Scottish Court of Session Decisions

In 1880 Messrs Stuart & Co., who had been successful in producing an artificial concrete stone for paving purposes, registered as their trade-mark a lion rampant holding a shield on which was inscribed the words “Stuart's Granolithic.” This was done under the Trade-Marks Registration Act 1875. After the passing of the Patents, Designs, and Trade-Marks Act 1883 they determined to register a fancy name alone as their trade-mark, and they registered in 1884 as their trade-mark the word “Granolithic” alone.

They raised this action against the Scottish Val de Travers Paving Company (Limited), Glasgow, praying the Court “to interdict the defenders from using the word ‘granolithic,’ or any colourable imitation thereof, in connection with the manufacture and sale of artificial stone pavements, or otherwise infringing the pursuers' registered trade-marks,” consisting of (1) the words “Stuart's Granolithic” on a shield held by a lion, and (2) the fancy word “Granolithic” alone, “by making or selling or using labels, wrappers, or invoices, or any other document with the said trade-mark thereon, or colourable imitation thereof, in connection with the manufacture or sale of the goods or class of goods included under class 17 of the first schedule, framed in virtue of section 7 of the Trade-Marks Registration Act 1875, and more particularly with reference to the manufacture and sale of artificial stone pavements.” They also claimed £500 damages.

They averred as follows in Cond. 6—“The pursuers have recently learned that the defenders have been offering to supply artificial stone pavements under the name of ‘granolithic,’ and have issued circulars and price lists in which the

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word ‘granolithic’ is used to describe a particular class of artificial stone pavement.”

The defenders stated—They had, in common with various other manufacturers, made an artificial stone, which had been for several years commonly known, especially among architects and builders, as “granolithic” or “granitic.” For many years prior to 1880 the word “granolithic” was used by manufacturers to describe a composition of a somewhat similar nature to the artificial stone referred to. They stated further—“(Stat. 4) The word ‘granolithic’ is a descriptive word, which accurately describes the nature of the artificial stone referred to, and is not a valid trade-mark within the meaning of the Patents, Designs, and Trade-Marks Act 1883, and was registered or is continued on the Register of Trade-Marks through error.” “(Stat. 5) Between the date of the pursuers' first application to register on 2d February 1880 and their second registration in 1884 the word ‘granolithic’ was in common use by the public to describe the artificial stone referred to, and has no special application to the pursuers' manufacture. Accordingly, prior to said registration the defenders issued to their customers and to the public the circular and price list complained of. Said circular merely intimates that ‘the laying of granolithic or granite-faced concrete in the monolithic form for foot-pavements,. .. & c., receives the special attention of the company,’ and then goes on to describe the composition and mode of laying the granolithic or granite-faced concrete pavement. This is the sole use which the defenders have made of the name ‘granolithic.’”

The pursuers pleaded—“(1) The pursuers, as owners of the said respective trade-marks, are entitled to protection against infringement thereof. (2) The pursuers, having coined the said fancy word ‘granolithic’ for the purpose of identifying their manufacture of artificial stone pavement, and so used it, are entitled at common law to prevent the use of the same for a like purpose by others. (3) The actings of the defenders complained of constitute an infringement of the pursuers' rights in the said respective trade-marks, and the pursuers are entitled to interdict as craved.”

The defenders pleaded—“(1) The pursuers having no exclusive right to use the name ‘granolithic’ to describe the stone manufactured by them, interdict ought to be refused. (2) The defenders having committed no infringement of the pursuers' rights, are entitled to absolvitor. (3) The word ‘granolithic’ does not come within the definition of a trade-mark under the Patents, Designs, and Trade-Marks Act 1883.’ (4) The word ‘granolithic’ being only a colourable imitation of the word ‘granoline,’ which was in common use prior to 1880 for describing a composition almost identical with the pursuers’, is not entitled to be protected as a trade-mark. (5) The word ‘granolithic’ being a descriptive word in common use to describe a certain kind of artificial stone by whomsoever manufactured, and having no distinctive application to the pursuers' manufacture, interdict should be refused.”

Proof was led, the import of which very fully appears in the Sheriff-Substitute's note, and in the opinions of the Judges.

The Sheriff-Substitute ( Erskine Murray) found—“(1) That the pursuers Stuart & Company and the defenders the Val de Travers Company are rival manufacturers of a concrete formed of a combination of crushed granite and Portland cement: Finds (2) that pursuers registered in 1880 a trade-mark of a lion rampant holding a shield, on which was inscribed the words ‘Stuart's Granolithic,’ the name granolithic being invented by pursuers and their friends: Finds (3) that thereafter the name came into common use by architects, measurers, and others issuing schedules, not only to pursuers, but to other manufacturers, as denoting a concrete of crushed granite and Portland cement irrespective of the makers: Finds (4) that a new Act having allowed the registration of a fancy name, the pursuers in 1884 registered as their trade-mark the name ‘Granolithic,’ pure and simple: Finds (5) that the defenders, since the issuers of schedules, as above, took to using the word, have been in the habit of offering under such schedules, and have also issued to their trade customers a circular, stating as part of their business the laying of ‘granolithic,’ which they describe, and of which they give their price: Finds (6) that pursuers have raised the present action, alleging that defenders are infringing their rights, to interdict them from doing so, and for damages: Finds on the whole case and in law, that the pursuers have failed to establish grounds for the granting of the interdict sought: Therefore assoilzies defenders from the craving of the petition, and decerns, &c.

“ Note.—The use of concrete for paving purposes is as old as the days of the Romans. Of late, however, it has taken a fresh start under various forms and names. The usual basis was a mixture of cement with sand or gravel. But by degrees it was found that crushed granite was a fully better material than either of the latter. It formed an element of the composition of Ransom's Silicious Stone, of Buckwell's ‘Granitic Breccia Stone,’ and of the defenders' ‘Victoria Patent Silicated Granitic Stone,’ where it was mixed with Portland cement, which manufacture was commenced by the defenders the Scottish Val de Travers Company about 1879. The manufacture therefore of a concrete formed by a mixture of crushed granite and Portland cement laid on a foundation of various kinds is therefore a matter which is free to all the world.

The pursuer Mr Stuart and his family have long been connected with the manufacture of concrete in Peterhead and Edinburgh. He adopted crushed granite mixed with Portland cement as his chief manufacture about 10 or 12 years ago. Till 1880 he made it under the name of granite concrete. Desiring to get a special name for his own manufacture he consulted various distinguished Greek scholars—one of them suggested ‘granilithic.’ By the mistake of a clerk this was written ‘granolithic.’ This was at once adopted by the pursuers, who got it registered as a trade-mark in November 1880, with the device of a lion rampant supporting a shield, on which the words ‘Stuart's Granolithic’ were printed. The device was used in obedience to the Act then in force, by which the registration of a mere name was not sufficient. The pursuers had applied for this registration some months previously, and largely advertised their manufacture under the name ‘granolithic,’ not only in Scotland but all over the world.

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The name ‘granolithic’ was a great success. It not only implied that the material was granite, but that it was as hard as a stone. Even the mistaken ‘o’ added solidity and apparent strength. ‘Granolithic’ sounds better than ‘granite concrete,’ and explains what is wanted far better than ‘Victoria Stone.’ So the ink of pursuers' registration of their new name was hardly dry before architects, builders, and measurers began to use it when they meant granite concrete. In issuing their schedules they inserted the word ‘granolithic’ when they wanted offers for granite concrete. In a few cases, no doubt, of those where the item was a small one in a large schedule sent out to a mason or builder, whose main work was of a different nature, it may have been in the contemplation of those who issued the schedule that the contractor would make a sub-contract with Stuart for the execution of the granolithic. But in the great bulk of cases the issuers of the schedules simply meant that they wanted offers to supply the thing which they knew by the name ‘granolithic,’ viz., a concrete of Portland cement and granite quite irrespective of the person who made it. Indeed they issued such schedules to various manufacturers, including pursuers and defenders, shewing unmistakeably that what they meant by granolithic was the thing irrespective of the maker. This state of things lasted two or three years, and the name ‘granolithic’ thus came into general use as a name for the thing produced, viz., a granite concrete irrespective of the maker's name. No doubt in places where no other granite concrete was known than pursuers' the name ‘granolithic’ was only in connection with pursuers' manufacture, but where other manufacturers made the same thing, architects and others asked them to offer for it under the name ‘granolithic,’ and the offers of many other offerers besides pursuers were accepted in such circumstances. In some quarters there seems to have existed a mistaken idea that the thing itself was patented, and therefore that the pursuers were the only people who had a right to make it. Mr Purchas, for instance, of Worcester, says that if he had got defenders' circular he would have supposed that they had got a licence from pursuers to lay granolithic pavement. But this was not so in Glasgow, where a number of manufacturers have competed with pursuers for contracts for which granolithic was wanted.

A new Act having passed authorising the registration of names as trade-marks, the pursuers on 29th April 1884 applied for registration of the word ‘granolithic’ by itself as a trade-mark, which was registered. By this time, however, the word was in general use among architects, builders, and measurers as applied to the manufacture not only of pursuers but of other manufacturers.

In these circumstances the defenders the Scottish Val de Travers Paving Company have issued to their trade customers the circular or advertisement. Their name is set forth boldly on the title — page. After describing various modes of paving and concrete which they manufacture, they go on to say on their second page—‘The laying of granolithic or granite-faced concrete in the monolithic form receives the special attention of the company.’ Again on page 3, under their price list, they give a heading—‘Granolithic or Granite-faced Concrete Pavement,’ which they then describe, and of which they give the price.

The pursuers, considering the defenders' act in ‘offering to supply artificial stone pavement under the name of granolithic, and in issuing circulars and price lists in which the name granolithic is used to describe a particular class of artificial stone pavement,’ an infringement of their trade-marks, have raised the present action to have them interdicted from doing so, and for damages. They do not, however, ask for more than nominal damages.

Now, in the first place, it falls to be remarked, as matter of fact, that there is really no question here of the defenders misleading, whether intentionally or unintentionally, any person whatever into believing that they were getting Stuart's article, when they were really getting the defenders' article. As regards the offers in answer to schedules sent to them, the issuers knew well that what they would get from the defenders would be their own manufacture, not Stuart's. As regards the circular, it is perfectly plain, and none but an idiot would suppose that the granolithic there referred to was anything but defenders' own work. Even Mr Stuart himself cannot say that it would.

“Nor is this a case where, though the original wholesale buyers of an article are not deceived, subsequent retail buyers may be deceived, as in the cases of the Eureka shirt ( Ford v. Foster, L. R. Ch. App. vii. 611), and the Elephant mark ( Johnston v. Orr Ewing, 7 App. Ca. 219). In these cases the interdict was granted because retail buyers might be deceived. But here no such question can possibly arise. The article is laid down as between parties who knew well what it is and whose it is. After it is once laid down there is no question any more about it; it does not pass through any more hands at all. So the question of intentional or unintentional misleading, whether as regards the original parties contracting or any other purchaser, falls to be eliminated together. Such being the facts the law applicable to them falls to be considered.

What is the essence of the right to the exclusive use of a trade-mark? The answer is to be found in the remarks of Mr Justice Mellish, in the Eureka case above quoted, when he explains that the right to a trade-mark is simply a trader's right to prevent his being cheated by other people's goods being sold as his goods. In the same case it is laid down that a fancy name originally appropriated by a maker to his own peculiar manufacture may become publici juris, so that anyone may use it, the test being, whether the use of it has ceased to deceive the public as to the maker of the article. On these two principles the whole law of trade-marks hangs, and the various decided cases may be strung on them like beads on a chain.

In one class of cases, of which Seixo, L.R. Ch. App. i. 95, and Wotherspoon, L.R., H. of L., v. 508, are types, the evidence disclosed that there was a manifest intention by the use of a name, Seixo in the one case, Glenfield in the other, to induce purchasers to believe that they were getting an article made by the parties originally using the name, when they were really only getting an article made by imitators, and

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were thus misled, to the original maker's disadvantage. Interdict was granted.

In a second class of cases such as Singer v. Wilson, L.R. 3 App. Ca. 376, and Dunnachie (the Glenboig case), 10 R. 874, the intention to deceive was not so manifest. But it was held that by the adoption of the name by the second parties without any intention to deceive, buyers might nevertheless be deceived, and that the first parties had a right to protect themselves against the loss arising from such a misconception, by asserting their exclusive right to the name. Proof of actual injury was not required; but proof of a reasonable apprehension of injury. In this class falls also to be placed Singer v. Kimball & Morton, 11 Macph. 267; for though capable to a hasty reader of a wider interpretation, the House of Lords in Singer v. Loog, afterwards quoted, explain that this is the ground on which that judgment can be upheld. In these cases also interdict was granted.

In a third class of cases, such as Johnston v. Orr Ewing, Ford v. Foster above quoted, and Blair v. Stock, L.T., 52 N.S. 123 (the Strathmore Blend case), the original buyers from the second parties could not have been deceived into believing that the articles were of the first parties' manufacture. They knew well whose goods they were getting. But then the general public, to whom they re-sold, might easily be deceived into believing that they were getting the manufacture of the original makers. Here also interdict was granted.

But in the fourth class of cases, of which Singer v. Loog, 8 App. Ca. 15, is a type, there was neither an intention to deceive nor any reasonable ground for apprehension that any purchaser might be misled. It was there held that a trader has a right to make and sell machines similar in form and construction to those of a rival, and even in advertising to refer to his rival's machines and rival's name, as long as he does so in such a way as to obviate any reasonable possibility of misunderstanding or deception. He is not allowed, indeed, to put on his machines a brass plate with his rival's name, because that might deceive ordinary retail customers; but he may, in advertisements intended only for wholesale traders, and that would not be likely to come into private hands, advertise his goods associated with his rival's name, as Loog did, referring to ‘our Singer Machine.’ The reason is, that no purchaser of the class to whom alone these documents were issued could possibly be misled into supposing that the machines they referred to were the Singer Company's Machines. The Singer Company contended that deception or even unintentional misleading were not essential. But as Lord Selborne laid down—‘The reputation acquired by machines of a particular form or construction is one thing; the reputation of the plaintiffs as manufacturers is another. If the defender has no right under colour of the former to invade the latter, neither have the plaintiffs under colour of the latter to claim in effect a monopoly of the former. If the defender has a right to make and sell articles similar to the plaintiffs, he has a right to say so, and to employ the terminology common in his trade, if he does this in a fair, distinct, and unequivocal way.’

The fifth and last category is where a name, originally restricted to the goods of a particular manufacturer, has come into such common use as to be publici juris, so that anybody is justified in using it for his own manufacture. Such a position of matters is referred to in several of the cases already quoted

Now, the present case, if it does not fall under the last category, clearly falls under the fourth. There is neither intention to deceive nor any misleading at all. The parties getting defender's offers, or getting defenders' circular, knew whose goods were offered to them; so the first and second categories are excluded. By the very nature of things the third is excluded, as the article under consideration cannot pass from hand to hand like Eureka shirts, but when once laid, becomes a part of the premises and there is an end of the matter. Adjusting Lord Selborne's words in Singer v. Loog to the present case—‘The reputation acquired by’ a concrete formed of crushed granite and Portland cement, ‘is one thing, the reputation of the pursuers as the manufacturers of it is another. If the defenders have no right, under colour of their right to take advantage of the former, really to take advantage of the latter, neither have the pursuers a right under colour of defending the latter to claim in effect a monopoly of the former. As the defenders have a right to make and sell a concrete similar to the pursuers, they have a right to say so, and to employ the terminology common in their trade, if they do this in a fair, distinct, and unequivocal way.’ Here the fairness and distinctness of defenders' offers and circulars is undeniable. Interdict, therefore, cannot be granted.

The defenders indeed go further, and maintain that the position of matters is that described under the last category of all. There is a good deal to be said for this contention. It must be remembered that up to 1884 a fancy name alone could not be registered as a trade-mark. Granolithic was not till then a registerable trade-mark, and by that time it was in pretty common use by architects, measurers, and builders as a name for concrete of crushed granite and Portland cement irrespective of the makers. Now a word in common use cannot be effectually registered. Against this, on the other hand, it may be argued that so far at least as manufacturers were concerned, the use of the word was in general only a half-hearted and timid sort of a use, as of something for which they were conscious they might be called to account. It is true that when Stuart & Co. knew that any manufacturers were openly using the word on their own account they have taken steps against them. But they have winked at its use by architects and other issuers of schedules for fear of injury to themselves. By so doing, however, they have more and more allowed the word to come into general use. For when the parties on one side of a contract are allowed to use it it is impossible to exclude the parties on the other side from doing so.

On the whole, however, the Sheriff-Substitute prefers to base his judgment on the ground that the case comes under the fourth category, that of Singer v. Loog. The word ‘granolithic’ is perhaps in that stage of development rather than the fuller and more advanced stage of the fifth.”

The pursuers appealed, and argued—The case must not be dealt with as a trade-name, in which case it would be necessary to consider the use to see whether it was calculated to deceive, but

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simply as a trade-mark properly registered. The name was one private to the pursuers to begin with, and between 1880 and 1884 no one could have used it without tending to deceive on account of the pursuers' registration under the 1875 Act. Section 76 of the Patents, Designs, and Trade-Marks Act 1883 provides that subject to the provisions of the Act registration shall confer on the registered owners the exclusive right to use the trade-mark. After 1884, then, when registration was effected under this Act, the pursuers got the exclusive use of the name, and from that date such circulars as the defenders' were illegal. The pursuers could establish the two propositions which were essential to the idea of “exclusive right” in the sense of the statute—(1) That the trade-mark had not at the date of registration become publici juris, or in common use, and (2) that it had not been infringed. There was no real distinction to be drawn between advertisements and circulars containing the trade-mark and a trade-mark used upon the machine sold, the one being just as likely to be as injurious as the other, and it was not necessary for the pursuers to aver or prove fraud in order to obtain protection for their trademark— Singer v. Wilson, November and December 1877, 2 L.R., Ch. Div. 434, and 3 L.R., App. Ca. 377, especially the opinion of Lord Cairns, p. 389. Section 76 of the 1883 Act provides that registration of a trade-mark shall be prima fade evidence of the exclusive use of a trade-mark, and shall, after the expiration of five years from the date of registration, be conclusive evidence of right to the exclusive use of the trade-mark, subject to the provisions of the Act. While it might be competent to overcome the presumption by action here other than the statutory action of section 90, yet for the purposes of a mere possessory question such as interdict, the prima facie fact of registration mast rule, and the question of the pursuers' exclusive right was not now open to challenge.

The defenders replied—The Acts did not allow a person to take any word to their exclusive use. Sub-section c of clause 64 of the 1883 Act provided that a trade-mark must consist of “a distinctive device, mark, brand, heading, label, ticket, or fancy word or words not in common use.” It was laid down in Leonard & Ellis v. Wells, February 1854, 26 L.R., Ch. Div. 288, that a distinctive word within the meaning of the Act must be a word intended to distinguish the article manufactured by one person from similar articles manufactured by others, and not a word merely descriptive of the articles themselves. The word here was merely descriptive of a particular kind of stone which was in common use in commercial circles. The pursuers' trade-mark was thus bad as lacking two essentials of the statute. But further, the defenders did not advertise the stone under any name which could create a reasonable possibility of misunderstanding or deception— Singer v. Loog, December 1882, 8 L.R., App. Ca. 15.