Edelsten v Edelsten

JurisdictionEngland & Wales
Judgment Date28 January 1863
Date28 January 1863
CourtHigh Court of Chancery

English Reports Citation: 46 E.R. 72

BEFORE THE LORD CHANCELLOR LORD WESTBURY.

Edelsten
and
Edelsten

See Cope v. Evans, 1874, L. R. 18 Eq. 150; Orr-Ewing & Company v. Johnston & Company 1880-82, 13 Ch. D. 447; 7 App. Cas. 227; Singer Manufacturing Company v. Loog, 1882, 8 App. Cas. 30; Lever v. Goodwin, 1887, 36 Ch. D. 8; Humphries & Company v. Taylor Drug Company, 1889, 59 L. T. 821.

[186] edelsten v. edelsten. Before the Lord Chancellor Lord Westbury. Jan. 13, 28, 1863. [See Cope v. Evans, 1874, L. E. 18 Eq. 150 ; Orr-Emng & Company v. Johnston & Company, 1880-82, 13 Ch. D. 447; 7 App. Cas. 227; Singer Manufacturing Company v. Loog, 1882, 8 App. Cas. 30; Lever v. Goodwin, 1887, 36 Ch. D. 8; Humphries & Company v. Taylor Drug Company, 1889, 59 L. T. 821.] If A. has acquired property in a trade mark, which is afterwards used by B. in ignorance of A.'s right, A, is entitled to an injunction, but not to an account or compensation, except in respect of any user by B. after he became aware of the prior ownership. The owner of a trade mark will not be deprived of remedy in equity, even if it be shewn that all who bought goods bearing the mark from the Defendant were well aware that the goods were not of the Plaintiff's manufacture. It is enough if the goads were supplied by the Defendant for the purpose of being sold again in the market, nor is it necessary to shew that any person was deceived, if the resemblance of the articles is such as would be likely to cause one mark to be mistaken for the other. Where the Plaintiff attached to wire manufacture by him tallies marked with an anchor, and the Defendant attached to hia manufacture similar tallies marked with the device of a crown and anchor: Held, that the Plaintiff was entitled to an injunction. Negotiations antecedent to a suit (save in the case of bad faith) unless amounting to a release or binding agreement, cannot be regarded. This was an appeal from a decree of Vice-Chancellor Wood, directing an account, and awarding a perpetual injunction in the terms of the prayer of the Plaintiffs bill, which was filed against the Defendants for infringement of the Plaintiff's trade mark. The case made by the bill was as follows :- The Plaintiff had for upwards of 19 years carried on the business of a wire manufacturer, at Warrington, and having formerly, and until the death of a Mr. Price, carried on the business in partnership with him, under the firm of Edelsten & 1DEQ. J. &g. 186. EDELSTEN V. EDELSTEN 73 Price, he had since the death of Price continued to carry on the business on his own account under the same firm. Previously to the year 1852 the Plaintiff used no peculiar device as a trade mark; but in the month of September in that year, in order to distinguish the goods manufactured by him from the goods of other manufacturers, he adopted the device of an anchor as his trade [186] mark, and had since that time constantly used such trade mark on his circulars, billheads, and letters, and had had the same stamped upon the metal labels (known in trade as " tallies ") attached to each bundle of wire of a certain quality, as sent out from the manufactory. In consequence of suoh trade mark the wire of the quality denoted by it, and manufactured by the Plaintiff became known in the trade as the " Anchor Brand Wire," and from its superiority of manufacture and excellence of quality it had attained a high reputation ; and the " Anchor Brand Wire " was greatly enquired after and sought for by purchasers of such goods in all parts of the world, and the same was more generally and readily sold at a higher price than wire not bearing that brand or mark. The trade mark in question accordingly became well known ; so much so that in 1857 a manufacturer of tallies, at Birmingham, wrote to the Plaintiff and informed him that he had an order for tallies, with an anchor stamped on them; but that he believed the anchor to be the trade mark of the Plaintiff', and he asked for information on that point, that he might not do wrong. The Plaintiff, in reply to this application, claimed the anchor as his trade mark. The Plaintiff had for several years past been aware that his trade mark was extensively pirated by other wire manufacturers ; but he had, until shortly before the institution of the suit, been unable to ascertain by whom in particular the trade mark had been used. In May 1861 a person, at Liverpool, wrote to him, [187] offering for sale a large quantity of wire, which it subsequently appeared was part of a quantity of 20 casks which had been saved from the wreck of the " Versailles ;" and, in reply to an enquiry of the Plaintiff, his correspondent informed him that he believed the wire was the Plaintiff's own manufacture, as the tallies attached to it were stamped with the same trade mark as that at the head of the Plaintiff's letter. The Plaintiff having reason to believe that such wire was not his manufacture, purchased it chiefly for the purpose of tracing by whom it had been manufactured ; and accordingly finding that the trade mark on the same was not his, but a colourable imitation of it, he endeavoured to ascertain from the shipping agent who had shipped the wire, and from the London and North-Western Railway Company, who had conveyed it to Liverpool, by whom it had been manufactured, but all information was refused him. The Plaintiff was occupied for some time in endeavouring to trace the wire saved from the "Versailles," but having failed to do so, and having reason to suspect that it had been manufactured by the Defendants, who were wire manufacturers at Birmingham, trading under the firm of Edelsten, Williams & Edelsten, he immediately, on failing to trace it, directed one of his travellers to order some "Anchor Brand Wire" from th& Defendants. An order given accordingly, by a letter of the llth of June 1861, was executed by the Defendants sending to the Plaintiff's traveller the wire so ordered, which came to hand on the 22d of the same month, with tallies attached thereto stamped with an anchor and also a small crown at the top of the anchor, such tallies being very similar to the Plaintiff's, and exactly like the tallies saved from the wreck of the "Versailles," [188] and the mark thereon being, as the Plaintiff submitted and believed, only colourably differing from his own trade mark, and intended to mislead purchasers of wire, and to induce them to believe that, when purchasing the wire manufactured by the Defendants, they were purchasing the " Anchor Brand Wire " manufactured by the Plaintiff. The Plaintiff upon ascertaining that the Defendants were in the habit of using a trade mark in imitation of or only colourably differing from his own, consulted his legal advisers, and considerable correspondence resulted between them and the legal advisers of the Defendants. The bill charged that the Defendants well knew that the sale of wire (especially of such as was intended for the foreign market) was promoted, and a higher price realised for it, by the Plaintiff's trade mark, or a trade mark in imitation thereof, or only...

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