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Lever Brothers, Ld. v. Bedingfield.

These marks subsequently became vested in Lever Brothers, Ld. On the 17th of October 1894, Lever Brothers, Ld., registered another Trade Mark, No. 182,962, in Class 47 for common soap, which is subjoined :

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The essential particulars of this Trade Mark were stated to be the following:5 The word "Sunlight" and the combination of devices, and the Applicants disclaimed any right to the exclusive use of the added matter, except in so far as it consisted of their own name and address. This Trade Mark was employed by Lever Brothers, Ld., as a label for the top and sides of a soap box. In use the top band or compartment was coloured dark blue, the top scroll 10 scarlet, and the lower one dark blue; the compartment containing the figure of girl and the compartment containing "1,000l. reward," etc., light blue; the compartment partly covered by the scroll yellow and the flowers coloured as forget-me-nots; the compartment containing "guaranteed," etc., was coloured buff, "guaranteed " being in red type and "perfectly pure," etc., in dark blue 15 type. Sunlight" and "Soap" were in white type but the latter with a blue outline.

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In 1898, Lever Brothers, Ld. commenced an action against C. H. Bedingfield for infringement of Trade Mark and "passing off." The Plaintiffs by their Statement of Claim alleged (2) that in or about the year 1886 they began 20 to get up and pack for sale and sell laundry soap of their manufacture in a manner which was then new in the trade, such get up consisting in the enclosure of three short bars or tablets in a cardboard box of appropriate size or shape, having on the top or ends thereof a newly designed label, the arrangement and pattern whereof were entirely new and distinctive, and 25 they applied for, and in due course obtained, the registration of their said label or wrapper as of the 10th of September 1886 as their Trade Mark in respect of soap in Classes 47 and 48 respectively under the Nos. 56,636 and 56,637 respectively, and the said registrations were now standing in their name; (3) that in or about the year 1889 they began to mould their said short bars or 30 tablets of soap intended for packing and sale as aforesaid somewhat differently from what had previously been the case, there being a groove round the middle

Lever Brothers, Ld. v. Bedingfield.

of each bar or tablet so as to make each bar or tablet into what was described as a "twin tablet" or "doublet" easily capable of division into two conveniently shaped and sized tablets, and after they had done so they introduced into their said cardboard box label certain consequential modifications which made the same still more distinctive (if possible) than before, and they applied 5 for and in due course obtained the registration of their said modified label or wrapper as of the 17th of October 1894 as their Trade Mark for soap in Class 47 under the No. 182,962, and the said registration was now standing in their name. They further alleged that the design and appearance of their boxes and labels had become and were very well known to the trade and to the public, 10 and that their said soap contained in boxes so got up as aforesaid was constantly being purchased, especially by persons belonging to the working classes, on the faith of such boxes containing soap of their manufacture; that the Defendant was selling soap not of their manufacture in cardboard boxes got up and labelled in a manner obviously imitated from their said boxes and labels, and 15 so as to infringe their said registered Trade Marks and to be calculated to deceive; that, as a result of correspondence, the Defendant altered the portions of his label on the ends of the box, but refused to alter the portion on the top of the box; that the Defendant's labels were calculated to deceive and were designed and adopted for that purpose; and that the Plaintiffs had suffered 20 damage. The Plaintiffs claimed (1) an injunction to restrain the Defendant, his servants and agents, from in any manner infringing the Plaintiffs' registered Trade Marks Nos. 56,636, 56.637, and 182,962, or any of them; (2) from selling or offering or exposing or advertising for sale or procuring to be sold any soap not of the Plaintiffs' manufacture under labels or wrappers or in boxes, 25 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 was soap of the Plaintiffs' manufacture; (3) and from passing off or enabling or assisting others to pass off any such soap as aforesaid as or for soap of the Plaintiffs' manufacture; (4) 30 delivery up on oath or (at the Plaintiffs' option) destruction of all labels, wrappers, boxes, cases, receptacles, and documents which were in the possession or power of the Defendant or under his control, and which offended against any of the foregoing injunctions; (5) damages or an account of profits; (6) costs.

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The Defendant by his defence in substance denied or refused to admit all the allegations on which the Plaintiffs based their claim, and in particular alleged that the get up, style of packing, box, and arrangement and pattern of label alleged in paragraph 2 of the Statement of Claim, or a similar style of packing, get up, box, and label, had all of them for many years prior to the year 40 1886 been commonly used by a large number of soap manufacturers, and such style of packing, label, and get up, and boxes were in the year 1886 and still were common to the trade; that the method of dividing soap into "twin tablets or doublets" had long prior to 1889 been commonly used, and was still commonly used by a large number of soap manufacturers, and was in the said 45 year and still was common to the trade, and such label as alleged in paragraph 2 (sic) of the Statement of Claim (if altered at all) was long prior to 1889 and was still common to the trade and of a pattern and arrangement commonly used by soap manufacturers long prior to 1889; and that the said boxes, labels, and get up mentioned in paragraph 4 of the Statement of Claim were common to 50 the trade.

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The label placed by the Defendant on the top of his box is shown in black and white post page 8. This label in use was coloured red as to the top compartment, blue as to the scroll and also as to the bottom compartment; the prevailing colour of the rest of the label (including the oval whereon the 55 Bee appears) was yellow. "Red Maid was in white type, outlined black,

Lever Brothers, Ld. v. Bedingfield.

and shaded yellow on the lower half of the letters; "Soap" was in white type, outlined black. The injunction granted will be found set out in the judgment of the MASTER OF THE ROLLS, post. p. 9.

The action came on for trial before Mr. Justice Kekewich on June 8th and 9th 5 1898.* The learned Judge held that although it seemed obvious that the person who designed the Defendant's label had the Plaintiffs' Trade Mark before him, and although there were certain similarities between the two, still the Defendant had not taken sufficient of the Plaintiffs' Trade Mark to constitute an infringement. On the question of passing off the learned Judge held, that, 10 the Defendant's labels were not calculated to deceive and that any attempt to deceive would probably be unsuccessful, but, that his conduct had been such as to bring him within the principle laid down in Reddaway v. Banham, 13 R.P.C. 218, and that on this ground the Plaintiffs were entitled to an injunction.

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As regards costs the learned Judge ordered the Defendant to pay the costs of the action except so far as they had been increased by the Plaintiffs asking relief in respect of the Trade Marks; those costs to be paid by the Plaintiffs.

The Defendant appealed against so much of the judgment as related to the passing off. There was also a cross appeal by the Plaintiffs as regards the 20 decision on the Trade Marks.

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Warmington, Q.C., P. O. Lawrence, Q.C., and L. B. Sebastian (instructed by Field, Roscoe, & Co., agents for Warr, Bateson, & Co., Manchester) appeared for the Plaintiffs; T. R. Warrington, Q.C., and M. Schiller (instructed by C. Urquhart Fisher) appeared for the Defendant.

Schiller, for the Appellant Bedingfield.-As regards the passing off, the decision of the Court below ought to be reversed. The learned Judge found the facts correctly, but his judgment on those facts, as he found them, should have been for the Appellant. The judgment states that on the evidence the Appellant's get up was not likely to lead to confusion, and that any endeavour 30 to pass his goods off as those of the Respondents would probably be unsuccessful. The injunction was granted on the grounds that the Appellant's behaviour indicated an attempt at passing off, and that his conduct brought him within the principle laid down by Lord Macnaghten in Reddaway v. Banham, 13 R.P.C., p. 233. This is not the proper construction to put on that decision. 35 In that case there was an endeavour to pass off, coupled with a likelihood of deception. The likelihood of deception must be the basis of the action. Before an injunction can be granted it must be proved that the Defendant has put a a weapon of fraud into the hands of the retail traders. This has not been done in this case. The evidence practically amounts to this, that the retail dealers 40 could not have passed the Appellant's goods off as those of the Respondents unless they covered up the label. The size and shape of the two boxes are similar, but this is common to the trade, and the Respondents do not rely on the boxes apart from the label. The origin of the label is immaterial. Even if the designer had had the Respondents' label before him when he designed 45 the Appellant's label, the Appellant is entitled to succeed if he has not produced a label which is calculated to deceive purchasers. As long as an act is lawful, the intention with which it is done cannot affect it: Allen v. Flood, L.R. 1898 A.C. 1. There is no evidence here of an endeavour to deceive. There are only two ways of passing off. Firstly, gross fraud on the part of the person 50 actually passing the goods off-there is no such fraud here. Secondly, placing a weapon of fraud in the hands of the retail traders. There is no evidence of that here. [CHITTY, L.J.-A threatened intention is ground for an injunction.] But that threatened intention must be shown by some overt act. In this case there was no such overt act. That is the distinction between this case and 55 Reddaway v. Banham, where there was an overt act.

* 15 R.P.C. 453.

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Lever Brothers, Ld. v. Bedingfield.

Warmington, Q.C., and P. O. Lawrence, Q.C., for Lever Brothers. Lever's label is a registered Trade Mark, the essentials of which are (1) the word "Sunlight"; (2) the combination of devices. The designer of the "Red Maid " label must have copied it from the "Sunlight" label. He has not taken the 5 word "Sunlight," but he has substantially taken the combination of devices. A Trade Mark should be considered (1) as a skeleton design; (2) a black and white design. When so considered it is obvious that the label complained of, though not mathematically identical, is in all essential particulars the same. The scheme of the label is almost identical, and all the salient features are copied. If the 10 names in each label are obliterated the labels are almost identical and are calculated to deceive. If the essential features are taken, even though some different elements are added, that still constitutes an infringement and the Defendant is guilty of passing off as the differences are only colourable. They referred to Croft v. Day 7 Bea. 84. The Defendant's label was plainly copied from 15 the Plaintiffs'. In fact this is not disputed. No purchaser would remember the arrangement of the colours, and if any one who did not specially remember and look out for the word "Sunlight" wished to buy the Plaintiffs' soap by his recollection of the general appearance of the packet, deception would be easy.

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Warrington, Q.C. in reply. The proper test to apply as regards passing off is to take the whole label. The learned Judge came to the conclusion that the label was not likely to deceive, therefore on that part of the case the Appellant ought to succeed. As regards Trade Mark :-This kind of Trade Mark must be taken as a whole, except the word "Sunlight." The Mark is a com25 bination of devices. The worst that can be said against the Appellant is that he has taken the word "Soap" with its scroll. [The MASTER OF THE ROLLS.You have taken "Soap" and they say the rest is colourable imitation.] They have a maid hanging out clothes, the Appellant has no maid. The device in the place corresponding to the maid is a new one. The Appellant has a new com30 bination. The Respondents cannot come to the Court and say that some of the features of his Mark are important. Their claim is for a combination. [CHITTY, L. J.-—There is a strong inference that the designer of the Appellant's label had the Respondents' Trade Mark before him.] That makes no difference. The whole question on both issues resolves itself into this-Is the Appellant's label 35 likely to be mistaken for the Respondents' label? Although there is a resemblance in some details yet the Appellant's label taken as a whole is so different from the Respondents' label that it is impossible to say that the two could be mistaken.

LINDLEY, M.R.-This is an appeal from a judgment of Mr. Justice Kekewich. 40 The facts of the case are stated very fully and illustrated so as to make it very intelligible in the 15th Volume of the Patent Office Reports at page 453, and I will state very shortly what the facts are from that publication. Lever Brothers obtained a registered Trade Mark in 1886 numbered 56,636 and 56,637, the two marks being one mark registered for two classes of goods, common soap and 45 perfumed soap, and a copy of that mark (I will not stop to describe it) will be found on page 454.* Then later on, in 1894, Lever Brothers, who had then turned themselves into a Limited Company, registered another Trade Mark for common soap. This is numbered 182,962 and a copy of that is also set out in the same publication. The former one was like it as regards "Sunlight 50 and "Soap," and so on; unlike it as regards the laundry maid, and the space in which she appears in the 1894 Trade Mark, it being filled up by a laundry maid, and the space left blank in the old registered Trade Mark; but quite apart from that the ends of the 1894 Trade Mark are very different from the ends of the 1886 Trade Mark.

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Now Levers were entitled under the Statute to the exclusive benefit of those registered Trade Marks. They sold soap which they called "Sunlight

* Ante p. 4.

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