LA RADIOTECHNIQUE V. WEINBAUM

361 Vol. XLIV.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. [No. 11. La Radiotechnique v. TVeinbaum. IN ~~HE HIGH OOURT OF JUSTICE.--OHANOERY DIVISION. Before Mr. JUSTICE OLAUSON. June 28, 192,7. LA RADIOTECHNIQUE V. 5 WEINBAU~1. Passiru) off·-JV ords 'not lcegistered.-ln,junction to Eestrain. U scr.-I)ractice.Pleading.-Dejence.-Denia,z of . A llegations.-Plaintiffs' right to Particulare>« Pregnant negative alleged.-iV 0 affirmative Case.e-Plaintiffs merels) put to proof by Denial.-RuZes of Supre1ne Court, 1883, Order XIX., rules 6 and 7. Where Plaintiffs are not seeking to restrain infringement of a Trade i11ark 10 and a paragraph of the Defence merely denies alleqations in the Statement of Claim that words and cartons used by the Plaintiffs are uiel] knoum. as indicating their goods and that the Defendants had sold goods using words and cartons so similar as to deceive, with Particulars of one such. sale, Particulars as to whether the Defence asserted that the words and cartons used 'lucre in use by 1.1 others than, the Plaill~tiffs will not be ordered, as the paragraph of the Defence in-volved no allegation, and set up no affirmo.iioe case, but merel.p pu.t the Plaintiffs to proof of what they alleged. Weinberger u. Inglis (19'18) 1 Oh. 133) applied. By the Statement of Cla.im in this Action the Plaintiffs claimed against the 20 Defendants Philip TVe'inbau,m and TV illiam H'einbaum an injunction to restrain them" from using on or in connection with or in circulars or a dvertisements of wireless valves not of the Plaintiffs' manufacture the words ~ Radio Micro' and from using cartons in fraudulent or obvious imitation of the Plaintiffs' cartons or so closely resembling the Plaintiffs' cartons as to be calculated to 25 deceive and from otherwise passing off goods not heing goods of the Plaintiffs as and for the Plaintiffs' goods." In support of the relief so claimed the Plaintiffs by Paragruphs 3 to 6 of their Statement of Claim alleged as follows: -" The Plaintiffs have long been accustomed to place certain of their valves on the market under the name 'Radio 30 Micro' and such name is well known in the United Kingdom as indicating the goods of the Plaintiffs. The Plaintiffs have furtherm,?r~ lo~g been accustomed to put up their valves in rectangular cartons of a distinctive appearance 382 No. 11.] REPORTS OF PATE,NT, DESIGN, AND TRADE MARK CASES. [Vol. XLIV. La Iiadiotechmique v. Weinbaum. and bearing the said words ' Radio Micro' and such cartons are well known to the trade and the public and indicate to them that such goods are the goods of the Plaintiffs. The Defendants have recently put upon the market and advertised for sale and sold wireless valves marked with the words 'Radio Micro' such valves are packed in cartons marked with the words 'R,a,dio Micro' and 5 so closely resemble the cartons used by the Plaintiffs as to be calculated to deceive. The goods so sold by the Defendants are not the goods of the Plaintiffs but ,a fraudulent and obvious imitation thereof. As instances of the type of act complained of the Plaintiffs will rely upon the issue by the Defendants in or about the month of March, 1927, of circulars offering 'Radio Micro' valves 10 for sale, and the sale on or about the 2nd of March, 1927, of twelve valves in cartons marked as stated above to one George Edioord Stevenson." The Defendants by paragraph 3 of their Defence simply denied all the allegations contained in paragraphs 3 to 6 of the Statement of Claim. Thereupon the Plaintiffs applied that paragraph 3 of the Defence should be struck out 15 or that, in the alternative, "Particula,rs of such paragraph may he delivered as follows: (a) If it be contended that the words' Radio Mi'cro' and' Radio Micro Special' are in use by others than the Plaintiff Company, Particulars of such user stating the name of the person or firm, the ear liest date of such user. (b) If it be contended that the Plaintiffs' cartons are not distinctive, 20 Particulars of Cartons if any in use by other firms and relied on by the Defendants and of the features which are alleged to be common to the trade and by whom and when used." , Courtney Terrell, (instructed by Phiiip Conw'ay, Thomas & Co.), appeared for the Plaintiffs; R. W. Turnbull (instructed by Edward /1a i l), for the 25 Defendants. \ C ourtneu Terrell. It is the established practice that Particulars should be given where as here the Defendants by their denial imply that these words " Radio Micro" are used by others and In such a, case it is not sufficient merely to deny the allegations as by so doing the denial is a negabive pregnant with 30 an ussert.ion that others use the words. If they had stated that the words had been used by others, Particulars could not have been resisted, and they cannot avoid giving Particulars by effecting the same thing in a different way. The Plaintiffs aa it stands would never know of the use by others. There is no difference in this respect between a trade mark case and passing off, see 35 llowland v. Mitchell ( (1897) 13 R.P.C. 457 at pp. 459, 460); Aquascutum. Ld. v. Moore and Scantlebury «1903) 2 R.P.C. 640 at p. 642); Sch-uiep pes Ld. v, Gibbens ( (1904) 2,2 R.P.C. 113 at pp. 115" 116). When ift is alleged by a defendant that a trade mark is in common use he is required to give Particulars, Ke.l"ly on 'I'rade Marks, 5th edit. p. 471; A. Boake, Roberts &: Co. Ld. v. Wayland' 40 &: Co. «1908) 26 R.P.C. 249,). If the Defendants are going to raise pa.rticular user to establish that these words we use are not distinctive, then the Plaintiffs are entitled to particular evidence of the particular user on which Defendants are going to rely, We desire and are entitled to any particular cases of user or parbiculars of user. This Defence is a pregnant negative and in such a case 45 Particulars have nevertheless been ordered illacLulich v. illacLulich (L.R. (1920) • P.D. 439). The allegation in the Defence is " I deny that these words are distinctive" and that leaves the Plaintiffs in doubt whether the Defendants mean (( because such words are used by others"; if they so mean, the Plaintiffs are entitled to Particulars user. 50 or 363 Vol. XLIV.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. [No. 11. La Radiotechnique v. Weinbaum. R. W. T'urnoul], A passing off action is no different in respect of the question here in issue from ,any other action. J.J1acLulich/ e case is entirely different, the order for Particulars there was made under Rule a8 of the Lrivor ce It.ules, but this concerns Order xix rule 7 which is altogether different. There is, I 5 submit, no negative pregnant in this paragraph 0 of the Defence Weinberger v, Inglis (L,.R. (1918) 1 Oh. 133), Yearly Practice 1927 p. 281. What has been done here is-precisely what was done in Perlak. I'etroteuan. lJIaatschappij v. Dean (L.R. (1924) 1 K.B. Ill) and Particulars were not ordered. CLAUSON J. Do you agree Mr. Terrell that there are no s (...truncated)