But it is essential that there be a contract to transfer the stock, and it must not be unconscionable, tainted with fraud, or against public policy, else specific performance will be refused. So also will it be refused if the contract to transfer is conditional, and the condition or contract upon which it depends has not been performed. And the opinion is ventured that while contracts to convey shares in private companies are commonly specifically enforced in equity, yet, if a case should arise wherein the stock, although private, was readily purchasable at well-known prices, by reason of which damages at law would constitute an adequate remedy, then equity should refuse specific enforcement of a contract to transfer such shares.

Chicago.

ADELBERT HAMILTON.

RECENT ENGLISH DECISIONS.
House of Lords.

THE SINGER MANUFACTURING CO. v. LOOG.

A trader has a right to make and sell machines similar in form and construction to those made and sold by a rival trader, and in describing and advertising his own machines, to refer to his rival's machines and his rival's name, provided he does this in such a way as to obviate any reasonable possibility of misunderstanding or deception.

APPEAL from a decision of the Court of Appeal, reported Law Rep., 18 Ch. Div. 395. The facts are sufficiently stated in the opinion.

Aston, Q. C., and Benjamin, Q. C. (Rigby, Q. C., and B. Coleridge, with them), for appellants.

Webster, Q. C., Everitt, Q: C., and Abrahams, for respondents.

Lord SELBORNE, L. C.-The plaintiffs (appellants here) are the same American company who were appellants in the case of "The Singer Manufacturing Co. v. Wilson," decided by this House in 1877. They are the successors in business of an American manufacturer of, and dealer in, sewing machines, named Singer. Mr. Singer was not originally the inventor or patentee of any machines,

All

but he held a license to manufacture and sell them from a patentee named Howe. The plaintiffs succeeded to his business on their first incorporation, in 1863, and they have since carried on a large and successful trade, both in this country and in America. They became proprietors of, or interested in, several patents (some American, some English) for improvements, or supposed improvements, upon the machines manufactured and sold by them. these patents, however, had expired some time before the acts were done which are complained of in this suit. The plaintiffs say that the machines which they now make and sell, and have for a considerable time past made and sold, are not in any important respect (except that most of them have what is called the "needle and shuttle" action) identical with any sewing machines which were ever patented; and they have from time to time varied the form and construction of their machines so that those which they make now are different from those which they and Mr. Singer before them, formerly made. They allege that the word "Singer," as applied to sewing machines, is understood in the trade to signify machines of their own manufacture (of which there are several known varieties) and nothing else. They have used that name or word on the brass plates or labels which they have affixed to all the machines sold by them. They admit that every body is at liberty to make and sell machines exactly similar, both in form and in, construction to their own, but they deny the right of any one to use the word "Singer" in any way whatever in connection with machines not of their manufacture. The presentation was brought by them for an injunction and damages against the defendant (the agent in this country of a sewing machine manufacturing company established at Berlin) on the ground, as alleged in the tenth paragraph of the statement of claim, that by "representing sewing machines sold or offered for sale by him, as Singer machines," he had endeavored to obtain, and succeeded in obtaining, for the machines sold by him, some of the reputation attaching to the plaintiff's manufacture, and had induced" (and unless restrained would continue to induce) "purchasers of his machines to believe that the machines sold by him were in fact machines of the plaintiffs' manufacture, or (in the case of purchasers whose attention had not been called to the plaintiffs' firm) to believe that machines sold by him were machines made by the manufacturers of the machines by which the reputation of the name Singer' had been

acquired." If the case so stated were established, there could be no doubt of the plaintiffs' right to some relief, upon the ordinary principles applicable to trade-marks and trade-names. To a car

tain extent the case was established and indeed was not contested by the defendant. It was not in controversy that to some of the machines manufactured by the Berlin company and sold by the defendant (exactly similar in form, pattern and construction to some of those manufactured and sold by the plaintiffs) a brass plate or label, also similar in form, size and position to the brass plates or labels engraved with the plaintiffs' trade-mark had been attached; on which brass plate or label the word "Singer" appeared, though associated with other words, which if carefully read might inform a customer that the machine was manufactured by the Berlin company. The defendant as representative in this country of the Berlin company was a wholesale dealer only; and all persons who bought direct from him knew that the machines which he sold were of the Berlin company's manufacture, and not of the manufacture of the plaintiffs. But the machines bearing those brass plates or labels, though supplied by him to wholesale customers who could not be themselves deceived, would be liable to pass from them by retail into the hands of other persons, some perhaps ignorant and unwary, who, seeing upon them a brass plate or label with the same appearance as the plaintiffs, and also having the word "Singer" upon it, might mistake that plate or label for the plaintiffs' trademark, and believe that those machines were really of the plaintiffs' manufacture. The principles applicable to such a case are well established, and have been several times recognised and illustrated in your lordships' House; the most recent authority in this House being Johnson v. Orr Ewing, 7 App. Cas. 219. The imitation of a man's trade-mark in a manner liable to mislead the unwary cannot be justified by showing either that the device or inscription upon the imitated mark is ambiguous and capable of being understood by different persons in different ways, or that a person who carefully and intelligently examined and studied it might not be misled. The plaintiffs have obtained an injunction to the full extent necessary to protect their trade-mark. But the Vice-chancellor by whom the action was tried went further and also prohibited the defendant (in effect) from using the word "Singer" in any way whatever, with respect to any machine not manufactured by the plaintiffs' company. The lords-justices on appeal, thought when

the trade-mark was out of the case nothing else was shown by the evidence to have been done or intended, or likely to be done by the defendant against which he ought to be enjoined. They therefore discharged that part of the Vice-chancellor's order which went beyond the protection of the plaintiffs' trade-mark, and the question upon the appeal is whether they were right in doing so. It is necessary for this purpose to consider what the defendant (representing the Berlin company) has actually done, beyond the use of the objectionable brass plate or label, which must be taken to have now finally ceased, and what may be reasonably presumed, from the nature of his business and course of dealing, to be the intention or the probable effect of what he has done, or is likely hereafter to do.

The plaintiffs take exception to the employment of the word "Singer" in a certain manner, in four documents, of which the defendant makes use for the purposes of the Berlin company's business. One of them is a broad sheet or advertisement, printed on both sides, and headed on one side "The improved Wheeler-Wilson and Singer systems, manufactured by the Sewing Machine Manufacturing Company, late Frister & Rossmann, Berlin." In this title, the words "Wheeler-Wilson," "Singer," and "Frister & Rossmann," are all in large type, and all equally conspicuous. It is divided into two equal parts by an engraving of the Berlin Company's manufactory, in the margin of which the addresses of their agents in nine continental cities, besides London, are given. Below these follows half a page of letter press in small type, in the course of which the phrases "The Wheeler-Wilson," and "The Singer System," several times occur: also, "Our Singer machines, pronounced on unquestionable authority to be superior to the so-called original Singer machine:" also," Wheeler-Wilson's," and "Singer's" in a context evidently referring to the "two systems;" also a statement that "our Singer machines" are made in a way which causes them to work without noise, "contrary to the very noisy Singer machine of our competitors." On the other side of the broad sheet fifteen different numbers of machines are figured, of which the first are described as on the "Wheeler-Wilson" system, and the last five as on the "Singer system," and in the middle of that side, to the left, is a "list of attachments given with every Frister & Rossmann machine, Singer system." The second document is a small pricelist, headed "The Sewing Machine Manufacturing Company, late

Frister & Rossmann, limited, 128 London Wall, London, E. C. Price list. Private." It is divided into two parts, the first entitled "Wheeler and Wilson Improved System," the second, "Singer Improved System." That (except the prices attached) is all. Of the third document, the title page is "Directions for the use of Frister & Rossmann's shuttle sewing machine, on Singer's improved system," the word "Singer" being printed in large letters, but not more conspicuously than "Frister and Rossmann's." The directions themselves, which extend over sixteen pages, do not contain the word "Singer," but they are headed "Instructions for use of the family shuttle-machine on the Singer system." The fourth and last document was an invoice given to a witness, who purchased one of defendant's machines, representing himself to be in the trade, in which the article sold was described as "one Singer hand-machine, No. 14." None of these documents (unless it be the "directions for use") were of a nature or character which, according to the course of the defendant's business, could be intended, or would be likely to come into the hands of any retail dealer to whom machines sold by the defendant might afterwards be resold. The defendant's business was, as has been stated, exclusively wholesale; he would not circulate or deliver these documents or any of them to any person "not in the trade." Two of them (the price list marked "private,' and the invoice showing the wholesale prices of the machines sold) were manifestly not addressed to retail customers, nor likely, in the ordinary course of the business of any persons who bought the defendant's machines, to be communicated to them. It was admitted by the plaintiffs' witnesses, and to me it seems clear, that no purchaser of the class to whom alone these documents were issued by the defendant could possibly be thereby deceived or misled into supposing that the machines sold by the defendant were of the plaintiffs' manufacture, or that the business carried on by the defendant. was the plaintiffs' business. All such purchasers must necessarily have understood that the articles which they ordered or bought were manufactured by the Berlin company, though some of them were made upon a "system," which was called the "Singer system." The invoice is the only document which, even if it had got into the hands of a careless retail purchaser, might (in my opinion) have been reasonably capable of being otherwise understood. It is, therefore, in my judgment, superfluous to enter into a close comparison between these documents, or any of them, and that Dublin

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