IN THE MATTER OF PANICALI AND BRENNI'S PATENT

509 REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. Vol. XLIV.] 21sT DEOEMBER, 1927. IN THE HIGH OOURT OF Before MR. JUSTIOE-OHANCERY [No. 15. DIVISION. JUSTICE TO:MLIN. June 14th and July 19th, 1927. IN THE MATTER OF PANICALI AND BRENNI'S PATENT. :> Patent-Application by Originating Summons for an extension of the term of the Patent-s-Seroice of advertisement-Irregularity excused-Loss due to hostilities-An extension of three years granted-Patents and Designs Acts, 1907 and 1919, Section 18, Subsection (6)-Rules of the Supreme Court, Order LIII A, Rule 4 (d) and (h). 10 Letters Patent No. 21,370 of 1911, dated the 28th of September, 1911, were granted to Umiliano Panicali and Giovan,ni Brenni in respect of an invention of "Improved Manufacture of Ornamental Tile Slab or the like." On the 21st of March, 1927, Giovanni Brenni and The Dursue Tile Go. Ld. applied by Originating Summons for an extension of the term of the Patent. 15 An affidavit in support of the Application was made by Albert Leigh (General Manager of the Applicant Oompany) who deposed (inter alia) that the Grantee, Panicali, was deceased; that the Appl icant Company had been registered in March, 1912, for the purpose of acquiring and carrying on the business of the Grantees as tile makers, and in particular of aoquiring the Patent and working 20 the patented invention, and that an agreement had been made. whereby the Patent had been sold to the Applicant Oompany, but that no assignment had helen made; that the business of the Applicant Company had gradually increased, and early in 1914 had employed nine tilemakers; that, from 1914 to 192,3 the business had gradually decreased; that eight of the nine tilemakers 25 had been called up tor military service, and that there had been a lack of demand for the patented article due to the gene:ral restrictions on building during and immediately after the War; that it had not been until 1923 that goods manufactured under the Patent had been sold on any large scale; that low sales in the y~'ars 1917 to 19~ were entirely attributable to the War as 30 during the years 1917 to 1919 most contractors had been under the impression that the Applicant Company was out of existence, and the Company had not at that time been in a financial position to advertise or to obtain contracts; that since 1923 the sales had greatly increased, but that it had been necessary to obtain fresh capital by means of loans and to expend substantial sums in 35 advertising and overcoming foreign compe.tition, and that for such reasons the net profits had been negligible; and that it. was submitted that at least seven years of the life 0'£ the Patent had been lost. 2 Z 510 -No. 15.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. [Vol. XLIV. In the Matter of })anicali and Brenni' s Patent. The Summons came before the Court on the 14th of June, 1927, on the application to fix a day. The Hon. H. l?letcher Moulton (instructed by John Carnegie, Agent for Hatuieli, Pritchard & Co., of Birmingham) appeared for the Applicanta ; G. Stafford Crossman (instructed by The Solicitor to the Board of Trade) 5 appeared for the Comptroller-General. Fletcher Moultor»: In this case by some error, although the notice has been sent to the Com.ptroller, it was not sent at the same date that it was put into the Gazette. The advertisements were inserted in the newspapers, and when they appeared copies were sent to the Comptroller. Order LIII A, Rule 4 (d) 10 says that a copy of the adverbisement must he served on the Solicitor to the Board of Trade at the same t.ime as the advertisement is sent to the London Gazette. The Applicants seem to have made a slight error and instead of sending the copy at the same time that it was sent to the London Gazette, they sent to the Oomptroller a copy of the advertisement as it appeared in the 15 London Gazette. It would only he a question of days, but it was technically a breach of the Rule, and I ask your Lordship to excuse my clients. Grossman: I am not instructed as to this breach of the Rules. TOMLIN J.-The result of it is, I suppose, that the advertisement in the issues 20 of the Official Journal did not appear until some much later date ~ Crossman: It may be so. TOMLIN J.-Is there any opposition in this case ~ Crossman: At present there is no opposition. I have had no notice of any opposition. Fletcher Moulton: There is not any opposition. 25 TOMLIN J . -If the advertisement stated to-day as the day for fixing the date of the 'hearing, I will dispense with any necessity for further advertisement.. I will fix the day for this, some day of which I will give you notice. The Summons carne on for hearing on the 19th of July, 192;7. Fletcher Moulton, for the Applicants, asked tor an extension of five years. 30 Crossman; for the ComptrolleT,-I cannot see more than three years here. Fletcher M oulton,-The losses are as much in the years following the War as in the years during the WaT. The drop in the sales starts at the end of 1916. During the next seven yea,rs the total did not amount to more than the equivalent of two years. [TOMLIN, J.-You are really asking me to take into 35 account bad trade conditions since the War as being by reason of hostilities. ] No, the trade conditions of this firm were brought about by hostilities. [TOMLIN, J.-I cannot quite see what that is. Does that mean that a man in a small way' of business has a better chance of obtaining an extension than a man in a big way of business ~J Financial ability to resume manuiaeture has 40 been held to he a~ element for consideration. [TOMLIN J.-It would depend upon the circumstances, It may he an element no doubt, Where is the evidence that the Applicants were in a better financial position before than after the War "] , The evidence is that contractors were under the impression tha,t the Applicant Oompany was non-existent, and that the members of the 45 Company were not in a financial position to advertise or obtain contracts. If t.h is had heen a company with plenty of capital,' there would have been 511 VoL XLIV.] . [No. 15. REPORTS OF PATENT, DESIGN, AND TRADE :MARK CASES. In the Matter of Panicaii and Brenni's Patent. plenty of ways of doing it. In this case it was impossible. I submit that in any case an extension of four yeaTs would not be too much. TOl\1:LIN, J.-1 will grant an extension of three years. C'1·(ls.~m,an,-That is on condition that the Patent is assigned to the Oompany 5 and that the assignment is registered 7 TOMLIN, J.-Yes. IN THE HIGH OOURT OF JUSTICE-OHANCE,RY DIVISION. Before MR. JUSTICE ROMER. July 7th, 8th, 11th, 12th, 18th, 14th, 15th, 18th and 19th, and October 21st, 1927 10 BRITISH UNITED SHOE MACHINERY 00., LD u, LAMBERT HOWARTH & SONS, LD., and THE GIMSON SHOE MACHINEltY 00., LD. Patent.-Action for infringement.-Subject-matter.-Ut'ility.-Patent held valid and infringed.-Judgment for Plaintiffs.-Certificate of validity granted. A Patent was granted (...truncated)