In the Matter of an Application to Register a Trade Mark by wine and spirit merchants, viz. :-J. Beazer, managing director of J. G. Northam & Co. Ld., Bristol; J. W. Parriss, a director of James Buchanan & Co. Ld., of the Black Swan Distillery; E. Mitchell, trading as W. J. Smith & Co., Brighton; D. McAllister, of Newcastle-on-Tyne; E. A. Jones, of Cardiff; 5 and M. O'Halloran, of Dublin. The Applicants' witnesses cross-examined on behalf of the Opponents included the above named John Kinahan and W. Nash, and the following, who spoke to having known or used the Applicants' whisky as "Kinahan's Whisky" in England, although in most instances it was obtained through friends in Belfast or by favour of members of the Applicants' 10 firm :-George Stampe, of Great Grimsby; Dr. H. R. Phillips, of London; G. H. Grocock, of Manchester; J. O. Wallace, of Rothbury; and Charles Kinahan, of Liverpool; and G. Dickinson, of Fleetwood, who had, as secretary of a club, ordered "Kinahan's Whisky" for seven years from the Applicants on the recommendation of the captain of a Fleetwood steamer. 15 John Cutler K.C. for the Opponents.-(1) The Applicants are not entitled to the benefit of a user of the label in question with what cannot be excused as a blunder, but which was really a gross misrepresentation; this was an illegal user within the decision in Fuente's Trade Mark (8 R.P.C. 214; L.R. (1891) 2 Ch. 166). In Altman's Trade Mark (21 R.P.C. 753) there was an 20 honest mistake, although a stupid blunder. (2) The Register should not, in view of the Applicants previous registration of Trade Mark 71,721, be cumbered with the proposed mark, which is in substance the same (Flayer's Trade Mark 18 R.P.C. 65; L.R. (1901) 1 Ch. 382). Sebastian, with him, for the Opponents.-Even if the Applicants' whisky is 25 known as 66 Kinahan's" in the Belfast district (and the evidence does not really show that it is so known outside), they ought not to be allowed to invade our district, which is world-wide, with the advantages of registration. Their whisky is not on sale in this country except to persons knowing members of their firm or through presents. Their attempt to sell their goods in England as 30 "Kinahan's" is "passing off," and registration would enable them to preOccupy the field abroad. They should be left to their rights at common law. Counsel for the Applicants were not called on. 666 KEKEWICH J.-For the purposes of my judgment I find it unnecessary to refer in detail to more than one point made by the Appellants. That is put in 35 the forefront of their case in paragraph 2, and it runs thus: The Appellants' "whisky always has been and is invariably sold as Kinahan's Whisky' all "over the world and the term 'Kinahan's Whisky' means the Appellants' "whisky." In my judgment that has entirely broken down and it lies at the root of the Appellants' case. 40 1 will take the second branch first. The allegation is that "the term Kinahan's Whisky' means the Appellants' whisky." I understand that to mean, wherever it is sold all over the world. The evidence goes to this, putting it in the strongest possible way in the Appellants' favour, that in many places, and for a long time, where and during which Kinahan's, the Appellants' whisky, 45 has been sold, and the Respondents' whisky has not been sold, and has not known, those who have sold Kinahan's whisky, and those who have purchased it, have recognised "Kinahan's Whisky," as being "Kinahan's Whisky," that is to say the whisky manufactured by the only manufacturers whom they knew, namely, the Dublin Limited Company. They never heard 50 of any other manufacturer; they never heard of any other whisky bearing in any way the name of Kinahan, and, therefore, as a matter of course, when the publican or spirit merchant bought this particular whisky, of course, he bought "Kinahan's Whisky," and when the purchaser purchased it he, of course, took 55 been it as 68 Kinahan's Whisky." If he ordered what he had had before he ordered “Kinahan's Whisky." That does not help one in the least to find a secondary In the Matter of an Application to Register a Trade Mark by use of the term, such as we have had frequently where the case has been brought within the rule laid down by Lord Halsbury in Reddaway v. Banham (13 R.P.C. 218; L.R. (1896) A.C. 199), the camel-hair belting case. It is quite possible, and not at all an infrequent occurrence, that you can establish an entirely secondary use of a particular name applied to goods sold by a 5 particular firm if you find that generally, without exception, the goods sold by that particular firm are described by that particular name which becomes really by that their property, and which cannot be used by anybody else without misrepresentation and an endeavour to deceive the purchaser into the belief that he is purchasing the rival's goods. There is nothing of that kind 10 here, and it is impossible to my mind to build up a case on such evidence as I have described. I do not think it takes one a step really in advance, or that any progress is made by such evidence, towards the conclusion at which the Appellants wish me to arrive; but even granting that, it carries one but very little way, and it would be impossible on such evidence 15 to conclude that the term "Kinahan's Whisky" means, anywhere, the Appellants' whisky. But when one comes to examine the evidence on the first branch of the allegation, the weakness of the evidence on the second is even more apparent. The first branch is this: "The Appellants' whisky always had been, and is 20 "invariably sold as 'Kinahan's Whisky' all over the world." We have had evidence here to-day, some on affidavit, and some in the witness-box, to show that the Dublin firm manufactured whisky of several different characters, some older, some more refined, some more expensive, some cheaper, and known by I think eight different names, and I gather from the evidence that the eight 25 names mentioned in the affidavits do not exhaust all the titles of the whisky sold by the Dublin firm. We have evidence that some of those who sell their whisky bave never dealt with any but one sort of whisky, "L.L." and some have only dealt in two, and they know nothing about the others at all; some of the witnesses never heard of any others; some knew them by reference 30 to labels which they they had seen, or Price Lists; and some of them tell me in the plainest way that what they know is not "Kinahan's Whisky" but "Kinahan's L.L. Whisky," and though, likely enough, brevity being easily adopted, it is sometimes called "Kinahan's Whisky" without "L.L." by those who do not know that there is anything else but the "L.L." whisky, that seems 35 by no means the rule, because the Appellants' own evidence goes to show that people do know their other whiskies by different titles. Therefore, the suggestion that each of these different sorts of the Appellants' whisky is invarially sold as “Kinahan's Whisky seems to me to be utterly unfounded. Not only is it not supported by the evidence, but the evidence entirely contradicts 40 that view. Now that I have the complete evidence I can go a step further. The Respondents' whisky is not so well known, indeed they seem to have a comparatively small trade, and it is confined apparently to a very few places in this country. But those who sell and those who purchase the Respondents' whisky 45 know that 66 as Kinahan's Whisky." They are not so courageous as to say that their whisky is invariably sold all over the world as "Kinahan's Whisky," and that, therefore, nobody else is to sell "Kinahan's Whisky." Of course, any suggestion of that kind would break down perhaps even worse than that of the Appellants, but there is quite as much evidence really in support of it as there 50 is in support of the Appellants' case. Where the Respondents' whisky is sold, and the other is unknown, there the Respondents' whisky is spoken of as "Kinahan's Whisky." True, the evidence goes to show that generally it is called "V.O. Whisky," and it is known better by that name, but there is no reason why it should not be sold as "Kinahan's Whisky," and I gather from 55 In the Matter of an Application to Register a Trade Mark by the evidence that it frequently is talked of, perhaps without precision, as "Kinahan's Whisky." 66 plain to "Kinahan's The object of this Appeal is to prevent the Respondents putting on the Register a Trade Mark, which does not contain the words "Kinahan's Whisky." 5 but does contain a blank which can easily be filled up in use, and is intended to be filled up in use, so as to make the words "Kinahan's Whisky whoever looks at the Trade Mark. The main objection to that Trade Mark is that it will enable the Respondents to sell their whisky as 10 words Whisky." Why not? If the Appellants have not established a right to the "Kinahan's Whisky as a monopoly, why should not the others be entitled to sell theirs as " Kinahan's Whisky," especially as the proposed Trade Mark contains other words which show distinctly that the whisky which is intended to be sold by the Respondents is not that manufactured by the Appellants but that it is a whisky of an entirely different character. Some 15 witnesses have taken it upon themselves to swear that it is obvious that that Trade Mark would be calculated to deceive, and that it would deceive; but the less said about the affidavits the better. I must use my own eyes, and my own eyes tell me that, to almost the unwary purchaser, but certainly to any person of ordinary intelligence, there is quite enough on the Trade Mark to 20 tell him that he is dealing with the Belfast firm, and not with the Dublin Limited Company. It is a different name, though they both have the word "Kinahan," and it can be seen clearly from the Trade Mark that what he is buying is not Kinahan & Co.'s whisky, and certainly not Kinahan & Co.'s "L.L." whisky or anything of that kind. The result is that to my mind the Appellants break down on what is really their first and main point-the one which really has more in it than anything else. 25 30 As regards the other points, I am content to refer to the decision of the Comptroller, and I agree in his conclusions, and I think the reasons which he gives for those conclusions are sound. The Appeal must be dismissed with costs. Star Cycle Company Ld. v. Frankenburgs. IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION. Before MR. JUSTICE SWINFEN EADY. November 13th, 14th, 15th, and 16th, 1906. STAR CYCLE COMPANY LD. v. FRANKenburgs. Passing-off and infringement of Trade Mark.-" Star Cycles."-Use by 5 Defendant in trade catalogue of name "Midland Star."-Actual fraud held not proved.-Concurrent user of name by third parties.-Probability of deception not established.-Action dismissed. The Plaintiffs and their predecessors had carried on business for many years as makers of cycles at the Star Cycle Works, Wolverhampton, and had used a 10 Trade Mark, registered in 1891, and consisting of the device of a Star, in connection with the sale of their cycles, which were well known as "Star" cycles. In an action for passing-off and infringement of the Trade Mark, the Plaintiffs complained of an advertisement of "Midland Star" cycles and cycle frames in the Defendant's price list; they also charged the Defendant with having accepted 15 an order for a "Star" cycle, but on a Motion for an interlocutory injunction that charge failed, and it was held that the probability of deception had not been established, and no Order was made, except as to costs. The Plaintiffs claimed to be entitled to the exclusive right to the use of the word "Star," alone or in combination, in the sale of cycles and cycle parts and accessories, but at the trial 20 they limited their claim to cycles and frames. The Defendant proved that a considerable sale of cycles under various names of which "Star" formed a part had been going on openly for several years unchallenged by the Plaintiffs. The Defendant alleged that the name " Midland Star" was innocently adopted; that his price list was issued, and his cycles were sold, to the trade only; that the 25 advertisement could not deceive; that his device containing a Star had never been affixed by him to any cycle; that he had never sold a cycle or frame under the name “ Midland Star"; and that the Plaintiffs regularly sold cycles without any name on them. Held, that the Defendant had adopted the name "Midland Star" without any 30 fraudulent intention; that the Plaintiffs had no exclusive right to the use of the word "Star"; and that the probability of deception had not been established. The action was dismissed with costs. Star Cycle Company Ld. v. Frankenburgs. On the 8th of February 1906 the Star Cycle Company Ld. commenced an action against Hyman Frankenburg, trading under the name of, and sued as, servants, workmen, and agents, from in any manner passing off, or enabling or 5 assisting others to pass off, any cycles or parts of cycles or accessories to cycles and from selling or offering or exposing or advertising for sale or procuring to be sold any such goods as aforesaid under the description of a Star or the name "Star," with or without additions, or under any other name which, by reason 10 of colourable imitation of the said name or otherwise, was calculated to represent or lead to the belief that such goods were the Plaintiffs' goods, and from in any other manner using any such description or name as aforesaid, so as to be culculated to represent or lead to such belief as aforesaid, and from in any manner infringing the Plaintiffs' registered Trade Mark, No. 155,130, and 15 claiming consequential relief. The Trade Mark referred to was registered for bicycles and certain other articles in Class 22. It consisted of the device of a Star. It was originally registered in March 1891, and was transferred to the Plaintiff Company in 1897, on the formation of the Company. The Plaintiffs moved for an interlocutory injunction in the terms of the writ, as set out above. 20 They alleged that their cycles and those of their predecessors had been long known as "Star" cycles, and that the name indicated their goods only; they complained of an advertisement by the Defendant in his trade circular of the "Midland Star" cycle, and they alleged that the Defendant had accepted an order for a "Star" cycle, but this was denied. The Motion came on for hearing 25 on the 9th of March 1906 before Mr. Justice SWINFEN EADY, who, on the 23rd of March 1906, held that the charge of actual fraud failed, and that the probability of deception had not been established. No Order was made on the Motion, except that the costs should be costs in the action (see 23 R.P.C. 337). 30 35 40 66 66 66 66 66 66 66 66 The Plaintiffs by their amended Statement of Claim alleged as follows :— (1) The Plaintiff Company was incorporated on the 16th day of December 1896, for the purpose of acquiring, and they in fact thereupon acquired as a going concern and have ever since carried on, a business consisting in the manufacture and sale of cycles and parts of cycles and accessories to cycles "which had theretofore been carried on under the name of the Star Cycle Company (Sharratt and Lisle), Limited. (2) The said business carried on by the Plaintiff Company, and by their predecessors in business (all of whom are hereinafter described as the Plaintiffs) was first established in or prior to the year 1884, and throughout the whole of the period aforesaid the Plaintiffs' goods have been distinguished and identified by the distinctive name 'Star.' Their said business has been and is carried on at their works in Wolverhampton, known as the Star Cycle Works,' and the representation of a Star has been and is their registered Trade Mark, No. 155,130, which was originally registered as of the 25th day of March 1891, and is standing on the register 45 "in the Plaintiffs' name. (3) Throughout the whole period aforesaid the name Star Cycle' has been the distinctive name of the Plaintiffs' cycles, and the different varieties of such cycles have been distinguished from one another by other names in combination with the name 'Star,' such as 'Special Star,' Model Star,' 'La Grande Star,' 'Surprise Star,' and the like, the name 'Star' indicating the Plaintiffs' make, and the name prefixed indicating the variety. (4) The Plaintiffs have throughout the period aforesaid expended considerable sums of money in continuously advertising and pushing the sale of their Star' cycles and parts and accessories, and the said name Star,' with or without a prefix, indicates exclusively both to the trade and the public that cycles or parts or accessories to which the name is applied are the Plaintiffs' goods, and anyone asking for or ordering cycles or other goods as aforesaid 50 66 66 55 |