Scottish Court of Session Decisions

Charles P. Kinnell & Company, Limited, hot-water engineers, Southwark Street, London, raised an action against A. Ballantine & Sons, engineers and iron-founders, Boness, as a firm, and against David Ballantine and Archibald Ballantine, the individual partners of the firm, for declarator “that the pursuers have sole and exclusive right to the use of the name ‘Horse Shoe’ as applied to boilers, and that said name applies exclusively to boilers manufactured and supplied by the pursuers, and that the defenders are not entitled to sell, offer, or advertise for sale, or dispose of as ‘Horse Shoe’ boilers any boilers manufactured by them, or not manufactured and supplied by the pursuers,” and for interdict against the defenders “from issuing circulars, lists of prices, or other documents in which boilers not manufactured and supplied by the pursuers, and in particular boilers of the defenders' manufacture, are described as ‘Horse Shoe’ boilers, and from in any other way describing boilers manufactured

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or supplied by them as ‘Horse Shoe’ boilers, and from selling, disposing of, or in any other way passing off such boilers as being ‘Horse Shoe’ boilers,” and for £500 damages.

The facts of the case appear from the opinion ( infra) of the Lord Ordinary ( Mackenzie), who on 7th November 1908, after a proof, pronounced this interlocutor—“Finds and declares, interdicts, prohibits, and discharges, in terms of the conclusions of the summons thereanent, and decerns: Decerns against the defenders for payment to the pursuers of the sum of fifty pounds sterling (£50) in name of damages.”

Opinion.—“The pursuers, who are hot-water engineers in London, ask for declarator that they have the sole and exclusive right to the use of the name'Horse Shoe’ as applied to boilers, and for interdict against the defenders, a firm of engineers and iron-founders at Bo'ness, from issuing circulars, &c., in which boilers not manufactured and supplied by the pursuers, and in particular boilers of the defenders' manufacture, are described as ‘Horse Shoe’ boilers, and from selling or passing off such boilers as being ‘Horse Shoe’ boilers. There is then a conclusion for damages.

There is here no question of a patent right. Nor is there any question of trademark.

The defence is that the pursuers have no exclusive right to use the name ‘Horse Shoe’ in connection with boilers, and that the term is descriptive merely of a particular type or shape. The pursuers maintain that in the market ‘Horse Shoe’ boilers mean their boilers, and those of nobody else; and that the defenders have put on the market boilers designated ‘Horse Shoe’ boilers in such a manner as to be likely to mislead the merchants who purchase from them, or the ultimate purchaser from these merchants. The legal principle applicable to such a case as the present is not in dispute between the parties, and it is this, that no one has a right to represent his goods as being the goods of somebody else. The authorities on this branch of the law are for the most part just illustrations of the application of this principle.

The first question is whether in the trade the term ‘Horse Shoe’ has acquired a secondary or special meaning when applied to boilers. What may to the ordinary public seem merely a description of the article sold, may to the trade involve a representation that the article is the make of a particular manufacture. Reddaway v. Banham [1896], A.C. 199, the ‘Camel Hair Belting,’ was a case where the respondents were restrained from describing their belting as ‘Camel Hair Belting,’ though it was made of camel hair, because that would deceive purchasers into the belief that they were getting something they were not getting, viz., belting made by the appellants. In the case of Cellular Clothing Company v. Maxton & Murray, [1899], A.C. 326, 1 F. (H.L.) 29, the pursuers failed because it was held (1) that the word ‘Cellular’ was an ordinary English word which appropriately and conveniently described the cloth of which the goods sold by the respondents were manufactured; and (2) that the term had not been proved to have acquired a secondary or special meaning so as to denote only the goods of the appellants.

Upon the question whether ‘Horse Shoe’ boilers mean boilers of Kinnell's make, or whether they mean boilers of a particular kind without reference to any particular maker, the evidence is to my mind strong that the name ‘Horse Shoe’ has come in the trade to be associated with boilers of Kinnell's make alone.

The name was first applied in 1883 to a boiler with which Kinnell gained the silver medal at the Royal Horticultural Society's Show in 1883. The boiler itself is produced. It is circular, and not of the shape of a horse shoe. This corroborates Kinnell's evidence that the name was adopted by him as a fancy title, ‘Horse Shoe’ being associated with good luck. Subsequent to that the pursuer pushed the sale of his boilers under the name of ‘Horse Shoe.’ The boilers sold were of the shape of which the section [in some instances] resembles the letter U, the section [in others] resembles a horse shoe. During the last twelve years the pursuer spent upwards of £2000 solely in advertising the ‘Horse Shoe’ boiler. A large number of testimonials have been received by him from persons who have bought and used the boiler. In 1884 two patents were taken out for an invention which were applied to the boiler. These were allowed to lapse in 1887 and 1888.

The evidence upon this point is, I think, correctly summed up in two passages in the cross-examination of Edwardes, a witness for the defenders, who says (1) that he does not know of any boiler not manufactured by Kinnell having been sold to or bought by the public under the name ‘Horse Shoe’; and (2) that all boilers similar in shape to Kinnell's not manufactured by them are called by names other than ‘Horse Shoe.’ A number of instances of this are given in the proof, e.g., the ‘Heel’ boiler of the Thames Bank Iron Company and the ‘Oulton’ boiler of the General Iron Foundry Company.

The criticism was made upon the pursuers' witnesses that they are all buyers from Messrs Kinnell, and that in some cases they believed it was only Messrs Kinnell who were entitled to manufacture these particular boilers. The admissions made by Edwardes and also by Reid, together with the fact that these witnesses, as well as those examined for the pursuers, have had a large experience in the trade, are in my opinion a sufficient answer to these points.

I therefore hold it proved that ‘Horse Shoe’ boilers mean boilers made by Messrs Kinnell, and not boilers of a particular kind without reference to any particular maker. If this is so, and if the defenders have been selling their boilers under such a designation as to deceive the public into the belief that they are obtaining the boilers

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of Messrs Kinnell, then as is pointed out by Lord Herschell in Montgomery v. Thompson, [1891] AC 217 (Stone Ale), they ‘ought not the less to be restrained from doing so, because the practical effect of such restraint may be much the same as if the person seeking the injunction had a right of property in the name.’

The position of the defenders in regard to these boilers is this: They had for a number of years made for the pursuers the component parts of these boilers, and had despatched them to the pursuers, who then fitted them together. On each boiler was cast the name of the maker Kinnell and the title ‘Horse Shoe.’ In 1903 the pursuers, who had started a foundry of their own, ceased to employ the defenders. The defenders, who had retained the patterns, continued to make boilers of a similar type, some of which were supplied to the General Iron Foundry Company as ‘Oulton’ boilers, and some to the Thames Bank Iron Company as ‘Heel’ boilers. The name ‘Heel’ was cast on the boilers, the name ‘Oulton’ was not. The name ‘Horse Shoe’ was not cast on any of them.

In February 1906 the defenders began to issue price lists which had printed on the front page ‘Horse Shoe’ boilers, and their name and address. They sent none of these to the pursuers. The account shows that 1000 copies were ordered, 500 with the name Ballantine and 500 without. The defenders' clerk depones that at that time they had occasional inquiries from customers for ‘Horse Shoe’ boilers. His evidence is that they sent out about 100 of these circulars. In September 1906 the defenders began to supply Young & Marten, customers of Messrs Kinnell, London, with ‘Horse Shoe’ boilers. The pursuers heard of this, and on 17th January 1907 wrote to Young & Marten complaining of a catalogue of theirs in which they illustrate and offer for sale ‘Horse Shoe’ boilers and call them so, and also under a particular title the ‘Crescent,’ and stating that the use of the title ‘Horse Shoe’ boilers is calculated to mislead buyers. The reply was that Young & Marten regarded the words as descriptive merely, but that they regarded Messrs Kinnell had gained a well-earned reputation for their horse-shoe form of boiler, and that they would omit the words from the catalogue. Correspondence passed on the subject between Young & Marten and the defenders, the result of which was that the latter said the use of ‘Horse Shoe’ boilers had better be dropped.

In November 1907 the price list issued by the defenders came to the knowledge of the pursuers, and they on 7th November 1907 wrote challenging the defenders. The defenders replied that they had learned from one of their customers (this was Young & Marten) that the pursuers were objecting to the use of the name, and that immediately on receipt of this information they had stopped using it and had not since issued any lists bearing it. Further correspondence passed, in which it was pointed out that although in the list complained of the word ‘Horse Shoe’ had been deleted in ink it was quite legible, and claiming damages, payment of which was refused, hence the present litigation. Between the time when Young & Marten wrote to Ballantine and the time Kinnell wrote to him about thirty of the lists were issued. In these lists the word ‘Horse Shoe’ was struck out and ‘Greenhouse’ substituted. In December 1907 lists were printed in which the boilers were called ‘Compact.’ About 800 or 900 of the ‘Horse Shoe’ price lists were destroyed.

It was argued for the defenders that there was and could be here no misleading of the purchasers, who were merchants and knew that what they were getting were boilers, not of the manufacture of Messrs Kinnell, but of Ballantine & Sons; that there was no sufficient evidence of boilers being supplied under the name ‘Horse Shoe’ to any of the general public; and that this case differed from any of those cited in which it had been held there was passing off, because here the boilers sold by Ballantine & Sons had not ‘Horse Shoe’ stamped upon them.

In Wotherspoon v. Currie, L.R., 5 E. & I. Ap. 508 (Glenfield Starch), it was pointed out by the Lord Chancellor (Lord Hatherly) that it is not upon a mala mens towards the first purchaser that the decision of these cases rests. In that case the goods were labelled ‘Glenfield Starch, and it was a necessary consequence that the first purchaser was enabled to deceive others by this means. The principle, however, appears to me to be applicable here, though the circumstance of the label is wanting. The boiler made by Messrs Kinnell had a well-established reputation. It is known as the ‘Horse Shoe.’ A member of the public wants the ‘Horse Shoe’ boiler, not because it is a particular shape, nor because it is made by a particular maker, but because his neighbour, who has a ‘Horse Shoe’ boiler in his greenhouse, has told him it has given satisfaction. If the merchants who buy from the defenders receive from them price lists of ‘Horse Shoe’ boilers, if when they send an order the invoices hear that ‘Horse Shoe’ or ‘H.S.’ boilers are being supplied, then the means are placed in their hands of delivering to customers who ask for ‘Horse Shoe boilers, not the ‘Horse Shoe’ boiler of Messrs Kinnell, but a ‘Horse Shoe’ boiler made by Ballantine & Son. In such a case the customer would not get what he really wanted. In some cases the boilers so supplied were stamped with a particular name, but in other cases there was no name upon them. There was no name cast on the boilers supplied to Young & Marten by the defenders.

It was maintained, however, that the evidence does not instruct such a case. It is not necessary that a case of actual deception should he proved. It is sufficient if what is done is calculated to deceive. There is evidence that the general public in inquiring for these boilers inquite for them under the name only of ‘Horse Shoe’ boilers. This is spoken to by the witness

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Swain, who for the last ten years has purchased from 50 to 100 of Kinnell's ‘Horse Shoe’ boilers a-year. The witness Hayward, who has sold 2000 of these boilers, says that in his experience customers come in and say they want a boiler similar to what has been supplied to a friend, calling it a ‘Horse Shoe’ boiler. The defenders also had inquiries from customers for ‘Horse Shoe’ boilers in February 1906, according to the evidence of their clerk. Though the defender in his examination-in-chief made it appear that their business is wholesale, in cross he admits that they have supplied people locally who have asked for ‘Horse Shoe’ boilers and supplied them under the name ‘Horse Shoe.’ This in my opinion is evidence that in certain cases the defenders took a benefit from the reputation of the ‘Horse Shoe’ boiler, which had been established by the Messrs Kinnell. From the list in process and the evidence of the pursuer it appears that seven of the customers who used to buy ‘Horse Shoe’ boilers from the pursuers have ceased and are buying from the defenders. The fact that the boilers did not bear the stamp ‘Horse Shoe,’ if they were sold under that title, is not sufficient to make a difference. In my opinion the pursuers are entitled to interdict. This does not mean that the defenders may not describe boilers made by them as horse shoe in shape, provided they do so fairly.

Upon the question of damage it is proved that the pursuers' sales decreased last year by over 100 boilers, but that is open to the observation that bad trade may account in some measure for the diminution. During the time the price list complained of was in circulation the defenders admit selling 104 boilers at an average profit of 10s. 6d. It was not until October that the defenders commenced to call their boilers first ‘Greenhouse’ and then ‘Compact.’ The pursuers put their profit at 35s. The discount allowed by the defenders probably accounts for the difference in the figure. The pursuers are entitled to some damages. In the circumstances I am of opinion a sum of £50 should be allowed. The pursuers will be found entitled to expenses.”

The defenders reclaimed, and argued—(1) The word “Horse Shoe” was descriptive. Whatever the idea of Kinnell in first using the word might have been, “Horse Shoe” was in fact appropriate to describe the boiler. It was appropriate not merely to those of Horse Shoe or U shape, but even to those of cylindrical shape. But in fact it was only used now to describe the Horse Shoe and U-shaped boilers. Even assuming it was in origin a fancy name, even an invented or fancy name, e.g., linoleum, granolithic, might become descriptive, and it then might be used by others than the inventors provided there was no attempt by the latter to pass off their goods as those of the first users— Linoleum Manufacturing Company v. Nairn, 1878, 7 Ch D 834; Stuart & Company v. Scottish Val de Travers Paving Company, Limited, October 16, 1885, 13 R. 1, 23 S.L.R. 11; Singer Manufacturing Company v. Loog, 1882, 8 Ap. Cas. 15. (2) A proprietary right could not be acquired to a descriptive name, and to show that the primary meaning of the word had been completely displaced, and that it had acquired a secondary meaning, denoting exclusively the goods of a particular manufacturer, if not impossible, required the strongest evidence— Cellular Clothing Company v. Maxton & Murray, July 12, 1898, 25 R. 1098, 35 S.L.R. 869, aff. April 27, 1899, 1 F. (H.L.) 29 [1899], A.C. 326 (especially opinion of Lord Shand, p. 339–40), 36 S.L.R. 605; Reddaway v. Banham [1896], A.C. 199; Parsons v. Gillespie [1898], A.C. 239; H. E. Randall, Limited v. E. Bradley & Son, 1907, 24 R.P.C. 657, at 663 ( aff. 773). To establish exclusive use, evidence regarding the period when the patents were still running was of little avail— Cellular Clothing Company ( cit. sup.), Lord Davey at 343–4. The only case in which a secondary meaning had been so acquired and injunction or interdict granted was Reddaway v. Banham ( cit. sup.), and the fourth question there (p. 201) must be answered affirmatively before interdict could be granted; the mere use of the name by the defenders was not sufficient; an endeavour to pass off must be shown—Lord Halsbury at p. 210. The ground of injunction there was passing off. Here neither actual deception nor intention to deceive had been shown. Indeed the defenders' names on the price lists complained off made it impossible, or at any rate very unlikely, anyone would be deceived. Moreover, the action here was not laid on passing off, but on right to the exclusive use of the name. In any case, there being no proprietary right in the name, interdict could not be granted in the terms sought, but as in Reddaway ( cit. sup.) must be qualified by such words as “without distinguishing their goods from those of the pursuers.”

Argued for the pursuers (respondents)—(1) The word “Horse Shoe” as applied to boilers was not descriptive. It was not the natural word to use in describing the boiler, nor an accurate and appropriate description of it. This distinguished the case from Cellular Clothing Company ( cit. sup.) It was applied indifferently to cylindrical Horse Shoe, and U-shaped boilers. It had been first applied to a cylindrical boiler, and most of the boilers now made by them were not horse-shoe in shape. The fact that other competitors in the trade had adopted different names for similar boilers was in favour of its being regarded as a fancy name. (2) Even if descriptive it had come to denote boilers of the pursuers' manufacture only. That was the meaning in the market as proved by the evidence. When a name denoting goods of A's manufacture was used by B, it was not necessary for A in order to entitle him to interdict to show there had been actual deception, but only that the use by B was likely to deceive — Scottish Union and National Insurance Company v. Scottish National Insurance Company, Limited, 1909 S.C. 318 (Lord Kinnear's opinion), 46 S.L.R. 267; Singer Manufacturing Company v. Kimball & Morton,

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January 14, 1873, 11 Macph. 267, 10 S.L.R. 173; Singer Machine Manufacturers v. Wilson, 1877, 3 A.C. 376. (3) As to damages, £50 was less than the profit defenders had made out of Horse Shoe boilers.

At advising—