Odger's English Common Law

620 INFRINGEMENT OF PATENTS, COPYRIGHTS, &C.
there was an actual deception, though, of course, proving any individual
instance of actual deception will greatly strengthen the plaintiff's case." 1
" Of course, the fact, if proved, that persons of ordinary intelligence have
in truth been deceived, would be very material in assisting the Court in
coming to the conclusion that the mark or the picture complained of was
calculated to deceive ; but even the evidence that one person has actually
been deceived is not conclusive, as was held by Malins, V.-C, in Civil
Service Supply Association v. Dean, 2 ' where
was really too foolish : qui vult decipi, decipiatur." 3
he said in effect that the witness
In these "passing-off" actions, as they are called, the
plaintiff must, in the first place, establish that the "get-
up " which the defendant has now adopted for his goods is in
some essential particulars the "get-up " by which the plain-
tiff's goods are recognised in the market. 4
Then, as a rule,
there is only one substantial issue : Is what the defendant is
doing calculated to deceive the trade, or the public, or both ?
Evidence of those conversant with the particular trade is
admissible on this issue. 6 At the same time it must be
remembered that this is a question for the Court, and not
for the witness, to. decide. Hence such evidence is only
admissible to aid the judge in forming his own opinion on the
question. 6
If the defendant's goods, on the face of them
and having regard to surrounding circumstances, are calcu-
lated to deceive, evidence to prove the intention to deceive is
unnecessary and therefore inadmissible ; but if a mere com-
parison of the goods, having regard to surrounding circum-
stances, is not sufficient, then evidence of intention to deceive
is admissible, provided such an intention has been clearly
alleged in the pleadings. 5
This evidence may be supplied
by admissions, oral or in writing, or by inference from
conduct. 7
1 Per Parker, J., in Birmingham Small Arms Co. v. Webb (1906), 24 R. P. C. 27.
" It is not necessary that proof should be given of persons having been actually
deceived " : per Lord Westbury, L. C, in Edelsten v. Edelsten (1863), 1 Be G.
J. & S. at p. 200, cited with approval by Parwell, J., in Bourne v. Swan $ Edgar,
Ltd., [1903] 1 Ch. at p. 227.
2 (1879), 13 Ch. D. 512 ; and/see the judgment of Lord Watson in Singer Manufac-
turing Co. v. Loog (1882), 8 App. Cas. at pp. 39, 40.
3 Per Parwell, J., in Bourne v. Swan # Edgar, Ltd., [1903] I Ch. at p. 223.
< Bunt. Roipe, Teage $ Co. v. Ehrmann, [1910] 2 Ch. 198,
6 Claudius Ash, Sons $• Co., Ltd. v. Invicta Manufacturing Co., Ltd. (1912), 29
R. P. C. 465.
e Birmingham Sfnall Arms Co. v. Webb (1906), 24 R. P. C. 27 ; Hennessy v.
Keating (1907), 25 R. P. C. 125.
1 Saxlehner v. Apollinarii Co., [1897] 1 Ch. 893.