Scottish Court of Session Decisions

Robert Hillhouse brought an action in the Sheriff Court at Dumbarton against William Walker, concluding (1) for interdict against the defender collecting from his (the pursuer's) customers or the general public any empty aerated water bottles bearing his name or registered trade-mark; (2) for payment of £200 as the estimated loss from the defender's actings.

The pursuer averred that the bottles which he made use of in his business were of a superior quality, specially manufactured for himself, moulded with a private registered trade-mark, and that they were not sold to customers but only lent to be returned empty. He further averred that the defender through his vanmen had collected and appropriated a large number of these bottles.

The defender admitted that in the course of his business he had uplifted bottles not supplied by himself, including bottles belonging to the pursuer, but he averred that it was the custom of trade to uplift in exchange for full bottles whatever empty ones were offered.

On 16th February 1891 the Sheriff-Substitute ( Gebbie) granted interim interdict.

“ Note.—The pursuer and defender are manufacturers of aerated waters which they supply to the trade. The pursuer uses bottles of his own, impressed with his trademark, and holds a certificate of his trademark from the Patent Office, Trade-Marks Branch, dated 11th August 1889. In supplying the trade the pursuer lends his bottles so marked, which he afterwards collects from his customers, and the complaint

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is, that the defender in prosecuting his business collects the pursuer's bottles and uses them in his trade. This, I think, the defender has no legal right to do, and the pursuer is entitled to be protected against it by interdict. It may be the customers have no right to give up the pursuer's bottles, but equally the defender is under no duty or obligation to receive them. A trade-mark in the sense of the Act is a right of property, and may be protected by interdict or action of damages for infringement. Fraud need not be averred in order to obtain protection for such trade-mark— Singer Machine Manufacturers, 1877, L.R., 3 App. Cas. 376.”

On 3rd April 1891 the Sheriff-Substitute pronounced the following interlocutor:—“Ordains the defender to deliver up to the pursuer within fourteen days from this date all bottles in the custody of the defender which are the property of the pursuer, which bear his registered trademark, or are impressed with his name or that of his firm: And quoad ultra allows the pursuer a proof of the damage sustained through the use and retention of the pursuer's property by the defender, and to the defender a conjunct probation, &c., and decerns.

“ Note.—After discussion interim interdict was granted, and no appeal has been taken. If the view that was then adopted be a correct one, it would seem to follow that perpetual interdict must also be granted. It is said that usage of trade sanctioned and justified what the defender did. I cannot think so. The defender admits taking, using, and having in his possession a number of the pursuer's bottles bearing his trademark. Usage of trade must be consistent with law. No custom of trade can justify the appropriation of another man's property, and therefore it would be out of the question to allow a proof upon such a matter. Neither do I think that the order to deliver up the pursuer's bottles should be contingent or conditional upon the pursuer delivering an equal number of the defender's bottles, or bottles belonging to others. The pursuer does not admit he has any of the defender's bottles in his possession, and if the defender believes, and can prove he has, he must vindicate his right in an independent action. It may very well be that if there has been an inveterate practice in the trade, in which the pursuer has himself shared, of indiscriminately using bottles belonging to others than the users, an element may be introduced for consideration in dealing with the matter of damages; but whatever effect that may have, I am clearly of opinion the pursuer is quite within his right in seeking to protect his trade-mark and recover possession of property, and that usage of trade is an irrelevant defence in the circumstances here disclosed.”

On 9th April the defender appealed to the Sheriff ( ), who on 19th June 1891 dismissed the appeal, of new granted perpetual interdict, and remitted to the Sheriff-Substitute to proceed with the case.

“ Note.—[ After stating the circumstances]—The Sheriff thinks that in so acting the defender is violating the pursuer's rights as secured to him and protected to him by the Patents, Designs, and Trade-Marks Act 1883 (46 and 47 Vict. c. 57), and the Merchandise Marks Act 1887 (50 and 51 Vict. c. 28), and that the pursuer is therefore entitled to the verdict he craves. The defender pleads an alleged custom of trade; but in 1887 in a case— Hillhouse v. Kettle & Company—it was held in the Sheriff Court in Glasgow that no such custom existed, and the judgment was acquiesced in, and the now recent case of Wood v. Burgess, November 26, 1889, 24 L.B.D. 162, is also adverse to the defender.”

On 23rd June the Sheriff-Substitute fixed Wednesday 15th July as a new diet for proceeding with the proof allowed by interlocutor of 3rd April.

The defender appealed to the Court of Session on 7th July 1891 for trial by jury under section 40 of the Judicature Act, in terms of section 5 of the Act of Sederunt 11th July 1828—“Section 5. Whereas it is enacted by section 40 (of the Judicature Act) that in all cases originating in the inferior courts in which the claim is in amount above £40, as soon as an order or interlocutor allowing a proof shall be pronounced … it shall be competent to advocate such cause to the Court of Session, it is enacted and declared … that if … neither party within fifteen days in the ordinary case, and in causes before the Courts of Orkney and Shetland within thirty days after the date of such interlocutor allowing a proof, shall intimate in the inferior court the passing of a bill of advocation, such proof may immediately thereafter effectually proceed in the inferior court; … and if within these periods respectively no intimation shall be made of any such bill of advocation, the proof shall then proceed, and the bill, if such have been presented, together with the passing thereof, shall be held to fall as if such bill had never been presented.”

On the case appearing in the Single Bills no objection was stated to the competency of the appeal, and an order for issues was taken.

When the case was put out for hearing in the Summar Roll, the respondent objected to the competency of the appeal upon the ground that the defender had failed, in terms of section 5 of the Act of Sederunt, to appeal within fifteen days of the interlocutor allowing proof, whether the days were held to run from the date of the Sheriff-Substitute's interlocutor of 3rd April or of that of the Sheriff of 19th June— Davidson v. Davidson's Executors, July 7, 1891, 18 R. 1069; Kinnes v. Fleming, January 15, 1881, 8 R. 386; Williams v. Watt & Wilson, May 28, 1889, 16 R. 687. It was said that the objection came too late, as it ought to have been stated in the Single Bills. In Ross v. Brims, March 14, 1878, 15 S.L.R. 438, however, the Court ex proprio motu took up a similar objection at this stage— Shirra v. Robertson, June 7, 1873, 11 Macph. 660, 45 Scot. Jur. 412.

Argued for the defender—(1) The

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objection came too late. Like any other objection to a step of procedure as not being conform to Acts of Sederunt, it must be taken in the Single Bills, otherwise the party making it will be held to have waived it. But (2) the judgment of 19th June, in which the Sheriff declared the interdict perpetual, was really a judgment disposing “of the whole subject-matter of the cause” in the sense of section 53 of the Court of Session Act of 1868 (31 and 32 Vict. c. 100). By it the real question between the parties, viz., as to usage of trade, had been decided. Under section 68 of the Act the defender had six months to appeal. The subsequent interlocutor pronounced by the Sheriff-Substitute on 23rd June fell to be regarded pro non scripto. It merely referred back to the interlocutor of April 3rd allowing proof of the damage sustained by the pursuer.

At advising—