262
REPORTS OF PATENT, DESIGN,
[May 22, 1895.
The Incandescent Gas Light Company, Ld. v, Canielo.
IN THE HIGH COURT OF JUSTICE.-QUEEN'S BENCH DIVISION.
Before MR. JUSTICE WILLS.-April 30th and May 1st, 1895.
THE INCANDESCENT GAS LIGHT COMPANY, LD. u. CANTELO.
Patent-s-Action. for infrinqement.v-Sale ioitli restrictive condition as to user.
notice.-Actz'on disrnissed.-Gosts.
5
The Plaintiffs' course of business was to sell only through agents, whose
dealings were restricted to their respective localities. The Defendant e1nployed
a friend, who resided within the district of the Plaintiffs' I..ondon agent, to
purchase from that agent certain goods. After thesewere paid for by his friend,
and, at request of the latter, consigned direct to the Defendant in the Isle of 10
Wight, he first discovered, on unpacking, that each box had a notice on it
containinq certain restrictions as to the use of the goods. The Defendant covered
up the notices with his own labels, and resold the goods to his customers. His
friend, when buying, never saw the boxes or the notices.
Held, that the' Defendant had not infringed, and the action ioas dismissed 15
with costs.
On the 12th of December 1885 a patent (No. 15,286 of 1885) was granted
to OaTIl Auer von Welsbaoh for the "Manufacture of an illuminant appliance
" for .gas and other burners"; on the 13th of March 1886 a patent (No.
3592 of 1886) was granted to Oliver 111~11fay for " Improvements in illuminant 2()
"appliances for burners"; and on the 3rd of January 1893 a patent
(No. 124 of 1893) was granted to Oliver Im1"ay for" An improvement in
"incandescent gas burners." These three patents were assigned to the Plaintiff
Company.
.
On the 15th of February 1895, the Plaintiffs commenced an action against 25the Defendant, F. Cantelo, for infringement of" the said patents, and claimed
damages, an injunction, an account of profits, and costs as between solicitor and
client.
.
.
By their Particulars of Breaches "the Plaintiffs alleged that on or before 11th
of February 1895, the Defendant" purchased. a mantle or mantles made by the 3()
" Plaintiffs in accordance with" the said Specifications on the following express
terms and conditions :-" The licence touse this mantle is strictly limited to the
"person or persons purchasing the same, or on whose behalf the same is
" purchased from the Company or their agents, and it is purchased and sold at
"the reduced price of Is. 3d. on the express condition that it is only to be 35·
"used for the purpose of renewal and not in connection with burners or
" apparatus not sold or supplied by the Company." They also alleged that the
Defendant sold the mantles to certain persons, together with and for the purpose
of use with a gas burner and apparatus not sold orjmpplied by the Plaintiffs.
The alleged infringement was denied by the Defendant.
,()
This was the trial of the action;
Sir Richard Webster, Q.C., MO'ltlton, Q.C., and T. Terrell (instructed' by
Faithfull and Owen) appeared for the Plaintiffs; Bousfield, Q.C., and Holloway
(instructed by Suiepstone and Stone) for the Defendant.
Sir Richard Webster, 'Q.C., opene-d the Plaintiffs" case.-The point in this 4:)
case is whether the Defendant is to be allowed to sell a patented article contrary
to the restrictions and terms which were imposed at the time of the sale to
-Sufficiel~cy of'
[SecDnd Edition.]
Vol. XII., No. 13.].
AND TRADE MARK OASES.
263
The Incandescent Gas Light Company, Ld. v. Oantelo,
him; that is, whether he had sufficient notice in order to make it unlawful for
him to sell. The mantles become incandescent on being heated by gas burned
in a Bunsen burner. The duration of the mantle, say about 1000 hours, depends
on the construction of the burner and its appendages ; if used on burners not
5 suited for the purpose the mantle would only last, say, 80 or 90 hours. Therefore the Plaintiffs sell the mantles at a reduced price with suitable burners (not
protected by a patent), and impose a restriction on their use. There is a notice
on the box which encloses each mantle in the terms set out in the Particulars
of Breaches. The Defendant covered this notice up with his own labels, and
10 resold to other parties. The Plaintiffs can break up their patent rights by
assignment into as many parts or districts as they like, under Section 36 of the
Act of 1883 ; but the purchaser is only liable if he had notice of the restriction,
and in this case it is not an unreasonable one; Heap v, Hartley, 5 R.P.C. 603
(at p. 610) ; Betts v, Wilmott, 6 Ch. App, 239; Soc. Anon. des Manufactures
15 de Glaces v, Tilghman's Patent Sand Blast Oompany, 25 Ch, D. 1.
Messrs. J. F. Baker, O. B. Field, Julius Moeller, and W. MacKean gave
evidence for the Plaintiffs.
The effect of the evidence was that the Defendant had resold the mantles as
described, and that they were made in accordance with the patents in question.
20 Formerly, the Defendant (before 1893) had purchased direct from the Plaintiffs,
as their agent. The judgment in a previous case, in which the validity of the
\
patents came in issue, was put in evidence formally.
The Defendant's Counsel admitted that the mantles were purchased from the
Plaintiffs' agents for the London district by a Mr. Coe, and consigned to the
25 Defendant, but they denied that the Defendant knew of the notice until he
unpacked the boxes.
Bousfield, Q.C., submitted that the Plaintiffs had failed to make out their
case.
WILLS, J.-There is no evidence that the Defendant bought with any
30 knowledge of the condition.
MOUlton, Q.C., submitted that the onus of proof lay on the Defendant to
show leave and licence to sell the patented article. The evidence was that the
notices were on the boxes in question. [WILLS, J.-Only since last October.]
The Defendant must show how he acquired them.
35
Bousfield, Q.C., for the Defendant, then called Mr. Coe, who told how he called
on Messrs. HUlett, the Plaintiffs' London agents, at the Defendant's request,
and purchased the mantles. The London agents at first hesitated, but finally
sold them to him as he lived at Forest Gate, within their district, although he
declined to give the address or name of his principal. Subsequently, after
40 payment (the money meanwhile having been received by the witness from the
Defendant), the mantles were forwarded at witness's request direct to the
Defendant in the Isle of Wight. The witness never saw the mantles or notice.
At the learned Judge's suggestion the Defendant was then called and
explained the whole transaction, and said that he did not see the notice till he .
45 unpacked the box.
.
WILLS, J.-My present impression is that I ought to give judgment for the
Defendant without costs. lam not satisfied about the purchase. I do not think
that I could find that he had notice of the conditions at the time of purchase, or
that he sufficiently knew that Messrs. Hulett had no right to sell outside their
50 district in order to make themselves reponsible, to deprive him of the licence
implied by the selling.
Bousfield, Q.C., submitted that the Defendant was acting bona fide and in a
straightforward manner throughout. He was even entitled to use artifice to
obtain the mantles, as the Plaintiffs, by their restrictive conditions, were trying'
55 to obtain a monopoly, which the law did not give them, of the burners as well
as the mantles. He was entitledto go to thecheapest market, and did so by his
agent, Mr. Coe.
The Defendant was recalled and proved that he had, in 1893, Bold mantles
16708-20<>-4:/98 Wt 272 D & B-2 (B)
Z
264
REPORTS OF PATENT,
DESIGN,
t'May 29, 1895.
The Incandescent Gas Light Oompany, Ld. v. Cantelo.
for the Plaintiffs without any restriction of any kind, and that, until he opened
the box of goods, he never knew that the Plaintiffs contemplated any such
restrictive mode of dealing.
Terrell, in reply.-Upon the common law right to sell what one pleases,
the law imposes a restriction in favour of the Patentee (his assigns and 5
licensees), who has the sole right to make or sell the patented article. Hence
the Defendant must prove either that the article sold is not an infringe..
ment, or that he has leave and licence to sell it.
In this case Mr. Coe
is in the shoes of the Defendant just as if the latter purchased the mantles
himself. Mr. Coe knew that Messrs. Hulett had no authority to sell under the 10
circumstances. The Defendant read the notice immediately he opened the
box. He must be taken to have accepted the goods upon the condition in the
notice, as he did not return them and repudiate the contract; Parker v. S. E.
Railway, L.R. 2 C.P.D. 416 ; Lewis v, M'Kee, 4 Ex. 58 (W1:lles, J., at p. 61).
A licence can only be granted by mutual agreement. There is here either no 15
agreement, and therefore no licence, or an agreement comprising the notice, for
the Plaintiffs never intended to give a licence on any other terms. At all
events, whatever may be the decision as to actual infringement, the Plaintiffs
are now entitled to an injunction.
WILLS, J.-My judgment-in this case must be for the Defendant. It is quite 20
true that he bought by' his agent. I treat the case as if he had gone to the shop
himself, and then and there paid the money over the counter. Messrs. Hulett
have a perfect right to sell to him over the counter; they have a right to sell in
London, and their right to sell is not restricted to people who live in London;
so long as the sale takes place within their district, the sale is a good one. Now, 25
the sale took place in London. 'I'he Defendant, by his agent, goes to their shop,
pays them themoney, and bUJ"A the things, and they then and there are appropriated to him, and the sale is complete. He pays the money, and the fact that
the goods are despatched to the place where he wishes them to be despatched
cannot, as it seems to me, make any difference so long as the sale itself is in 30·
London. What difference can it make whether they are sent off to Forest Hill,
and by a man at Forest Hill despatched to Ventnor, or whether he says,
" Instead of going through that formality, send them straight to Ventnor."
Messrs. Hulett had, as it seems to me, a perfect right to sell over the counter,
which is in point of fact what they did. The right to sell in London is not 35
limited to the right to sell to people who happen to live in London. The
contract was complete when it was made at the shop. Therefore it seems to me
that there is no defect in the sale. If so, the sale of a patented article carries
with it the right to useit in any way that the purchaser chooses to use it, unless
he knows of restrictions. Of course, if he knows of restrictions, and they are 40
brought to his mind at the time of the sale, he is bound by them. He is bound
by them on this principle: the Patentee has the sole right of using and selling
the articles, and he may prevent anybody from dealing with them at .all
inasmuch as he has the right to prevent people from using them, or dealing in
them at all, he has the right to do the lesser thing, that is to say, to impose his 4:1>
own conditions. It does not matter how unreasonable or how absurd the
conditions are. It does not matter what they are if he says at the time when
the purchaser proposes to buy, or the person to take a licence, "Mind, I only
" give you this licence on this condition," and the purchaser is free to take it or
leave it as he likes. If he takes it, he must be bound by the condition. It 50
seems to be common sense, and not to depend upon any patent law, or any'
other particular law.
But then, on this sale, no condition is brought to Oantelo's mind; but it is
said (andmore, I am satisfied} that he did not know of any restriction upon the
use of this article until he read the label which was upon the boxes when they 55
came to him. It is said upon that that he was bound by this condition.
I beg leave to differ. He had already bought it, and he had bought it subject
to no condition; and the bringing of a condition to his mind after the sale was
Vol. XII., No. 13.]
AND. TRADE MARK C~L\.SES.
265
The Incandescent Gas Light Oompany, Ld. v, Cantelo.
5
10
15
20
25
30
35
40
45
50
55
co~npleted will not do, and it ought not to do. It would be a most oppressive
thing that any person who bought a box of this kind, and who happened to find
out before he used the thing that it was covered with a label of this kind-it
would be a most oppressive thing if he were bound to observe the conditions
which are upon it. Mr. Terrell says he might have reprobated the sale. Quite
true. If he found there was an attempt to impose a condition the nonobservance of which might bring litigation upon him, he would have a right
to say: "I would rather not have it; you are trying to insist upon something
h by which I do not think I am bound, but at the same time I would rather not
"have it under the circumstances; I knew nothing of this, and therefore the
"sale is off." But he is not bound to do that, and the rights under the
existing sale, whatever they are, are not interfered with by reason of his not
taking that course. They remain as they were upon the sale.
Then it is said that this is analogous to the cases in which conditions on the
backs of railway tickets have imposed liabilities upon persons who have taken
them. I do not agree at all. In the case which Mr. Terrell has called my
attention to, Parker v. South-Eastern Railway,* what was said was that the
Judge was wrong because he told the jury that the case was decided by the
consideration that the Plaintiff was under no obligation to read the conditions.
It is not decided by that. It is decided by a much more sensible test than that,
that is, whether the man at the time that the contract was made really knew
that there were conditions of some kind, and whether he shut his eyes to what
they were or chose to accept the contract with the conditions whatever they
might be. It was held in the House of Lords, and probably rather earlier, in
the Scotch case of Henderson v, Stevenson,t that a passenger by steamer who
took a ticket which had no conditions on the face of it, but which was covered
with small print at the back, imposing all sorts of liabilities and all sorts
of restrictions upon the passenger, was not bound by them if he <lid not knuw
of them, and that is obvious common sense. As applicable to passengers by
steamers it has a much wider practical application than it has as applied to
passengers by a railway, because most people do riot take passages by steamers
at all, or by steamers which have conditions of this kind upon them; they do
not go voyages often enough. The number of people who are aware that
conditions of some sort or other are imposed upon these tickets is comparatively
small, whereas, as far as railway companies are concerned and their conditions
on their tickets, I very often hear in the witness-box grown people say that
they did not know that there were any conditions. I never believe them myself if
they are educated people who can read and write. I do not believe at the
present day that there is a person who can read and write well-a grown-up
person-who does not know perfectly well that pretty nearly every railway
ticket that is issued is issued subject to conditions, and that it has a reference
to them 011 the back. The jury would be perfectly at liberty to take that
circumstance into consideration, and applying the test which is laid down in
Parker v. South-Eastern Railway, to say whether the company have done all
that is reasonably necessary to bring the conditions home to the man's mind.
But to say that it is a reasonable way to bring a condition home to a man's
mind to sell him things without restrictions and without saying a word about
it in the first instance, and then sending things a week after the contract is
completed with notices of this kind upon them-to say that that is a reasonable
way of bringing the condition to his mind is, to my apprehension, preposterous.
I do not think there was anything which called upon the Defendant to observe
the condition, and therefore my judgment must be for the Defendant.
Now, upon the question of costs I say this. I certainly thought that the
restriction upon dealing with goods of this kind had existed in practice from
the outset-during the five years that the history of this matter covered. If
that fact had remained I should have been strongly of opinion that sending to
• L.R. 2 C.P.D. 416.
16708-2
t
L.R. 2 H.L. Se. 470.
266
REPORTS OF PATENT, DESIGN,
[May 29, 1895.
The Incandesceni Gas LightOompa1ty, Ld. v. Cantelo.
London and getting a friend to buy, and going to Hulett's when the thing was
impossible in Ventnor, looked very like a trick to get round a known restriction.
If that had been so I should have been as nearly as possible giving judgment
for the Plaintiffs; but it turns out that I was under a mistake on that point of
fact, and that the whole of the attempt to impose these restrictions-a reasonable 5
attempt on the part of the Plaintiffs, and as far as they can carry it out, of course,
they are at perfect liberty to sell their burners as well as their incandescent
apparatus if they can by these means-but it seems that the whole of the
attempt to carry out this system bas arisen since October last, and I do not see
how the Defendant, under those circumstances, was likely to have. any 10
knowledge of it. Therefore, that difficulty in his way, which I certainly not
only felt, but should have acted upon, if the facts had remained unaltered, is
removed, and I must give judgment for the Defendant with costs.
IN THE HIGH OOURT OF J'USTICE.-QUEEN'S BENCH Dr'''"ISION.
Before LORD RUSSELL OF KILLOWEN, C.J., (without a Jury) at
the 15
MANCHESTER WINTER ASSIZES.
February 27th and March 2nd at MANCHESTER.
March 26th and 28th at LIVERPOOL.
MONFORTS
v.
MA.RSDEN.
Patent.-Infringement.-Sale of patented at.. ticle.-Right oj user.-Implied 20
warranty.
A Patentee sold a machine made in pursuance of his patent to X.; the
machine was held by the Oourt of Appeal to be an infringement of a prior
patent belonging to a third person. In an action to recover the price of the
machine, X. pleaded that on the sale of the machine there was an implied 25
warranty that the patent was valid, and that he uould be able to use the
machine. He counterclaimed for the sum which he had to pay jor a license
to use the machine, and for damages.
Held, that in: the sale of a patented article there is no such implied warranty,
and that the Plaintiff was entitled to recover the price of the machine.
30_
On the 30th of September 1885, a patent (No. 11,640 of 1885) was granted to
Charles Edward Moser for "Improvements in gig mills employed in the
"finishing of woven fabrics." The invention was stated to have .been
communicated to him from abroad by 1Jf. Grosselin, of Sedan, France.
,
On the 20th of June 1891, a patent (No. 10,511 of 1891) was granted to ~~5
Auguste .Monforts and Josef Ewerhard for "Improvements in napping or
" nap-raising machines for textile fabrics."