Scottish Court of Session Decisions

This was an action of suspension and interdict at the instance of Charles Woolley & Son, beer bottlers and aerated water manufacturers, 49 Elm Row, Edinburgh, against William Morrison, wholesale bottler, 2 King's Road, Portobello, in which the complainers sought to have the respondent interdicted “from selling or exposing for sale, or from having in his possession for sale or for any purpose of trade, beer, ales, stout or aerated waters, or any other alcoholic or non-alcoholic drinks, not bottled or manufactured by the complainers contained in bottles which bear the name of the complainers either impressed, embossed, engraved, sandblasted, moulded, or otherwise marked thereon.”

The complainers averred—“(Stat. 2). The quality or condition in which bottled beer, ales, or stout is sold depend upon the care and skill of the bottler. (Stat. 3). The complainers for the purposes of their business own a large number of bottles upon which their name is marked. The name is in most instances moulded on to the bottle in the process of manufacture. The bottles are purchased by the complainers for use in their own business exclusively, and the name upon them, besides assisting the owners to retrieve their property, is put upon the bottles as a trade name or trade description to inform the public, and the public so understand, that the contents are beer, ales, or stout bottled by the complainers, or aerated waters of the complainers' manufacture. There is a contract between wholesale bottlers in Edinburgh and district, whereby they have formed themselves into an association called The Edinburgh and District Aerated Water Manufacturers Defence Association, Limited, and having its registered office at 57 York Place, Edinburgh. The members of the said association are by the terms of their said contract permitted to lift each others' beer, ale, stout, and aerated water bottles, from which they select those branded or marked with their own name. They then send those which do not belong to them to the bottle exchange or clearing house of their said association, in order that those may then be sent to their respective owners. The said contract is based on the expectation that each bottler will receive back the whole of his own bottles through the medium of the bottle exchange. The respondent is not a member of the bottle exchange, and has never received authority to lift or use the complainers' named bottles. (Stat. 4). The respondent has in the past been using for beer, ales, stout, or aerated waters of his own bottling or manufacture bottles belonging to the complainers and bearing the complainers' name, and the respondent may continue the practice to the detriment of the complainers' business.”

The respondent pleaded—“(2.) The complainers' statements being unfounded in fact, the note should be refused, with expenses. (5.) Esto that there has been use by the respondent of the complainers' marked bottles, such use having been accidental, unintentional, and bona fide, and attended by no prejudice to the complainers or the public, suspension and interdict should be refused.”

After a proof the Lord Ordinary ( Kyllachy) on 21st November 1903 refused the prayer of the note.

Opinion.—“The question in this case, as presented at the discussion, is a question not as to unlawful appropriation of the complainers' property or as to infringement of the complainers' trade mark. The facts, as they have come out may suggest such questions. But they are not raised in this action, nor does the proof contain materials for their decision.

The complainers' case as presented is rested on a different ground, viz., that the respondent being, like the complainers, a bottler of beer and ale, he (the respondent) has bottled and put into the market beer contained in bottles embossed with the complainers' name, and has thereby, as complainers say, represented that the beer

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so bottled and sold by him is beer of the complainers' bottling. It is said that he (the respondent) has thus deceived or attempted to deceive the public, and has done so to the complainers' prejudice.

Now, it may be conceded that if the bottles in question had been embossed not merely with the words “C. Woolley & Co.,” but with the words “Bottled by C. Woolley & Co.,” there would have been strong grounds for holding that this prima facie involved a use of the complainers' name which if it did not in fact deceive was at least fitted to deceive the trade and and the public. Further, even taking the words as they stand, it is probably true that it might be established by evidence that they bear, or have come to bear, the secondary sense which the complainers attach to them. The questions, however, are whether they necessarily bear that meaning, and if not, whether there is sufficient evidence that they are fitted to convey that meaning to the trade and the public.

Having considered the proof, I find myself obliged to answer both questions in the negative. It is impossible, I think, to hold that necessarily, or even prima facie, the sale of beer in bottles embossed with the complainers' name involved a representation that the beer was bottled by the complainers any more that it involved a representation that the beer was brewed by them or that the bottles were made by them. Prima facie, embossment of the name would seem only to indicate that the complainers were owners of the bottles. And the evidence, if we are to appeal to the evidence, goes to show that in point of fact such was the main and primary object of the embossment—the object in view really being to secure the property of the bottles, and to facilitate their recovery when they became empty.

It therefore requires to be shown affirmatively that the understanding of the public, or at all events the understanding of the trade is, and in December 1902 was, that in the business of bottling the bottler is always the owner of the bottles used by him, and that such a thing as, for instance, the hiring of bottles, or the more or less promiscuous exchange of bottles, is a thing unknown. All this, I say, requires to be proved. And that being so, it is perhaps enough to say that the complainers' proof appears to me to be insufficient. The evidence which they adduced did not, I must say, strike me as, at the best, very convincing. But it involved besides several difficulties which I think serious. In the first place, it seems clear that prior to the institution of the bottle exchange in March 1902 there was a practically promiscuous usage by traders of the bottles of other traders. It further, I think, appears that from that date to the date of the acts complained of less than a year had elapsed, a period I think hardly sufficient for any contrary usage to be recognised by the trade and the public. And then, lastly, I cannot overlook that, even in the complainers' own practice—their practice down to the present time—there has been such an amount of looseness as to make it really impossible to affirm that their embossed bottles once put into the market may not quite in ordinary course pass by exchange into the possession and use, if not into the ownership, of persons like the respondent, persons taking such bottles in exchange for their own bottles and proceeding to use them.

On the whole, therefore, I am of opinion that the complainers have failed to prove that the respondent's use of their bottles deceived the trade or the public, or was in the circumstances fitted to deceive the trade or the public. The result is that I must refuse the suspension, with expenses.’

The complainers reclaimed, and argued—The complainers were entitled to interdict even if the respondent was using their name innocently without any intention to take advantage of it— Millington v. Fox, 1838, 3 Mylne and Craig, 338. The respondent's use of the complainers' bottles was calculated to deceive purchasers— Reddaway v. Banham, L.R. (1896), App. Cas. 199. The respondent's actings were contrary to the Merchandise Marks Act 1887 (50 and 51 Vict. c. 28), secs. 2 and 5 (1) ( c), (2) and (3).

Counsel for the respondent were not called on.