Page images
PDF
EPUB

5

20

66

66

66

66

66

66

66

66

Payton & Co., Ld. v. Titus Ward & Co., Ld.

quality was put up in tins bearing a green label and in three sizes, another quality in tins bearing a blue label and in three sizes, and the third quality in "tins bearing a red label and in three sizes as aforesaid. The said labels were specially designed by the Plaintiffs' managing director and were very distinc"tive, the colour of the ground of the several labels being as above stated with a conspicuous gilt device in the centre of each side with the name of the "brand of the coffee 'The Royal' on each side above the gilt device and other "letter press beneath the device. All the conspicuous lettering was in white. "On one side the gilt device was circular surrounded by a circular white band. 10" On the other side it was shield-shaped. 3. The Plaintiffs put their said "French coffee on the market in their said range of tins labelled as aforesaid in "the autumn of the said year 1895, and such tins so labelled were at once "recognised both by the trade and the public as very special in character and as very effectually distinguishing the Plaintiffs' said French coffee from all 15 "other brands, and the appearance of the said tins speedily became very well "known and generally recognised and the sale of the Plaintiffs' coffee therein "contained rapidly grew and increased. 4. In the year 1896 the Plaintiffs "determined to have their said tins in some cases enamelled with a reproduction of their said labels instead of affixing their said labels to the tins as previously and they accordingly caused a quantity of tins (though not in all "the varieties) to be enamelled in manner aforesaid and they began to put "their said French coffee on the market in tins enamelled as aforesaid as an "alternative for the previous labelled tins in the autumn of the said year 1896. "The Plaintiffs' said tins so enamelled were as nearly as possible reproductions 25" of their previous labelled tins and have always been regarded by the trade "and the public as identical with the Plaintiffs' said labelled tins, the only "differences being that the device of the labels is enamelled on the tins instead "of being printed on the adhesive labels. 5. The design and appearance of the "Plaintiffs' said tins, whether labelled or enamelled, has always been entirely 30 distinctive and has been universally recognised as such and any one who sees 66 one of such tins at once recognises it as one of the Plaintiffs' tins, and anyone "who purchases one of such tins intends and expects to receive the Plaintiffs' 66 said French coffee therein. 6. The Plaintiffs recently discovered, as the fact is, "that the Defendants, who carry on business at No. 22, Beer Lane, Great Tower 35 Street, in the City of London, and elsewhere, as grocers and Italian warehouse66 men, were offering for sale and selling French coffee not being the Plaintiffs' "coffee in cylindrical enamelled tins so got up as to closely imitate the "Plaintiffs' coffee tins aforesaid and were offering for sale and selling the "coffee therein contained under the name 'Palais Royal' Coffee. So far as the 40 "Plaintiffs have at present discovered the Defendants are not as yet putting up "their said coffee in one pound tins but they are putting up the same in two qualities and in tins of two sizes, namely half pound and quarter pound tins. "The Defendants' two qualities are distinguished by the colour of the ground "of the design, namely green and chocolate. One quality is put up in green 45 "tins in two sizes, and the other quality in chocolate tins in two sizes. In the centre of each side of the Defendants' tins is a conspicuous circular gilt device "with the name of the brand of the coffee Palais Royal' on each side above "the gilt device and other letterpress beneath the device. All the conspicuous "lettering is in white and on one side the gilt device is surrounded by white lettering so arranged as to form a circular white band. 7. The Defendants' "said tins bear so close a resemblance to the Plaintiffs' said tins in style, arrangement, colouring, and general appearance that the same (especially in conjunction with the name 'Palais Royal ') is calculated to and will and must "deceive. The Defendants' trading style appears on their tins, and there are 55 minor differences in the lettering, but such distinctions are wholly insufficient "to counteract the effect produced by the close general resemblance between "the tins and the names thereon. The Plaintiffs do not put up their coffee in "chocolate tins, but the Defendants' chocolafe tins so closely resemble the "Plaintiffs' tins in style and appearance as well as in name that the same must

50

66

66

66

66

66

66

66

6

66

66

66

Payton & Co., Ld. v. Titus Ward & Co., Ld.

"necessarily produce the belief that they contain coffee of the Plaintiffs. "When the Plaintiffs' said tins were first placed on the market no tins at all "resembling them had ever been used for the sale of coffee, and although attempts have recently been made by other firms to imitate the attractive get up of the Plaintiffs' said tins such attempts have been promptly suppressed 5 except in one instance in which the action is still pending. The get up of "the Plaintiffs' said tins is of great value to the Plaintiffs, and it is of the "highest importance to them that the distinctiveness of their said get up "should not be destroyed or impaired. 8. The Defendants' said tins were "designed and manufactured for them by a firm of box makers who have 10 "already been restrained by injunction from improperly imitating the Plaintiffs' "said tins in a similar manner and the Plaintiffs' said tins were shown by the "said box makers to the Defendants before they adopted or used the tins "aforesaid. Both the Defendants and their said box makers were well aware "when the said tins were designed and adopted and used that the same were 15 improper imitations of the Plaintiffs' said tins. The Defendants allege that "they have sold coffee not being the Plaintiffs' coffee in tins bearing the name "Palais Royal' but differently got up for a long time past. If this be the fact (which the Plaintiffs do not admit) then the Plaintiffs say that it was all the "more incumbent upon the Defendants when changing the style of their 20 "Palais Royal' tins to take special care to avoid imitating the Plaintiffs' "Royal' tins."

66

66

66

66

The Plaintiffs claimed

"1. An injunction to restrain the Defendants, their servants and agents, "from in any manner passing off or enabling or assisting others to pass 25 "off any coffee not being the Plaintiffs' coffee as or for the Plaintiffs' "coffee whether by means of the name under which the same is sold or of the manner in which the tins or other receptacles in which the same is sold are got up or offered for sale or otherwise howsoever. 2. And "from selling or offering or exposing or advertising for sale or procuring to be 30 "sold any such coffee as aforesaid under the name Royal' or under any name "in which the word 'Royal' appears without clearly distinguishing such coffee "from the Plaintiffs' coffee. 3. And from selling or offering or exposing or "advertising for sale or procuring to be sold any such coffee as aforesaid in any "tins or other receptacles so printed, painted, enamelled, coloured, labelled, or 35 "otherwise prepared or got up or by colourable imitation of the Plaintiffs' tins or otherwise to be calculated to represent or lead to the belief that the coffee "therein contained is the Plaintiffs' coffee." They also claimed the usual consequential relief.

66

By their Defence the Defendants traversed the statements in the Statement 40 of Claim, and also alleged as follows:

"2. The Defendants or their predecessors in business, the firm of Titus "Ward & Co., have carried on the business of grocers and provision dealers "since the year 1882. The Defendants and their said predecessors in business "are hereinafter referred to as 'the Defendants.' 3. The Defendants have 45 "since 1882 put up and sold a mixture of coffee and chicory under the name "of Palais Royal French Coffee Blend'; the said mixture, hereinafter called "the said blended coffee,' was until November, 1897, sold by the Defendants "in cylindrical tins of two sizes, and containing respectively half-pound and "quarter pound, and one quality was put up in tins bearing a label of mottled 50 "grey colour and chocolate colour facets, and the other quality in tins bearing "a label of cream colour with chocolate colour facets; the said blended "coffee became well known and recognised as the Defendants' mixture, and “was known in the trade and to the public long before the Plaintiffs com"menced to sell coffee, and was known and asked for as Palais Royal' Coffee 55 66 or 'Royal' Coffee. 4. In the autumn of 1897 the Defendants found that it "was possible, in consequence of the decrease in price of such tins, to use "enamelled tins for their said blended coffee, and in November, 1897, the "Defendants gave an order to a firm of tin makers for a quantity of tins to be

[ocr errors]

10

66

Payton & Co., Ld. v. Titus Ward & Co., Ld.

"enamelled with a reproduction of their said labels. The Defendants were "advised that the ground colours of their said labels, namely, mottled grey "and cream, were not suitable for and would not be effective if enamelled on "such tins, and that it was desirable to alter the ground colour of the labels, 5" and the Defendants directed that the ground colour should for one quality of "their said blended coffee be green and for the other quality should be red. "5. At the time of giving the said order and directions the Defendants did not "know of the Plaintiffs or of their coffee, or of the tins used by them, and "were not aware that the Plaintiffs sold coffee in enamelled tins under the name of Royal' Coffee, or that they sold coffee at all. 6. Shortly after "giving the said order and directions the Defendants for the first time heard "of the Plaintiffs' coffee and of the enamelled tins used by them. At that "time the Plaintiffs were using enamelled tins in two colours only, namely, "red and blue, and were not using an enamelled tin coloured green, and in order 15" to obviate any possibility of confusion the Defendants directed that the tins "to be enamelled for them should be enamelled chocolate instead of red for "the one quality and green for the other quality, and they made various "alterations in the lettering and arrangement of the said labels so as to avoid any possibility of their said blended coffee being mistaken for the Plaintiffs' 20" coffee. 7. The Plaintiffs did not commence using an enamelled green tin "until after the Defendants commenced using their tin enamelled green, and "the Defendants were not aware that the Plaintiffs used a green label at all "till after the commencement of this action. 8. The said blended coffee is "the only coffee mixture the Defendants sell in tins, and they do a large trade 25" in it, and it has become and is well known to the public, and recognised to "be the mixture of the Defendants, and has been for years and is known and "asked for as 'Palais Royal' Coffee or as 'Royal' Coffee. 21. The Defendants "further say that the Plaintiffs are not entitled to the assistance or protection "of the Court in respect of the mixture they sell as Royal' Coffee. Under 30" that name the Plaintiffs sell a mixture of coffee and chicory containing a "large proportion of chicory, and they do not properly and sufficiently indicate 66 on the tins used by them that the contents of the tins are a mixture of coffee "and chicory in such proportions as in fact they are.”

35

[ocr errors]

6

The action came on for trial before Mr. Justice KEKEWICH.

Warmington, Q.C., Warrington, Q.C., and Sebastian (instructed by J. S. Salaman) appeared for the Plaintiffs; Renshaw, Q.C., Asquith, Q.C., and Richard Neville (instructed by Neve and Beck) appeared for the Defendants.

Warmington, Q.C., having opened the Plaintiffs' case, witnesses were called on their behalf, including Daniel Pearman, managing director of the Plaintiffs, 40 and several trade witnesses, to speak as to the probability of deception, and also several female witnesses, who deposed to going to several shops of the Defendants' with written orders for, among other things, "Royal" Coffee, and being supplied with the Defendants' coffee. It was also proved that an injunction had been obtained by the Plaintiffs against the Defendants' box45 makers, Messrs. Lloyd, in December 1897.

The witnesses for the Defence were then called, including Thomas Pratt Ling, the chairman of the Defendant Company, George Duncan Ling, and Harry William Ling, directors. The latter deposed that the firm who were the predecessors in business of the Defendant Company began to sell 50" Palais Royal" Coffee in 1882, and this was sold continuously until 1897, when the Defendant Company was formed to take over the business. Labels were used in cream and chocolate colours for No. 1 quality at 1s. a pound, and mottled grey and chocolate for No. 2 quality at 10d. a pound, the words "Palais Royal" being placed conspicuously on the top of each label; and he 55 further gave evidence as to the origin of the Defendants' tins. He deposed to having ordered certain enamelled tins in red and green of a particular design suggested by himself on the 15th December 1897 of Messrs. Lloyd, who refused to execute the order without an indemnity. One of the Messrs. Lloyd came to see the witness and told him of the Plaintiffs' tins. Up to that time he had

Payton & Co., Ld. v. Titus Ward & Co., Ld.

never heard of the Plaintiffs' firm or of their "Royal" Coffee. He then procured one each of the Plaintiffs' red and blue tins, and subsequently the colour of some of the Defendants' tins was changed from red to chocolate, but green was retained for the others, and some alteration was made in the design and lettering of the labels. An indemnity was then given to Messrs. Lloyd and 5 the matter was proceeded with. Subsequently the Defendants became aware of the Plaintiffs' green tins. Several trade witnesses were then called to disprove the probability of deception.

Renshaw, Q.C., sunimed up the Defendants' case. The Plaintiffs' object was to make out that the Defendants had copied the word "Royal" from them, 10 whereas it was proved that the Defendants had used the word "Royal" long before the Plaintiffs. As to the alleged similarity between the Plaintiffs' and Defendants' tins, the case of Lever v. Bedingfield (15 R.P.C. 3) established that the proper course in these cases was to consider whether the dissimilarities were not greater than the points of resemblance, and here the points of dissimilarity 15 were much greater than those of resemblance. Upon the evidence it should be held that there was no probability of deception, especially as the Defendants' coffee had been sold as "Royal" long before the Plaintiffs.

The two labels originally used on the "Palais Royal" Coffee, and referred to in the evidence of H. W. Ling, were identical in design, and almost identical in 20 wording. One had

ALAIS ROYAL

PA

FRENCH COFFEE BLEND.

printed conspicuously at the top of the centre of the label, the other had "Palais Royal Chicory and Coffee Blend" similarly printed. The name of the firm did not appear on either label. The cream label had the printing in cream type on chocolate panels, except "No. 1 Finest Quality, 1s. per pound," which 25 was printed in chocolate type, partly on one side and partly on the other of the oval chocolate panel which formed the centre of the label. The label described as "mottled grey" was of light greenish colour, and the printing was in the same colour on chocolate panels, except "No. 2, 10d.," which was printed in chocolate type, partly on one side and partly on the other of an oval 30 chocolate panel which formed the centre of the label.

The label enamelled on the Defendants' green tin was of a dark green similar to the Plaintiffs' green label. It had on one side at the top "Palais Royal "French Coffee Blend" in white block capitals. Underneath was a gilt disc with "A delicious breakfast beverage" printed on it in green, and the words 35 "Titus Ward & Co." were placed in white lettering round the outside of the upper half of the disc and the word "Limited " below the disc. On the back at the top was "Titus Ward & Co." in large white block capitals; underneath was "Palais Royal" in similar capitals; then came a gilt disc similar to the one above described, and across the label below the disc "French Coffee Blend." 40 The Defendants' chocolate tins were enamelled in a design similar to that of the green tins, except that chocolate was substituted for green as the ground colour. KEKEWICH, J.-In my judgment this is a clear case of getting up in order to pass off the goods of the Defendants as the goods of the Plaintiffs. I have heard a considerable amount of evidence on either side. I do not think it worth 45 while to balance the evidence nicely, one witness against the other, to consider whether one is more experienced than another, or more truth telling than another, or to have a nice weighing in the balances of the evidence of the many witnesses. I think a nice weighing would result in showing that there is a good deal to be got out of the Defendants' 50 witnesses in substantial agreement with the witnesses for the Plaintiff; but, at any rate, we get to this length-that a large number of gentlemen of experience

Payton & Co., Ld. v. Titus Ward & Co., Ld.

about whom it cannot be said either that they are interested or that they are not witnesses of truth, are of opinion that deception could be practised, and is likely to be practised, and easily practised, by means of the coffee tins of the Defendants; and, on the other hand, no doubt we have a number of gentlemen 5 of more or less experience-I repeat that I am not weighing their merits in the balance-who think differently. Assuming for the moment that the two classes of evidence are really of equal weight-which I do not think they are-I certainly should be disposed at once to give more force and effect to the evidence of those who relied more than the others on the carelessness and 10 stupidity of the ordinary customer who purchases such goods as these, and on the possible-though I hope not probable-dishonesty of the salesman. I am sorry to say that my experience of these cases teaches me that, at any rate in small businesses, a shopman will rather sell the wrong thing than sell nothing; if he has not that which he is asked for he will endeavour to sell something 15 else. It is only human nature in one of its bad forms, but it is human nature exemplified again and again in many cases that I have had before me. Therefore, on the evidence, I do not think I ought to doubt; but after all in these cases the best evidence of all-no doubt likely to err and capable of being corrected by another tribunal-is that of my own eyes. We began this case on 20 Friday, and I watched these things then and during part of Saturday and the whole of to-day, and I have not the slightest doubt that these coffee tins so strongly resemble one another that a case of mistaken identity might easily be found, if not many cases. That is my own conclusion.

Then Mr. Renshaw forcibly puts it that in another case, which was a case of 25 very great difficulty both in law and fact-I remember it well-the Master of the Rolls said that the points of difference were more prominent than those of resemblance, and forced themselves on your attention. To my mind this is an entirely different case. Here the points of difference are not so strong. It is the points of resemblance that seem to me here to force themselves on your 30 attention. Of course I have heard, not so much in argument, because argument after oral evidence is of little avail, but I have heard in cross-examination, which is a more effective form of argument, a great deal about these various differences, that there is a disc here and a shield there, and the gold band does not reach to the top and divers other things of the same kind, all of which are 35 very useful for the purpose of testing the knowledge and opinion of the witnesses, but go no way at all in determining the question whether there is a similarity or not. The similarity is a question of the whole. You look at one and look at the other, or, a still better test, though I cannot myself apply it with my own eyes, is not to look at one but to look at the other; then having 40 looked at the first one at some previous time, try to consider whether the one you are now seeing is a replica of the one you saw before. It is a question of the appearance of it as a whole and not in distinct parts, and I do not propose to discuss the different parts. Nothing could be easier than to pull it to pieces and say: The Defendants have not got this, and they have got that, and so on 45 The question is: Can they fairly be mistaken one for the other, assuming an unwary purchaser and assuming a dishonest salesman ?

There is one point, however, on which I must say a few words, all the more so because Mr. Renshaw has said a great deal about it, though not at very great length, from an entirely different point of view. He says that the Plaintiffs 50 have come here in order to establish their title to "Royal," and that they have broken down entirely. If it is fair to say that they have broken down, it is only fair to say also that they broke down at the opening, because Mr. Warmington told me perfectly plainly in his opening speech that he was not at all likely to prove that is the way an advocate says he cannot prove-any 55 title to the word "Royal"; "Palais Royal" was in existence long before. "Palais Royal" is the name by which this coffee of the Defendants has been known, and the Plaintiffs not only cannot complain of the Defendants using the words "Palais Royal," but they could not have complained if the Defendants. had said that they were using the word "Royal." 1 do not mean that there is

« PreviousContinue »