Reports of Patent, Design, and Trade Mark Cases

Lever Brothers, Ld. v. Bedingfield.

Soap" and the "Sunlight Soap" is sold in packages like this [pointing to a package]. That is what they use now. They do not apparently now use the old registered Trade Mark with a blank. They think the laundry maid prettier and more attractive.

Now this action is brought against the Defendant on two grounds, which are 5 to be kept distinct; one is for infringing the registered Trade Marks, which turns of course upon the Act of Parliament relating to that matter; and the other ground of action is that, altogether apart from the registered Trade Marks, the Defendant sells his soap in wrappers and so got up as to be in danger of being passed off for the Plaintiff's'; that is to say, they rely upon the old common law 10 doctrine of passing one person's goods off as the goods of another. The Defendant gets up his soap and sells it in packages like this [pointing]. That is the short outline of what the case is about.

I now proceed to state our judgment under both heads. First of all as to the registered Trade Marks. The Trade Marks are the registered labels or wrappers. 15 The word "Sunlight " alone is not the registered Mark, and even if it were, the Defendants' label has not upon it either the word “Sunlight or any colourable imitation of that word. Nothing which can possibly be mistaken for it is to be found on the Defendants' label. So far as the word "Sunlight " is concerned the Plaintiffs' Trade Marks have not been infringed.

But the Plaintiffs say that the Defendant has taken their combination of devices; and in particular they say he has taken the arrangement of the spaces into which the front of the labels or wrappers is divided, and has imitated the general appearance of the central space and the curved scroll with "Soap " which stretches slantingly across that space. It is established by the history of 25 the Defendant's label, and by comparing it with the Plaintiffs' label of 1894, that the central space and curved scroll on the Plaintiff's' label have been utilized, and to some extent copied by the person employed by the Defendant to prepare his label or wrapper. We have no doubt that this is true. But this alone is not an infringement of the Plaintiffs' registered Trade Marks. If, 30 notwithstanding this circumstance, the Defendant's label as a whole is not a copy of the Plaintiffs' labels, and is not as a whole a colourable imitation of them, it cannot be truly said that the Defendant has infringed the rights conferred upon the Plaintiffs by the registration of their Marks. The Defendant's design or combination of devices, although suggested by, and in 35 some important respects similar to, that of the Plaintiffs, is yet so different when regarded as a whole, that in our opinion the Plaintiffs are not entitled to an injunction to restrain the Defendant from infringing their registered Trade Marks. On this part of the case the decision of the learned Judge was correct. We now pass to the general get up of the Defendant's boxes. They are of 40 the same size and shape as those of the Plaintiffs, but this size and shape are common in the trade. The distinctive feature is the wrapper. The Defendant's wrappers are, in truth, extremely dissimilar from those of the Plaintiffs. The prominence of the word "Sunlight" on the Plaintiffs' wrappers; and the substitution in equally large type of the words "Red Maid" on the Defendant's 45 wrappers, coupled with the other differences between the wrappers, make the dissimilarities so obvious as to draw attention away from the resemblances. The differences, not the resemblances, are what catch the eye. The witnesses called for the Plaintiffs show that, if trickery is resorted to, one can be passed off for the other. But there is nothing like proof that, in the ordinary course of 50 business, the Defendant's boxes are likely to be mistaken for the Plaintiffs. The weight of the evidence is quite the other way, and the learned Judge came to the same conclusion. No deception in fact was proved, and no probability of deception in the ordinary course of business was established.

But the learned Judge has, nevertheless, granted an injunction against the 55 Defendant, because he intended to deceive and so make up his soap as to pass

Lever Brothers, Ld. v. Bedingfield.

it off for the Plaintiffs'. The injunction runs thus: "This Court doth order and "adjudge that the Defendant Charles Henry Bedingfield, his servants and "agents, be perpetually restrained from selling, or offering, or exposing, or "advertising for sale, or procuring to be sold, any soap not of the Plaintiffs' 5 "manufacture, under labels or wrappers, or in boxes, cases, or other receptacles so arranged or contrived as by colourable imitation of the Plaintiffs' labels, wrappers, boxes, cases, or receptacles to be calculated to represent or to lead to "the belief that such soap is soap of the Plaintiffs' manufacture." Then there is an order" that the Defendant Charles Henry Bedingfield do deliver up upon 10" oath to the Plaintiffs Lever Brothers, Ld., or their agent, all labels, wrappers, boxes, cases, receptacles and documents which are in the possession or power of "the Defendant or under his control and which offend against the said restraint." In granting this injunction, the learned Judge considered he was giving effect to Lord Macnaghten's judgment in Reddaway v. Banham, and especially to the 15 passage that will be found in the Law Reports, 1896, Appeal Cases, page 219. That was read and commented upon, and I do not stop to read it again. With great respect to Mr. Justice Kekewich, we think he has here fallen into an error. Deception was not only intended but was proved in Reddaway v. Banham. But in this case there is no proof that the Defendant intended to do more than 20 use the wrapper complained of; and if that wrapper does not in fact deceive and is not calculated to deceive, there is no ground for granting an injunction against the Defendant who uses it. No injunction can properly be granted to restrain a man from doing that which, if done, will not infringe the Plaintiffs' rights. The Defendant no doubt wanted an ornamental wrapper which would 25 attract the public. The designer took the Plaintiffs' wrapper as the best to start from, and he adapted it to what he thought would meet the Defendant's wants and would not infringe the Plaintiffs' rights. There is always danger in this mode of procedure, and the first design made for the Defendant was thought to go too far, and we think it did, but it was altered before action. The Defendant 30 refused to alter it further, and although it is obvious that he could easily have done so without detriment to his own business, we are unable to say that in point of law he was bound to do so.

The appeal therefore must be allowed and the injunction must be discharged, and the Plaintiffs must pay the costs of the appeal, including the costs occasioned 35 by their own notice by way of cross appeal. But as regards the costs of the action, we cannot overlook the fact that the Defendant has only himself to thank for the litigation which he deliberately provoked. Although in the result he has succeeded, still no one can say that the action was unreasonably brought by the Plaintiffs. They could not be expected to submit to the Defendant's mode 40 of dealing with their wrapper without challenging its legality.

Under the circumstances we shall simply reverse the judgment appealed from and order judgment to be entered for the Defendant, without any costs of the action. The costs of the appeal will be separately dealt with as I have said.

13 R.P.C. 218.

The Dunlop Pneumatic Tyre Co., Ld. v. The Dunlop Lubricant Co.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE ROMER.-November 17th, 1898.

THE DUNLOP PNEUMATIC TYRE Co., LD. v. THE DUNLOP

LUBRICANT Co.

Trade name.-Passing off-Injunction.

From 1888 the D. P. T. Co., Ld., and their predecessors in title used the name "Dunlop" in connection with the goods of their manufacture. Such goods consisted of pneumatic tyres for cycles and other accessories such as pumps, inflators, &c. The name "Dunlop" had become identified with the goods of the D. P. T. Co., Ld. One Funt traded as the D. L. Co., and dealt in 10 oils and lubricants for cycles and other cycle accessories, but not the same class of accessories as the D. P. T. Co., Ld. The word "Dunlop " Dunlop" was used prominently on all the goods of the Defendant. The D. P. T. Co., Ld., brought an action to restrain the Defendant from so trading.

Held, that there was evidence that Funt was using the word" Dunlop" because 15 it suggested the Plaintiff Company, and that the Plaintiffs were entitled to an injunction.

In 1888 the word "Dunlop" was first used by the predecessors in title of the Plaintiff Company to designate the goods manufactured by them. Since that time the word had been in continuous use as designating such goods, which 20 consisted of tyres, and pumps, inflators, and other accessories for cycles.

One Joseph Peter Funt started business as the "Dunlop Lubricant Company at various addresses in London, and dealt in oils and lubricants for cycles. On the labels under which these goods were sold the words "The Dunlop" were printed in large thick type and the names of the lubricants in smaller type. 25 There was also on the labels a design consisting of a wheel which bore a marked resemblance to a similar device which the Plaintiffs used upon their letter paper. The Plaintiffs by their Statement of Claim, after stating that the term "Dunlop "had a wide reputation in connection with their business and had become identified by the public with their goods, alleged :-(3) "The Plaintiff 30 Company has recently ascertained, as the fact is, that the Defendants for the purpose of passing off their goods as and for the goods of the Plaintiff "Company, and for the purpose of taking advantage of the reputation which "the goods manufactured and sold by the Plaintiff Company have acquired, and

66.6

15 "

The Dunlop Pneumatic Tyre Co., Ld. v. The Dunlop Lubricant Co.

"for the purpose of in some manner associating their business with the business " of the Plaintiff Company, have adopted and carry on business under the style "and title of The Dunlop Lubricant Company.' (4) The Defendants for the "purposes aforesaid are offering and advertising for sale and selling lubricants 5 "for cycle chains and other parts of cycles under the title of The Dunlop "Stick Lubricant' and The Dunlop Plumbago Lubricant,' and are putting up the same in tubes and boxes with labels bearing the sail titles respectively, "and also bearing the words 'manufactured only by the Dunlop Lubricant Company,' and further, the Defendants have issued and published advertisements and trade cards having reference to such lubricants as aforesaid with "the words "The Dunlop' printed in large thick type and the rest of the names "of the said lubricants in smaller type. (5) The divers wrongful acts of the "Defendants are calculated to deceive the public into purchasing the goods of "the Defendants in the belief that such goods are the goods of the Plaintiff Company's manufacture, or that the Defendant Company and its goods are in some way associated with the Plaintiff Company. (6) By reason of the said wrongful acts of the Defendants the Plaintiff Company will sustain serious "injury in their business unless relieved by this Honourable Court." The Plaintiffs claimed :-"(1) An injunction to restrain the Defendants, their 20" servants and agents, from carrying on business under the style or title of "The Dunlop Lubricant Company,' or under any other or similar style or "title comprising the word 'Dunlop,' or any style or title calculated to deceive or "mislead the public into the belief that the Defendant Company is the same "company as the Plaintiff Company, or is in connection therewith, or that the 25 "business of the Defendant Company is the same or in any way connected "with the business of the Plaintiff Company. (2) An injunction to restrain "the Defendants, their servants, and agents, from passing off or attempting to pass off the Defendant Company's goods as and for the goods of the Plaintiff Company, and also from issuing or publishing any catalogues, labels, circulars, 30"showcards, advertisements, or billheads, or from using any trade name comprising the word 'Dunlop' in connection with any goods not being goods "manufactured or sold by the Plaintiff Company." (3) Delivery up of all labels, &c. (4) Damages or an account of profits. (5) Costs.

The Defendant by his defence alleged that from November 1896 till 10th 35 August 1897 the Defendant Funt carried on in partnership, without any written instrument of partnership, a business in lighting, lubricating, and other oils and substances under the style of "The Dunlop Lubricant Company" with one John Francis Dunlop. By an indenture duly made between the said John Francis Dunlop of the one part and the said Joseph Peter Funt of the 40 other part, and dated 10th August 1897, it was agreed that the partnership be dissolved. By the same indenture the said Dunlop assigned and released to the said Funt all his estate and interest in the said business together with the goodwill thereof and the stock-in-trade, moneys, credits, trade names, and secret processes and effects belonging thereto, and the sole and exclusive 45 right to use the firm name of "The Dunlop Lubricant Company." The said Dunlop also covenanted not to use his surname "Dunlop" in any way in connection with the sale of lighting, lubricating, or other oils or substances whatsoever. That the said Funt had since the date of the said indenture carried on the business by himself. The said business was distinct from and in no 50 way similar to that of the Plaintiff Company. The Defendant also denied that his acts were wrongful or calculated to deceive the public, or that the Plaintiff Company would sustain any serious loss or injury, and submitted that he was entitled to carry on his business in the same manner as hitherto and under the

same name.

The Plaintiffs by their reply, after joining issue, alleged :-" If the said Joseph “Francis Dunlop, in the first paragraph of the defence referred to, was ever in

The Dunlop Pneumatic Tyre Co., Ld. v. The Dunlop Lubricant Co.

"partnership with the said Joseph Peter Funt as alleged, which is denied, no

genuine business was ever carried on by the said John Francis Dunlop or "the alleged partnership in the articles sold by the Defendant Company, and "the deed of the 10th August 1897, if any such deed was ever entered into, "which is not admitted, was a mere colourable assignment executed with the 5 object of enabling the said Joseph Peter Funt to trade under the name of the "Defendant Company, or under a name of which the term 'Dunlop' formed a part, and for the purpose of associating the Defendant Gompany with the "Plaintiff Company, and for the purpose of enabling the said Joseph Peter Funt "to acquire the goodwill and connection of the Plaintiff Company."

The action came on for trial before Mr. JUSTICE ROMER.

Moulton, Q.C., and A. J. Walter (instructed by J. B. and F. Purchase) appeared for the Plaintiff's; Proctor (instructed by Waddington and Co.) appeared for the Defendant.

Moulton, Q.C., for the Plaintiffs.-The Plaintiff Company are well known, 15 and their goods have a wide reputation. The word "Dunlop" is identified with their goods by the public. The Plaintiff Company deal in pneumatic tyres for cycles and such accessories as pumps, repairing outfits, &c. The Defendant has taken the name "Dunlop," and also deals in cycle accessories. There is no real Company. Funt is the owner of the business. There has never been any sub- 20 stantial business done. From May to December 1897, there were only 35 transactions. His story is that he was in partnership with a man called Dunlop, and that they dissolved partnership by an indenture which assigned to Funt the right to use the name "Dunlop.' We do not admit that the story is genuine. The Defendant has used our name Dunlop in large letters on his 25 labels, the rest being in small type. He also has a device on the labels of a wheel, which is practically the same as that which the Plaintiffs use on their letter paper. His intention is obviously fraudulent, and we are entitled to an injunction. The case of The Dunlop Pneumatic Tyre Company v. The Dunlop-Truffault Cycle and Tube Manufacturing Company, Ld. was cited.* Witnesses were then called for the Plaintiffs, including George Robin, a cycle dealer, who stated that he thought the goods of the Defendant were those of the Plaintiffs, and William Henry Austin, also a cycle dealer, who said that the Defendant's traveller had represented to him that the Defendant's goods were those of the Plaintiffs.

Proctor, for the Defendant.-There is no deception here. The Defendant's goods are sufficiently distinguished, and no one could be deceived. The Plaintiffs do not manufacture the same class of goods as the Defendant. [ROMER, J.-They may begin to do so to-morrow]. The Defendant has not passed off his goods as those of the Plaintiffs. The Plaintiffs have suffered no 40 damage.

After hearing the evidence of Defendant Funt, and Defendant's Counsel having stated that that was all the evidence for the defence, ROMER, J., intimated that further arguments were unnecessary, and delivered judgment as follows:

ROMER, J.-After hearing the Defendant, I can only say that I can place no reliance at all upon his account as to how he came to use the name of the Dunlop Lubricant Company. I am satisfied that there was never any prior business carried on by Mr. Dunlop under that name. I am not satisfied that the arrangement purported to be come to by the deed which has been put in 50 was a genuine arrangement, and the conclusion I come to is that the Defendant himself chose to carry on business under the name of the Dunlop Lubricant Company because of the word "Dunlop," and because the word "Dunlop'

14 T. R., 434.

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Reports of Patent, Design, and Trade Mark Cases, Volume 16