A. W. Gamage, Ld. v. H. E. Randall, Ld.

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IN THE HIGH COURT OF JUSTICE.-QUEEN'S BENCH DIVISION.

Before THE LORD CHIEF JUSTICE and a SPECIAL JURY.

January 18th, 19th and 20th, 1899.

IN THE COURT OF APPEAL.

Before LORDS JUSTICES SMITH, COLLINS, and ROMER.

March 8th and 9th, 1899.

A. W. GAMAGE, LD. v. H. E. RANDALL, LD.

Action to restrain passing off by use of name.-Name whether denoting Plaintiffs' goods or only pattern.-Verdict for Defendants.-Motion for new 10 trial.-Motion refused.

The Plaintiffs in an action to restrain the Defendants from passing off their cycling shoes as the Plaintiffs' by the use of the name "Shorland," called at the trial a number of witnesses who were cyclists and wholesale and retail people in the boot and shoe trade who gave evidence to the effect that "Shorland" 15 denoted the Plaintiffs' shoes. The Defendants called a smaller number of trade witnesses, principally wholesale, who gave evidence to the contrary. The Jury found a verdict for the Defendants. The Plaintiffs moved for a new trial, or in the alternative, for judgment in their favour, on the ground that the verdict was unreasonable having regard to the evidence given and the way in which 20 the case was tried.

The Motion was refused with costs.

On the 25th of April 1898, A. W. Gamage, Ld., commenced an action against. H. E. Randall, Ld., for an injunction to restrain the Defendants, their servants and agents, from passing or attempting to pass off shoes for cycling, not being 25 the goods of the Plaintiff Company, as or for the goods of the Plaintiff Company by the use of the word "Shorland," or in any other way, and for other consequential relief. By the Statement of Claim the Plaintiffs, who are athletic and cycling outfitters, carrying on business in Holborn, London, and successors in business to A. W. Gamage, stated (4) in the month of June 1892, 30 A. W. Gamage for the first time introduced into England a cycling shoe, the special features of which consisted of the absence of a top and the substitution of an instep strap and ankle strap and buckle for the usual fastening. Such features ensured greater lightness and coolness, and also fuller play to the feet and ankles than was formerly obtainable from shoes of other patterns. They 35 also stated such shoes having been worn by Frank Shorland, a well known

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A. W. Gamage, Ld. v. H. E. Randall, Ld.

cyclist in a race which he won, Gamage obtained from Shorland permission to call the shoes after him, which was accordingly done, (7) that ever since the said month of June 1892, the Plaintiff Company and their predecessor in business have continuously and invariably invoiced and sold, both at home and abroad, and both wholesale and retail, very large quantities of the said shoes 5 under the name of "Shorland," and that name had invariably been used by them and their predecessor in business on invoices, circulars, price lists and advertisements to distinguish and denote cycling shoes of the pattern above described, manufactured by or for, and sold by them and him. (8) The word "Shorland" had, ever since the time when it was first used in connection with 10 the said cycling shoe, denoted and been universally understood by the trade and the public, both at home and abroad, to denote cycling shoes of the pattern above described, manufactured by the Plaintiff Company or their said predecessor in business, and no other cycling shoes, and both the trade and individuals asking for "Shorland" cycling shoes expect and intend to be 15 supplied with cycling shoes manufactured and sold by the Plaintiff Company or their predecessor in business and no others. It was further stated (9) that the Plaintiff Company had lately discovered that the Defendant Company have recently sold and advertised for sale cycling shoes not manufactured or supplied by the Plaintiff Company, of a pattern exactly similar to that above 20 described under the name of " Shorland," and as a consequence the trade and individuals, both at home and abroad, had been, and will be, deceived by the use, by the Defendant Company, of the word “ Shorland," into the belief that they were purchasing cycling shoes of the Plaintiff Company's manufacture.

The Defendants by their Defence alleged that "by Shorland' shoes are 25 "meant cycling shoes of a particular pattern (described in paragraph 4 of the "Statement of Claim), no matter by whom made or sold. This is well under"stood, both by the trade and the public, and the allegations to the contrary in paragraph 8 of the Statement of Claim are wholly unfounded." They further alleged that "Shorland" shoes had ever since 1892 been manufactured 30 and sold by different makers and dealers. They admitted that they had sold shoes as Shorland," and claimed that they were entitled to do so. They denied that they had done anything calculated to deceive any purchaser of cycling shoes, and stated that they had in no way deceived any such purchaser.

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After the commencement of this action, H. E. Randall, Ld. (hereinafter referred to as Randalls) commenced an action for libel in the Queen's Bench Division against A. W. Gamage, Ld. (hereinafter called Gamages), the libel complained of being an advertisement issued by Gamages in relation to the first mentioned action. The first mentioned action was subsequently transferred to 40 the Queen's Bench Division and ordered to come on for trial with the libel action. The two actions accordingly came on for trial on the 18th of January 1899, before the LORD CHIEF JUSTICE and a Special Jury, the libel action being first in the list. This report is confined to the proceedings in the first-mentioned action.

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Blake Odgers, Q.C., Ashton Cross, and Soper (instructed by Ellis, Munday and Clarke) appeared for Randalls, the Defendants. Moulton, Q.C., John Cutler, Q.C., and Rose Innes (instructed by Arthur Pyke) for Gamages, the Plaintiffs. Blake Odgers, Q.C., for Randalls.-The shoe in question is a strap and buckle shoe. Shorland won a race in 1892 in this shoe, and so it came to be known as 50 the "Shorland" shoe. Gamages now claim a monopoly of this name. Randalls never made a "Shorland" shoe, but the traveller of Sexton of Norwich offered them shoes under the name in 1897 and two dozen were ordered, and in all Randalls have only had fourteen dozen. They bought them as "Shorland," and so they sold them as "Shorland." Gamages cannot prevent them doing 55 this any more than Shorland himself. Gamages to sustain their case must show that anybody who wants a "Shorland shoe means a shoe of Gamages,

A. W. Gamage, Ld. v. H. E. Randall, Ld.

This they cannot do. "Shorland" merely means a shoe of a particular pattern There are plenty of "Shorland" shoes in the market.*

Henry Edward Randall was then called and deposed that he had 26 shops; he had never heard of Gamages until the writ in the action; he understood 5 "Shorland" meant a shoe of a particular pattern; he had bought "Shorland" shoes of Sexton and of Howlett & White (he produced five invoices, one of which contained "Shorland "): he had seen shoes of the same pattern in retail shops, but could not say how they were ticketed.

Francis William Watts, secretary of the Defendant Company, and Percy 10 Clarke, member of the firm who were acting as solicitors for the Defendants, having given evidence, Frederick William Hurst, City manager for Randalls, was called, and deposed as to the purchase of two dozen "Shorland" shoes from Nelki, a traveller of Sexton's, in January 1896, which were delivered in March, but not invoiced as "Shorland." He said they were sold to him as "Shorland 15 and he resold them as "Shorland." He further stated that "Shorland" meant pattern in the trade and was not identified with Gamages.

Nelki, a traveller from Sexton's of Norwich, first knew of " Shorland" in 1895, it meant a cycling shoe with strap and buckle; it was manufactured by Sexton ; at first called "Strap and Buckle," and at the beginning of 1896" Shorland." 20 He had heard of "Shorland" shoes in other places besides Sexton's. In crossexamination he stated that he had nothing to do with selling to the public, and that he had no instructions from Sexton to sell the shoes as "Shorland" and that Sexton would not know he had sold it as "Shorland." In re-examination he stated that he had spoken of the shoe as "Shorland" to Sexton, and Sexton 25 always knew what shoe he meant.

George Ernest White, of Howlett & White, boot and shoe manufacturers, of Norwich, deposed that his business was wholesale only. They had made a few shoes of this pattern and at first called them strap and buckle, but afterwards adopted the name "Shorland " in 1895 or 1896, and it had got into general use 30 in their factory. In their 1897 catalogue they used "Shorland," but took it out of the catalogue in 1898 because they heard that Gamages claimed the exclusive right to it.

Robert Hyslop, managing director of Freeman, Hardy & Willis, of Leicester boot and shoe retailers, with 280 shops.-The "Shorland" shoe is a strap and 35 buckle shoe and passes by that name in our works, and some of our managers have ordered and still order them as "Shorland." We order them as strap and buckle shoes, but once we ordered them from Walker, Kempson & Stevens as Shor"land." Many people have offered us these shoes as "Shorland."

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Charles Brigstock, for two years and three months manager of Randalls' 40 Croydon shop, previously in the employment of Freeman, Hardy & Willis at their Widnes establishment, was not certain that he had sold "Shorland" shoes at Widnes, but had seen them at other shoe shops at Widnes and Liverpool, had heard that they were sold as "Shorland," but could not say that they were ticketed "Shorland"; had sold this kind of shoe at Croydon as strap and buckle 45 and "Shorland."

Sydney Pullin, retail boot and shoe dealer, of Ludgate Hill.-Seven years ago he saw Shorland wearing these shoes and conceived the idea of calling them "Shorland" and did so, but gave up the practice and substituted "Shorland "Shape" because of Gamages' proceedings against Abbott & Sons; sells 50 "Goodwin" shoes more than "Shorland." "Shorland" means a pattern in the trade.

The jury intimated that they had heard nearly enough of this evidence. Blake Odgers, Q.C., said he wished to call two country witnesses, who would be very short.

* Some other portions of the evidence both for the Plaintiffs and Defendants will be found referred to in the Summing-up of the Lord Chief Justice.

A. W. Gamage, Ld. v. H. E. Randall, Ld.

Walter James Gubbins, retail shoe dealer of Liverpool, had known "Shorland" shoes since May 1895. "Shorland" means pattern, just like "Wellington for boots. Witness sold them as "Shorland" shoes in his shop. They were invoiced as French cut shoes or strap and buckle shoes, but witness had seen them called "Shorland" in Howlett & White's catalogue. The public knew 5 the shoe by the name of "Shorland." Witness never ticketed the shoe as "Shorland or saw it so ticketed in any other retail shop.

Henry Charles Smith, boot and shoe factor of Birmingham, buys from manufacturers and sells to retailers. Witness produced his 1898 catalogue containing "Shorland" pattern; witness had received orders for "Shorland" shoes and 10 supplied "Shorland" shoes, "Shorland" means pattern, and is not identified with any particular maker. This was the understanding of the trade and among purchasers.

Blake Odgers, Q.C., stated that, in deference to the intimation of the jury, he wished to reserve the rest of his evidence. 15

The LORD CHIEF JUSTICE stated that when the time arrived he would determine whether this evidence could be called or not.

Moulton, Q.C., for Gamages.-The issue is, does "Shorland" mean a shoe supplied by Gamages or a shoe supplied by any one? What the manufacturers and retailers do between themselves is comparatively unimportant; the real 20 question is, as regards the public-Gamage introduced this shoe to the public in 1892. He advertised it as "Shorland" very largely and he has been vigilant in asserting his rights and stopping others from selling their shoes as Shorland." In July 1896, he obtained an injunction against Abbott & Sons, a large firm. The matter was not contested it is true, but a Plaintiff could not compel a 25 Defendant to fight. Immediately after obtaining this injunction he advertised it largely. In 1897 he obtained a similar injunction against Upson & Co. He also obtained undertakings without legal proceedings not to use "Shorland" from Jno. Carter & Sons, Ld., John Lovey & Sons, Walker, Kempson & Stevens, and George Irons. Gamages cannot object to people making shoes of a 30 particular pattern, nor do they object to manufacturers and retailers speaking of "Shorland" shape and "Shorland" pattern between themselves, what they do object to is the sale to the public of other people's shoes as Shorland." A. W. Gamage and Frank Shorland were called and gave evidence in support of the Plaintiffs' case.

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The following further witnesses then gave evidence for Gamages. Ernest Charles Ryder, in the employment of Lilly & Skinner, retail boot and shoe dealers. Witness had known "Shorland" for several years: it means a shoe of a particular pattern sold by Gamages, and so far as he knew that was the opinion of the trade and the cycling public; his firm sold strap and buckle 40 shoes but not as "Shorland."

Thomas Penrose, trading as Treadwell Brothers, retail boot and shoe makers, sold strap and buckle shoes of the same pattern, but never called them "Shor"land" because he considered Gamage was the first to use the name and therefore entitled to it. In answer to a question by The LORD CHIEF JUSTICE 45 witness said he thought the shoes would sell better as "Shorland" because the word "Shorland" has been so well advertised and therefore better known; but witness preferred to be original and called them by his own names.

Herbert Young, of Young & Co., athletic outfitters, of King William Street, had seen "Shorland "advertised tremendously always understood "Shorland" to 50 be Gamages' own shoe; sells shoes of the same pattern but not as "Shorland." Walter Leonard Jones, manager of the boot and shoe department, Spiers & Pond, Ld., sells strap and buckle shoes and calls them "Bar" shoes, never "Shorland"; knows "Shorland" as connected with shoes sold by Gamages. When asked for "Shorland" shoes, says we do not stock Shorland' shoes, 55 but we "have got one very similar which we call 'Bar' shoes." Stephen Withers, manager of Goy's, Ld.: known "Shorland" shoes over five

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A. W. Gamage, Ld. v. H. E. Randall, Ld.

years, thinks" Shorland" and Gamage indissolubly connected as regards cycling shoes; sells shoes of the same pattern but not as "Shorland."

Charles Friswell, managing director of Friswell, Ld., has known" Shorland" shoes since 1892: Gamage and "Shorland are indissolubly connected so far 5 as shoes are concerned; quite unnecessary to put Gamage and "Shorland " on the same shoe; if he saw "Shorland on a shoe he would come to the conclusion that it was Gamages'. If he went into a retail shop and bought a pair of shoes called "Shorland" and they had not got the name of Gamage on them witness would think they were Gamages' shoes, and that all the cycling 10 public would do the same.

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Stroud, cyclist.-"Shorland," as applied to shoes, means nothing else than a shoe supplied by Gamages; if a cycle shoe was offered to witness in any retail shop in London or the provinces he would think it was Gamages', even though it had not Gamages' name on.

Robert Langley Ede, cyclist.-"Shorland " is a very popular shoe, it means the strap and buckle shoe sold by Gamages; never tried to buy the "Shorland shoe at any other shop but Gamages'.

Harry John Swinby, cyclist, has known "Shorland" for five or six years, denotes a shoe sold under that title by Gamages. If a shoe were offered to 20 him at any retail shop he would think it was Gamages' whether the name Gamage was on it or not.

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William Charles Russell, Secretary of the Essex Cycling Union.-"Shorland" is a strap shoe sold by Gamages: had never been in a shop and asked for a "Shorland" shoe.

Robert Jameson, cycling journalist.-"Shorland" means a shoe made or supplied by Gamages, and sold by Gamage. If witness asked for a "Shorland" shoe he would expect to get one of these.

Sidney Lee.-"Shorland means a shoe sold by Gamage, of Holborn ; witness bought one pair of "Shorland" shoes and these at Gamages'.

Arthur Chase, cyclist.-" Shorland" as connected with cycling shoes means a shoe made by Gamages, and, so far as he knew, the same idea was entertained by others.

Henry Thomas Allen, cyclist, agreed with the last witness, but stated that if a pair of "Shorland" shoes was sold to him not stamped Gamage he would not 35 think they were Gamages' shoes.

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Albert Edward Walters, cyclist, had known "Shorland" since 1892; it means a shoe supplied by Gamages; never bought any "Shorland" shoes himself, but if he wanted "Shorland" shoes he would go to Gamages for them, and not to another retailer.

George Giddins, cycle trainer.-"Shorland" means a shoe made by Gamage under the name of "Shorland"; had never bought "Shorland" shoes.

The Jury intimated that they had heard sufficient evidence on this particular point.

John Cutler, Q.C.-Then I will drop that class of evidence and come to the 45 next class-the wholesale boot and shoe trade and factors and travellers.

Charles Marey Mobbs, member of Mobbs Brothers, wholesale boot and shoe makers at Kettering, had known "Shorland" since 1893, denotes a strap and buckle shoe of a particular pattern, supplied through Gamages, manufactured by or for them. Plenty of shoes of the same pattern supplied by others, but 50 never as "Shorland.”

George Girl Steel, traveller for Hartman, London Agent for Serton & Sons. -"Shorland" denotes a shoe manufactured for or by Gamages. When cyclists speak of "Shorland" they would mean a shoe manufactured by Gamages, or sold by Gamages. Witness as a traveller mixes a great deal with retail 55 traders.

Isaac David Zeffert, manager of the factory of Walker, Kempson & Stevens, formerly their traveller.-Witness saw the particular pattern shoe in 1892. In