Boord & Son v. Thom and Cameron Ld.-Thom and Cameron Ld. v. brand or "Cat and Barrel" brand, though it did not appear that they themselves at least till very recently-so called it. At various dates since 1853, when Thom and Cameron first began to use a label with a cat and barrel, such devices had been used by various firms, but these firms did little trade in gin. 5 Most of them were firms in Scotland, where the trade in gin is small. When Boord & Son knew of the use of these devices they wrote to the users requesting that the use of them should be discontinued, and they always succeeded in stopping the use, except in the case of one Mellor of Liverpool, who in 1886 refused to discontinue the use of his device. The traveller in that district of 10 Boord & Son having died, the matter, so far as Mellor was concerned, was dropped. After the case of Boord v. Huddart, Boord & Son became aware of the use of the device by most of the firms referred to in the present action, and wrote requesting them to cease such use. All the firms so communicated with, except Thom and Cameron, dropped the device. In no case was it one of any 15 importance to those who discontinued it. A brief description of the various labels produced may now be given :(1) Thom and Cameron Ld.-The labels are described and figured supra. A red star may be shown on the centre of the barrel in No. 33. (2) James Mackenzie, Sons & Co., Glasgow.-Two barrels placed on their bilge, side by 20 side, and a cat with an uplifted paw standing on the nearer. The words "Old Tom" are on and above the barrels (No. 200 of process). (3) Stewart, Pott & Co., Glasgow.-A cat sitting on the top of a barrel or hamper set on end. There is a blue background with blue spaces between the staves of the barrel. "Finest Old Tom" is written round it. (4) Wright and 25 Greig Ld., Glasgow.-A cat sitting on the end of a small barrel marked with an X. "Old Tom Gin" written below. Also a cat without a barrel. (5) R. H. Thomson & Co., Leith.-A label similar to that of James Mackenzie, Sons & Co. (6) Bernard & Co., Leith.-A cat rubbing itself against a small barrel set on end and marked "Old Tom Gin." The design formed part of 30 a registered Trade Mark, which consisted of the above on a small scale on the field of a shield supported by griffins and having a bear for crest. They cancelled their registration after the decision in Boord v. Huddart. (7) Rogers & Co., Valparaiso.-A label resembling Thom and Cameron's on gin obtained from that firm. (8) Rogers, Symington & Co., Valparaiso.—A cat in 35 a crouching position on a barrel set on end. "Old Tom" below and on the barrel. They also obtained their gin from Thom and Cameron. (9) Weir, Scott & Co., Valparaiso, used a "stock label "-i.e., one which is kept in stock by a printer with the name in blank and can be obtained printed over with his own name by any trader. This label represented a cat with uplifted paw in 40 the same attitude as that in Boord & Son's label standing on the top of a barrel on its bilge, which was again supported by two other barrels laid on their bilge below it. They got their gin from Thom and Cameron, who put on the label. (Two forms of this label were numbered 18 and 34 of process.) (10) Robert Blake & Co., of Dublin, also used the stock label. (11) Melrose, Drover Ld., Leith.-A 45 cat looking out of the top of an empty barrel. This was the label in question in the case of Boord v. Huddart, and is figured in the Report of that case. (12) James Mellor & Sons, Liverpool.-A cat sitting on the top of a barrel placed on its bilge. On the 13th and 14th of March Counsel were heard. The Lord Ordinary (Lord SALVESEN) took time to consider the case, and on 50 the 27th of March he pronounced the following interlocutors :-In Boord and Son v. Thom and Cameron Ld. and Others :-"The Lord Ordinary having considered "the cause, assoilzies the Defenders (Thom and Cameron) from the "conclusion of the action in so far as they relate to 'Old Tom' gin. Quoad ultra "dismisses the said conclusions; finds the Defenders entitled to expenses; 55" allows accounts thereof to be lodged, and remits the same to the Auditor to tax ' and to report; and decerns." Boord & Son v. Thom and Cameron Ld.-Thom and Cameron Ld. v. Boord & Son. In Thom and Cameron Ld. v. Boord & Son :-" The LORD ORDINARY, having "considered the cause, finds and declares that the Defenders (Boord & Son) "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 (Thom and Cameron) are 5 "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 10 "otherwise; finds it unnecessary to deal with the other conclusions of the "action and dismisses the same; finds the Pursuers entitled to expenses; "allows an account thereof to be lodged, and remits the same to the Auditor "to tax and to report; and decerns." The Lord Ordinary's opinion will be found reported 23 R.P.C. 521. The 15 evidence is therein narrated and examined. Boord & Son Ld. reclaimed to the First Division of the Inner House. On the 12th of May 1906 the case was sent to the Short Roll, and on the 28th of February and March the 1st, 5th, 6th, 7th, and 8th, 1907, Counsel were heard. The Counsel for Boord & Son were Scott Dickson K.C., Johnston K.C., and 20 Grainger Stewart (instructed by T. and W. A. M'Laren S.S.C.). The Counsel for the Respondents were the Solicitor-General (Ure K.C.) and Murray (instructed by Cumming and Duff S.S.C.). Counsel for Boord & Son contended.-The evidence clearly shows that we invented the "Cat and Barrel" mark, that we extensively used and advertised 25 it, and that we stopped all infringements that came to our notice. From the fifties up to the present day the mark has been identified by the trade with our gin, and under it we have built up an immense business. The mark has become vocalised as the "Cat and Barrel " mark, and traders frequently order their gin as the "Cat and Barrel" gin. Hence any mark representing a cat and barrel 30 is likely to mislead and may be stopped by us. As early as 1856 we cautioned traders against infringement. Up to 1903 everyone we checked ceased to use the mark. In that year we obtained an injunction against Huddart, who had declined to give up his label (Boord v. Huddart 21 R.P.C. 149). In Huddart's case our right to the "Cat and Barrel" mark was practically recognised. In 35 the course of the proof there we became acquainted for the first time with the existence of Thom and Cameron's labels, and at once took steps to interdict them. In reply Thom and Cameron have put forward two defences, which are inconsistent and indeed contradictory-(first) that they (Thom and Cameron) are owners of a cat and barrel mark as well as Boord & Son, and have a right 40 to use it concurrently with the latter. This defence is, however, not competent to them unless they crave to be put on the Register of Trade Marks, which they have not done; (secondly) they argue that the "Cat and Barrel" mark is common to the whole trade and that no one can be owner thereof. Accordingly they ask that Boord & Son's mark should be expunged from the Register. We do 45 not deny that this is a competent crave in the Scottish Courts (Dewar v. Dewar 17 R.P.Č. 341; 2 F. 249). They have brought no sufficient evidence in support of their second contention. While it has been clearly proved by documentary and other evidence that Boord & Son were using their mark in the early fifties, there is no use by Thom and Cameron proved prior to 1869; at least none but 50 verbal proof has been offered, which cannot be relied on for dates, and is not the kind of evidence to be desiderated in cases of this sort (Meeus' Application 8 R.P.C. 25). The evidence offered as to users by third parties is equally trifling. It is therefore proved that Boord & Son acquired the property in the mark. To show that, after they had done so, they lost it by allowing common 55 user by another or by the whole trade it would be necessary to prove that the Boord & Son v. Thom and Cameron Ld.-Thom and Cameron Ld. v. common user was not fraudulent, was substantial, and was within the knowledge of Boord & Son. Traders are not easily held to acquiesce in allowing their marks to become common to another or to the trade (Rowland v. Michell 13 R.P.C. 457; 14 R.P.C. 37). On the contrary, it is the duty of competitors to render their 5 marks distinctive (John De Kuyper & Son v. W. and G. Baird Ld. 20 R.P.C. 581). That, apart from registration, a right to a Trade Mark is property is well settled (Kerly on Trade Marks 4; Millington v. Fox 3 My. & Cr. 338; and Edelsten v. Edelsten 1 De G., J. & S. 185). The first user who has acquired the property can stop any one who is using a mark calculated to deceive, and that apart from 10 any question of fraud (Hall v. Barrows 4 De G., J. & S. 150; Leather Cloth Company Ld. v. American Leather Cloth Company Ld. 4 De G., J. & S. 137 at 139 and 142). This right of property arises when the Trade Mark becomes current in the market. It is acquired by invention and public user; it is not necessary that such user should be considerable or long continued (Kerly on Trade 15 Marks 33; McAndrew v. Bassett 4 De G., J. & S. 380; and Ransome v. Graham 51 L.J. Ch. 897). The evidence leaves no doubt that Boord & Son acquired that right of property. They could only lose their right as against Thom and Cameron by acquiescence either in the common use of the mark or in its use by Thom and Cameron, and such acquiescence can only be inferred where 20 there is knowledge of the use in question (Kerly on Trade Marks 392; Sebastian on Trade Marks 205; Ripley v. Bandey 14 R.P.C. 591 at 594; Kinahan v. Bolton 15 Ir. Ch. 75; and Paine & Co. v. Daniells & Sons' Breweries 10 R.P.C. 217; L.R. (1893) 2 Ch. 567). In considering whether a name has become publici juris all the circumstances are to be taken into 25 account. It is necessary to prove that the use of the Trade Mark by other persons has ceased to mislead the public as to the maker of the article (Ford v. Foster L.R. 7 Ch. App. 611). That onus lies on those attacking the mark, and is heavier where the mark has been long in use unchallenged (In re the Trade Marks of Bass, Ratcliff, and Gretton Ld. 19 R.P.C. 529; In re 30 Chesebrough's Trade Mark "Vaseline" 19 R.P.C. 342; L.R. (1902) 2 Ch. 1; and Wellcome v. Thompson and Capper 21 R.P.C. 217; L.R. (1904) 1 Ch. 736). In support of their argument Thom and Cameron adduce the "Three Mark "Rule" as showing that more than one person may be entitled to use the same mark. They claim that they might have registered the mark in 1879 and might 35 therefore apply for registration now, but, as already pointed out, they have not so applied. The cases where the "Three Mark Rule" has been applied have all been cases where the use by both parties was lawful; either a partnership has divided and both branches have used the mark; or it has been impossible to ascertain which party first used it; or there has been consent to avoid 40 litigation; or there has been clear acquiescence. In such cases we admit that the Court may decide that two or more persons are entitled to be registered. But the effect of wrongful use is nugatory. It cannot give any right to registration as a concurrent user (Barlow and Jones v. Jabez Johnson & Co. 7 R.P.C. 395). It should be noted that in one of the cases which Thom and Cameron 45 chiefly found upon, viz., that of Weir, Scott & Co., the alleged user was abroad. But user abroad has no effect in making a mark publici juris in this country (Sebastian on Trade Marks, 16, 46; Kerly on Trade Marks, 192, 365; In re Münch 50 L.T. N.S. 12; Jackson v. Napper 4 R.P.C. 45; L.R. 35 C.D. 162; and Cowie Bros. & Co. v. Herbert 24 R. 353; 14 R.P.C. 436). If we have established 50 that we have the right of property in a label representing a cat and barrel it follows that any use of a cat and barrel on gin labels is a wrong against us. It is immaterial that the resemblance may not be close. In the case of label No. 18 of process it is very close. In the case of Nos. 33, 39, and 21 of process it is not so close; nevertheless we are entitled to interdict against these labels. 55 We have brought evidence that they are calculated to deceive the public in our markets. The Court will look at this and will not form its judgment by mere Boord & Son v. Thom and Cameron Ld.-Thom and Cameron Ld. v. Boord & Son. comparison of the labels. When the label is vocalised, as ours has been, deception is particularly easy. Again, it is very easy in "native" markets, and we have a great trade in these (Johnston v. Orr-Ewing L.R. 7 App. Cas. 219; Seixo v. Provezende L.R.1 Ch. App. 192; In re Christiansen's Trade Mark 2 R.P.C. 54; Trade Mark de la Société Anonyme des Verreries de l'Etoile 10 R.P.C. 436; 5 Bourne v. Swan and Edgar Ld. L.R. (1903) 1 Ch. 211, per Farwell J. at 224; 20 R.P.C. 105; and In re Barker's Trade Mark 53 L.T. N.S. 23). With regard to the question raised by Baker's case (vide infra) user was not a condition of registration under the 1875 Act (In re Hudson's Trade Marks L.R. 32 C.D. 311; 3 R.P.C. 155). Therefore the registration of Boord & Son's mark was 10 valid though there may have been no user on wine or whisky. Counsel for Thom and Cameron (ut supra).-The Lord Ordinary's judgment ought to be affirmed. The present case is a very extraordinary one in respect that it is an attempt to prevent us from using a mark which we have used without challenge for forty or fifty years. Our user is an honest concurrent 15 user with Boord & Sons. The proof seems to show that we were the first to use a cat and barrel mark; at least they cannot prove that they used it first. We were using it independently of Boord & Son and in good faith for many years prior to their registration, and that registration could not affect our rights. This question is to be tried as on the 12th of April 1879, the date of registration. 20 If Boord & Son could not stop us then they cannot now. In fact our position has been strengthened by twenty-five years of undisturbed user. Boord and Son's registration is moreover invalid, being founded on an untrue Statutory Declaration. The Declaration runs as follows:-"I desire that the said Trade "Mark may be registered in respect of the description of goods following 25 "contained in Class 43-that is to say, fermented liquors and spirits-namely, "wine, whisky, liqueurs. I and my predecessors have used the said Trade Mark "in respect of the said goods for twenty-five years before the date of this "statement." This declaration, though true of liqueurs, was not true of wine or whisky. Therefore we are entitled to have the registration expunged on that 30 ground alone (Baker v. Rawson 8 R.P.C. 89; L.R. 45 C.D. 519). Apart from this we are entitled to succeed. The view put forward by Boord & Son is that if they have a right to the mark of a cat and barrel, and the name vocalised therefrom, no one else can use a cat and barrel or the said name. In fact they put it that they have a property in the cat and barrel. This view that there is 35 a right of property in a Trade Mark is erroneous. It is founded on an inaccurate rubric in the Singer Manufacturing Company v. Kemball and Morton (11 M. 267): this was commented on by Mellish L.J. in Singer Manufacturing Company v. Wilson (L.R. 2 C.D. 434 at 453 and 456), and has been corrected by the House of Lords in Singer Manufacturing Company v. 40 Loog (L.R. 8 App. Cas. 15). The present case is to be taken as if it had been before the Act of 1875. Then the sole ground on which Boord & Son can succeed is that Thom and Cameron are using such a mark as to be likely to mislead the public into thinking their goods are those of Boord & Son (ÖrrEwing v. Registrar of Trade Marks L.R. 4 App. Cas. 479 at 494). The 45 so-called right of property or quasi property in Trade Mark means no more than this-appropriation and application of the mark, and such association of it with goods, that the public may be misled by its use by others. The owner of a Trade Mark has no right to interdict any design unless it is in fact calculated to mislead. Even registration only absolves the owner from the necessity of 50 proving his title by use and reputation. He has still to prove that the public may probably be misled by the use of the mark complained of (Cowie v. Herbert ubi supra). Now Boord & Son have failed to show such exclusive association of their goods with the cat and barrel mark that they can claim that Thom and Cameron's use of their mark is likely to mislead. The evidence 55 shows that in 1879 anyone asked about the cat and barrel mark would have Boord & Son v. Thom and Cameron Ld.-Thom and Cameron Ld. v. said, “That may be Boord's mark, or again it may be Thom and Cameron's, or "various other peoples." This is enough to give Thom and Cameron a right of concurrent user, which right is unaffected by the fact that Boord & Son have since registered a cat and barrel mark (Mouson & Co. v. Boehm L.R. 26 5 C.D. 398; Jackson & Co. v. Napper, ubi supra; and Goodfellow v. Prince L.R. 35 C.D. 9). Not only so, but it is sufficient ground for asking to have Boord & Son's mark expunged as claiming to appropriate what could be used by all. The only distinctive feature on their labels was the disc, and they should have confined their registration to the cat and barrel as combined with this disc 10 (Baker v. Rawson L.R. 45 C.D. 519 at 531 and 534; Orr-Ewing v. Registrar of Trade Marks L.R. 4 App. Cas. 479; and In re Christiansen 3 R.P.C. 54 at 63). In Scotland at any rate the mark was common to the trade long before Boord & Son registered. There may have been markets where Boord & Son had the whole or the bulk of the trade, but the British market was never one of these. 15 The Respondents do not however insist on the removal of Boord's mark from the Register, but will be content to have it declared that Boord & Son have no exclusive right and that therefore there has been no infringement. Even if it be admitted that Boord & Son have a good exclusive right to the cat and barrel as used and registered by them, that right is limited to the cat and barrel so 20 used and registered and they cannot interdict Thom and Cameron, whose mark is not so similar to theirs as to be calculated to mislead. No case of actual deception has been proved. The labels No. 21, 33 and 39 of Thom and Cameron are different from Boord & Sons in every respect except that they contain a cat and a barrel. They could deceive no one. The remaining label, 25 No. 18, is not one of Thom and Cameron's, but was a label of Weir and Scott's. It was put on at their order. It was never used in this country. Boord & Son have acquiesced in the use of these labels so long that they are barred from interdicting them by mora. If an interdict is granted its terms should be such as to limit its effect to markets where it may be found 30 that deception might take place. These could only be "native" markets and in particular there should be no interdict preventing the use by the Respondents of their labels in this country where they have employed them so long; (Orr-Ewing & Co. v. Johnston & Co. L.R. 13 C.D. 434; Barber v. Manico 10 R.P.C. 93; and Cowie v. Herbert, ubi supra). 35 40 Their Lordships made avizandum and on the 18th of July 1907, pronounced the following interlocutor in the action at the instance of Boord & Son :"Recal said interlocutor, find and declare and interdict, prohibit and discharge "in terms of the first and second conclusions of the Summons; quoad ultra, "dismiss the action and Decern." In the action at the instance of Thom and Cameron the Court recalled the interlocutor of the Lord Ordinary and assoilzied the Defenders. The LORD PRESIDENT.-My Lords, Boord & Son in 1904 raised an action against Thom and Cameron Ld., in which they had declaratory conclusions that they were proprietors of certain Trade Marks, and also sought interdict 45 against the Defenders for infringing the same. The action did not proceed with any great expedition, and within a year Thom and Cameron raised a counter-action against Boord & Son, and the conclusions of that_counter-action were for declarator (first) that certain entries in the Trade Mark Register, which were specified and all of which were the property of Boord & Son, were made 50 on the Register without sufficient cause, and that the same ought to be expunged therefrom accordingly. There was also a second conclusion that the said Trade Marks were incapable of registration and illegal, and a third alternative conclusion that it ought to be found and declared that the Defenders had no exclusive right to use the same in connection with the sale of "Old 55 "Tom" gin and unsweetened gin and a long list of other spirits. These two actions depended before the Lord Ordinary and they were not conjoined, but the actions were taken together, and what the Lord Ordinary has done is this. In |