Pinet & Cie. v. Maison Pinet, Ld.

IN THE COURT OF APPEAL.

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Before LINDLEY, M.R., and LORD JUSTICE CHITTY.

October 26th, 1897.

PINET & CIE. v. MAISON PINET, LD,

Action to restrain use of trade name and passing off-Name which distinguishes Plaintiffs' goods in the market part of Defendant's name.-Probability of deception.-Form of injunction.

The Plaintiffs since 1855 were manufacturing and selling boots and shoes which had become known as "Pinet's." L. M. Pinet sold special boots and shoes 10 for increasing height and correcting lameness, and also in a few instances ordinary boots or shoes, under the style of Maison Pinet, prior to February 1897, when his business was taken over by a Company called Maison Pinet, Ld., which, by its Memorandum of Association, took power to carry on business as boot makers and shoe makers, and especially as makers of specified boots and 15 shoes. The Plaintiffs brought their action to restrain the Company from carrying on business under the name of Maison Pinet, Ld., or any other name of which Pinet forms a part, and which was calculated to represent, or tend to the belief, that the Defendants were carrying on the Plaintiffs' business. The Plaintiffs moved for an interlocutory injunction. The Defendants' case was, 20 that they only intended to deal in the before-mentioned special kinds of boots and shoes and not in ordinary boots and shoes, and therefore they would not compete with the Plaintiffs. They relied also on the fact that no case of deception had been proved against them. The learned Judge before whom the motion came having refused to make an Order, the Plaintiffs appealed.

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Held, that upon the facts proved, the Defendants intended to sell ordinary boots and shoes, and to trade upon the Plaintiffs' reputation, and that their acts were calculated to deceive the public, and, although no case of actual fraud was proved, the Plaintiffs were entitled to an injunction, but that they were not entitled to restrain the Defendants from using the name Maison Pinet, Ld.,

Pinet & Cie. v. Maison Pinet, Ld.

and that the proper form of injunction was to restrain the Defendants from carrying on their business, as manufacturers of boots and shoes, under any name or description of which the name "Pinet" forms part without clearly distinguishing the boots or shoes made or sold by the Defendants from those made or sold by the Plaintiffs.

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On the 29th of July 1897, an action was commenced by M. F. J. Pinet and others trading as F. Pinet & Cie., against Maison Pinet, Ld., for an injunction to restrain the Defendants from carrying on business as manufacturers or vendors of boots and shoes, under the name of Maison Pinet, Ld., or any other name or description of which the name "Pinet" forms part, and which is so 10 arranged or contrived as, by colourable imitation of the Plaintiffs' trading style or otherwise, to be calculated to represent, or lead to the belief, that the Defendants are carrying on the Plaintiffs' business and from in any other manner representing or acting so as to lead to such belief as aforesaid and for delivery up of all boots and shoes, or other articles or documents so marked, 15 got up, or printed as to be calculated to represent or lead to such belief as aforesaid, which are in the possession or power of the Defendants or under their control.

The Plaintiffs' case, as disclosed by their Statement of Claim, was that they had been manufacturing and selling boots and shoes in Paris and elsewhere 20 since 1855, and particularly in the United Kingdom, where they had expended large sums of money in advertising, and their annual sale was at least 70,000 pairs of boots and shoes, and that such boots and shoes were known as "Pinet's" boots and shoes, and were so described in price lists and circulars, and that every one who sees or hears of the expression "Pinet's" boots and 25 shoes understands that by that term the Plaintiffs' boots and shoes are meant, and that every one who orders or asks for "Pinet's" boots or shoes intends and expects to receive boots or shoes of the Plaintiffs' manufacture.

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"Paragraphs 4, 5, 6, and 7 of the Statement of Claim were as follows:-4. The "Plaintiffs recently discovered (as the fact is) that boots and shoes not of their 30 "manufacture were being offered for sale and sold in London under the name "of 'Pinet's' by the Defendant Company. The Defendant Company was "incorporated in the month of February 1897, with a nominal capital of £2,000 "in £1 shares without Articles of Association, but with a Memorandum of "Association whereby the objects of the Company are described as (among other 35 "things: (a) To acquire and take over the business of Louis Marius Pinet (trading as Maison Pinet), as now carried on by him at No. 56, Berners Street, in "the county of London. (b) To carry on business in England and elsewhere as "bootmakers and shoemakers, and especially makers of boots and shoes for the "purpose of increasing height, and to be used for walking, riding, cycling, tennis, 40 dancing, shooting, fishing, or any other purpose. 5. The business carried on by Louis Marius Pinet at No. 56, Berners Street, and mentioned in the said "Memorandum, was a small and a recently established business in the manufacture "and sale of elevators,' being contrivances for adding height to short persons, " and was not a business in boots and shoes; and the contract for the sale to the 45 "Defendant Company of the business of the said L. M. Pinet (which was dated "the 22nd of March 1897) related to the sale of a business in elevators only. The "Plaintiffs deny that the name of the Defendant Company's said vendor is Pinet "at all, and contend that such name was assumed by him with a view of his "deriving benefit from the Plaintiffs' reputation. He holds only one share in the 50 "Defendant Company, on which nothing has been paid. 6. The incorporation of "the Defendant Company under the name of Maison Pinet, Ld., for the purpose "of purchasing a business in elevators described as Maison Pinet and also of

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Pinet & Cie. v. Maison Pinet, Ld.

66 opening a new business in boots and shoes, was merely a contrivance, by means "of which persons having no right to the name of Pinet might be enabled to "compete with the Plaintiffs in the manufacture and sale of boots and shoes "under a name in which the name Pinet is the distinguishing element, and by 5 means of such name to cause their goods to be passed off and sold as and for "the goods of the Plaintiffs. 7. The Defendant Company are advertising and offering for sale and selling their boots and shoes, not being of the Plaintiffs' "manufacture, under the name of Pinet's S.M. Boots and Shoes,' and 'Pinet's " Boots and Shoes,' and are describing the same as 'Celebrated,' notwithstanding 10 that the same are quite unknown, whereas the Plaintiffs' boots and shoes are universally known and celebrated, and in all the ways aforesaid the Defendant Company are endeavouring to associate themselves and their goods with, and to cause them to be mistaken for, the Plaintiffs and their goods, and confusion and "deceit must necessarily result, and have in fact already resulted, from the action 15" of the Defendant Company, and the Defendant Company have made profits by "means of sales which ought to have been effected by the Plaintiffs."

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The Plaintiffs gave notice of motion for an injunction, until judgment or further order, to restrain the Defendants from carrying on business as manufacturers of boots or shoes under the name of Maison Pinet, Ld., or under 20 any other name or description of which the name "Pinet forms part, and which is so arranged or contrived, as by colourable imitation of the Plaintiffs' trading style, or otherwise to be calculated to represent, or lead to the belief, that the Defendants are carrying on the Plaintiffs' business, and from in any other manner representing or acting so as to lead to such belief as aforesaid.

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Several affidavits were filed by the Plaintiffs in support of their case as above stated.

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The Defendants filed an affidavit by Louis Marius Pinet, in which he stated (amongst other things) as follows:-" 1. I am the Manager of the Defendant Company's business. 2. The business formerly carried on by me under the 30" style or firm of Maison Pinet,' at 56, Berners Street, and which is now carried on at the same place by the Defendant Company, is of a special nature, "and does not compete with the Plaintiffs' business. 3. My said business originated as follows:-Some years ago I directed my attention to experiments "in the construction of a special form of boots and shoes adapted for the purpose 35" of increasing the apparent height of the wearer, or, in the case of lame people, "of equalizing the length of the legs without presenting an outward appearance "different from ordinary boots and shoes. 4. I met with considerable success, "and in or about the year 1893 I commenced to carry on the business of a "manufacturer and a vendor of boots and shoes of the special make I have 40" described, namely, boots and shoes adapted either to increase the height of "the wearer or to meet the requirements of people who are lame or have "shortened limbs under the style or firm aforesaid. 5. My practice from "the first has been, and the practice of the Defendant Company now is, to "have these special boots and shoes manufactured to our order in France, 45" and the business originally carried on by me, and since February last by "the Defendant Company, has been and is confined almost entirely to boots "and shoes of the special nature I have described. Neither I nor the said Company have sold as many as a dozen and a half pairs of boots or shoes "of an ordinary description during the last three years. 6. The advertisements 50" issued by me and since February by the Defendant Company are not addressed, "and do not appeal to the general public, but merely advertise boots and "shoes of the special kind, and adapted for the purposes I have described. "Two of such advertisements, now being issued by the Defendant Company, are now produced to me and marked 'L.M.P.,' and 'L.M.P.,.' The only 55 "other forms of advertisement published or used by me or by the Defendant

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Pinet & Cie. v. Maison Pinet, Ld.

Company, are advertisements inserted from time to time in the Ladies' "Pictorial,' and in the other journals and in the daily press. Copies of 66 current numbers of the 'Ladies' Pictorial' and the 'Morning Post,' containing "advertisements, are now produced to me and marked 'L.M.P.,' and 'L.M.P.,.' "7. The Defendant Company has never issued any advertisements addressed 5 "to the general public, or holding out or representing myself or the said "Company as dealing in ordinary boots or shoes, or boots and shoes which. compete with the Plaintiffs' business, or as dealing in any boots or shoes not "of the special character and adapted for the purposes I have described, or any advertisements whatever other than in the forms exhibited above. . . . . 10 "13. The Defendant Company does not keep any stock of ready made goods. "Their business is entirely confined to goods made to order to meet the special "orthopedical requirements of customers."

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The motion came on for hearing before Kekewich, J., on the 6th of August 1897, when he refused to make any order on the motion, and directed the costs 15 of the motion to be costs of the action.

The Plaintiffs appealed, and, on the hearing of the appeal, Moulton, Q.C., and Sebastian (instructed by Wilson, Bristows, and Carpmael) appeared for the Plaintiffs; E. Brodie Cooper (instructed by G. B. Wickes) appeared for the Defendants.

Moulton, Q.C., for the Plaintiffs, read the evidence, and was then stopped by the Court.

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E. Brodie Cooper contended that the Defendants' business was limited to boots and shoes of a special make; that they had never sold ordinary boots and shoes, and therefore were not carrying on the same kind of business as the 25 Plaintiffs; that no case of fraud on the part of the Respondents had been made out, and the mere fact of Pinet forming part of the Defendants' name did not entitle the Plaintiffs to an injunction. He cited Reddaway v. Banham, 13 R.P.C. 218; Thompson v. Montgomery, 8 R.P.C. 391; and Turton v. Turton, L.R. 42 Ch.D. 128.

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LINDLEY, M.R.-I do not think there is the difficulty in this case which Mr. Brodie Cooper seems to be desirous of impressing us with. It strikes me as a tolerably simple case within certain limits. It appears that a gentleman of the name of Louis Pinet carried on business at 56, Berners Street, under the name of Maison Pinet, and, according to his own affidavit, which in this 35 respect is, I think, very strongly corroborated by others, he did not deal largely, if at all, in ordinary French made boots or shoes, but his business was confined (not only in theory, but in practice) to specially made boots and shoes for the purpose of adding to the height, which means high heels, and also for the purpose of lame people who wanted one boot taller than the other.

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We are not embarrassed here (and I attach importance to this) with any evidence to the effect that Maison Pinet, before this Company was formed, did carry on an extensive business in boots and shoes of the ordinary French make under the name of Maison Pinet, or Pinet at all. Mr. Louis Pinet's great point is that he never did, and the strong evidence which we have from 45 such people as Flint, Roche, Watts, and others corroborates that entirely, because they say in so many words (they are people who know) that they never heard of French made boots and shoes except the Plaintiffs' under the name of Pinet. In other words, that means this:-that the trade in the specially made boots and shoes carried on by Louis Pinet was not so extensive as to have 50 attracted their attention at all. I can quite understand that.

That is the state of things in February 1897. In February 1897, a limited company is formed primarily for the purpose of acquiring and carrying on the business, heretofore carried on by Louis Pinet, under the name of Maison Pinet, at 56, Berners Street. If that was all, probably we should never have heard of 55

Pinet & Cie. v. Maison Pinet, Ld.

this action at all; but that Company, in their Memorandum of Association, state distinctly that they do not intend to confine their operations to carrying on the business in specially made boots and shoes as heretofore carried on by the Maison Pinet. They go further, and they say they are boot and shoe makers. 5 They can make any boots and shoes, and the whole difficulty in this case arises from this-that of course they will, if they can, make and sell any French made boots and shoes under the name of Maison Pinet. We do not want evidence that they have done it. No doubt there is some evidence that they have done it, but that is the whole object and scope of their formation. They are not going 10 to be content with a few orders, such as the Maison Pinet had before 1897, if they can develop, at the expense of the Plaintiffs, a large business in French made Pinet shoes. Of course not. It is only throwing dust in one's eyes. to say they do not threaten and intend to do that. They are formed for the purpose of doing it, if they can. That is the long and short of the evidence.

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Now, let us look at their circulars. There are three of them to which I will call attention, not at any great length, as I do not think it is necessary. There are L.M.P., and L.M.P.2 which Louis Pinet tells us were in use long before 1897 by him, and they have been used since by the Company. The word "Limited " does not appear upon the green one, and I do not think it 20 does upon the blue one either, but he says the Company issue these. Let us take the green one, which is addressed to the lame, and that points out that this Company has a separate department for its other branches. What are the other branches? The other branches, we are asked to say, are all these specially made things; but why are these other branches not ordinary French made boots 25 and shoes? That they are seems to me to be tolerably obvious from the words lower down on the same page, "We also make boots and shoes to increase the height without detection as well as our ordinarily made boots." Of course it is mere moonshine to say that they will not, if they can, sell as many French boots and shoes under the name of Pinet's boots and 30 shoes as they can find opportunity for doing. Then there is another exhibit L.M.P.,, which is important. It is a letter written on thin paper, partly in print and partly in writing, and addressed to a Mrs. Wilcox. This is issued by the Limited Company and dated the 26th of June, 1897. It is headed in print, "Bureau for French boots and shoes celebrated for 35 elegance and comfort and perfect fitting." Of course that is applicable to all boots and shoes. Then comes the remark, or the words, " Maison Pinet, Ld., 56, Berners Street, Oxford Street "—and that is sent to a customer. That only shows what I say is perfectly obvious, without any evidence at all, that the Company, being formed for this purpose, will, if they can, carry on 40 and develop their business, and develop it at the expense of the Plaintiffs, and make use if they can of the celebrated name of Pinet in connection with their French boots and shoes. That is prima facie a case for an injunction. What is the form of it is another thing. The Plaintiffs ask us to do that which I think is going far beyond what is necessary for their protection 45 and far beyond what I think we ought to do at all events on the present evidence as it stands. I see no ground at all for restraining this Company from using the name of Maison Pinet, Ld. It is their name, and I see nothing against that nor against using the word Pinet provided they take care the public do not make a mistake, or are not led to make a mistake on ordering from them the 50 boots and shoes made by the Plaintiffs. The actual form of injunction that I think was first adopted in Seixo v. Provezende, and was approved by the House of Lords in the "Stone Ale" case and has been followed since, is an extremely useful form where you have two people of the same name, because each person is entitled to carry on business in his own name of course. The injunction 55 here should be, "To restrain the Defendants from carrying on their business