Page: 939↓
[
Trade-Mark — Infringement — Defence of Common Property — Effect of Registration — Onus — Evidence
Trade-Mark — Resemblance — Long Association — Interdict.
While an alleged infringer of a registered trade-mark may plead in defence to an action for interdict that the register should be rectified, either ( a) by expunging the entry of the trade-mark as being common property, or ( b) by adding an entry of the mark as being also his, he can only raise such defence by making rectification a positive crave. Dewar v. Dewar & Sons, Limited, December 6, 1899, 2 F. 249, 37 S.L.R. 188, commented on.
In an action of declarator and interdict to prohibit alleged infringement of a registered trade-mark, to establish the defence that the register should be rectified by expunging the entry on the ground that the mark is “common property,” (1) the onus is on the defender by the mere fact of registration and is increased by the length of time the entry has been on the register, and (2) it is not sufficient to prove a few isolated sales, but to constitute “property” the mark must have become associated in the market with the goods.
Evidence held insufficient to establish common property in a registered trademark.
B. & S., a firm of spirit merchants, had as their registered trade-mark a device consisting of a cat with one paw uplifted standing on a barrel placed on its bilge, and proved that by long use their goods had become associated with the cat and barrel device.
Held that in deciding whether certain labels were or were not an infringement, the Court should keep in view the long association of B. & S.'s goods with the device, and consequently not require too strict a similarity before granting interdict.
Labels held to be practical infringements of a registered trade-mark, though not very similar to it.
The circumstances in which these actions arose, as stated by the Lord Ordinary (Salvesen), were—“On 1st July 1904 Messrs Boord & Son raised an action against Thom & Cameron, Limited, in Which they sought (1) declarator that they were the sole proprietors of certain trade-marks and (2) interdict against infringement of same. There was also a conclusion (3) to the effect that Thom & Cameron should be interdicted from using the words ‘Cat and Barrel,’ or the representation of a Cat and Barrel, in connection with the sale of gin and other liquors. About a year later Thom & Cameron replied by an action of declarator and reduction, in which they sought (1 and 2) to have Boord & Son's trade-marks removed from the register, or otherwise (3) a decree that the latter have no exclusive right to use the device of a Cat, or of a Cat and Barrel, on labels or advertisements in connection with the sale of ‘Old Tom’ gin and other liquors. Both cases were ultimately sent to trial together, and I thought it right that Thom & Cameron should lead in the proof, on the ground that the registration of the trade-marks threw
Page: 940↓
the onus of proof on those who attacked their validity. In what follows I shall accordingly refer to Thom & Cameron, Limited, throughout as the pursuers and Boord & Son as the defenders. “The defenders are an old-established firm of distillers and wine and spirit merchants. For some time prior to 1848 they had done a considerable trade in gin. The liquor then in vogue was a sweetened gin, and it had long previously acquired the name of ‘Old Tom.’ How that name originated is mere matter of conjecture, and it is of no materiality in the present case, as it is admitted that it was a name in common use. Prior to 1848 the defenders' business was entirely confined to the home trade, but after that year, owing to an Act having been passed which allowed a drawback on exported spirits, it became possible for British distillers to compete in foreign and colonial markets with the Dutch distillers of gin, and the defenders appear to have prosecuted the export trade with vigour and success from that time onwards. About 1849, or possibly a couple of years later, the defenders adopted a device upon their labels which consisted of a circular disc, on which was placed a barrel on its bilge, which again carried a cat in a standing position, with one paw uplifted and the back somewhat curved. This device they have consistently used, on the labels of bottles in which their gin was bottled for export as well as for the home market, on show-cards which they distributed to their customers, on caution notices which they issued from time to time with a view to preventing imitations, and on the other usual literature which is employed in connection with such a business. In 1879 the defenders applied for and obtained registration of the device as their trade-mark, on the representation that they had used the same for twenty-five years prior to the date of their application. This was a true representation so far as gin was concerned, but it was not accurate so far as it applied to whiskies and other liquors. The defenders have uninterruptedly used the device in question as their registered trade-mark ever since, and until now their right has never been judicially challenged. During the whole period from about 1850 onwards they have done a large trade in England and a large export business to various parts of the world, including India, Australia, Africa, and America. To some extent also they have during the whole period carried on a business in gin with Scotland and Ireland, although—so far as their Scotch business is concerned—it has throughout been relatively small and has diminished rather than increased.
From the first the defenders appear to have attached considerable importance to the device of the Cat and Barrel, which, so far as they knew, they were the first to adopt in connection with the sale of gin and other spirits. From time to time the device was fraudulently copied, and whenever a case of this kind came to their knowledge the defenders took prompt means to have it punished or stopped. So early as 1856 they found it necessary for their protection to issue printed notices to their customers and others, warning them against the unauthorised use of their label, and similar notices were periodically issued both before and after the device had been registered as the defenders' trade-mark. In 1903 they raised an action in the High Court of Justice against a Mr Huddart, who was selling gin manufactured by Melrose, Drover, & Company, Limited, of Leith, on the ground that the label under which the gin was sold contained the representation of a cat's head and paws protruding from the upper part of a barrel, a device which the defenders maintained was an infringement of their trade-mark. The case went to trial, and after a large number of witnesses had been examined on both sides the defenders obtainedan injunction against Huddart from Mr Justice Swinfen Eady ( 21 R.P.C. 149). This judgment was allowed to become final, and the defenders thereupon, having had their attention called to the use by other distillers and merchants of the device of a cat and barrel in connection with the sale of ‘Old Tom’ gin, threatened these firms with proceedings unless they agreed to discontinue its use. In every such case they had hitherto been successful, and they have now taken action against the pursuers, one of whose directors was a witness for the defender in the Huddart case.”
The labels said to be used by Thom & Cameron, and of which Boord & Son in particular complained, were described thus—“(1) A label with a barrel lying on its side with a cat sitting on it, and having printed thereon Superior Old Tom Gin, manufactured by Thom & Cameron, Glasgow; (2) a label with a barrel in an upright position, and the cat on the top thereof, with a bottle and a glass, and having printed thereon Thom & Cameron, Cream Old Tom Gin, Thom & Cameron, Limited, Glasgow and London; (3) a label with a barrel also in an upright position, and the cat sitting on the top thereof, and having printed thereon Superior Old Tom Gin, Old Tom, Thom & Cameron, Glasgow; and (4) a label with two barrels close together laid on their side, and a third barrel on its side put on the top of them with a cat on the top of it.”
Two examples of Boord & Son's trade marks, and the four labels of Thom & Cameron in particular complained of are shown infra:—
Boord & Son.
No.20, 505.
No.263, 113.
Page: 941↓
Thom & Cameron.
No.18.
No.39.
No.39.
No.18.
In the action by Thom & Cameron the pursuers pleaded—“(1) The said trade-marks having been entered in the register of trade-marks without sufficient cause, and the pursuers having been aggrieved thereby, they are entitled to decree in terms of the first declaratory conclusion of the summons ( i.e., to have the marks expunged) … (3) The defenders having no exclusive right to the use of the figure or device of a cat, or cat and barrel, in connection with the sale of gin or other liquors, the pursuers are entitled to decree of declarator to this effect, and to decree of reduction as concluded for….”
And the defenders pleaded, inter alia — “(2) The said trade-marks having been properly and validly entered in the register of trade-marks, and having been capable of registration, the defenders should be assoilzied from the conclusions of the summons, with expenses…. (5) The defenders having an exclusive right in respect of their said trade marks, and of their established trade reputation for their goods under the term ‘Cat and Barrel Brand,’ are entitled to be assoilzied. (6) The device of a cat and a barrel not having been common to the trade in 1875 or at any other time, the defenders should be assoilzied.”
In the action by Boord & Son the pursuers pleaded, inter alia—“(1) The pursuers being proprietors of the said trade-marks, and having an established trade reputation for their goods under the term ‘Cat and Barrel Brand,’ are entitled to the sole and exclusive use of the same, and to prevent any other person, firm, or company selling their goods upon such established trade reputation. (2) The defenders having infringed the pursuers' said trade-mark and exclusive right to use the same, the pursuers are entitled to interdict as concluded for.”
And the defenders pleaded—“(1) The state ments of the pursuers being irrelevant the action should be dismissed. (2) The pursuers not having an exclusive right to the ‘Cat and Barrel’ brand, decree of absolvitor should be pronounced. (3) In respect that the defenders have not infringed the pursuers' trade-marks, they should be assoilzied.”
A proof was taken. The evidence is summarised by the Lord Ordinary in his opinion ( infra).
On 27th March 1906 his Lordship pronounced the following interlocutors:—(1) In the action at Thom & Cameron's instance—“Finds and declares that the defenders have no exclusive right to use the sign, figure, or device of a ‘Cat’ or of a ‘Cat and Barrel’ on labels, advertisements, or otherwise in connection with the sale of ‘Old Tom’ gin, but that the pursuers are entitled to use the said sign, figure, or device on labels, advertisements, or otherwise in connection with the sale of ‘Old Tom’ gin which is not made or manufactured by or on behalf of the defenders, and to sell, offer for sale, and advertise ‘Old Tom’ gin made or manufactured by or on behalf of the pursuers under the said sign, figure, or device by label, advertisement, or otherwise: Find it unnecessary to deal with the other conclusions of the action, and dismisses the same,” &c.
(2) In the action at Boord & Son's instance—“Assoilzies the defenders from the conclusions of the action in so far as they relate to ‘Old Tom’ gin: Quoad ultra dismisses the said conclusions,” &c.
Opinion. — … [ After narrating the facts, ut supra] … “The above facts, which are practically undisputed, present a formidable prima facie case in favour of the defenders' claim ( i.e., Boord & Son's) to the sole and exclusive use of the device which they have so long displayed on their labels—apart altogether from the statutory privileges which the registration of the device confers upon them. The pursuers, however, now assert that the defenders' trade-marks were incapable of registration ‘in respect that the device of a cat, or otherwise of a cat and a barrel, were in common use prior to the respective dates of registration, and were common to the trade, and were not disclaimed in the respective applications for registration.’ They gave a list of twelve firms, including their own, who they say used labels in connection with the sale of gin whereon the figures of a cat and a barrel appear. This defence was not properly raised in the Huddart case, and at all events was not elaborated in evidence as it has been here.
The labels used by the pursuers and by those other traders have been conveniently collected on sheets so as to make comparison with the defenders' registered device easy. Except that all the labels bear
Page: 942↓
the device of a cat and barrel in whole or in part, there is with perhaps four exceptions, in my opinion, no resemblance between these labels and those used by the defenders. In all of them the manufacturers' name is printed in large and legible type; and I do not think it possible that those who were familiar with the defenders' labels could for a moment imagine when they saw any of the alleged infringing labels that the contents of the bottles to which they were affixed were the defenders' manufacture. The possible exceptions are (1) labels 18 and 34, which were used on gin of the pursuers' manufacture imported by Weir, Scott, & Company to Valparaiso. There is a pretty close resemblance between these two labels and the defenders' trademark, all the more striking that the word ‘cordial,’ which the defenders from the first applied to ‘Old Tom’ is also used in the same connection on them. It is suggested, accordingly, by the defenders that the person who designed labels Nos. 18 and 34 must have seen and copied their labels, and I confess that a very small amount of evidence might have induced me to draw this inference. The history of the labels, however, has been explained by Mr Steven, the lithographer by whom they were designed at the request of Mr Scott, and the general import of his evidence is to the effect that they were not copies of the defenders' labels, of which he was ignorant, and that the resemblance is entirely accidental. No partner of the firm of Weir, Scott, & Company was examined on either side; but the proved fact that these labels have been used in the Valparaiso business since 1873, a place where the defenders say they have all along been doing business, and that there seems never to have been a complaint of the similarity between the two labels or of any injury done to the defenders' business there, are prima facie evidence that no confusion did in fact arise. In view of this, and the entire absence of contrary evidence, I am unable to hold it proved that these two labels were conscious imitations of the defenders’; and even if they had been, the name of the manufacturers, which was printed in large letters, was sufficient to prevent any person who could read from drawing the inference that the gin sold under these labels was the manufacture of the defenders. (2) The labels Nos. 200, 201, and 35 of process are all plainly taken from the same design, and also bear a strong resemblance to the defenders’. The original label No. 200 is spoken to as having been used by James Mackenzie, Son, & Company at least as far back as 1859 or 1865 and up till two years ago. It is obviously impossible to expect evidence after a lapse of more than forty years as to the history of such a label, and everything, therefore, is to be presumed in its favour. The resemblance is by no means so close as to suggest that the one design was copied from the other; and I think, therefore, I must assume that the label No. 200 was independently designed in ignorance of the defenders' label, and for all I know at an earlier date. The defenders, however, have led a large body of. evidence to the effect that in consequence of the long-continued and extensive use of their trade-mark their make of gin has become favourably known as ‘cat and barrel brand,’ and that any representation of a cat and barrel on bottles of gin is liable to be injurious to their business. It was largely on this ground that Mr Justice Swinfen Eady decided that the head of a cat protruding from the end of a barrel, which was the device used by Melrose, Drover, & Company, was an infringement of the defenders' trade-mark, although the device is perhaps more unlike the defenders' trade-mark than any of those on which the pursuers rely. The only part of the evidence on this head which impressed me was that which related to the trade with India, Burmah, and other countries where English characters are not understood and where the picture upon the bottle is the recognised mode of identifying the goods of a particular manufacturer. All that the evidence, however, comes to is, that the native dealer or middleman would be enabled, if cat and barrel labels of any kind were used on gin, to pass off as the goods of the defenders gin which was of an inferior quality, and thus succeed in defrauding the unwary purchaser to whom the words ‘cat and barrel brand,’ as applied to the defenders' gin, had become known. If the adoption of a cat and barrel on labels had been of recent use and in the knowledge or presumed knowledge of the defenders' trade-mark, it would have required very little actual evidence of deception to have predisposed me in the defenders' favour; but when I find that for half a century goods bearing some of the labels complained of have been exported to markets where the defenders' gin has been regularly sold, and that not a single instance can be adduced of a purchaser having been deceived, I am unable to draw the inference that the defenders desire. It is noticeable that in their price lists and advertisements the defenders did not until very recent years ever offer their gin for sale under the name of ‘Cat and Barrel brand.’ In this respect the case is in marked contrast with the case of the ‘C. B.’ corsets which had been widely advertised under that description, and in such a way that the public generally were not aware that the letters ‘C. B.’ were the initials of the manufacturer's name; and although the defenders produced 155 written orders as evidence that their gin has become known in the trade as ‘Cat and Barrel brand,’ only 34 of these support their contention. In 104 instances ‘Old Tom gin’ was ordered under the designation ‘Cat brand,’ and the defenders do not seek in this action to interdict the use of the device of a cat by itself on any label applied to gin. This is noteworthy, as the defenders seem to me to have quite as much—if not more—to say for their gin being known as the ‘Cat brand’ as for it being known as the ‘Cat and Barrel brand.’
I do not doubt that amongst customers of the defenders and others who had
Page: 943↓
become familiar with their trade-mark their gin would be not unfrequently spoken of as the ‘Cat brand’ or the ‘Cat and Barrel brand.’ But the defenders themselves at no time seem to have made any effort to get their goods recognised under this name; and in the great majority of cases I am satisfied that their gin was ordered under the name of the manufacturer. The evidence as to Scotland is extremely meagre on this head and relates to very recent years. Even, therefore, if the only question in the case had been one of infringement of the defenders' trademark or of the resemblance between the pursuers' and the defenders' labels being such as was calculated to deceive, I should have great difficulty in granting interdict. The case appears to me to present many features similar to those which were the subject of discussion in the case of Cowie v. Herbert, 24 R. 353, where the alleged gullibility of Orientals was also emphasised. Before dealing with this part of the case I may notice in passing that there are formal averments as to the pursuers having attempted to pass off their goods as the goods of the defenders. No attempt has been made to prove these averments, even assuming that they were relevant, and I am satisfied that they are without the smallest foundation.
But the pursuers in the action at their instance challenge directly the validity of the defenders' trade-mark, and it is necessary that I should now deal with the evidence bearing on this challenge. The evidence is voluminous, and I shall content myself with summarising the conclusions at which I have arrived as to the alleged common use of a cat and barrel device.
(1) The pursuers' business was founded by Mr Robert Thom in 1848. In 1865 he assumed Mr Cameron as a partner, and the business was carried on as a private concern until 1888, when it was converted into a limited liability company. From the commencement a moderate business in gin was done, at first in the home trade, afterwards in both the home trade and the export trade, and since 1869 in the export trade only. From 1853 onwards the pursuers and their predecessors have used a label as applied to ‘Old Tom’ gin, on which the conspicuous feature was a cat sitting on a barrel. I incline to think that No. 39 of process was the first, that afterwards No. 21 was used for a considerable time, and that concurrently with this No. 32 of process was used as a flask label. Since 1869 the label regularly used on quart bottles of ‘Old Tom’ has been No. 33 of process, although in the case of one or two customers the stock label No. 35 has been purchased and affixed to the pursuers' gin. Not unnaturally the earliest use of the label depends on the evidence of Mr and Mrs Thom. One other witness speaks to the year 1859, and from at least the year 1863 the continuous use of labels with the ‘cat and barrel’ design is, I think, amply established. Since 1873 the business has been practically stationary so far as the turnover of gin was concerned, and has amounted on the average to something between 1000 and 2000 cases per annum. Prior to that period it seems to have been of a very fluctuating nature, reaching the lowest point in 1869, so far as the information now available goes, when only 190 cases are recorded as having been sold, and rising at times, according to Mr Thom's evidence, to considerable proportions.
(2) A firm of James Mackenzie, Sons, & Company, who carried on business in Glasgow, used the device of a cat and two barrels, shown on label No. 200 of process, for some time prior to 1859. Their successors in business, Messrs Peter M'Donald & Company, used the same label until 1904, when, at the request of the defenders, they agreed to discontinue it on the ground that their trade in gin had ceased to be of any importance. The use of this label No. 200 depends on the evidence of Peter M'Donald, corroborated by J. T. Stewart, who speaks to seeing the label in 1859. Apart from this corroboration I saw no reason to doubt Mr M'Donald's evidence. He has no motive to serve by giving false evidence, and no conceivable interest in the result of the present action.
(3) Stewart Pott & Company, another firm of wine merchants in Glasgow, have, since 1859, used a label for ‘Old Tom’ gin which had the device of a cat sitting on a barrel. At first the cat was represented as sitting on the side or bilge of the barrel, but afterwards the label No. 85 of process was adopted, which closely resembles that of Thom & Cameron for flasks, except that the cat is facing in the opposite direction. It is peculiar to their case that they have apparently used this label since 1876 mainly on gin supplied by the defenders, but without arrangement with them.
(4) Messrs Wright & Greig, Limited, another large firm of distillers and spirit merchants in Glasgow, used a cat and barrel label for their gin between 1875 and 1885, after which they discontinued the use of that label and utilised one with the figure of a cat alone in the centre. Their business in gin was a small one, not exceeding a hundred cases per annum, but it was almost entirely in Glasgow and the surrounding districts.
(5) Messrs R. H. Thomson & Company of Leith seem to have used the label No. 201 of process between 1873 and 1901. Apparently they also used at the same time a label with an anchor upon it with no representation of a cat and barrel, and this became the one commonly applied shortly after 1886. The trade in gin did not exceed 500 dozen cases per annum.
(6) The use by Messrs Bernard & Company of Leith of a label having the device of a cat and barrel upon it was somewhat more extensive; and in addition Messrs Bernard caused to be printed and distributed 2000 show-cards similar to No. 203 of process. They also registered their trademark, containing the representation of the cat and barrel, for ‘Old Tom’ in May 1876, it being stated in their application that they had used it for sixteen months before. They continued to use the label until after
Page: 944↓
Huddart's case, when, at the request of the defenders, they discontinued its use and cancelled their registration. (7 and 8) For the Valparaiso market two labels were printed for Rodger & Company, and Rodger, Symington, & Company, who got the labels designed expressly with a view to a sale of the pursuers' gin. There is evidence that from 1873 large shipments of gin with these labels were made by the pursuers to Valparaiso. The other labels for Weir, Scott, & Company have already been referred to. They were also got up for that firm's use in the sale of gin at Valparaiso.
(9) The evidence of Mr Henry Hughes is to the effect that the stock label No. 253 of process was used by Mr Blake, a wine merchant in Dublin, in October 1868 and has been in use since then.
In addition to deponing to their own use of what may be called for shortness cat and barrel labels, many of the witnesses say that they understood that the device was common to the trade and that they had seen it from time to time on the labels of other persons. Most of them were entirely unaware that the defenders used a similar device on their labels or that they had registered it as their trade-mark. The existence of a stock label, which could be purchased both in Dublin and in Glasgow, with the device of a cat and barrel upon it is a peculiar feature of this case, when regard is had to the long period over which its use is proved to have extended. Taken as a whole, the evidence I think amply establishes that prior to 1879 the device of a cat and barrel as applied to ‘Old Tom’ gin was commonly used in the trade, and the explanation given by a good many of the witnesses of this circumstance is that the name ‘Old Tom’ suggested the picture of a Tom Cat sitting or standing on or near a barrel of spirits as an appropriate symbol of the commodity itself.
The defenders have no means of meeting this large body of evidence, or even of seriously criticising it. They say, and I think truly, that they were unaware of the use which seems to have been so prevalent in Scotland of the cat and barrel label in connection with ‘Old Tom,’ and they might well be so, looking to the small trade which they themselves did in Scotland. They say further, and I think with justice, that such use, in order to invalidate their trade-mark, must not merely be common use but must have been substantial and lawful. But the facts already stated are sufficient to show that the use was substantial, although probably all the traders whom I have enumerated did not together do as large a business in gin as the defenders. As regards the lawfulness of the use, if the defenders had been in a position to prove that prior to (say) 1860 their gin had become known in the market as ‘cat and barrel’ gin, it may be that they would have had a case for interdicting all others from thereafter adopting a cat and barrel device on labels used on gin bottles. As might be expected, however, the evidence to this effect is meagre in the extreme, and a very strong case indeed would have to be made out in order to show that a practice that had continued for more than forty years was all the time unlawful. Even where they did discover—as in the case of James Mellor & Sons—that a cat and barrel label had been adopted subsequent to their own registration, and were informed by the user that he considered himself entitled to continue its use, they took no steps for a period of nearly twenty years to follow up their challenge. The truth appears to be that the importance of the cat and barrel label to the defenders has grown with their increasing business, and that it is only in comparatively recent times that they have ventured to assert their right to a monopoly of these pictorial emblems in connection with the sale of gin. It is worth noticing, as corroborating the account which the witnesses gave of the numerous forms of cat and barrel labels, that no attempt seems to have been made to imitate the labels or trade-marks of other well-known distillers of London gin; and it would be extremely odd that the defenders—who did a comparatively small business in Scotland, and cannot therefore have acquired any wide reputation for their gin—should be the only victims of this supposed imitation of their trade-mark.
On the grounds above stated I should have been prepared to hold that the device of ‘cat and barrel’ was common in the trade long prior to the registration by the defenders of their trade-mark. But Mr Dickson urged that even on this assumption certain decisions in the English Courts, by which the so-called ‘three-mark’ rule has been established, were not binding in Scotland, and ought to be reconsidered as being contrary to the trade-mark statutes. It is unnecessary that I should consider this argument, as the pursuers' counsel stated that he did not press for any rectification of the register provided he obtained decree in terms of his third conclusion—this being the only conclusion in which the pursuers have a direct interest. Moreover, the defenders' registration in respect of all liquors except ‘Old Tom’ gin has not been attacked. Even as regards dry gin, there seems to be no case (apart from Melrose, Drover, & Company, Limited, who are now out of the field) of persons using a ‘cat and barrel’ label in connection with that commodity except the defenders.
It follows that the pursuers are, in my opinion, entitled to a declarator that the defenders have no exclusive right to the ‘cat and barrel’ device in connection with the sale of ‘Old Tom’ gin, and that the pursuers are equally entitled to employ the same. I think that we have here an honest concurrent user of a similar device in different parts of the kingdom by traders who never saw each other's labels, or if they saw them had not their notice specially directed to their similarity. It cannot be contended that the fact that the one business has throughout been a large prosperous and increasing one in this commodity is to prevent a smaller rival from continuing a use which has extended over
Page: 945↓
an almost equally long period. Nor do I think the element upon which Mr Dickson waxed eloquent—that the defenders' trademark is considered by them to be of enormous value, while the pursuers do not estimate the value of their ‘cat and barrel’ labels in connection with the sale of gin at a £5 note—is of the least materiality in this question of legal right. It might have been an excellent reason for the defenders settling with the pursuers upon generous terms, but is no reason at all for depriving the pursuers of their established rights.” Boord & Son reclaimed, and argued—The evidence showed that the marks in question were the property of the reclaimers; that they had been invented and used by them throughout the world; and that they had become so associated with the reclaimers’ goods that their use by other traders would be an infringement of the reclaimers’ rights. The evidence further showed that the reclaimers had done all in their power to preserve their exclusive right to the “cat and barrel” device. They had registered it as their trade-mark in 1879. Since then they had also registered it in all foreign countries where registration was possible. They had used it in the English market since 1850 and in Scotland since 1860, and their exclusive right to do so had not been challenged until the case of Huddart, cit. supra. In these circumstances they were entitled to interdict. The invention and prior user gave a right of property in the marks and entitled to prevent others using marks calculated to deceive— Hall v. Barrows, (1863) 4 De G. J. & S. 150; In re Leather Cloth Company, (1863) 4 De G. J. & S. 137; M'Andrew v. Bassett, (1864) 33 L.J. (Ch.) 561; Seixo v. Provezende, (1865) L.R.1 Ch. App. 192; Ransome v. Graham, (1882) 51 L.J. (Ch.) 897; Johnston v. Orr Ewing, (1882) L.R., 7 A.C. 219; In re Barker's Trade Mark, (1885) 53 L.T. 23; In re Christiansen's Trade Mark, (1886) 3 R.P.C. 54; In re Meeus' Application, (1890) 8 R.P.C. 25, [1891], 1 Ch. 41; In re Red Star Brand, (1893) 10 R. P. C. 436; In re Bass, Ratcliff, & Gretton, Limited, (1902) 19 R.P.C. 529; In re Bourne's Trade Mark, [1903] 1 Ch 211. The reclaimers were on the register, and that entitled them to prevent user by all others not on the register, whether such user was prior to theirs or not. Fraud did not necessarily come in, for the right in the trade-mark was a right of property—Kerly on Trade Marks (2nd ed.), 4; Millington v. Fox, (1838) 3 My. and Cr. 338; Edelsten v. Edelsten, (1863) 1 De G. J. & S. 185. User in a foreign country of a registered label did not make such label common property at home—Kerly (sup. cit.), 192, 365; Sebastian on Trade Marks (4th ed.), 16, 146; In re Munch, (1883) 50 L.T.N.S. 12; Jackson v. Napper, (1886) L.R. 35 Ch. Div. 162; In re Hudson, (1886) L.R. 32 Ch. Div. 311 ( 3 R.P.C. 155); In re Chesebrough's Trade Mark “Vaseline,” [1902] 2 Ch 1; Burroughs, Wellcome, Company v. Thompson and Capper, [1904] 1 Ch 736; De Kuyper v. Baird, (1903) 20 R.P.C. 581 (user in Ireland). In Cowie v. Herbert, January 16, 1897, 24 R. 353, 34 S.L.R. 280 (relied on by the respondents), no infringement was proved, and the law laid down in Orr Ewing ( cit supra) was not doubted. Esto that exclusive right to a trade-mark might be lost by acquiescence in the user of it by others, abandonment would not be easily presumed— Mouson & Company v. Boehm, (1884) L.R., 26 Ch. D. 398—and had not taken place here. Acquiescence would not be inferred where there was no knowledge of the infringement—Kerly, 392; Sebastian, 205; Kinahan v. Bolton, (1863) L.R., 15 Ir. Ch. Rep. 75; Ford v. Foster, (1872) L.R., 7 Ch. App. 611; Barlow v. Johnston & Company, (1890) 7 R.P.C. 395; Rowland v. Mitchell, (1896) 14 R.P.C. 37; Ripley v. Bandey, (1897) 14 R.P.C. 591; Paine & Company v. Daniell & Sons' Breweries, Limited (1893), 10 R.P.C. 217. The case was ruled by the Trade Marks Acts of 1883 and 1888. (The Act of 1905, which was now the leading Act, did not apply, as this case was raised prior thereto.) Under these statutes if (as the evidence showed) the reclaimers were the prior users, and also on the register, they were entitled to interdict all other traders whose user was subsequent to theirs, even though such other user was prior to their (the reclaimers') registration—Sebastian, p. 354, et sq.; In re Hudson's Trade Mark, 1886, 3 R.P.C. 155. As to the jurisdiction of the Scottish Courts, reference was made to Dewar v. Dewar & Sons, Limited, December 6, 1899, 2 F. 249, 37 S.L.R. 188.
Argued for respondents—The Lord Ordinary was right. There was honest concurrent user here of the “cat and barrel” device on the part of the respondents. They were challenged now for a device which they had honestly and independently invented fifty years ago. The question fell to be tried as at 1879—the date when the reclaimers registered the device as their trade-mark—and if the respondents could not have been interdicted then, they could not be so now. The issue really was — Could the reclaimers have got on the register in 1879 had their application been opposed by the respondents, or in view of the then concurrent user of the same device by the respondents. The respondents' right to continue their user was not prejudiced by their not being on the register, provided their user was an honest one. The reclaimers could not succeed without showing (1) their appropriation of the device, (2) the application of it to their goods, and (3) its exclusive association with their goods in the mind of the public — Goodfellow v. Prince, 1886, L.R., 35 Ch. Div. 9. If, as the respondents maintained, the device of cat and barrel were common property, the reclaimers could only have got on the register in respect of the disc, which was the only distinctive part of their label— Orr Ewing, (1879) L.R., 4 A.C. 479; Baker v. Rawson, 1890, L.R. 45 Ch. Div. 519; In re Christiansen ( cit. supra). That being so, the respondents had not infringed, not having the disc on their labels— Baker ( cit. supra). If, on the other hand, the “cat and barrel” were the predominant feature of the labels, the reclaimers' registration was invalid, as that device was in
Page: 946↓
1879 common to the trade. Esto that the reclaimers' registration was valid, the respondents could not be interdicted without proof of deception, of which there was none, either in the home or the foreign market. The Valparaiso labels had not been put on by the respondents, nor was there any proof that their user was dishonest. The mere fact of registration did not deprive the respondents of their existing rights. The rubric in Singer Manufacturing Company v. Kimball & Morton, January 14, 1873, 11 Macph. 267, 10 S.L.R. 173, was misleading; vide Singer Manufacturing Company v. Wilson, 1876, L.R., 2 Ch. Div. 434, L.R. 3 A.C. 376, at p. 402; and Singer Company v. Loog, 1882, L.R., 8 A.C. 15, at p. 39. There must be proof that the respondents' user was calculated to deceive— Orr Ewing v. Johnston, (1880) L.R., 13 Ch. Div. 434, 4 A.C. 479, 7 A.C. 219; Barber v. Manico, (1893) 10 R.P.C. 93; Cowie v. Herbert ( cit. supra). Three persons were entitled to be registered in respect of a device, and all on the register were entitled inter se to use it. If there were more than three applicants, registration would be refused, for the user then was common. In any event the reclaimers were barred by mora and acquiescence, for they ought to have taken proceedings after getting on the register. Not having done so, they could not do so now. At advising—
His Lordship has gone very carefully into the matter and his opinion is embodied in one long note. He has written only one note in the two actions, and has written it in the action which he has made the leading action of the two, namely, the action of Thom & Cameron v. Boord & Son. Now, I am bound to say, first of all, that I am not quite satisfied with the technical way in which the matter has been disposed of, and that not merely by way of technical criticism, for I think it goes somewhat deeply into the questions which are raised in these cases. I will make my meaning clear, I think, by first of all trying to consider what are the defences available to persons who, like Thom & Cameron, have been attacked. (I explain first that the Lord Ordinary, having taken the action of Thom & Cameron v. Boord as the leading action, calls Thom & Cameron the pursuers, and Boord & Son the defenders. I prefer, however, to deal with it the other way, because the matter is begun by Boord & Son, who are the undoubted proprietors of certain trade-marks objecting to infringement, and therefore in my judgment I shall use the term pursuers as applied to Boord & Son, and defenders as applied to Thom & Cameron.) I proceed therefore to ask myself—when the pursuer, who is the registered proprietor of a trade-mark, comes into Court and complains that his trademark is being infringed by someone else, what are the defences that are competent to a person so attacked? Of course there is an obvious defence that he does not infringe because he does not use a trademark resembling in any way the trade-mark of the pursuers. I need not pause for a moment on that one, because it is perfectly simple on the statement of it. But there are other defences competent, and in order to see what they are one must first of all see what is the right a person has as the registered owner of a trade-mark.
I need scarcely remind your Lordships that the law of trade-mark is, in one sense, partly common law and partly statutory, but is in another sense purely statutory. That is to say, that the rights which follow from registration are purely statutory. Previous to the Trade-Mark Acts altogether there was a right in a trade-mark—a right which originally depended entirely upon the proposition, or on the view, that no man was entitled to pass his goods off as another man's, and that accordingly if one man had sold his goods in association with a certain mark for such a time as to make the public when they saw the mark think the goods were his goods, another person
Page: 947↓
Now it was very early decided, and decided very authoritatively by a well-known leading case—the case of the Apollinaris Company (L.R. [1891], 2 Ch. 186) — that a person who was said to be an alleged infringer was in the sense of the statute aggrieved—that is, if he chose to say so. In other words, it was settled, and I think it is absolutely settled law, that a person who is proceeded against for infringement is entitled to say, “Apart from infringement I say your trade-mark ought never to have been on the register, and I will have the register amended and take it off.” Its presence on the register is the condition-precedent for raising an action for infringement, and it follows that if the complainer's trade-mark ought never to have been on the register, then there is an end of an action for interdict or infringement. All that was held in the Apollinaris case. The next step was that it was held that being five years on the register was no bar to removal. Your Lordships observe there was no limitation of time in section 90 for expunging entries from the register. It is simply “the Court may on the application of any person aggrieved.” Accordingly it was held that though there was limitation of time in section 76 to the effect that entry in the register should be conclusive evidence at the end of five years of the right to the trade-mark, yet the words “subject to the provisions of this Act” let in section 90, and so might control, if it was in operation, section 76. In other words, therefore, the defence open to an alleged infringer of saying that the trade-mark ought never to have been on the register was open after five years.
Now there is a whole set of cases dealing with this which I need not quote. They vary, because the reasons why the trademark ought not to have been on the register may vary, but we can take one as an example. A trade-mark ought not to be there, for instance, if it is not a registrable mark. It ought not to be there also if no one can appropriate it, and therefore I take that illustration to see what we are coming to in this case. The case of La Minerva-Habana, 27 Ch. D. 646, was a case where a mark was removed after five years at the instance of a person who was being attacked, and the ground for removal of the mark was that it ought never to have been on the register because it was common property, and that no one could appropriate it. It may be as well to digress and explain what common property means. When this register was first introduced it was obvious that among people who would apply to be registered would be not only those who for the first time had invented what was apparently a new trade-mark, and therefore proposed to get the priority of others by its registration, but also persons who sought to put on the register what they had already been using. There were of course many instances where more than one person had been using the same
Page: 948↓
I have now got so far that that is one defence that an alleged infringer may make. He may say, “Notwithstanding that five years have passed, I propose to show that the mark ought never to have been on the register at all.” But there is another defence which he may make. Without saying that a mark is common property, and that therefore the complainers ought not to have been registered as the owners of it, he may say, “I myself would have been entitled to be put on the register; it is quite true I have not applied, but I make the application now, and of course if I am entitled to be on the register for the mark there is no infringement, for I am not using any mark but my own.” That distinction was early taken, and I think it entered into the law of the decision of several cases, but I will refer merely to the admirable decision, if I may say so, of Mr Justice Stirling in Jackson v. Napper, 1886, L.R., 35 Ch.D. 162.
Now your Lordships will see that these two defences, although in one sense different, are yet technically the same. They both rest on this, that the register as it is is wrong and that it ought to be corrected. In one case the correction is by striking out the complainer's registration, and in the other case the correction is by putting on a mark as belonging to the alleged infringer. Accordingly in England I think it is perfectly well settled that if the infringer is gone against by the registered proprietor of a trade-mark who has had his trade-mark on the register for more than five years, the infringer cannot be heard to say anything on these matters unless he makes an application to rectify the register, and he cannot make that by way of defence to an action. That has been settled a good many times, but particularly in the case of Pinto v. Badman, 8 R. P.C. 181. I take it, further, that if the defence which is made here had been made in England it would not have been listened to, unless Thom & Cameron had at the same time made an application either to rectify the register by striking out Boord & Son or to rectify it by inserting Thom & Cameron as proprietors of the same trade-mark. Now, technically speaking, I do not think that that is exactly the same in Scotland, because there is a decision of this Division which is binding, and I do not intend to suggest for a moment that I have any wish to go back on it at all. I refer to the case of Dewar v. Dewar, 2 F. 249. That was an action raised by one Dewar against another Dewar, they both being in the whisky trade, concluding for declarator (1) that the defender's trade-mark “Dewar's Whisky” had been entered on the register without sufficient cause, and should be expunged, (2) that it was incapable of registration, and (3) that the defenders had no right to the exclusive use of the words “Dewar's Whisky” as a trade-mark, and for reduction of the entry in the register of trade-marks. The defender pleaded “No jurisdiction.” Well, I do not think that that phrase is very correctly used there. They did not plead “No jurisdiction” in the ordinary sense of the word, because they were a Scottish limited company. There was no question about their being subject to the jurisdiction of the Scottish Courts. I think their true plea there was not “No jurisdiction,” as stated in the rubric, but “incompetency.” What they argued was that the Court could not give the declarator that was asked for because the application was in substance for a rectification of the register, and the condition of the law in England was pointed to, and it was said that the only person who could alter the register was the person who had charge of the register—in other words, the registrar in England, who was subject to the English Court; and therefore if they wanted to get rid of this erroneous entry, as they said it was, they must go to England and present a petition and get it done there. They said that that could not be done in Scotland. That plea was repelled, and I think rightly repelled, and at any-rate the judgment is binding. It was held there that the rights of the Scottish Court were defined by section 111 of the Act, and section 111 is in these terms—“The
Page: 949↓
Now, that, I take it, is good law and was rightly decided, and that of course disposed of the plea that had been raised. It was not raised in this case, but it was in the one referred to, that technically speaking these matters could not be raised in the Scottish Court at all. But it seems to me quite clear that it leaves the underlying ratio of the matter precisely as it is in England — that is to say, it does not seem to me that you can raise this defence here any more than you can in England, unless you make rectification the positive crave. In Dewar's case it was made the positive crave, because an order was asked from this Court in one of the conclusions of the summons that the mark ought to be expunged. That also is done here in the action of Thom & Cameron against Boord, and I am quite clear that the matter is perfectly properly raised in so far as declarator is asked that the mark should be expunged on the ground that it ought never to have been on the register because it was common property. But I am bound to say that I do not think the other defence is properly raised—a defence which your Lordships will observe is per se inconsistent with the first defence, namely, that the trade-mark is not common property, but that Thom & Cameron have as good a right to it as Boord & Son. The two defences are inconsistent. I do not mean that inconsistent defences cannot be pleaded, because there are cases in which defenders can plead inconsistent defences. But these defences are inconsistent in the underlying substratum of fact, because of course it is perfectly clear that if such and such a mark was such common property that it could not be registered by B, that is equally destructive of its capacity to be registered by C. Therefore the main defence that the pursuers ought never to have put it on the register because it was common property is one defence. But that Thom & Cameron were themselves entitled to put it on the register is quite another defence. I find record for the one but not for the other, and I do not see how you can contend, without a record to support your contention, that you are entitled to be put on the register as proprietor of a trade-mark.
Now I come, after this somewhat long preamble, to the criticism which, as I think, runs rather deep into the Lord Ordinary's judgment. The Lord Ordinary has not given declarator on the conclusion which I think perfectly well raised against Boord & Son, namely, the conclusion that Boord's mark ought to be expunged from the register, but has given declarator in these words, that Boord & Son have no exclusive right to use the sign of a “Cat” or of a “Cat and Barrel” in labels, advertisements, or otherwise in connection with the sale of “Old Tom” gin. Now I point out at once that the finding that Boord have no exclusive right to the “Cat and Barrel” or the “Cat” may rest on one or other of two propositions. It may rest on the proposition that Boord's mark ought never to have been on the register, and so, not being his property, he cannot go against anybody else for using it; or it may rest on the view that although his mark is there he cannot say he has exclusive right to it, because Thom & Cameron have right equally with him. Therefore my first observation on the Lord Ordinary's judgment is that it does not show which one of these pleadings in the inconsistent defence is given effect to. I apprehend that, inasmuch as there is record for one and not for the other, he has given effect to the first, and I would have concluded that that was perfectly clear had it not been for the way in which his Lordship, after reviewing the evidence, brings in his argument. I am not going through the long note but summarising it very briefly. The skeleton of the Lord Ordinary's note is this—Boord & Son have led abundant evidence to establish their long use of this mark and that their goods have gained a reputation which is associated with the “Cat and Barrel” mark. Indeed the Lord Ordinary says that the prima facie case in favour of Boord's claim is formidable. I only pause to say that though no doubt it was necessary for Boord to lead this evidence so far as being on the question of infringement, yet so far as title is concerned I do not think it is necessary to look beyond anything but the fact that they have been on the register for five years. The Lord Ordinary goes on to say that there was sufficient evidence to establish a substantial use of this mark by other people in the trade than Boord & Son. Then he proceeds to say (and it is this that makes me doubtful what he really founds on)—“On the grounds above stated I should have been prepared to hold that the device of ‘Cat and Barrel’ was common in the trade long prior to the registration by the defenders of their trade-mark.” Then he refers to the argument about the “three mark” rule, which does not matter, and then he says —
Page: 950↓
But assuming, as I am rather inclined to do, that it is on the first that he has proceeded, I think the declarator he has given is not the proper declarator in the circumstances. I should not have made so much of this if it had been a mere technical criticism on the Lord Ordinary's judgment, but I think it goes very deep into the matter, for, in my opinion, the only question properly raised in these pleadings is the first, and not the second. I think that there is evidence enough to dispose of the second adversely to Thom & Cameron, as well as of the first, but still there is no pleading that entitles Thom & Cameron to a defence on the second. Of course the best test to take is to examine the pleas. Now, in Boord's action, that is to say, where the attack comes in, What are the pleas-in-law for the defenders? They first of all say in their averments that the “Cat and Barrel” has been used by a great many people; and then in their pleas, after the usual plea of irrelevancy, they simply put as plea 2—“The pursuers not having an exclusive right to the ‘Cat and Barrel’ brand, decree of absolvitor should be pronounced;” and as plea 3—“In respect that the defenders have not infringed the pursuers' trade-marks, they should be assoilzied.” That, I think, can only be taken with what they say before—that these marks were well known in many other places, and in particular must be taken with this—that nowhere is there intimation that they propose to have themselves put on the register. In short, I do not see how they can have a relevant defence founded on the fact that they have a right to these marks, when they say they have been used as well by all these other persons. In regard to the Thom & Cameron action against Boord, the pleas there necessarily cannot touch that point, for none of the conclusions touch it. The conclusions are only pleadable to taking a party off the register; and though there is one that Boord & Son have no exclusive right, yet there is no explanation of it in that case either, by any intimation that Thom & Cameron themselves want to go on the register.
The leading and therefore the proper question in this case is, Ought the pursuers' label to be expunged from the register as being common property? Now, I think the determination to which you would come in such a matter must vastly depend on what criticism you apply to the evidence. I think it is very necessary to keep this firmly in view—that what we are doing in this case is something very different from what one does in examining the evidence in a case, say, as to anticipation of a patent. If the right to a trade-mark was constituted by the fact that it was, so to speak, an invention, then it is quite clear that as soon as it was proved that the trade-mark had been used by anybody, however little the use was, but still had been used at a period prior to that when it was first possible to register it, that would be sufficient to put out of the way the claim to exclusive right of a person who had got registered for it. But that is not the nature of the right to a registered trade-mark. I again remind your Lordships that the idea of right to a mark by putting it on the register—that is to say, right by registration itself and nothing more—was an entirely new idea under the Acts; and there never could be any question as to competition in that matter, unless you suppose such a state of things as two people coming up at the same time and presenting themselves hand-in-hand with applications for registration of the same mark. But you can put out of view that fantastic case. Now, what we find here is Boord coming forward and entering the “Cat and Barrel,” but nobody else coming forward. Then, if it were a new mark, there could have been no question. But it was not a new mark—it was an old one; and therefore you have to consider the question of whether the mark was common property, and in doing so you must consider what you mean by property in a mark in the state of facts antecedent to the registration.
Now, property in a mark does not mean a few isolated sales under that mark, but it means, as I take it, that you had sold so much goods under it that the mark had come, in a certain market, to be associated with your goods. And it is just because I think the Lord Ordinary has, to my mind,
Page: 951↓
The question still remains as to what is to be done. Of course in the action Thom & Cameron v. Board it is simple enough; in that action there will be absolvitor. But as regards the other—Boord's action — various things are asked. The first is declarator in general terms, which is nothing, because that is merely saying that they are proprietors of their own trade-mark. Then, second, there is an interdict—that Thom & Cameron be interdicted against using the designs said to infringe the pursuers' trade-marks. Now in article 6 of the condescendence there are four labels specified as infringing, and these four labels are numbered 21, 18, 39, 33 on their card. 21 is very obviously like. Next to it is 18, and that also is like. 39 is not quite so obvious. That is the cat sitting on the top of the barrel, not on the flat end but on the round. 33 also is a cat on the top of a barrel, with a glass and a bottle. Now these two labels are certainly not so obviously like. But it seems to me that it is there that you get the benefit of the evidence which has been led by Boord & Son, and I think that the evidence is strong enough as showing such association in the trade of the “Cat and Barrel” with Boord's gin that one must not be too nice about this matter, and I think these are practical infringements of the trade-mark. I come to that conclusion all the easier, for I am fortified in my opinion with regard to these labels by the result at which Mr Justice Swinfen Eady came in the action tried before him. The labels which were held to be infringements in that action are not nearly so near to Boord's label as either of these two with which I am now dealing. Accordingly, I think that Messrs Boord are entitled to interdict in terms of that conclusion. Then there is the third conclusion for interdict against selling or passing off or attempting to pass off their manufactures as Boord's manufactures. I do not think there is any proof of that. That would be a fraudulent proceeding on the part of Thom & Cameron which I do not think they have been guilty of, and it would not be right to stigmatise them by an interdict against a proceeding which they have never contemplated. Therefore I do not think decree ought to be granted on that conclusion. In regard to the conclusion for delivering up papers, I think that is not one the pursuers insisted upon.
My opinion therefore is that the Lord Ordinary's interlocutor should be recalled, and that in the one case there should be decree of absolvitor, and in the other case there should be decree in the terms of the first and second conclusions.
Page: 952↓
The Court pronounced the following interlocutors:—
(1) In the action at Boord & Son's instance—“Recal said interlocutor: Find and declare, interdict, prohibit, and discharge in terms of the first and second conclusions of the summons: Quoad ultra dismiss the action, and decern…
(2) In the action at Thom & Cameron's instance—“Recal said interlocutor: Assoilzie the defenders from the whole conclusions of the action, and decern….”
[Counsel for reclaimers moved for the certificate in terms of section 46 of the Trades Marks Act 1905, which was granted.]
Counsel for Boord & Son (Reclaimers)— Scott Dickson, K.C.— C. N. Johnston — Grainger Stewart. Agents— T. & W. A. M'Laren, S.S.C.
Counsel for Thom & Cameron (Respondents)—Solicitor-General ( Ure, K.C.)— C. D. Murray. Agents— Cumming & Duff, S.S.C.