of 1875, where he had not carried on business at all, then he cannot recover (see Lawson v. Bank of London, 18 C. B. 84; Batty v. Hill, 1 H. & M. 264, per Willes, J).

Cases of this nature are not, so far as trade marks proper are concerned, at all likely to arise, for by the Patents, Designs, and Trade Marks Act (46 & 47 Vict. c. 57, s. 77), all marks must be registered, and by section 76 it is provided that the registration of a person as proprietor of a trade mark shall be primâ facie evidence of his right to the exclusive use of it, and this is in itself a private right sufficient to ground a cause of action. The title of the plaintiff is therefore absolute immediately on registration, subject to the provision in the same section contained that for the first five years the evidence of his right shall be primâ fucie only, but that after the expiration of that time it shall be conclusive.

CHAPTER XI.

ON THE REMEDIES FOR THE INFRINGEMENT OF

TRADE MARKS.

different

A PERSON whose trade mark has been infringed has Four four remedies open to him: he may proceed by action on remedies. the case at common law for deceit, in the High Court of Justice, for an injunction and an account, or damages; he may proceed criminally under the Merchandise Marks. Act, 1862, or on an indictment for obtaining money under false pretences. The remedy in equity was the one usually adopted under the repealed Acts, but the writ may now be issued in any division of the High Court of Justice (46 & 47 Vict. c. 57, s. 117, see definition of "the Court"). In practice, however, the Chancery Division will doubtless retain its practically exclusive jurisdiction over trade mark cases.

Action on the case

law.

An action at common law may be brought by the person to whom the false or fraudulent representation is made, as at common well as by the manufacturer whose trade mark has been imitated (see Southern v. Howe, 3 Cro. 47, and the remarks of Coltman, J., in Rodgers v. Nowill, 5 C. B. 126).

Proof of fraud on the part of the defendant is absolutely necessary in an action of this nature, that is to say, a scienter must be shown and not merely legal fraud (Singleton v. Bolton, 3 Doug. 293; Crawshay v. Thompson, 4 Man. & G. 377, per Coltman, J.; Edelsten v. Edelsten, 1 De G. J. & S. 199, per Westbury, L. C.), and this scienter is equivalent to an intention existing in the mind

Evidence of fraud.

of the defendant that certain goods should pass "as and for" those of the plaintiff (Sykes v. Sykes, 3 B. & Cr. 541 ; Morison v. Salmon, 2 Scott. N. R. 449; see Dixon v. Fawcus, 3 Ell. & Ell. 537).

Since the Judicature Acts it is possible that a plaintiff' in an action at common law would be entitled to at any rate nominal damages, on production of the same proof as would be considered necessary to support an action in the Chancery Division.

The mere fact that the plaintiff has informed the defendant that he is using a mark calculated to deceive, is no evidence of intentional fraud, unless it should also appear that such notice is true, and that credence was given to it by the defendant (Rodgers v. Nowill, 5 C. B. 109; and see the Leather Cloth Co. v. American Leather Cloth Co., 1 H. & M. 271; McAndrew v. Bassett, 33 L. J. Ch. 564 ; 4 De G. J. & S. 380); and evidence to show that the trade mark as used by the defendant is calculated to deceive, is not in itself sufficient, but it must be further shown that the defendant used the mark with the intention of supplanting the plaintiff (Crawshay v. Thompson, 4 Man. & G. 357).

An intention to injure will be inferred in those cases where a false representation is made by a person who well knows it to be false (see Polhill v. Walter, 3 B. & Ad. 114), and in this event the motive of the defendant is beside the question (Foster v. Charles, 7 Bing. 105).

It is to be observed that no allegation of special damage is necessary (Rodgers v. Nowill, supra); nor need the plaintiff show that the defendant has made any misrepresentation to his immediate purchaser (Sykes v. Sykes, supra; Chappell v. Davidson, 2 K. & J. 123).

The question whether an action upon the case at common law is founded upon fraud on the part of the defendant, or upon a certain jus in rem which the

plaintiff has in the subject-matter of the action, is a point which, owing to the preponderance of judicial opinion in favour of the former view now amounting to an almost absolute settlement, is of but little practical importance. It may therefore be taken that in an action of this nature, an intention on the part of the defendant to deceive buyers, added to a probability of deception, is a sufficient ground of action (see Crawshay v. Thompson, 4 Man. & Gr. 357). The intention to deceive is a question for the jury (ibid.), and there is little doubt that where a trader has innocently adopted a trade mark which is calculated to deceive by its similarity to another person's trade mark, his continuing to use it after complaint has been made, is strong evidence of fraud (Orr Ewing v. Johnston, 13 Ch. D. 434).

It is evident, therefore, that in an action at common. law for the infringement of a trade mark, a mere attempt to deceive is sufficient (see Crawshay v. Thompson, supra; Rodgers v. Nowill, 5 C. B, 109).

tion.

The Court can, in an action on the case, award an in- Injunc junction against a defendant who has infringed a trade mark (see the Judicature Act, 1873, 36 & 37 Vict. c. 66, s. 25, sub-s. 8).

The practice of remitting matters in dispute for determination at law, was first checked by Sir John Rolt's Act (21 & 22 Vict. c. 27), and an action upon the case is now of such rare occurrence as to be practically obsolete.

in the

Division.

Originally, the Court of Chancery interfered upon Action principles similar to those prevailing at law, and the Chancery jurisdiction was merely of an ancillary nature (Motley v. Downman, 3 My. & Cr. 14, per Lord Cottenham), and so when a case was sent to be tried at law, the action proceeded there upon ordinary common law principles. It is not, however, in the case of a trade mark proper, necessary in equity to prove fraud of any description

Injunction.

(Millington v. For, 3 My. & Cr. 338), nor that the defendant knew that he was pirating such mark (Cartier v. Carlile, 31 Beav. 292; Kinahan v. Bolton, 15 Ir. Ch. 75; Edelsten v. Edelsten, 1 De G. J. & S. 185; Burgess v. Hills, 26 Beav. 244; Harrison v. Taylor, 11 Jur. (N. S.) 408), but merely that he has acted in such a way as to render it probable that deception will occur; and a similar rule would now seem to be applicable to the infringement of a trade name, even although such name be used in a manner analagous to though not as a trade mark (Singer Manufacturing Co. v. Wilson, 3 App. Cas. 376). In some instances it may be absolutely necessary to prove fraud, even in equity (See Chapter on Evidence, post).

Actions to restrain the infringement of a trade mark will probably still for the most part be brought in the Chancery Division, although the exclusive jurisdiction which such division formerly enjoyed under the Repealed Acts has not been retained by the Act of 1883. The action will be commenced in the ordinary way by writ, which should be endorsed with a claim for an injunction where the obtaining of an injunction is a substantial object of the action (Colebourne v. Colebourne, 1 Ch. D. 690), and this will be so in an action on the case at common law for deceit (Rules S. C., 1883, O. 2, r. 1. Ibid. Ord. 111, rr. 1, 2, 3).

The proprietor of a trade mark taken or imitated by the defendant is entitled to an injunction, notwithstanding defendant's promise not to repeat the illegal act (Routh v. Webster, 10 Beav. 563; Millington v. Fox, 3 M. & C. 338; Welch v. Knott, 4 K. & J. 747; Edelsten v. Edelsten, supra; Geary v. Norton, 1 De G. & S. 9; Tonge v. Ward, 21 L. T. (N. S.) 480); and where a person infringes a trade mark at the request of a third party, both will be restrained (Collins Co. v. Reeves, 4 Jur. (N. S.) 865 ; Collins Co. v Walker, 7 W. R.