as the plaintiffs could prove had actually been diverted from their coaches to those of the defendants, but that the jury would be justified in making such inferences as to the loss of passengers and injury sustained by the plaintiffs as they might think were warranted by the whole evidence in the case. § 562. Secret Process. Breach of Faith. There are also cases involving a breach of trust, in disclosing a secret process, a knowledge of which has been gained through confidential relations of the parties. The earliest of these cases, Newbury v. James, shows the difficulties that have been felt in dealing with questions of this sort. The plaintiff there claimed to be entitled, under the provisions of certain agreements entered into by the ancestors of himself and the defendants, respectively, to the exclusive right of selling certain powders and pills, well known as "James' Powders," and "Analeptic Pills," as agent to the defendants, and prayed a decree for specific performance of agreements. The pills and powders were made up by the defendants from an alleged secret recipe; and it was sought to restrain them from communicating this recipe to any other person without the plaintiff's permission. The court does not seem to have looked upon this secret recipe in the light of property, the subject of certain agreements as to the manner of enjoyment, and as clearly liable to injury from divulgation. Had this been done, there probably would not have been serious difficulty in framing an injunction in restraint of such a contemplated injury, even though the court might not have been able to decree the specific performance of the agreement. On this head, the Lord Chancellor said that either it was a secret, or not. If a secret, what means did the court possess for enforcing its own orders? If not a secret, there was no ground for interfering. If the art and method of preparing the Analeptic Pills, for which no patent had been procured, were a secret, what signified an injunction, the court possessing no means of determining on any occasion whether it had or had 1 2 Mer. 416. not been violated? The only way in which a specific performance could be effected would be by a perpetual injunction; but this would be of no avail unless a disclosure were made to enable the court to ascertain whether it was or was not infringed; and in complaining of a breach of an injunction, it would be necessary first to show that the injunction had been violated. The injunction was therefore dissolved. — In Williams v. Williams, it was said that the court would not struggle to protect secrets in medicine of that sort; but that it was different in the case of a patent, because there the patentee was a purchaser from the public, and bound to communicate his secret at the expiration of the patent. This point has been settled with tolerable distinctness in Dietrichsen v. Cabburn.2 Lord Cottenham virtually decided that, where there is such an infirmity in an agreement that it cannot be performed in all its parts, the court will not by injunction compel a defendant to perform the one part, it being at the same time unable to compel the plaintiff to perform reciprocally the other, namely, that which was positive in the agreement, if its aid should be appealed to by the defendant in order to procure for him the benefit of the contract or agreement. -We find, however, that in Youatt v. Winyard,3 the defendant, who had been employed as the plaintiff's assistant under an agreement by which he was to have a salary, and be instructed in the general knowledge of the business, but not in the secret of manufacturing the medicines sold, was restrained from divulging those recipes to which he had surreptitiously gained access; and from making up and selling the medicines compounded from the recipes, with certain printed instructions, almost literally copied from the plaintiff's. In this case, the decree proceeded on the ground of trust. -So, also, in Green v. Folgham, where the defendant was held to be the trustee of the secret of compounding "The Golden Ointment," under the trusts of a certain settlement, and was ordered 13 Mer. 157. 3 1 J. & W. 394. 2 2 Ph. 52. to account for certain mesne-profits made by him in the sale of the ointment; the court even going so far as to direct the valuation of the secret to be made for the purpose of administering the trust property. — In Tipping v. Clarke, a case arising out of a dispute between two merchants, in the course of which the defendant, in a letter to the plaintiff, stated that he had acquired a knowledge of his books and accounts, and that he intended to make a public exhibition of them, we have a recognition of the same doctrines. In Morison v. Moat, it appeared that the plaintiff and the defendant had for some years carried on in partnership the business of making and selling "Morison's Universal Medicine." On the dissolution of the partnership, the defendant, who had retired, set up for himself, and made and sold the original medicine under its former name as prepared by him. It appears that the plaintiff, in praying for an injunction, did not omit to put forward the ground of fraud or misuse of his labels and trade-marks by the defendant; but he relied on this only in aid of the principal head, that of breach of faith and contract; and it is on this ground that the decision rests. In France, the law recognizes the secrets of manufacturers as property, and article 418 of the Penal Code severely punishes clerks or workmen who divulge the secrets of manufacture of their employers. § 563. On the other hand, where no charge of breach of trust is involved, courts will not protect the proprietors of secret medicines or other compounds not patented; and any one possessing himself of another's secret by fair means, may make and vend the same, provided he sell it as his own manufacture, and not that of a party complaining. Thus, in Davis v. Kendall, where the plaintiff had no patent, and therefore no exclusive property in a medical compound invented and sold by him, and known as the "Pain Killer," the court said that all were entitled to make and vend the compound. The same 1 2 Hare, 383. 2 9 Hare, 241. 32 R. I. 566. See Annales de la Prop., tome xiv. p. 229. 66 doctrine was recognized in Comstock v. White. The defendants in that case, after dissolving their connection with the plaintiffs as partners, commenced using the name or designation of Dr. Morse's Indian Root Pills," to which neither party had any exclusive right without a patent from the government. The court held that while an injunction should not be granted against an innocent defendant, yet where it appeared that the defendants, in having connected themselves with the plaintiff in selling the medicine by a particular name or designation, and having induced the plaintiffs to expend large sums of money in advertising, &c., the medicine manufactured, and then suddenly and without notice, in an unjustifiable manner and apparently from improper motives, severed their connection with the plaintiff and set up the same business for themselves, an injunction should be granted. § 564. As an instance of reparation for a wrong done, we will take a case tried in the Court of Paris, in 1861,- Galy v. Mauchien & Co.2 Galy was the inventor of certain pharmaceutical products, which he sold under the denominations of Sirop iodhydrique, iodhydrate de fer, of bonbons iodhydriques, and of pâte pectorale de réglisse iodhydrique. He made the defendants the exclusive agents for the sale of his said products, upon the condition that they should use upon flasks, boxes, and prospectuses the above-mentioned names, and also the name of Galy, as inventor. They omitted his name, wherefore he sued. The court took into consideration the publicity which the defendants had given to the spurious labels, and said that, as the defendants had committed the wrong by means of announcements made by the Société hygiophile, in the journals le Siècle, la Presse, les Débats, la Patrie, le Constitutionnel, le Pays, and in the journal called La France médicale et pharmaceutique, it was just that the order of the court should receive the same publicity at the expense of the defendants. In addition to costs, &c., the publication was ordered to be made showing the judgment for the plaintiff. 118 How. Pr. R. 421. 2 Annales de la Prop., tome viii. p. 374. CHAPTER XIII. PRACTICE IN PATENT OFFICE. Preliminaries. - - Selection of Counsel. Necessity for Forms. System of Examination. Special Pleading. - Drawing and filing of Application.— Amendments. Confidence the Design of Oath. — Primâ Facie Right to Mark. Indefiniteness. - Description of Colors. - Breadth of Claim. — Degree of Specificness. Examples of False Models. - Rejection because of False Suggestion. - Litigation not encouraged. — Surrender and Reissue. - Money paid as Fees, when returnable. When § 565. Preliminaries to Application for Registration. the proprietor of the right to exclusive use of a trade-mark wishes to avail himself of the advantages of registration, he should reflect how his object can best be accomplished. He prepares his case with carefulness and thought. This he may do himself, and generally with an assurance of safety, provided he possess that rare quality known as "common sense." The forms to be found in the Appendix to this treatise serve as a guide, the necessary modifications being made to suit the peculiarities of each case. But he may not always feel perfectly safe in drawing up a few simple statements of fact, for if he be a person really possessed of the rare quality mentioned, in the majority of instances he will mistrust his own powers, remembering that experience is the mother of science. No man is wise at all times. The very simplicity of the procedure is puzzling to him. Many men deem it to be a simple matter to string a few sentences together in the form of a will and testament. We know that the memory of the man who drew his own will is always venerated as the lawyer's best friend. Words are sometimes used in a wrong or loose sense even by |