or quality of goods. The defendants' mark, on the contrary, denoted leather-cloth generally, a totally different thing; and so applying their mark to an article different from that to which the plaintiffs applied theirs, (even if the marks were precisely identical) was not an infringement of the plaintiffs' right. They also referred to

Perry v. Truefitt, 6 Beav. 66;
Pidding v. How, 8 Sim. 477;

Thompson v. Crawshay, 4 M. & Gr. 357.

Sir H. Cairns, in reply.

In sub

Assuming the contention of the defendants, as to the statements of the plaintiffs' mark, to be valid, still the statements were originally introduced bond fide, truthfully, and without fraud; that being so, there was no fraud in continuing to use the mark, although such statements had, by lapse of time and change of external circumstances, ceased to be literally true. stance there was no statement to the public beyond this-that the article to which the mark was affixed was the leather-cloth, the real genuine article, the same article as manufactured by Crocketts. At any rate, there was no authority for saying that the continuance by the plaintiffs of statements, originally true and made bona fide, after they have by change of circum

stances ceased to be literally accurate, was sufficient to protect defendants, who were endeavouring to pass off their goods in the market as those of the plaintiffs.

21 DEC. 1863.

THE LORD CHANCELLOR said.-Upon a review of the numerous cases which had been decided in that Court on the subject of trade-marks, there appeared to be some uncertainty and want of precision in the language attributed to different Judges, as to the ground on which a Court of Equity interfered to protect the enjoyment of a trade-mark, and also upon the question whether the right to use a trade-mark admitted of being sold and transferred by one man to another. At Law the remedy for piracy of a trade-mark was by an action on the case in the nature of a writ of deceit. That remedy was founded upon fraud, and it seemed that originally an action was given not only to the trader whose mark had been pirated, but also to the buyer in the market, if he had been induced by fraud to buy goods of an inferior quality.

In Equity the right to give relief to the trader whose trade had been injured by the piracy appeared to have been originally assumed by reason of the inadequacy of the remedy at Law, and the necessity of protecting property of that description by injunction. But although the jurisdiction was now well settled, there was still current in several recent cases language which seemed to him to give an inaccurate statement of the true ground on which it rested. In Croft v. Day (7 Bear. 88), and in Perry v. Truefitt (6 Beav. 73), the late Lord Langdale was reported to have used words which placed the jurisdiction of the Court to grant relief in cases of the piracy of a trade-mark entirely upon the ground of the fraud that was committed when one man sold his own goods as the goods of another; and that learned Judge was reported to have said "I own it does not seem to me that a man can acquire a property merely in a name or mark;" and, in like manner, the learned Vice-Chancellor whose decision his Lordship was reviewing, was reported to have said (1 H. & M. 287), “ All these cases of trade-marks therefore turn not upon question of property, but upon this-whether the act of the defendant is such as to hold out his goods as the goods of the plaintiff." But, with great respect, that was not quite an accurate statement.

First, the goods of one man might be sold as the goods of another without giving to that other person a right to complain, unless he sustained or was likely to sustain from the wrongful act some pecuniary loss or damage. Thus in the case of Clark v. Freeman (11 Beav. 112), the eminent physician, Sir James Clark, ap plied for an injunction to restrain a chemist from publishing and selling a quack medicine under the name of "Sir James Clarke's Consumption Pills;" but the Court refused to interfere, because it did not appear that Sir James Clark had sustained any pecuniary injury.

Secondly, it was not requisite for the exercise of the jurisdiction that there should be fraud or imposition practised by the defendants at all. The Court would grant relief, although the defendant had no intention of selling his own goods as the goods of the plaintiff, or of practising any fraud either on the plaintiff or the public. If the defendant adopted a mark in ignorance of the plaintiff's exclusive right to it, and without knowing that the symbols or words so adopted and used were current as a trade-mark in the market, his act, though innocently done, would be a sufficient ground for the interference of the Court, as was plain from the decision of Lord Cottenham in the case of Millington v. Fox, to which his Lordship entirely assented, and from the learned Vice-Chancellor's own opinion in the case of Welch v. Knott (4 K. & J. 747). Imposition upon the public, occasioned by one man selling his goods as the goods of another, could not be the ground of private action or suit. In the language of Lord Thurlow in Webster v. Webster (3 Sw. 490 n), frand upon the public was no ground for the plaintiff resorting to a Court of Equity. It was indeed true, that unless the mark used by the defendant were applied by him to goods of the same kind as the goods of the plaintiff, and were in itself such that it might be, and was, mistaken in the market for the trademark of the plaintiff, Equity would not interfere, because there was no invasion of the plaintiff's right; and thus the mistake of the buyers in the market, under which they in fact took the defendant's goods as the goods of the plaintiff, that is to say, imposition on the public, became the test of the property in that trade-mark having been invaded and injured, but was not the ground on which the Court rested its jurisdiction.

The representation which the defendant was supposed to make, that his goods were the goods of another person, was not actually made otherwise than by his appropriating and using the trade-mark which such other person had an exclusive right to use in connection with the sale of some commodity; and if the plaintiff had an exclusive right so to use any particular mark or symbol, it became his property for the purposes of such user, and the act of the defendant was a violation of such right of property, corresponding with the piracy of a copyright, or the infringement of a patent. His Lordship could not, therefore, assent to the dictum that there was no property in a trademark. It was correct to say, that there was no exclusive ownership of the symbols which constituted a trade-mark, apart from the use or application of them, but the word "trade-mark" was the designation of a mark or symbol when applied to a vendible commodity, and the exclusive right to make such user or application was rightly called property. The true principle, therefore, would seem to be, that the jurisdiction of the Court in the protection given to trademarks rested upon property, and that the Court interfered by injunction because that was the only

mode by which such property could be effectually protected. The same things were necessary to constitute a title to relief in Equity in the case of the infringement of the right to a trade-mark, as in the case of the violation of any other right to property. First, the plaintiff must prove that he had an exclusive right to use some particular mark or symbol in connection with some manufacture or vendible commodity; and, secondly, that that mark or symbol had been adopted or was used by the defendant so as to prejudice the plaintiff's custom and injure him in his trade or business. But when the owner of a trade-mark applied for an injunction to restrain the defendant from injuring his property by making false representations to the public, it was essential that the plaintiff should not, in his trade-mark, or in the business connected with it, be himself guilty of any false or misleading representatation; for if the plaintiff made any material false statement in connection with the property which he sought to protect, he lost, and very justly, his right to claim the assistance of a Court of Equity.

The question then arose, What amounts to a material false representation? Supposing that a partnership had been formed a century ago under a style or firm composed of the names of the then partners, and that the business had been continued by the admission of new partners in an unbroken series of successive partnerships trading under the same original style, although the names of the present partners were wholly different from those in the original firm, was it an imposition on the public that such persons should continue to use the style or name of the original partnership? That question must be answered without any doubt in the negative for it was competent by the law of England to a partnership to adopt any style or firm which did not involve a claim to incorporation, or the assumption of what belonged to others; and the practice of the trading community in that respect was so common and general, that no misleading of the public could result from it.

But suppose an individual, or a firm, to have gained credit for a particular manufacture, and that the goods were marked or stamped in such a way as to denote that they were made by such person or firm, and that the stamp had gained currency and credit in the market and become of great value, could such person or firm, on ceasing to carry on the business, sell and assign the right to use such name and mark to another firm carrying on the same business in a different place? Suppose that a firm of A. B. & Company had been clothiers in Wiltshire for fifty years, and that broadcloth marked thus: "A. B. & Co., makers, Wilts," had obtained a great reputation in the market, and that A. B. & Co., on discontinuing business, sold and transferred the right to use their name and mark to a firm of C. D. & Co., who were clothiers in Yorkshire, would the latter be protected by a Court of Equity in their claim to the exclusive right to use the name and mark of A. B. & Co. ? His Lordship was of

opinion that no such protection could be given. It was true that the name or the style of the firm might by long usage become] a mere trade-mark, and cease to convey any representation as to the maker or the place of manufacture; but where any symbol or label claimed as a trade-mark was so constructed or worded as to make or contain a distinct assertion which was false, he thought no property could be claimed in it; or, in other words, the right to the exclusive use of it could not be protected. The sale of an article stamped with a false statement was pro tanto an imposition upon the public; and therefore, in the case supposed, the plaintiff and the defendant would be both in pari delicto, and relief would be refused to the plaintiff, which was consistent with many decided cases.

Further, property in a trade-mark was, as had already been observed, the right to the exclusive use of some mark, name, or symbol in connection with a particular manufacture, or vendible commodity; consequently, the use of the same mark in connection with a different article was not an infringement of such right of property. If, therefore, the trade-mark included in itself a clear and distinct description of the commodity to which it was affixed, it was not pirated by the use of a mark, which, although in other respects similar, did not contain or give the same description, and which was impressed upon an article which was not of the nature or quality so described. Those conclusions seemed to follow immediately from the principle to which a plaintiff seeking protection for a trade-mark appealed. He desired to restrain the defendant from selling his own goods as the goods of another person, but if, by the use of the trade-mark in question, the plaintiff himself was representing and selling his goods as the goods of another, or if his trade-mark gave a false description of the article, he was violating the rule upon which he sought relief against the defendant.

Those observations seemed to apply to the case before the Court. The plaintiffs, from the date of their purchase from the International Leather-Cloth Company, had carried on, and still carried on, near London, the manufacture of leather-cloth, according to the process originally introduced by Crockett & Co. ; and they had constantly stamped on their goods of the first quality the trade-mark previously adopted by the International Company, and the right of user of which was assigned by that company to the plaintiffs. In August, 1861, the defendants were incorporated for the purpose of carrying on the manufacture and sale of leathercloth; and they had used as a trade-mark, on goods made by them of the first quality, a stamp or label which certainly appeared to have been formed upon the model of the plaintiffs' trade-mark. They did not make use of the word "patented," nor did they call their leather-cloth "tanned." But it was unnecessary to pursue the inquiry as to difference or identity, for his Lordship would assume, for the

purpose of the present decision, that there was so much designed similarity as would induce the Court to grant an injunction if the plaintiffs' title were free from objection.

The Vice-Chancellor's words as reported (1 H. & M. 289) were:-"I hold that the plaintiffs, having purchased the business, are perfectly entitled to use the trade-mark formerly used by their vendors." Now the plaintiffs' label or trade-mark contained the following assertions or representations:-first, that the articles so stamped were the goods of the Crockett International Leather-Cloth Company; secondly, that they had been made or manufactured by J. R. & C. P. Crockett; thirdly, that they were tanned leather-cloth; and, fourthly, that the articles were patented by the patent obtained in January, 1856. Each of those statements or representations was untrue, when applied to the goods made and sold by the plaintiffs. Of those several untrue statements the most material were the false representations made by the plaintiffs' trade-mark that every piece of cloth so stamped was tanned and was included in the patent of January, 1856, which was a patent for tanning leathercloth; whereas it was clear upon the evidence, that the goods made and sold by the plaintiff's were not tanned unless specially ordered to be so, and that, to the great bulk of the plaintiffs' manufacture, the words "tanned" and "patented" were unduly applied. The Vice-Chancellor was reported to have said on this point, "It seems to me that everybody who takes up an article of this kind knows whether it is tanned or not. Therefore, when it said 'tanned leather-cloth patented' it cannot be made to represent that it is tanned." If those were the words of the Vice-Chancellor, his Honour meant to say that any buyer of ordinary discernment would perceive that the cloth was not tanned, and, therefore, would not be deceived by the statement that it was. That was not, however, the fact; for the tanning might have been applied on that side only which was covered by the composition. But he could not concede, as a rule either of morality or equity, that the plaintiffs were not answerable for a falsehood, because it might be so gross and palpable that no one was likely to be deceived by it. If there were a wilfully false statement, he would not stop to inquire whether it was too gross to mislead.

The Vice-Chancellor put the case of Morrison's Pills, and concluded that the present manufacturers of that medicine, though not bearing the name of Morri son, would be protected in the exclusive use of the appellation; and rightly so; because the words "Morrison's Pills" had become the name of the thing sold, in the same manner as "James's Powder" was the name of a celebrated medicine invented by Dr. James nearly a century ago, and just as the words Mackintosh, Brougham, and Wellington were the designations of different articles. So, in the present case, the article made or sold by the plaintiffs might be properly called and sold by them as "Crockett's leather-cloth," for

The Vice-Chancellor was apprehensive that, if he refused the plaintiffs relief, he must hold that where the name of a deceased partner was continued in the firm by his surviving partners, they would be guilty of a fraud upon the public. To continue

the old style of a firm was a very different thing from making false representations with respect to a vendible commodity in order to give it greater value, and to create a greater demand for it in the market. The plaintiffs imposed upon the public by selling goods, which were in reality made by themselves, as being the goods of the Crockett International Leather-Cloth Company, and as having been manufactured by Messrs. Crockett, who were the original inventors and manufacturers; and, further, they described their untanned goods as being tanned, and protected by the patent of January, 1856. Their request was to be protected and, therefore, justified in continuing to make those untrue statements to the public in order to secure a monopoly for their commodity. There was a homely phrase long current in this Court, that a plaintiff must come into Equity with clear hands; that was not so with the present plaintiffs, whose case was condemned by the principles to which they

appealed.

His Lordship, therefore, with great respect, but without hesitation, must reverse the decree of the Vice-Chancellor, and dismiss the bill of the plaintiffs. But, as he did not approve of the conduct of the defendants, he would dismiss it without costs.

Note.*—The case of Partridge v. Menck is referred to as follows in Law's "Digest of American Cases relating to Patents for Inventions and Copyrights, and embracing also the American Cases in respect of Trademarks" (New York, 1862), p. 688 :

"But where a person manufactures and sells an article under the name of the original manufacturer, although he may have purchased of such one the secret of his manner of preparing the article, and also the right to use his name, he is not entitled to be protected."-Partridge v. Menck, How. App. Cas. 559, 561.-Per GARDINER, Senator.

"The privilege of deceiving the public for their own benefit is not a legitimate subject of commerce, and therefore it makes no difference that complainant has purchased the right to use the name of the first proprietor. A party asking Equity must come with clean hands."-Ib. 561.

This was an appeal from a decision of his Honour Mr. Commissioner Perry, at Liverpool.

In August, 1863, James Wilson and Walter Slater were jointly adjudicated bankrupts, and William Jones and four others, the appellants, were subsequently appointed assignees.

At an adjourned meeting of the creditors, held in pursuance of the Bankruptcy Act, 1861, section 110, it was resolved, that the proceedings in bankruptcy should be suspended, and the estate wound up under a trust deed, the draft of which was then produced. It conSuch deed was accordingly duly executed. stituted the assignees of the estate trustees of the estate of the bankrupts, and made provision for the administration of the same, but did not release the bankrupts from their liabilities.

After the deed had been executed, the bankrupts The trustees, being applied for their discharge. dissatisfied with the accounts which the bankrupts had rendered, appeared for the purpose of opposing this application, and the Commissioner having decided

that they had not, either as assignees under the bankruptcy, nor as trustees under the deed, any locus standi, they claimed to be heard as creditors of the estate. They were thereupon required to disclose the nature of the objection which they proposed to make, and their solicitor accordingly stated that they intended to oppose the granting of the discharge on the ground that the bankrupts had, with intent to conceal the true state of their affairs, wilfully omitted to keep proper books of account. To this it was objected, on behalf of the bankrupts, that this offence, if committed, was an offence against the general body of creditors, and not against any individual creditors in particular, and that, therefore, the appellants could not be heard in support of the objection.

This objection was allowed by the Commissioner, and no further opposition being made, the bankrupts obtained orders of discharge without having passed their last examination, and without having made, as alleged, a full discovery of their estate and affairs.

Bacon, Q.C., and North, for the trustees, the appellants, contended, that even if the first two objec tions were tenable, the third ought to have been disallowed. They cited,

The Bankruptcy Act, 1861, sects. 110, 158, 159, and also, as being in pari materia, sections 185-189; General Orders in Bankruptcy, 17 & 18.

Daniel, Q.C., and De Gex for Slater.

Little, for Wilson.

No reply was called for.