Alaska Packers' Association v. Crooks & Co.

in use the label was coloured red. The disc was yellow and the type mainly white:

In May 1899 the Plaintiffs' agent in England ascertained that 3,000 tins of salmon were being imported into England by Robert Crooks & Co., of Liverpool 5 by the sailing vessel "Eurasia," which had not then arrived. This salmon was put up by The Pacific Steam Whaling Company, of Karluk, Alaska, and the tins bore a label of which the following is a representation in black and white, such label in use being coloured red, with the type in white and the disc in yellow :

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On the 8th of May 1899 the Plaintiffs commenced an action against Robert Crooks & Co. for an injunction restraining the Defendants, their servants and agents, from infringing the Plaintiffs' registered Trade Marks Nos. 86,588 and 86,590, or either of them, and from selling, or offering, or exposing, or advertising for sale, or procuring to be sold, any tins of preserved fish not of the 15 Plaintiffs' manufacture under labels or wrappers containing the design of a stag's head or any other labels or wrappers so arranged or contrived or expressed as by colourable imitation or otherwise to be calculated to represent or lead to the belief that such tins of preserved fish are tins of preserved fish of the Plaintiffs' manufacture, and from passing off, or enabling or assisting others. 20 to pass off, any such tins of preserved fish as aforesaid as and for tins of preserved fish of the Plaintiffs' manufacture, and for other consequential relief.

Alaska Packers' Association v. Crooks & Co.

On the 9th of May the Plaintiffs gave notice of Motion for Interlocutory Injunction in similar terms.

Affidavits were filed by both parties. The trade witnesses for the Plaintiffs deposed to the probability of deception. The trade witnesses for the Defendants. deposed the other way. It was proved that the colours and general appearance 5 of the tins of both parties were common to the trade. It was also proved that in two instances the representation of a stag had been used upon tins of salmon, but no instance of the use of the head of a stag on any other tins except those of the Defendants was proved. The motion came on for hearing before Mr. Justice KEKEWICH on the 7th of July 1899.

Warrington, Q.C., John Cutler, Q.C., and M. Schiller (instructed by C. Urquhart Fisher) appeared for the Plaintiffs; Lawrence, Q.C., and Micklem (instructed by Sharpe, Parker & Co., agents for Alsop, Stevens, Harvey, and Crooks) were for the Defendants.

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It appeared that the Plaintiffs had been ordered to give, and had given, 15 security for costs, and that the "Eurasia" had recently arrived in Liverpool and part of the cargo had been sold.

It was contended for the Plaintiffs that they were entitled to an injunction on both grounds-infringement of Trade Mark and get-up, and that the fact that so much of the labels was common to the trade rendered it incumbent that 20 the distinctive features should be marked.

For the Defendants it was contended that no infringement of Trade Mark or passing-off was made out; but an injunction was resisted mainly on the ground of the alleged delay of the Plaintiffs in bringing the motion on, and that as the Defendants were a substantial firm, and well able to pay any 25 damages which might be awarded to the Plaintiffs at the trial, it would be a lesser hardship on the Plaintiffs to allow the Defendants to go on selling than it would be on the Defendants if the sale was stopped. It was also contended that as the Defendants sold their tins only in Liverpool and Manchester while the Plaintiffs' came to London there was no danger of the Defendants' tins being 30 sold for the Plaintiffs'. The Defendants also alleged that the tins complained of had been sold in America for some time with the knowledge of the Plaintiffs, and without their taking steps to stop such sale.

KEKEWICH, J.-This, to my mind, is a somewhat embarrassing case; but only on the question of whether I ought to grant an interlocutory injunction. 35 In order to approach that I must say a few words about the merits. The Plaintiffs seek to restrain an infringement of two registered Trade Marks, Nos. 86,588 and 86,590. The latter has a moose head in a circle, and is a label with a great deal on it. There is no suggestion that the Defendants are using that label; and their tin which I have before me, or can, is different in 40 its label entirely from 86,590, except so far as there is a similarity in regard to the head. I do not think there is any possible ground for saying that that Trade Mark has been infringed. There is more question about the Trade Mark 86,588. That is a plain moose head. The Defendants' label has a stag's head. If I may venture to make a guess, I should say the artist intended it for 45 a good specimen of the ordinary red deer, such as we have seen represented in Sir Edwin Landseer's pictures. That is, to my mind, very unlike a moose head; the attitude is unlike; the character of the animal is unlike; and I do not think I could hold the red deer's head to be an infringement of the moose Trade Mark without saying that any deer's head would be an infringement of 50 that Trade Mark. I think it would be extremely dangerous to go as far as that, and therefore on that part of the case as at present advised--it will be open to reconsideration at the trial-I think there is no infringement of the Plaintiff's Trade Mark.

Now, as regards get-up. There is a certain amount of evidence about it, and 55 about these things being sold by brand, and so forth. But, after all, it has been held again and again by every Judge on the Bench that the eye is the ultimate

Alaska Packers' Association v. Crooks & Co.

tribunal, and I have not the slightest doubt myself that this deer's head brand— the deer's head tin-is deceptive in being very much like the moose head tin. Of course there are differences-there always are in these cases-and it is unnecessary to pick them to pieces and point out the dissimilarities. But the 5 similarities are perfectly plain. I put aside all the evidence about purchasers not asking for the brand, and so forth. If these two tins which I hold in my hand were exposed in a shop side by side, with the animal's head facing the customer-as of course it would be-an unwary customer might readily take one instead of the other, or, as more probably happens in these cases, seeing, 10 we will say, a deer head only, take it, believing that he was purchasing and intending to purchase what he bought the week before, being the moose head. To my eye the similarity is far too great to allow me to say that there is no "passing off" in the sense in which we use that term. I say nothing about the shape of the tin, or the colour of the tin, or the position of the salmon, which 15 is different in the two cases. But it has this one distinguishing thing which brings the two tins into similarity. If, therefore, as at present advised, I were trying the case on the merits, I should certainly grant an injunction restraining the Defendants from passing off their goods as those of the Applicants.

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Then why should I not do it now? That is the question, and that is where I think there is some embarrassment. Mr. Warrington has pointed out what is perfectly clear, that what we are considering is this one cargo. There is no suggestion that there is another cargo on its way, and if there is, there is plenty of time to get further evidence and get the case thoroughly thrashed out. There 25 is this one cargo which is now, I must take it, discharging at Liverpool. I have no evidence that it is discharging at Liverpool, or that the discharging of the cargo is more or less advanced; but it is singular that the information that it is there comes from Mr. Gollin, a Plaintiffs' witness, who is a canned goods broker, and well acquainted, therefore, with the trade and what is going on, and he 30 carries on business in Liverpool. He has made affidavits before, and he knows all about the case, and all he can say, or all he vouchsafes to say on the 5th of July, the day before yesterday, in an affidavit which is only delivered to the other side in Court this morning, is this: "I am informed and verily believe "that since the said George Booth swore his affidavit on the 22nd of June 1899, 35 the sailing vessel Eurasia' has arrived at Liverpool with 3,000 cases of the "Defendants' deer-head brand of salmon.” Nothing could have been easier than for him or one of his clerks to walk down to the docks and see the ships there and find out exactly what was going on, and put the Court in possession of the real facts. It is an extremely careless way of doing things, remembering 40 that the writ was issued long ago, that the motion has been standing over, and that the whole point of the motion is to restrain the delivery of this particular cargo. That seems to me to be a considerable blot in the way of the Plaintiffs' case when they come here for an Interlocutory Order. I have already pointed out that there has been considerable delay, no doubt to some extent owing to 45 the Plaintiffs not having given security for costs, which they must have known would be required when they issued their writ.

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Then there is a certain amount of doubt whether the Plaintiffs have known of this brand. I am not sure that I am in a position to say whether they knew of it or not. I do not think the evidence goes to show that there is enough sale 50 in this country for it to be brought to their attention, although they have very large dealings in their own canned salmon. There is a certain amount of connection between Liverpool and London, but seeing that these are wholesale importers I do not think I ought to attribute much importance to the fact that this particular cargo is coming in to Liverpool, whereas the Plaintiffs sell their 55 goods in London. Liverpool and London are centres from which goods are distributed all over England. And more than that, I do not think I ought to attribute much importance to the fact that one set of goods is distributed, in the

Alaska Packers' Association v. Crooks & Co.

first instance, from Liverpool as a centre, and the other from London as a centre. I pass that by.

Then it comes to a question really of convenience and inconvenience. So far as the goods are sold the notice of motion does not seek to interfere, and the Defendants will not be restrained from delivering that which they have sold. 5 Under the circumstances I think they ought not to be. On the other hand, supposing they have not sold-and the suggestion is that they have not solda great part of the cargo, they will be of course inconvenienced by not selling. It may be kept out of the market. The goods apparently have been at sea a very long time, and for aught I know to the contrary that may or may not be a 10 hindrance to the sale. On the other hand, if the Plaintiffs give a proper undertaking in damages, which they cannot give in the ordinary way because they are a foreign company, and their undertaking cannot be accepted as a satisfactory undertaking in damages, should ultimately the Defendants prove to be right, it seems to me that the Defendants will be adequately protected as regards this 15 particular cargo; and, except that I am obliged to express an opinion on the comparison of the two labels, and also on the comparison of the Trade Marks, I am not of course deciding anything on the merits. I do not of course hide from myself or from Counsel that it may be extremely difficult to get me to alter my opinion, but still it is only an interlocutory opinion, and does not decide the 20 question in the action once for all.

I think, on the whole, though after considerable doubt, I should be doing some justice by granting the injunction; but the Plaintiffs must give an undertaking in damages to the satisfaction of the Court. Of course, if the Defendants are satisfied it need not come to the Judge; otherwise I think they must give an 25 undertaking which can be enforced, and one which will satisfy the Defendants, if necessary on appeal to the Court, that the damages will be forthcoming if required.

Lawrence, Q.C.-The order will be to restrain us from selling the balance of the cargo. We will satisfy my friend's clients as to what we have already sold 30 and then we shall know exactly what we have not sold; and then restrain us from selling those goods.

KEKEWICH, J.-From selling or parting with possession of so much of the cargo, per "Eurasia," as has not yet been sold at this date.

The Defendants appealed. On the hearing of the appeal the same counsel 35 appeared as in the Court below. After the appeal had been partly argued, some discussion took place as to an undertaking by the Defendants, and ultimately on the Defendants undertaking, without prejudice to any question, only to sell the balance of the tins ex "Eurasia" in Liverpool, Manchester, and Glasgow, and to keep an account of their sales, and not to sell any other tins bearing the 40 label complained of by the Plaintiffs until the trial of the action, the appeal was allowed and the injunction discharged, the costs above and below to be costs in the action.

Edge & Sons, Ld. v. Gallon & Son.

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IN THE COURT OF APPEAL.

Before THE MASTER OF THE ROLLS, THE PRESIDENT OF THE PROBATE, &C. DIVISION, and LORD JUSTICE ROMER.

July 17th, 18th, 20th, and 22nd, and August 10th, 1899.

EDGE & SONS, LD. v. GALLON & SON.

Trade name.-Action to restrain passing off by use of trade name.-Concurrent user.-Injunction granted at trial.-Appeal.-Injunction discharged.— Interest on costs which are ordered to be repaid to successful Appellants.

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In 1888 E. commenced to call his blue " Dolly," and it was ordered, invoiced, 10 and advertised thereafter as "Dolly." In 1894 u Company was formed which took over the business of E. In 1898 the Company commenced an action against G. & Son for supplying blue not being the Plaintiffs' to persons ordering "Dolly Blue." The blue so supplied was blue manufactured by R. and bore R.'s Trade Mark, which consisted of a washing tub called in some parts a 15" Dolly" tub and in other parts a " Peggy" tub with a handle projecting from it, which handle was alleged to be the handle of a dolly or peggy. R. had used this Trade Mark since 1871, and registered it under the Trade Marks Act in 1876. It was admitted that R.'s blue was called "Oval Blue" and was invoiced as "Oval"; but the Defendants' case was that retail customers often 20 asked for it as "Dolly Blue," both before 1888 and since, and that there had, in fact, been a concurrent use of the word "Dolly" to describe E.'s blue and R.'s blue. Held at the trial, that the Plaintiffs were entitled to an injunction. The Defendants appealed.

Held, by the Court of Appeal, that concurrent user of the term "Dolly" to 25 denote Ripley's blue as well as the Plaintiffs' was proved, and the judgment of the learned Judge at the trial was wrong. The appeal was allowed, with costs above and below, and the Plaintiffs' costs of the trial, which had been paid by the Defendants, were ordered to be repaid to them, but without interest.

In 1884 William Edge, of Bolton, commenced to manufacture and sell laundry 30 blue in white calico bags with a wooden handle inserted in the neck of each bag. This blue he at first called "Filtered Blue." In 1887 he adopted for his said blue the name "Dolly." For some time he used both names, but in 1891 the word "Filtered" was entirely discontinued. In 1894, William Edge & Sons, Ld., was incorporated to take over, and did take over, the said business of 35 William Edge. In 1888, William Edge registered as a Trade Mark in Class 47 a label, along the top of which were the words " Edge's Filtered Blue," and on the sides the words "commonly called Dolly Blue." By an Order made by the High