1858. Nov. 22, 23. In an action for a penalty under the 5 & 6 Wm. 4, c. 83, s. 6, for putting on according to a an article made patent the words G Patent out the licence it is no defence "that the in a new manu facture." But it is MYERS and Others v. BAKER and Another. DECLARATION-For that whereas our Lady the Queen, before the committing of the several offences& c., and before the commencement of this suit, to wit on the 26th October, 1852, by her letters patent under the great seal &c., bearing date the day and year aforesaid, did give K & and grant unto the plaintiffs, their executors, &c., her MaElastic, with- jesty's special licence, full power, sole privilege and authoof the patentee, rity that the plaintiffs, their executors, &c., from time to time and at all times during the term of fourteen years, vention was not should and lawfully might make, use, exercise and vend an invention of certain improvements in pens and penholders within the United Kingdom, &c., in such manner as to the plaintiffs, their executors, &c., should in their discretion seem meet; and that the plaintiffs, their executors, &c., should and lawfully might have and enjoy the whole profit, ting" the mark benefit, commodity and advantage from time to time growof the patentee. ing, accruing and arising by reason of the said invention necessary to prove that such words did imitate, and were so put on by the defend ant" with a view of imita for and during the said term of fourteen years: To have, hold, exercise and enjoy the said licences, powers, &c. for and during and unto the full end and term of fourteen years from the said 26th October, 1852, &c. Subject nevertheless to a proviso that if the plaintiffs should not particularly describe and ascertain the nature of their invention, &c., by an instrument in writing under their hands and seals, and cause the same to be filed, &c. within six calendar months after the date of the letters patent; and also if the plaintiffs, their executors &c., should not pay, or cause to be paid, &c., the sum of 40%. and the stamp duty payable in respect of the certificate of such payment at or before the expiration of three years from the date of the letters patent, that then, and in either of the said cases, the said letters patent &c. should utterly cease and determine and become void. Averments: that the plaintiffs did, within six calendar months after the date of the letters patent, by a specification under their hands and seals, particularly describe the nature of the said invention, and cause the same to be filed; and that they did also, before the expiration of three years from the date of the letters patent, pay the stamp duty of 50%., being the stamp duty required to be paid by an Act passed &c. (16 Vict. c. 5), for the purpose of satisfying and complying with the condition of the letters patent requiring the payment of the said sum of 407. and a stamp duty before the expiration of three years from the date of the letters patent. That the letters patent were, before the committing of the offence by the defendants in this count mentioned, to wit on the day of the date of the letters patent, granted to and obtained by the plaintiffs for the sole making and vending of penholders, to be made and manufactured according to and by means of the said invention in the letters patent mentioned. That the plaintiffs, under and by virtue of the letters patent, and for the purpose of using and exercising a certain part of their invention which relates to improvements in penholders, did, after the making of the letters patent and before the committing of the grievances &c., and within the term of fourteen years in the letters patent mentioned, to wit on &c., and on divers other days &c., make and vend divers, to wit a million, penholders, made by the plaintiffs according to and in pursuance of the said letters patent and specification, and for the sole making of which the letters patent were granted to the plaintiffs; and upon each and every of which said penholders so made and vended by the plaintiffs, the plaintiffs, before the time 1858. MYERS v. BAKER. 1858. MYERS v. BAKER. EXCHEQUER REPORTS. of vending the same, caused to be, and at the time of such vending there was, stamped and marked the words "M. Myers and Sons Elastick Spring Patent Breveté." Yet the plaintiffs in fact say, that the defendants, well knowing the premises, afterwards, and after the making of a certain statute made and passed &c. (5 & 6 Wm. 4, c. 83), and also after the making of the said letters patent, and within the said term of fourteen years, and during the continuance of and before the expiration of the term by the letters patent granted, and before the commencement of this suit, to wit on &c., within that part of the United Kingdom called England, against the will and without any leave, licence or consent of the plaintiffs, or any assign or assigns of the plaintiffs, wrongfully, knowingly, injuriously, falsely, deceitfully and fraudulently, and against the form of the statute &c., upon a penholder, then wrongfully made by the defendants according to and by means of the said invention and against the said sole privilege so granted to the plaintiffs by the said letters patent, being a thing for the sole making and vending of which the plaintiffs had theretofore, to wit on &c., obtained the said letters patent, and then also being a thing for the sole making or selling of which the defendants had not obtained any letters patent whatsoever, wrote, printed, stamped and marked the words "K & G Patent Elastick K & G Patent Elastique;" and did then write, print, stamp and mark the same with a view of imitating or counterfeiting the stamp, mark and device of the plaintiffs as patentees as aforesaid: and did thereby then imitate and counterfeit the stamp, mark and device of the plaintiffs as patentees as aforesaid. Whereby and by force of the said statute the defendants have forfeited for their said offence the sum of 50l.: actio accrevit, &c. 66 The declaration contained three other similar counts: the second, for putting on penholders "H & B Patent Elastick," " H & B Patent Elastique;" the third and fourth relating to marks on pens. Pleas (inter alia).-First: Not guilty. Third: That the said supposed invention was not any manner of new manufacture. Replication. The plaintiffs take issue upon the first and other pleas. Demurrer to third plea, and joinder therein. Montague Smith (Norman with him) argued in support of the demurrer in last Hilary Term (Jan. 18) (a).—In an action for the penalty imposed by the 5 & 6 Wm. 4, c. 83, s. 7 (b), it is sufficient for the plaintiff to shew that a (a) Before Pollock, C. B., Martin, B., Watson, B., and Channell, B. (b) Enacts:-"That if any person shall write, paint, or print, or mould, cast, or carve, or engrave or stamp, upon anything made, used, or sold by him, for the sole making or selling of which he hath not, or shall not have obtained letters patent, the name, or any imitation of the name, of any other person who hath, or shall have obtained letters patent for the sole making and vending of such thing, without leave in writing of such patentee or his assigns; or if any person shall upon such thing, not having been purchased from the patentee or some person who purchased it from, or under such patentee, or not having had the licence or consent in writing of such patentee or his assigns, write, paint, print, mould, cast, carve, engrave, stamp, or otherwise mark the word "Patent," the words "Letters Patent," or the words "By the King's Patent," or any words of the like kind, meaning, or import, with a view of imitating or counterfeiting the stamp, mark, or other device of the patentee, or shall in any other manner imitate or counterfeit the stamp or mark or other device of the patentee, he shall for every such offence be liable to a penalty of 50l., to be recovered by action of debt, bill, plaint, process, or information in any of his Majesty's Courts of record at Westminster or in Ireland, or in the Court of Session in Scotland, one half to his Majesty, his heirs and successors, and the other to any person who shall sue for the same: Provided always, that nothing herein contained shall be construed to extend to subject any person to any penalty in respect of stamping or in any way 1858. MYERS v. BAKER. 1858. MYERS v. BAKER. patent has been granted. The defendant cannot dispute the validity of it. The object of that enactment was to prevent the placing on a thing made according to a patent, without the licence of the patentee, a mark or device to induce the public to believe that it is made under the patent. The first branch of the clause prohibits the putting on anything made, used or sold "the name or any imitation of the name" of the patentee of such thing; the second branch prohibits the putting on such thing the words "Patent" or "Letters Patent," or "By the King's Patent," with the view of counterfeiting the mark of the patentee; and the last branch relates to counterfeiting in any manner the mark or device of a patentee. The intention is to subject to a penalty any person who imitates the name or device of a patentee on anything for which there is an existing patent. [Martin, B.-How can the validity of a patent be tried in a penal action at the suit of a common informer? There is good reason for not allowing such a question to be raised in actions not by the patentee.] As regards the public, the mischief of counterfeiting the device on a patented article, is equally great whether the patent is good or bad. Until the grant is revoked the patent is not a nullity; but exists de facto, which is all that the statute requires for the purposes of this action. The only questions are, whether the plaintiff has an existing patent, and whether the defendant has counterfeited the device of the patentee upon a thing made according to the patent, in order to deceive the public. Hugh Hill (Macrory with him).-The plea is good. Patents not within the proviso of the 6th section of the marking the word "Patent" upon patent before obtained shall have expired." |