Hall. at Stationers' Stationers' Hall confers no trade-mark rights, and constitutes no defence if the mark is an infringement of another person's trade-mark (ƒ). Is the intro defendant's own mark into a new market an If the plaintiff and defendant are severally entitled to, duction of the and are the registered proprietors of, two marks which are, in ordinary markets, distinct and unlikely to be confused, is it an infringement for the defendant to introinfringement? duce his mark into a market where the plaintiff's is already known, if from the character of the customers there,-their ignorance of English, for instance, its use is calculated to cause the defendant's goods to be taken for the goods of the plaintiff? It is submitted that it is an infringement, and that a note, limiting the use of the defendant's mark to markets other than the one in question, ought to be entered upon the register, for the case put falls within the principle that one trader must not do what is calculated to cause his goods to be taken for those of another, and the defendant's action is in this sense the cause of deception. The question was raised, but not determined, in Johnston v. Orr-Ewing, in the House of Lords, and the words of the order of Fry, J., having special reference to the Bombay trade were, with the assent of the respondents, directed to be omitted. There Lord Selborne said, in his judgment: "Your Lordships are not called upon to decide whether a ticket, which was a rightful and bona fide trade-mark of the trader using it, could be excluded by injunction from particular markets (though unimpeachable everywhere else) merely because in those markets it might be liable to be called by a name which the mark of another trader had already acquired there. To that proposition I should not myself, as at present advised, be prepared to assent" (g). (f) Reinhardt v. Spalding, 49 L. J. Ch. 57 (1879), Hall, V.-C., (Family Salve). (g) 7 App. Cas. p. 227 (1882). See also Wilkinson v. Griffith, 8 R. P. C. 370 (1891), Romer, J. An injunction limited to Ireland was granted in Barber v. Manico, 10 R. P. C. 93 (1893), A. L. Smith, J. rights on the Where a partnership is dissolved without a sale of the Trade-mark goodwill, or any arrangement having been made for its dissolution of disposal, or governing the use of the trade-marks of the a partnership. firm, each of the late partners who carries on the business may use the trade-marks (h), for he is, as to a portion of the good will, a successor of the firm; but if the goodwill is sold as part of the assets of the firm, the exclusive right to use the trade-marks may be sold with it, and in that case the late partners cannot lawfully use the trade-marks, even though they set up a similar business in competition with the purchaser (i). "and But a late partner cannot grant to others who are in no way successors to the firm's business, or any part of it, any right or licence to use the trade-marks, even though he be registered as proprietor of the marks under sect. 87, or otherwise. The case of Hanson v. Game, Harrison and Larner, Limited (k), was decided on the construction of a consent order under which the partnership in question had been dissolved, and which provided that the late partners any partners they may take respectively" were to have the common use of the trade-marks; but it is submitted that the decision might have been put on the general ground that the defendants-a limited company, of which one late partner was a shareholder and director— could not use the marks without infringing the rights of the plaintiffs, the other late partner and his partners, because they were not possessed of the goodwill of any part of the old business. So if the trustee in bankruptcy of a trader sells the Sale of trade (h) Banks v. Gibson, 34 Beav. 566 (1865), Romilly, M.R.; Condy v. Mitchell, 37 L. T. N. S. 268 and 766 (1877), Bacon, V.-C., and C. A.; Benbow v. (1881), Bacon, V.-C. See Chap. Robinson v. Finlay, 9 C. D. 487; (i) See the last case, and Hall v. (k) 9 R. P. C. 186 (1892), Stirling, J. marks in bankruptcy. Honest use of the defen dant's name ment. goodwill and trade-marks of the latter's business, the trader has no right to continue to use the marks (7). A trader who is honestly using his own name in his business will not be guilty of infringement because its is no infringe- similarity to the name of another, or to a name appearing in another's trade-mark, is calculated to lead to deception; but to support this defence the business must be his own, for a fraudulent attempt to cover an infringement by employing or taking into partnership a man who happens to bear the name which is to be used to effect the fraud, still less by buying from him the right to use his name, will not avail to protect the offender (m). (3.) The necessity for registration of the plaintiff's marks, having regard to sect. 77, has already been discussed (n). (4.) And so also has the question, What constitutes an infringement? (0). Estoppel. (a) Except with regard to the several defences which are considered under separate headings, there is nothing peculiar to the law of trade-marks to determine what agreements, or what circumstances constituting a personal estoppel, will prevent a plaintiff from suing a particular defendant for infringement. It is to be remembered, however, that an infringement is primarily a fraud on the public, in respect of which the plaintiff is allowed to sue, because its natural effect is to cause damage to him. An to condone in- agreement, therefore, not to prosecute future infringements fringements. would be an agreement to permit a fraud, and although, if established, it would undoubtedly prevent the Court from interfering in favour of any party to it, it could not be Agreement (1) Hammond v. Brunker, 9 R. P. C. 301 (1892), Chitty, J.; Hudson v. Osborne, 39 L. J. Ch. 79 (1869), James, V.-C. (m) See Turton v. Turton, 42 C. D. 128 (1889), C. A.; and Tussaud v. Tussaud, 44 C. D. 678 (1890), Stirling, J., and the earlier cases cited in these, and Chap. XVI., pp. 420 et seq. (n) Above, p. 303; Chap. XII., p. 260. (0) Above, p. 305. specifically enforced, and, unless the intention were clearly indicated, the Court would presume that a lawful arrangement, for instance, a waiver of the remedy in respect of past infringements only, was intended (p). As an instance of estoppel by conduct, the case of Uncandid Maxwell v. Hogg (q) may be taken. There the defendants conduct. had received, and published for reward from the plaintiffs, advertisements of an intended new magazine, bearing the title of a magazine which they were themselves preparing to publish, without warning the plaintiffs of their own intention; and this uncandid conduct was held to be sufficient ground for dismissing the cross suit of the defendants for an injunction to prevent the plaintiffs using the name. And anything in the nature of a representation by the plaintiff to the defendant that his mark was not an infringement, or that it might be lawfully used, or of an encouragement to him to continue using it, would be an Failure to answer to a subsequent claim for damages for infringe- give warning. ment, although a mere failure by the plaintiff as soon as he had knowledge of the infringement to warn the defen dant, would be no bar (r). because he registered It is sometimes urged as an objection to the plaintiff's The plaintiff case, on behalf of the defendant, that the plaintiff in is not barred actual practice uses his mark in a form different from that uses his for which he has obtained registration; but the variation mark with of his registered mark by the plaintiff, provided it is not additions. an infringement of any other person's mark, or a breach of any agreement binding upon him, is perfectly lawful, although so far as the mark actually used by the plaintiff differs substantially from his registered mark, it is an unregistered mark, as has been already pointed out; and if (P) Oldham v. James, 13 Ir. Ch. 393; 14 Ir. Ch. 81 (1862), Brady, C., and Blackburne, L.J. (2) L. R. 2 Ch. 307 (1867), Turner and Cairns, JJ., cited P. 33. (r) See Proctor v. Bennis, 36 C. D. 740 (1887), C. A., a patent case; Acquiescence. the registered mark is in substance not used at all, that would be an independent objection to the plaintiff's action (s). It is well settled that the use of a varied mark by the plaintiff does not in any way estop him from proceeding against infringers. Thus, in The Melachrino Case (t), the plaintiffs had tried to register a label comprising three coats of arms, but the coats of arms had been rejected and the label registered without them. The plaintiffs, nevertheless, always used the labels with the arms in it, and the defendants, who had imitated the label, were enjoined from continuing the infringement. In a subsequent case (u), Chitty, J., said: "I adhere to what I said in Melachrino's Case, that the mere addition of something, as, in that case, a coat of arms, to the trademarks, is not sufficient to disentitle a person who otherwise uses the whole of his trade-marks to sue for an injunction.' Similarly, it is no ground of estoppel that the plaintiff uses his mark for goods in respect of which it is not registered (x). (b) Acquiescence in the infringement on the part of the plaintiff is a complete defence (y), but it can only be inferred where he is shown to have had knowledge of it (z). And, assuming that it is shown that the plaintiff knows of the infringement, the Court will not readily infer that he has assented to what is likely to be so detrimental to his property. It has been held that, where it is pleaded in answer to a motion to commit the defendant for the breach of an injunction restraining him from infringing, it must amount to a licence "sufficient to create a new right in him" (a). (s) Above, p. 303. (t) Melachrino & Co. v. The Mela- (u) Hammond v. Brunker, 9 R. (x) Jay v. Ladler, 40 C. D. 649; 6 R. P. C. 136 (1888), Kekewich, J. (y) Per Chitty, J., in Mouson & Co. v. Boehm, 26 C. D. p. 406 (1884). (z) Weldon v. Dicks, 10 C. D. 247 (1878), Malins, V.-C.; Re Farina, 27 W. R. 456 (1879), Hall, V.-C., and the last case. (a) Rodgers v. Nowill, 3 De G. M. |