TRADE NAME-continued. boots and shoes. The first-named business was transferred to a Company, against whom the French Company commenced an action, and obtained an injunction to restrain such English Company from using the name of P. without clearly distinguishing their boots and shoes from the Plaintiffs. In this action the Plaintiffs did not prove that P. was not the real name of the man who had adopted it. Subsequently they commenced two further actions against the said English Company and its liquidator, and another English Company formed to take over its business and the directors of such lastmentioned Company, and proved the changes of name above mentioned. -Held, that under the circumstances the Defendants must be restrained from using the said name P., and from selling or offering for sale any boots or shoes not the Plaintiffs under the name of P.'s special boots and shoes or P.'s boots and shoes. F. PINET & CIE. v. MAISON LOUIS PINET, LD., p. 65. F. PINET & CIE. v. MAISON PINET, LD, p. 65. 3. Plaintiffs held entitled to trade name although at one time the Defendants had used it concurrently.-Action for passing off by use of such name.-Alleged concurrent user.-Effect of dying out and subsequent revival of Defendant's trade. D. and A., in 1881, began to sell goods marked with a trade name to one customer. This was continued till 1883, when they stopped selling until February 1886, and thenceforth sold to numerous customers, and their trade increased very largely and became very important. In November 1885, they registered their trade name as part of a Trade Mark. W., in April 1885, applied to register the same trade name by itself as a Trade Mark, but was refused registration. Shortly afterwards he commenced to sell goods under this trade name, and continued to do so in substantial quantities until the early part of 1887, when his trade began to dwindle until it rapidly came down to one or two sales a year, and finally ceased altogether for at least a twelvemonth. W. then began selling his goods marked with the trade name to B. At the end of 1896, this came to the notice of D. and A., and they commenced an action against W. and B. in January 1897, not based on Trade Mark, but to restrain them from selling goods under the trade name. It appeared that D. and A. were aware of one parcel of W.'s goods being sold to P. in 1886, but they thought the matter had come to an end, and therefore took no steps on this occasion.-Held, that the trade name was proved to denote the Plaintiffs' goods exclusively in the market, and that the Plaintiffs were entitled to an injunction to restrain the Defendants from using the trade name without distinguishing their goods from the goods of the Plaintiffs, and to 40s. damages and costs. DANIEL AND ARTER V. WHITEHOUSE AND BRITTON, p. 134. 4. Principles applicable to a case where Defendant is trading in his own name and the Plaintiff complains thereof, per LINDLEY, M.R. JAMIESON & Co. v JAMIESON, p. 181. 5. Same principle discussed by VAUGHAN WILLIAMS, L.J. JAMIESON & Co. v. JAMIESON, p. 192. 6. Name of place where goods produced used as a trade name. Injunction granted, but in a limited form. BEWLAY & Co., LD. v. HUGHES, p. 290. 7. Right to name infringed by use of pictorial representation conveying the idea of such name. HODGSON AND SIMPSON v. KYNOCH, LD., p. 465. TRADE NAME-continued. 8. "Cellular." Action to restrain passing off by use of. Defendants held not to have used it in such a way as to pass off-Action to restrain the use of trade name. -Action to restrain the passing off and use of " Cellular" as applied to cloth or clothing.-Descriptive or suggestive name "Cellular."-Contemporary subsistence of primary and secondary meaning in different parts of United Kingdom.-Probability of deception.-Absence of deceit or fraud.Interdict refused. A trader in 1886 made a new weave of fabric generically known under the name "Gauze," and selected for this weave the name "Cellular," and in 1888 assigned whatever rights he had in the fabric and name to the Pursuers' Company, which was formed for the purpose of selling it and goods made from it, and incorporated under the name "The Cellular Clothing Company." They advertised extensively all over the world, and in their advertisements chief prominence was given to the word "Cellular." Various rival traders, after using the name "Cellular," gave undertakings or submitted to injunctions restraining them from continuing to use it, or selected other names to describe similar textile fabrics made or sold by them. The bulk of the trade in the particular fabric was in England and the Colonies, the Scotch trade being very small. In the beginning of 1897, a Scotch warehouseman, who did not manufacture, issued in a book, the leaves of which folded up, ranges of goods supplied to him by Glasgow makers, and upon one series of patterns he stamped the word "Cellular" in block letters, the only sign of the goods being his or supplied by him appearing in the initials "M. & M." stamped on the outside of the book. The persons to whom the book was supplied ordered "Cellular" goods of small amount, but they did not expect to get the goods of any particular maker. The Pursuers, the C.C.C., brought action to interdict the Defenders "M. & M." from using the word "Cellular" so as to denote cloth or clothing other than the cloth or clothing of the Pursuers, and from selling cloth or clothing as "Cellular " cloth or clothing so as to lead purchasers to believe that the cloth or clothing was of the Pursuers' manufacture. Pursuers averred that "Cellular" in the market meant exclusively their goods. Defenders averred that the goods described by them as "Cellular" were in point of fact "Cellular," and that as it was an appropriate descriptive, it had not been and could not be monopolized by any trader. A large body of testimony was adduced. The English traders examined were unanimous that "Cellular" meant the Pursuers; but the opinion of the Scotch traders was divided. There was no evidence from the public as apart from the trade. The evidence as to the exactness of the term as a description of the cloth was conflicting, but all the witnesses agreed that while the term had not been used in connection with cloth before the Pursuers had applied it as a name to their cloth, and before then it would not have presented any picture to the mind, yet when the name and the cloth were seen together, the name was recognised as appropriate and suggestive, if not an exact descriptive, of the fabric.-Held, that where the primary meaning of a suitably descriptive word subsists in trade use, although among a numerically inferior section of a trade alongside or contemporaneously with a secondary meaning in a larger section of that trade, the primary meaning will not be held to be displaced by the secondary.-Held, further, that as the facts proved did not disclose any attempt to deceive, and as nobody had been in point of fact deceived, the Pursuers were not entitled to the The TRADE NAME-continued. remedy they sought even to the extent of obliging the Defenders to use the name "Cellular" with a distinctive addition (Reddaway v. Banham, 13 R.P.C. 218) distinguished. Questioned whether the House of Lords would have sustained the Plaintiff's claim in that case apart from evidence that the Defendant meant to pass off his goods as Reddaway's. Interdict refused. CELLULAR CLOTHING CO. v. MAXTON AND MURRAY, p. 581. 66 9. "C.B." Held that the Defendants by selling corsets marked "C.B. & Co." were infringing Plaintiff's rights in "C.B."Action to restrain passing off-Initial letters.-Initials of two traders the same, or partly the same." C.B." corsets.-Letters "C.B." forming part of Trade Mark, of which exclusive use was disclaimed, sought to be protected.-Interdict granted. C. B., a corset maker in London, from 1869 onwards, in accordance with a practice of the trade, marked his corsets and the boxes containing them with the letters "C.B.," being his own initials, and spent large sums in advertising his corsets throughout the world as "C.B." corsets. It was proved that " C.B." had caught the ear and eye of the public, and that the sale of "C.B." corsets was very large. The most noticeable feature of his box were the letters "C.B." in large type. On the waistband of his corsets this intimation appeared-"None genuine unless stamped C.B.' within a star." C. B. registered Trade Marks on the 29th of January 1881, and on the 12th of June 1886, but these he did not use prior to 1875. On the 26th of November 1891, he registered as a mark "Newmarket Corset, manufactured in London," with the registered Trade Mark of the 29th of January 1881 standing between the words "Newmarket" and "Corset," and a disclaimer of the added matter of which "C.B." formed a part. In 1896 J. and L. B., warehousemen in Glasgow, sold to a retailer in Keith, and one or two others elsewhere in Scotland, corsets with which they had been supplied by Connell Brothers & Co., corset makers, Dublin. The most noticeable feature of the lid of the boxes so sold and supplied were the letters "C.B." -in the loop formed by the letter "B" there being added in small type the letters "& Co.," while on the waistband of the corset appeared-"None genuine unless stamped 'The original C.B. & Co.'" Connell Brothers began to so stamp their boxes and corsets about 1894.-Held, by the LORD ORDINARY and by the First Division, on the facts that J. and L. B. marked their corsets "C.B. & Co." in such a manner as to be calculated to mislead purchasers into the belief that their said corsets were "C.B." corsets made by C. B. This case was distinguished from The Cellular Clothing Company v. Maxton and Murray on the ground that "C.B." was an arbitary sign, although the letters happened to represent the initials of the trader, and that J. and L. B. had used "C.B." and a small "& Co." for the purpose of imitating the name by which they had come to be known. Held further, that although in an application for a Trade Mark C. B. had disclaimed the exclusive right to the letters "C.B.," this did not exclude C. B. from his common law remedy of preventing rival traders using the name by which his goods had come to be known. Rosenthal v. Reynolds, 9. R.P.C. 189, not followed. CHARLES BAYER v. J. AND L. BAIRD, p. 613. 10. "Dolly Blue." Alleged concurrent user held not proved.— Action to restrain passing off by use of trade name.-Concurrent user alleged.-Injunction granted. In 1887 E. commenced to call TRADE NAME-continued. his blue "Dolly," and it was ordered, invoiced, and advertised thereafter as "Dolly." In 1894 a Company was formed which took over the business of E. In 1898 the Company commenced an action against G. and 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 "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 asked for it as "Dolly Blue," or blue with the dolly on it, and that there had, in fact, been a concurrent use of the word "Dolly" to describe E.'s blue and R.'s blue.-Held, that "Dolly " meant the Plaintiffs' blue, and that the Plaintiffs were entitled to an injunction. EDGE & SONS, LD. v. GALLON & SON, p. 689. 11. See also PASSING OFF, No. 12. MAGNOLIA METAL CO. AND OTHERS v. TANDEM SMELTING SYNDICATE, LD., p. 701. 12. "Where the Plaintiffs have no monopoly in a word, to establish a "cause of action they must prove two things: first that the word 66 6 Magnolia,' when the Defendants used that word as they subse"quently did, designated goods manufactured by the Plaintiffs, to "which designation the Plaintiffs were then entitled ; and, secondly, "that by what the Defendants then did they passed off their "manufacture of anti friction metal as that of the Plaintiffs to their "injury"; per SMITH, L.J. MAGNOLIA METAL CO. AND OTHERS V TANDEM SMELTING SYNDICATE, LD., p. 716. |