Cowie Brothers and Co. v. George Herbert.

"Marks Journal," on page 425 of No. 579, published on the 1st of May 1889, and on or about the 11th of July 1889, their application was granted. Ever since the last-mentioned date, the Pursuers said they had been entered in the Register of Trade Marks as proprietors of the Trade Mark in question, of which a representation is subjoined :

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This Trade Mark was used in blue as the centre of a red and blue label on the lids of biscuit tins. The label had at the top "Cowie's Superior." On one side of the Trade Mark was a bunch of ears of corn with "Glasgow" on a riband across, and on the other another bunch of ears of corn with "Biscuits' on a riband across.

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The Pursuers further averred that they "have recently ascertained that the "Defender is using on tins or packages containing biscuits exported by him, or, "at all events, not exported by the Pursuers, nor selected for exportation by "them, a representation of Glasgow Town Hall, in imitation of, and substantially "the same as the Complainers' Trade Mark above mentioned. Inter alia, the 15 "Defender recently consigned to Rangoon for sale a quantity of tins or packages "containing biscuits and bearing such counterfeit Trade Mark.

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Defender's use of the label complained of is calculated to lead buyers to believe "that the goods consigned by him have been selected and consigned by the "Pursuers, and is injurious to Pursuers' trade, and an infringement of their 20 "said Trade Mark."

The following is a facsimile, on a reduced scale, of the label used by the Defender on the lids of biscuit tins, which was a red and blue label, the building being printed in blue.

Cowie Brothers and Co. v. George Herbert.

The Pursuers pleaded-(1) the Defender having infringed and still continuing to infringe the Pursuers' Trade Mark as condescended on, the Pursuers are entitled to the interdict craved, with expenses.

The Defender, on the other hand, stated that one of the Pursuers' firm, in 5 1888, requested the Defender to give the Pursuers' firm a sample of his biscuits along with quotations, as they stated that they intended to begin the exportation of biscuits to foreign markets. The Defender submitted a box or boxes of biscuits to Pursuers, which had a label or labels thereon containing a perspective view of the Glasgow Municipal Buildings, which Defender had in use for some 10 considerable time before that date. The Defender averred that Pursuers took the box containing the label to the Defender's own printers, and desired them to make and print a label similar to the one adopted by the Defender. The printers objected to do this until they had asked the permission of Defender. Defender, on being approached by the printers, cautioned them 15 against making or printing labels for the Pursuers which might be mistaken for his own, and this the printers undertook to do. Defender was not aware until immediately before the raising of the present action, that Pursuers had appropriated and registered the design of the Glasgow Municipal Buildings used by them as a Trade Mark. The design in question was, at the date of 20 registration by Pursuers, incapable of registration, in respect that it was not the design of the Pursuers; it was in common use, and, specially, a representation of the Glasgow Municipal Buildings had been used by the Defender as a Trade Mark for his biscuits; and, further, that it did not come under the definition provided by the Trade Marks Acts. The Pursuers, or one or other of them, 25 were quite aware that the Defender had adopted and used the label with the design now complained of, and exhibited in process, prior to the registration by them of the Trade Mark adopted by them. The Defender, as stated, was unaware until recently of the registration of the Pursuers' design or label, and the Pursuers had purposely avoided raising any objection to the Defender's use 30 of the label in question, until the expiry of five years from the date of such registration.

On these statements, the Defender tabled the following pleas :-(1) The subject of the so-called Trade Mark being invalid, in respect of want of novelty, being incapable of registration, and in prior use, the Defender is entitled to be 35 absolved from the conclusion of the action, with expenses. (2) The Defender, not having infringed any alleged Trade Mark, is entitled to absolvitor, with costs. (3) The Pursuers' statements, so far as material, are insufficient to support. the conclusions of the Summons, and absolvitor should be granted, with costs. (4) The Pursuers, by acquiescence and delay, being barred from stating any 40 objections to Defender's use of his own label, the present action should be dismissed, with costs. (5) The Pursuers, having adopted or imitated the subject of the design in use by the Defender, are not entitled to the protection of the Court, and the present action falls to be dismissed, with expenses. (6) The Defender, not being aware until recently of Pursuers' attempt to appropriate 45 the design in question, and being in course of taking proceedings for rectification of the Register of Trade Marks as a party aggrieved, the present proceedings should be sisted until his rights are determined.

Sheriff-Substitute GUTHRIE, on the 30th of January 1895, heard the parties on these pleas, so far as preliminary, and issued findings that "the Pursuers are 50" proprietors of a Trade Mark, which was registered as on the 22nd of January 1889, "and that the registration thereof, conform to the certificate produced, No. 85,461 (No. 6/1 of process), is conclusive evidence, in terms of Sections 75 and 76 of "the Patents, Designs, and Trade Marks Act, 1883, of their right to the exclusive (6 use thereof, subject to the provisions of the said Act; and that the Defender's 55" second plea in law, and his first and second additional pleas in law" (Nos. 1, 3, and 4 cited supra) “can only be maintained in an application to the Court of

Cowie Brothers and Co. v. George Herbert.

"Session for rectification of the Register: finds that the question of infringe"ment cannot be conveniently decided without probation." In a Note, he said, "The interlocutor explains itself, and I only need to say that the "Defender's representation of the town hall is not so exactly like the Pursuers' "as to satisfy me that a purchaser would probably be deceived by it. Neither 5 "is the resemblance so slight that one can at once assert that no rational person "could be deceived by it. The case, therefore, is one in which the Pursuers "have to prove actual deception, or reasonable probability of deception. It "may be that the Defender has a stronger case on those pleas which are not for "the consideration of this Court. It is therefore proper that he should 10 "consider whether to make an application for rectification of the Register "before incurring the expense of a proof, and I give him an opportunity of "doing so."

The Defender appealed to the Sheriff-Principal (BERRY), who heard parties on the 27th of March 1895, and adhered, remitting to the Sheriff-Substitute to 15 take proof on the question of infringement. The proof accordingly was taken on the 23rd and 25th of July 1895.

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For the Pursuers, Archibald Cowie, one of the Pursuers, deponed :-" Our "first shipment to Rangoon under the Town Hall label was in October 1889. "So far as I know, until October last year (1894), there were no other biscuits 20 "being sold in Rangoon, or elsewhere, under a similar label. We had no "advice from Rangoon until the receipt of the teleg am on 31st October 1894. . "I think that [Defender's labels] are likely to cause the goods under them to "be mistaken for ours. . . From my knowledge of the Eastern trade, I say "that goods are usually sold by mark." Cross-examined: "I am not aware 25 "if any person in this country was deceived by the similarity of the two labels. "We never sold a tin of biscuits in this country, and I cannot give an "opinion. . . . I have no personal knowledge of anyone having been deceived, "because I have never been in Rangoon. Assuming that I was a stranger to the city of Glasgow, I most certainly say that I would be deceived by the two 30 "designs."

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Charles Rennie Cowie deponed:-"The first shipment of biscuits was in "October 1889. I frequently heard of Herbert's biscuits in Rangoon, under a "label giving his name and his works. The first intimation I got of Herbert's use of the Town Hall label was the date of the telegram, October 1894. I 35 "only arrived home at that time. At the time I left Rangoon in September I "did not hear of the Town Hall label being used by Herbert. By a subsequent "mail, we received a copy of the label said to be used out there. That label "was likely to cause confusion of our goods and Herbert's. I think there is "such a resemblance between the label complained of and ours, that buyers 40 are likely to be deceived. That class of trade is entirely in the hands of "native buyers. The goods are known by the Trade Marks entirely. Our design is known out there as a mesjid or mosque, or a girgo or church. The "label complained of is known by the same name. We had a case of candles and "other goods where we had a view a little like this, and it was a mesjid. We 45 "took proceedings against the person using it in Rangoon, and were suc"cessful. He was found liable to pay a fine of 200 rupees, or go to prison for "three months."

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Andrew Symington, Assistant Commissioner in Burmah, deponed :-"It is eight years since I went out to Burmah. I came a great deal in connection 50 "with traders. I have seen Cowie's Town Hall label, and Guthrie and Co.'s "Town Hall label. I think there is a similarity between these two marks, "which might deceive a native buyer. In Burmah, goods are known by the "brands on them. The brand appears on Cowie and Co.'s label as the "Glasgow Town Hall. In Burmah, the Town Hall would be known as a palace, 55

Cowie Brothers and Co. v. George Herbert.

"and, in India, as a temple. A native that bought goods under Cowie's label, "might, in a subsequent purchase, take, by mistake, goods under Guthrie "and Co.'s label.

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Thomas Purdie, general assistant of Cowie and Co, Rangoon, deponed :5 "I am in the employment of Cowie and Co., merchants, Rangoon. "October, a box was brought into the place bearing the Town Hall label. "That was the first time I had ever seen the Town Hall label, except on our own goods. That same day I caused a lawyer out there to take proceedings against the man who had been selling them. I was in Court when the 10" evidence was taken and sentence pronounced. He was fined 200 rupees, or "three months' imprisonment. He paid the fine. Out in Rangoon and "Burmah, goods are known by the Trade Mark. The goods bearing our Town "Hall label are known by the mark. That is a natural result from the fact "that the natives don't read English. I don't think a native, who was buying under Cowie and Co.'s mark, would notice the difference between it and Guthrie and Co.'s mark. When I was in Court, one of the natives was "asked to distinguish between the two labels, and he was unable to do so. I have tested some of the natives in the office, and they could not tell the one "from the other. They call our mark girgo or church, and mesjid or mosque. 20 They would also call Guthrie and Co.'s mark a mesjid or mosque ticket." Crossexamined: "I tested the natives by putting one tin of Guthrie's before them, "and another of ours, and asking them to select which was which. I asked "them to tell me which was ours, and they said they were both ours." James Galbraith, sole partner of James Galbraith and Sons, East Indian 25 merchants, Glasgow, deponed :-"I was in Burmah for about eighteen years.

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I came home in 1876, and since then I have been in business in Glasgow, and "connected with Burmah. The natives, as a rule, distinguish one maker's goods from another by the Trade Mark. The principal Trade Marks in

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use in the East are photographs or designs. Letterpress would be of no use to 30 ** them out there. I have seen the labels in question. I consider that there is a similarity between Guthrie and Co.'s labels and Cowie and Co.'s labels. "The similarity is such as would deceive a native buyer in Rangoon. The "natives are in the way of giving the different tickets names of their own. "I think the labels in question would go under the same name, and confusion 35 " would arise between the two. (Q.) If a native, who had been buying under Cowie and Co.'s Town Hall mark, ordered goods, how do you think he would order them?-He would order them, in the native language, as a house, or palace, or large building."

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Francis Park, Glasgow representative of Sir Jacob Behrens and Sons, 40 East Indian merchants, deponed :-" From my experience of the Eastern "market, goods are known by the brand or mark, almost entirely. The natives ordered goods by the ticket. That is how imitations are got up sometimes. I have seen the labels of Cowie and Co. and Guthrie and Co. I think there "is a similarity between these labels, such as would deceive native buyers, 45" especially up-country buyers. In ordering Cowie's biscuits or Guthrie and Co.'s biscuits, they order them by the native name. A native, who has been in the habit of getting goods under Cowie's label, might, very easily, get goods under Guthrie's label passed on him as the same goods he had got before. The native would expect them to be the goods that he had 50"got before."

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For the Defender, Hugh Peter Buchanan, merchant, Glasgow, deponed :"(Q.) If a dealer was wanting to order goods, having once seen them under "this label of Cowie and Co.'s, and if he wished to renew the order, how would "he describe it ?-Cowie Brothers and the natives would have a name for it in 55" their own office. (2.) Supposing the name was a church or a mosque, would "not another label, which came under the same category, be apt to be

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Cowie Brothers and Co. v. George Herbert.

"confused ?—There are so many buildings on biscuit labels that a dealer would "not be such a fool as to specify loosely what he wanted, nor would the "merchant be foolish enough to have any doubt on the subject. It is the case "that these labels go by a name in the market. They sometimes go by an "elevation, sometimes a mosque, and sometimes a church. (Q.) If a native 5 66 buyer was ordering it by the name of mosque, church, or palace, might there "not be confusion between these two labels ?-They are too wide-awake to leave any doubt. They have an elevation in fifty different forms, and it might be twenty different houses. They are quite accustomed to the difference in buildings, of formation, or names of firms. It is the case that the native 10 "dealer does not read English. A native dealer would not be able to read "letterpress; in a case of this kind, he would go by the label and mark. I am "familiar with Guthrie and Co.'s label. (2.) From your recollection of "Guthrie's label, can you tell me what is the difference between Herbert's and "that one of Cowie's you see before you (No. 19) as regards the building ?— 15 "I am fully convinced, in my own mind, that even an up-country native would not be confused between them. [Question repeated.]-For my part, I could "not recollect that. There is the difference, that Cowie's building is facing, "and Guthrie's is from the corner. I think that is a kind of distinction that a native would carry in his mind. (Q.) Supposing he had only seen Cowie's 20 "label once before, could he recollect that difference ?-I expect he would. (2.) Is it not a thing that is doubtful?-It might be.

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Lewis Osborne Smith, merchant, Glasgow, deponed:-" (Q.) Do you think, "from your experience, that the people out in Rangoon are liable to be "deceived ?-No. I would say no. (2.) They are pretty well up in the 25 "matter of design?—I don't think there is any question. They are both buildings. "I think a native could carry in his mind Pursuers' building, and would not "be liable to confuse that with No. 6/2." Cross-examined: "I never resided for "any length of time in Rangoon. The last time I was there, I stayed for six or seven weeks, and the previous time not so long. (Q.) Did you sell any 30 goods out there?—I went out with our salesman, but I could not deal with the "dealer because I could not speak the language. I think that the man who is "selling the biscuits for Pursuers would know that we were using that label. "I presume that the design on the labels represent the same building. That "is obvious to anyone looking at the two. I don't pretend to know anything 35 "about buildings. I understand they are both taken from the Municipal "Buildings, Glasgow."

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George Herbert, the Defender, deponed :-"I recollect Gillespie (printer) "calling upon me and asking my permission to allow my label to be copied in 66 some way. He said he had been sent for by Cowie Brothers, and, when 40 "there, he had been shown a tin of my biscuits and asked to get up a label something on the lines of mine. I said he had better not copy this, as there 66 was very likely to be a row if he did. I would be very much surprised to find "that Guthrie's label would be mistaken for Cowie's. They are different "altogether, I should think. . . . (Q.) How do you account, if Cowie and Co.'s 45 "label was being used in the market during all these years, for your not knowing of it until November of last year?-I knew they were selling "biscuits. (Q.) How didn't you know that Pursuers were selling biscuits under "the Town Hall brand until November last year? They were not in the "habit of sending home copies of the labels for extracts; they merely said 50 "Cowie Brothers' price is so and so. In the same way, they might say that "Guthrie and Co.'s price was so and so, and not say anything about the "labels."

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On the 9th of November 1895, the Sheriff-Substitute (GUTHRIE) granted interdict as craved, and added, in a Note to his judgment, "The Pursuers' title 55 "to their Trade Mark having formerly been sustained, the only question is