Scottish Court of Session Decisions

This is a note of suspension and interdict presented by William Dixon of Govan Colliery, against Thomas Jackson, iron-master, Coats Iron Works, Coatbridge. The object of the action is to have the respondent interdicted from the manufacture at his works of bar iron stamped or branded “Coats” with a star immediately following—thus, Coats*—on the ground that the trade of the complainer in “star iron” injured by the respondent assuming the said mark. The Lord Ordinary passed the note to try the question between the parties; “but having regard to the terms of the complainer's price-list, in which complainer's iron is entered as stamped—not simply with a star, but as ‘Govan*’—the Lord Ordinary did not think that the use on the part of the respondent of the mark ‘Coats*’ was ex facie so clear an adoption of a trade mark belonging to the complainer as to entitle him to an interim interdict.”

The complainer reclaimed.

Young and Thomson appeared for him.

Clark and Gloag for the respondent.

At advising,

Lord Justice-Clerk said that the question to be tried under the note was whether the mark of a star used by Dixon was such a trade mark as could obtain the protection of law. That was a question of some delicacy, on which he gave no opinion at present. But, then, the complainer asked interim interdict, and that involved other considerations than those necessary to determine the main question. In disposing of such a question, it was necessary to look at both sides. Now, Dixon said that he had been in use to put the star mark on his iron for many years; that the mark was well known in the foreign trade; and that it was of importance to him that the mark should not be used by others so as to cause confusion in the market. This was not admitted by the respondent, but it was evidently true to some extent; for, if the star was not significant of something it was not easy to see why it should be used by the respondent. It might therefore be assumed that it had some signification. Then the complainer averred that no other master had ever used this mark, and that there was no other star iron in the trade. This not admitted either, but the respondent did not specify any other bar iron similarly marked, as he should have done if it were the case. All he said was that for some time he had contemplated the use of some mark, and that it was common in the trade to use a crown, a star, a horse-shoe, or some such mark. It was clear, therefore (1), that Dixon had used the mark for some time; (2), that it had some signification in the market; (3), that no one else had used it; and (4), that the use of it by the respondent was recent, sudden, and unexplained. The reason he gave for using it was that he recently got an order from an iron merchant for a small quantity of bar iron, with a request that the iron should be marked with a star in addition to his usual trade mark. Now, this was obviously the first time when he used the star mark at the request of the iron merchant, and no explanation was given by either party of the object of using it. In these circumstances the respondent was in an unfavourable position in the present question. This was very like a device of an unfair kind to make use of a trade mark used by a rival, to the injury of that rival; and as no injury could arise to the respondent by granting interim interdict,

Page: 189↓

but very considerable injury might result to the complainer by refusal of it, the true equity of the case demanded that protection should be given in the meantime.

Lord Cowan had some hesitation, but did not dissent.

Lord Benholme concurred, observing that the main use of interdicts was to stop changes, and not to allow alterations in the state of possession while the question between the parties was being tried.