Scottish Court of Session Decisions

The British Thomson-Houston Company, Limited, London, complainers, presented a note of suspension and interdict against Charlesworth, Peebles, & Company, mechanical and electrical engineers and merchants, Glasgow, respondents, to have the defenders interdicted from infringing letters patent (No. 10,918 of 1913) granted in favour of the pursuers for improvements in incandescent electric lamps and from using, putting in practice, disposing, selling or offering for sale, or importing into the United Kingdom of Great Britain and Ireland, or exporting therefrom during the currency of the said letters-patent and without the consent, licence, or agreement of the complainers … incandescent electric lamps which embody the improvements described in the complete specification filed relative to the said patent.

The complainers had already obtained interdict against the foreign makers infringing their patent in this country.

In the present action the issue between the parties came ultimately to be whether the decree of interdict to be granted should include interdict against exportation. The complainers made no special averments in support of such interdict, but the question was raised in the following plea-in-law for the respondents:—“(5) Exporting from the United Kingdom not in itself constituting infringement, interdict cannot competently be granted in the terms of the prayer.”

On 1st June 1922 the Lord Ordinary ( Blackburn) granted interdict in terms of the prayer in the action upon the patent of 1913.

Opinion.—“There are two actions here against the defenders Charlesworth, Peebles & Company, one of suspension and interdict, which originated in the Bill Chamber, and the other an action of interdict, delivery, and payment. In the latter action the defenders have put in a minute withdrawing their defences, and in particular withdrawing their four pleas-in-law, which is equivalent to an admission that decree both of interdict and delivery must be pronounced in favour of the pursuers. In the action of suspension and interdict there is a conclusion in the note against the defenders exporting the lamps to which both actions apply from this country, and in the minute put in by the defenders in that action they have only withdrawn their first four pleas-in-law, leaving a fifth plea to the effect that exporting from the United Kingdom is not in itself an infringement of the patent. I am asked to refuse the interdict which the pursuers now seek against exporting the lamps on the ground that this plea leaves an important question to be discussed on which I ought to hear a full debate. It seems to me that once the defenders have admitted, as I think their minute does admit, that the decree for delivery must go out against them under the action of interdict, delivery, and payment, it is idle for them to ask me to postpone granting interdict in the other action against their exporting the lamps from this country. To do so would only leave them an opportunity of defeating the other decree, and accordingly I shall pronounce decree of interdict in terms of the note in the suspension and interdict as well as interdict and delivery in the other action. The question of damage is reserved, and I shall reserve the question of expenses until the damages are disposed of.”

The respondents reclaimed, and argued—Export of a patented article did not necessarily imply infringement. The complainers were already protected against export for commercial purposes by the interdict against “using, disposing, selling, or offering for sale.” Sending patented goods out of the United Kingdom was not per se an infringement, for it was taking the goods beyond the ambit of the patent. Transport of such goods was not of itself an infringement, though if done for sale or use it might become an infringement— Badische Anilin and Soda Fabrik v. Johnson & Company, 1897, 14 R.P.C. 919, [1898] AC 200; Frost, Patent Law (4th ed.), pp. 385, 387, 388. There was a distinction between cases where the person handling the patented goods obtained an advantage and cases where no such advantage emerged— Neilson v. Betts, 1870, L.R., 5 H.L.C. 1, at p. 10; Nobel's Explosives Company v. Jones, Scott, & Company, 1881, 17 Ch D 721, per James, L. J., at pp. 741, 742; Badische Anilin and Soda Fabrik v. Johnson & Company ( cit. sup.), per Lord Herschell. It was not an infringement to be in innocent possession of a patented article— Pessers, Moody, Wraith, & Gurr, Limited v. Newell & Company, 1914, 31 R.P.C. 510; British United Shoe Machinery Company, Limited v. Simon Collier Limited, 1910, 27 R.P.C. 567. The property of articles made in violation of a patent was with the infringer if he would otherwise have the property in them, and the Court only interfered to prevent them being used in derogation of the patentee's rights— Vavasseur v. Krupp, 1878, 9 Ch. D. 351, per Cotton, L. J., at p. 360.

Argued for the complainers (respondents)—The complainers' right to interdict against importing generally was admitted, but exporting was correlative with importing. Mere export might constitute infringement— British Motor Syndicate, Limited v. Taylor & Sons, Limited, 1900, 17 R.P.C. 189, 723, [1900] 1 Ch 577, [1901] 1 Ch 122. Use for experiment and instruction might constitute infringement— United Telephone Company v. Sharples, 1885, 2 R.P.C. 28, 29 Ch. D. 164. Even the return of infringing goods to the source from which they came might be an infringement— Upmann v. Elkan, 1871, L.R., 7 Ch. 130, per Lord Hatherley; Kerly on Trade Marks (4th ed.), p. 499, was also referred to. [The Lord President referred to Betts v. Willmott, 1870, 18 W.R. 946.]

At advising—