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

1893 witness introduced the same pattern, but no one except Gamage called it "Shorland" until 1897. Before 1897 we called it strap and buckle shoe. In 1897 we sold two or three pairs as " Shorland," and then we got a communication from a solicitor, and ceased to do so.

Erne Archer, traveller to Penton & Son, wholesale boot factors.-A 5 "Shorland" shoe is a strap and buckle shoe marked "Shorland" on the sole, and Gamage also. If witness did not find that mark on the shoe he would not think it was a genuine Gamage for a moment. He had orders for "Shorland” shoes, but could not take them as the people told him they wanted them stamped with Gamages' name and also "Shorland."

Jesse Harrison, agent for Cook, of Northampton, formerly with Johnson, Clark & Parker, who manufactured the shoes for Gamages. They were made particularly for Gamages; every pair almost from the very first had their stamp on them. Johnson, Clark & Parker made strap and buckle shoes without any stamp for other people.

Henry Marshall, boot and shoe manufacturer of Northampton, with two retail shops in London, stated that he comes into contact with the principal buyers in London and all over the country. "Shorland" shoe means a particular shoe of a particular pattern supplied by Gamages. Witness manufactures and sells a shoe of similar pattern, but not as "Shorland."

Edmund O'Riley, editor of "Wheel," and Walter Groves, editor of "Cycling," also gave evidence.

Blake Odgers, Q.C., stated that he did not think it necessary to call any further evidence.

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Moulton, Q.C., for Gamages.-The Plaintiffs put on their name as well as 25 "Shorland," to associate the two as closely as possible. It is a common practice for a trader to put on his name as well as his catch word, as appears by most of the reproted cases on the subject. In the Yorkshire Relish case Goodall, Backhouse & Co. was on all the bottles of sauce, but an injunction was granted. It is a strong thing for Gamages that shoes of a similar pattern are sold by others under other 30 names; but no one else uses "Shorland." Gamages' advertisements and energy had made the name popular, and it does not help honest trade that other people should slip in and get Gamages' business. No retailer has been called to prove that "Shorland" has been openly and publicly applied to any cycling shoes except Gamages. No other firm has advertised "Shorland" shoes in the public press, 35 and the only documentary evidence on the other side consists of 3 catalogues, one of which contains "Shorland pattern," not "Shorland" simply; of the others, one, Howlett & White's, was discontinued, and the other is Lovey's, whom we put down. What goes on verbally in manufacturers' offices is not very material; the thing is, what the public think, and all the cyclists who have been called 40 testify to "Shorland" as denoting Gamages' shoes.

Blake Odgers, Q.C., in reply for Randalls.-No purchaser who has been deceived has been called, nor is there any proof of any attempt at deception. Gamages cannot claim the monopoly of "Shorland"; on their shoes are "Gamage, Holborn," as well as Shorland." On Randalls' shoes there is 45 nothing. This is sufficient to prevent deception, and the evidence shows that "Shorland" is not synonymous with "Gamage." Gamages are retailers, and no one goes into the shop of one retailer to purchase the goods of another retailer. The usual course in cases like the present one is to write a letter before action; but no letter was written in this case to Randalls before the 50 writ was issued.

Lord RUSSELL, C.J.-Gentlemen of the Jury, this case has certainly occupied an amount of time at least fully equal to its importance, and you have given it throughout the hearing such close attention that I shall be able to shorten the observations I have to make to you. On the record the action for libel at the 55 instance of Randalls, Ld., stands first, and as regards that action, I have only in this connection to make two observations. The Judge who tries an action

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

for libel is merely called upon to say whether the matter charged is capable of being a libel-and in this case it has not been suggested that this publication did not bear that character-and if called upon to decide, and deciding, that the matter charged is capable of being a libel, all the rest is for the jury. The 5 jury are to say, is it a libel or not; if the plea of justification is pleaded, is the plea of justification made out; and if a libel in fact and not justified, then it is for the jury to say what the damages ought to be. So that you see the Judge has very little to do with actions for libel.

In the other action you will need some assistance from me, because it is 10 perfectly obvious from the course that this case has taken, and from the conduct pursued by Gamages during the period of the manufacture of this shoe, that they have had exaggerated and wholly wrong ideas as to what the character of their rights was in relation to the use of such a name as that here in question, and it is equally clear that their errors in that regard were shared, as I shall 15 presently point out, by a number of persons in the trade.

Now, the action which Gamages, Ld., bring is of a somewhat unusual kind, and though, as I have said, it stands second upon the record, as the list is presented to us, I take it first for two reasons, because it naturally comes first in the order of time, and it leads up to the action for libel, and because the 20 view that you take of what your verdict ought to be in the action for libel would, I think, to some extent, be affected by the view that you take of the claim put forward by Gamage, Ld., in their action.

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Now, I want to show you how they put it. They say, in paragraph 3, that Albert Gamage, who has since turned his business into a Company, had, prior to 25 the formation of the Company, established a world-wide reputation, which the Plaintiff Company has sustained and enhanced; that in 1892 he introduced this particular kind of shoe. Now, this is what they, quite correctly, state they are bound to make out in paragraph 8. They say :-"The word 'Shorland' has ever since" -that is since 1892-"when it was first used in connection with the said cycling 30"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 "and manufactured by the Plaintiff Company or their predecessor Mr. Gamage." Now that is therefore what they have to make out, that the word Shorland" used-mark you, however used, is the way in which they put it-in connection 35 with a cyling shoe, is universally understood by the trade and the public at home and abroad, to denote cycling shoes manufactured by the Plaintiff Company. I am not laying, or intending to lay, any emphasis on the statement:"manufactured by the Plaintiff Company," though, for reasons which have been already, to some extent, adverted to, it is not immaterial that they are not 40 the manufacturers, but that they are the mere retailers of goods manufactured for them, yet they would still, even if that were the case, have a right to complain, that they had (if the fact were so) so coupled their name with this particular shoe, that the word "Shorland" connoted that it was Messrs. Gamage's shoe, supplied by Messrs. Gamage. Then they go on to say that the 45 Defendant Company have endeavoured to pass off (and this is the real gist of the question) their goods, as and for the goods of Gamage, Ld., and that the use of the word "Shorland" in connection with cycling shoes is calculated to deceive and has deceived purchasers of cycling shoes into the belief that they were getting Gamages' shoes. The learned counsel was quite justified in calling 50 attention to the fact, which I had already noted, and intended to draw to your attention, that though Gamages have apparently spared no pains and expense in calling before you a very large number of witnesses they have not called a single witness who has ever said that going into a retail shop and buying shoes of this kind, as to which there is evidence that they have been sold and dealt with under 55 the name of "Shorland," they were ever deceived into the belief that getting those shoes from persons other than Messrs. Gamage they were under the impression they were getting Gamages' shoes. It is in this connection, as it seems to me,

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

that the fact that Messrs. Gamage & Co. are retailers is important; because if a man is a retailer, and has an establishment where he sells to the public (and it is not alleged that the business of Messrs. Gamage & Co. is, or at all events is to any appreciable extent, a wholesale business), you would naturally suppose that people who wanted Gamages' shoes, or who wanted "Shorland" shoes 5 believing they were Gamages', would go to Gamages' for them. That is the natural conclusion one would arrive at.

Then I want to call your attention still more closely to what is the nature, and the sole nature, of the right which the Plaintiffs here can insist upon. It is admitted that there is no patent in the shape or style, or in any part of the 10 accessories of that shoe. That is admitted. It is admitted that anyone can make that shoe precisely as it is made by Gamages, and sell it as a shoe of the "Shorland type," or of the "Shorland pattern," or of the "strap and buckle "pattern," or of the "Shorland kind," and that in doing any one of those things he would be infringing no right of Messrs. Gamage. Nor is this a case 15 in which there has been any registered Trade Mark which would give them any property as to which a Trade Mark has been infringed, but the law quite rightly, and in the interests of honest trade, has said this: That if a man has associated his name with a particular article of production, so that the one connotes the other, no man shall be allowed in fraud of the man who has so 20 succeeded in coupling his name with a particular production-that no man shall in fraud, not only of the producer (for the two things must go together) but in fraud of the public-do anything that will have the effect of dishonestly passing off his goods as if they were the goods of the other man. The cases upon this point are very numerous and very various. They are not even 25 confined to cases of similarity of manufacture, but they are even extended to cases where the labels were similar, or the boxes and the packing were similar-the product being of course in the same class-and where there was an attempt to imitate the label, or the style of boxes, or the style of packing, and the rest, but all turning, and essentially turning, on the point of 30 whether the things that were so done were done with the object, or the effectbecause a man is assumed in point of law to mean the consequences of what he does-of fraudulently passing off for the goods of somebody else what in fact are his own. Therefore the question I have to ask you in this case is shortly this: Does "Shorland" mean, in connection with shoes, a buckle and strap 35 shoe sold by Gamages exclusively, or does it mean a shoe of the type worn by Shorland, that is a strap and buckle shoe. I have to point out to you that the onus of establishing that fact, namely that Gamages have acquired an exclusive right to it, and the proof of that fact to your satisfaction rests upon Gamages, and if Gamages have failed to satisfy you that they have in the circumstances 40 of the case so linked the name of " Gamage" with the word "Shorland" in this connection, that anybody buying a "Shorland" shoe would think he was buying one of Gamages'-unless they establish that to your satisfaction then you must in this action decide against them. If on the other hand you think they have made that out, then you of course should give them the verdict.

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There are one or two other things in this connection. I have pointed out that Gamages are retailers. They may, but it is to a very small extent according to the evidence of Mr. Gamage, supply other retailers; to some extent they do, but their business is to sell direct from their own place by retail this shoe, amongst the various other articles they deal in, their business 50 not being that of boot and shoe makers or boot and shoe sellers solely, but of cyclists' outfitters, dealing with all the articles which the pursuit of that particular form of exercise requires. They carry on their business in a very intelligible fashion. In order that there may be no mistake about what the goods are they are sending out into the world, and by the sale of which they 55 seek to make their reputation, the articles are stamped. The man who has made them from the beginning says that within about six months from the

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

time their making was started in 1892-that witness was called this morning you will recollect-he was furnished with a stamp, so that all the shoes-not only this type but, I have not the least doubt, it applies to these other types with which we have no concern-are stamped as the shoe I have before me is 5 unquestionably stamped, "Gamage, Holborn," and between these two words, in a diamond shape, is the word "Shorland." Then there is put inside the shoe that which I fancy has probably much deceived these gentlemen who made affidavits, all of whom with one voice said that "Shorland" meant also "manufactured by Gamage & Co.," because not content with stamping them in 10 that way, so that there can be no mistake about it, they have also inside, in gold, on the leather, "Specially manufactured by A. W. Gamage, Ld., 126 to 129, Holborn, E.C." Every one of the articles goes out in that fashion.

Now this is the story. I will state it in a sentence first, and then I will call your attention briefly to the evidence. About 1892 Mr. Gamage saw on the foot 15 of a Frenchman this open strap and buckle shoe. I should have thought the strap and buckle shoe was a very old thing indeed. As far as I could make out when I called attention to it, the only thing that differs it from what I thought was a very old thing indeed is this piece of connecting leather. Whether that is completely new or not I do not stop to enquire, but Mr. Gamage thought it 20 suggested a shoe of a convenient type, allowing for the play of the foot in the cycle exercise, and also cool. He had one or two experimental pairs made. He asked Shorland to wear them in one of his races and he did, and he asked Shorland might he call them after him, and Shorland said "Yes." Shorland was under the idea that by that he was conferring on him, Mr. Gamage, the 25 exclusive right to use the name, and Mr. Gamage thought so too quite erroneously. The exclusive right does not exist at all. The point is, does the use of the word whenever and however it is used operate to the prejudice of the producer of the shoes and to the deception of the wearer of the shoes. That is the point. He continues to advertise, but, as I said before, I do not find in the advertisement 30 any special prominence at all given to the "Shorland" as compared with some of the other shoes that are there advertised. For instance, in that very advertisement to which my attention has been called-and if there is any other I should like attention called to it now-certainly in the ones produced, the "Referee" gets much more prominent attention, and, indeed, I cannot help 35 thinking there has been a good deal of exaggeration of the importance attached to this case, when it turns out according to the evidence of this gentleman himself, and speaking of a period from 1892 to 1898, the entire number of shoes he appears to have sold-and I presume he gave the outside figure-was something like 1,800 dozen in that period of years. It is quite ridiculous to talk, as the 40 learned counsel was instructed to talk, of advertisement to the extent of 10,000l. to make the name of "Shorland." It would be an enormous profit that would justify any such thing. That is the expenditure which is entirely a matter for his own consideration for bringing before the public the various articles he deals in, boots and shoes of various kinds and various makes and various shapes.

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Now after that apparently this shoe gets to be generally, or, at all events, in a good many places known, and gets to be generally manufactured, and I should have thought if it were a novelty in its shape it would soon also get to be known, and, indeed, the name of "Shorland" would suggest that it was of the type of shoe worn by Shorland in some of his races. Finally in 1896 it was found that 50 Abbott is selling these shoes, and I wish to deal with this part of the case once for all in order to say what is properly to be said about it. Accordingly Abbott is attacked. Abbott has a name of his own, "Phit-eesi" apparently, and an action is brought against him and by consent he agrees to an injunction restraining him from the use of the term "Shorland"; but I want to call 55 attention to what the character of that injunction was in order to point out that even if Gamages were right in this case this consent injunction gives them that to which they have no legal right whatever. I have called attention to this

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

already in order to show that proceedings of this kind, or assertions of this kind, are not of the same weight and character as if the matter had been litigated in Court, each party standing on his rights and fighting it out until the Judge decided it. "The Court doth order that the Defendant "-Abbott--" be per"petually restrained from selling or offering or advertising for sale any shoes 5 "not being of the Plaintiffs' manufacture under the name of Shorland." " That would be quite right, provided, of course, Messrs. Gamage had established their right to the exclusive use of the name. But then it goes on to say, "or under "any designation of which the name 'Shorland 'forms part." There is no such right at all. It is conceded by the learned counsel, who knows much more 10 about it than most of us in this Court, that that is not so, that a man may call, whatever Gamages' right upon the other point may be, a shoe of the "Shorland "type," also of the "Shorland pattern," also "Such as worn by Shorland in "such and such a race," and that in doing that he infringes no right whatever that Gamages have. It is to be observed that in the other consent injunctions 15 -and they are all consent injunctions or consent undertakings-the language has been equally wide, far beyond any legal right which Gamages would be in a position to assert.

Then finally comes the particular matter which has brought about this action. There are two manufacturers, Sextons, and Howlett & White, and from these 20 two manufacturers, who are selling shoes and offering them as "Shorland" shoes, Randall & Co. buy altogether fourteen dozen. altogether fourteen dozen. Thereupon some person representing Gamages is apparently sent to their shop to buy a pair, and he requests that the name "Shorland" be put in the receipted invoice. He makes off in triumph with this proof of Randall's guilt, and contrary to 25 what is proper professional practice, without any notice whatever, a writ is issued and application made for leave to serve short Notice of Motion. I say it is contrary to proper professional practice. I do not wish to be understood as making a reflection upon the solicitors who represent Gamages. For all I know to the contrary, they may have been ordered to take that course. If 30 they were not ordered to take that course, or if they did not represent to their clients that it was a course not properly to be pursued, and if they, being requested to take that course, did not remonstrate against it-if they did neither of those things, then I think they were wrong, because what was the state of the case? So far as appears, Randalls did not care a dump about this wretched business of 35 a few pairs of shoes that they were dealing in. They did not care a dump about it, and you can hardly doubt that if an application had been made to them, and they had explained that they had bought them as "Shorlands," and that they had sold them as what they had bought them, and had pointed to the trade list of one of these persons-there is a second trade list in which the name appears 40 -then it would have been in the highest degree absurd and ridiculous under such circumstances for Gamages to have published any advertisement which was capable of the construction, that Mr. Randall or the Company that he represents, were dishonestly, under such circumstances, trying to pass off their, Messrs. Randalls', goods as if they were the goods of Messrs. Gamage. Now, about the evidence. Do you, or do you not, wish me to go through that?

The Foreman.-I do not think it is necessary my Lord.

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Lord RUSSELL, C.J.-Very well. It seems to me that the evidence may be fairly summarised in this way, that on the part of Randall & Co., Mr. Randall 50 himself, several of his travellers and agents, his managers of several shops in London, and the manager of one in Croydon, all deny that they understood that Gamage and "Shorland" were the same thing. In point of fact, some of them say that they never heard of Gamage in connection with "Shorland" at all. They call further a number of persons in the trade, including Mr. White of Howlett 55 & White, and Mr. Robert Hyslop of Leicester, whose evidence seemed to me to be important, Mr. Brigstock, Mr. Sydney Pullin of Ludgate Hill, who keeps a