Clark v. Sharp. 5 IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION. Before Mr. JUSTICE BYRNE. January 14th, 17th, 18th, and 19th, and February 15th, 1898. CLARK v. SHARP. Action for passing off Defendant's goods as Plaintiff's.-Alleged similarity of get-up.-Copying by Defendant held not proved.-Probability of deception not established. C. sold lemonade powder in penny packets with a band label round them, the letterpress being printed in gold on white glazed paper. S. subsequently 10 sold lemonade powder in penny packets with a somewhat similar band label round them printed in gold on white glazed paper. C.'s labels had "Eiffel "Tower" on them. S.'s labels had not these words or anything like them. C. commenced an action against S. to restrain him from selling his packets, as being liable to be passed off as the Plaintiff's packets. No other packets of lemonade 15 powder were proved at the trial with labels in white and gold except one, which was discontinued after the commencement of the action on pressure by the Plaintiff. Two other penny packets of lemonade powder were proved to have been on the market before the Plaintiff's, one only having a band label. Held, that the Plaintiff had not established that the Defendant's packets 20 were liable to be passed off as the Plaintiff's, and the action was dismissed, with costs. In 1897, George Foster Clark (trading as G. Foster Clark and Co.) commenced an action against Edward Sharp and Co. for an injunction to restrain them from passing or attempting to pass off, and from enabling others to pass 25 off, any powder or other preparation for the manufacture of lemonade by the use of labels so closely resembling the labels used by the Plaintiff for his powder or preparation for the manufacture of lemonade as to be calculated to deceive, or by imitating the get-up of the Plaintiff's packets, or in any other way, and for an account of profits and other relief. On being served with the 30 writ, the Defendant's solicitors wrote and sent to the Plaintiff's solicitors a letter of the 24th of July 1896, which was as follows :-"Until service of the "writ, the Defendant had received no intimation of any kind that objection 66 was taken to the form of label used by him, nor is he able to appreciate that any valid complaint can be made. It certainly is not, and never has been, his 35" wish to do other than sell his own goods as his own. He does not desire in 66 Clark v. Sharp. 66 any way to represent that his goods are those of the Plaintiff, or of anyone "else; but, on the contrary, desires to bring his own name as much forward 66 as possible. We are certainly surprised that no notice was given of any such proceedings as have been taken by you. The exact form of label seems, to "the Defendant, a matter of small moment, and whilst he strenuously contends, 5 "and is advised, that what he has done in no way infringes the Plaintiff's rights, he is determined to entirely alter the character of his label in such a way as to ensure its originality, and to bring his name into still greater prominence in connection with his goods than it has been in the past. This "will have the further advantage that it will remove any ground of objection, 10 "however frivolous." 66 66 66 66 66 The Plaintiff's solicitor replied by a letter of the 25th of July 1896, which was as follows:-"I have received your letter of the 24th instant, to which I must reply although, I cannot understand with what object it is written. It has "been decided several times, that no previous intimation of proceedings 15 respecting infringement of Trade Mark or the like is necessary; it appears "to be useless for me to reply to your observations as to the Defendant not "being able to appreciate the validity of the Plaintiff's complaint or what his "wishes and desire have been, and are, and so forth, because all these questions are those which the Court will have to decide; and, respecting which, I am 20 "now actively engaged in procuring the necessary evidence in support of the "motion. I hope to let you have copies of the affidavits of some of them on "Wednesday next." Notice of motion for an interlocutory injunction was given. On the hearing of the motion, Counsel for the Defendants stated that the Defendants had 25 changed their label, and the new label was produced; and on the Defendants undertaking, until the trial or further order, to use that label and no other, no order was made upon the motion. By his Statement of Claim, the Plaintiff, who was a manufacturer and general dealer, stated that, as part of his business, he had for five years and 30 upwards sold a powder for making lemonade, and that 18 months before the commencement of the action he adopted and commenced to use upon packets of his said powder a distinctive label, which was placed round the said packets as a band. It was a label of white glazed paper, having upon it certain letterpress, printed in gilt type and arranged in a particular and distinctive way. 35 Subsequently, the Plaintiff used a label for his said powder, which was a variation of the said last-mentioned label in regard to the wording thereof, but which in all other particulars was identical with the first-mentioned label. "(2) Except as hereinafter mentioned, no label has ever been used by any "person other than the Plaintiff for any preparation for making lemonade at 40 "all closely resembling the Plaintiff's said labels, and, in particular, no label "has been used for any powder for making lemonade, with gilt letterpress on "white glazed paper, by any person other than the Plaintiff. "(3) The Plaintiff's sale has been very large, and during the last three "months he has sold upwards of 400,000 packets of his said powder, bearing 45 "the said labels; and the same are generally known to the trade and public as denoting the Plaintiff's said powder, and distinguishing it from similar "preparations put up by other manufacturers. 66 (4) Shortly before the commencement of this action, the Plaintiff for the "first time discovered, as the fact is, that the Defendants are putting upon the 50 "market a powder for making lemonade, in packets, having around them band "labels which so closely resemble the Plaintiff's said labels as to be calculated "to deceive and lead to the belief that the Defendants' powder for making "lemonade is the Plaintiff's said powder. "(5) The Defendants' said packets, in consequence of the similarity of the 55 "Defendants' labels with the Plaintiff's labels, and the way in which the labels Clark v. Sharp. "are arranged round the packets, so nearly resemble the Plaintiff's said packets "as to be calculated to deceive. The Defendants' packets of powder bearing "the Defendants' said labels can easily and will be largely passed off by "dishonest and careless retailers upon the public as being packets of the 5" Plaintiff's said powder. 66 66 (6) Retail traders supply customers who order Eiffel Tower' lemonade "with packets of the Defendants' said powder for making lemonade, labelled as aforesaid. This was done on the 1st of August 1896, in the shop of "Mr. E. Boon, grocer, of High Street, New Brompton; and in the shop of 10" Mr. H. H. Boulding, grocer, of Grove Road, Stroud, in the county of Kent; "and in the shop of Mr. Alfred Harrison, grocer, of 22, North Street, Stroud, "aforesaid; and in the shop of Mr. J. White, grocer, of High Street, "Rochester. Save as aforesaid, the Plaintiff is unable at present to give any "further particulars of the practice of retail traders referred to in this 15 paragraph." The Plaintiff's second band label (hereinafter referred to as Exhibit B) was of white glazed paper, on which was printed in gilt type the following, the upper panel appearing on the back of the packet of lemonade powder and the lower panel on the front : 20 The Defendants, by their Defence, denied the allegations in the Statement of Claim, and alleged that the only distinctive feature of the Plaintiff's labels was the term "Eiffel Tower," and that one of the commonest kind of labels used by chemists and others was made with a gilt letterpress upon a white glazed ground. The Statement of Defence concluded as follows:-" Without admitting that 25" the Plaintiff has or had any right to a monopoly of labels printed in gold Clark v. Sharp. "letters upon white glazed paper, or that there ever was any foundation for the "institution of this action, and, indeed, without prejudice to any question, the "Defendant, upon the hearing of the Plaintiff's motion for an injunction on "the 7th of August 1896, submitted to change the label previously used by "him for his packets of powder for lemonade, and he will contend that, under 5 "the circumstances, this action ought not to have been further prosecuted.” The band label on the Defendants' packets complained of was of white glazed paper, on which was printed in gilt type the following, the upper panel appearing on the back of the packet of lemonade powder and the lower panel on the front : NOTICE. A 4d. PACKET OF CONCENTRATED LEMON JUICE AND A POUND OF GRANULATED SUGAR, Will make 2 Gallons of delicious * LEMONADE. * 10 ONE PENNY PACKET. LEMONADE MADE INSTANTLY. Empty the contents of this packet in a jug, pour on a little hot water. stir till dissolved, then add water to make the quantity up to a pint. Then you have for Immediate use a pint of DELICIOUS HOME-MADE LEMONADE. EDWARD SHARP & Co., MAIDSTONE. The action came on for trial, with witnesses, before Mr. Justice BYRNE. Eve, Q.C., and John Cutler, Q.C. (instructed by J. S. Salaman) appeared for the Plaintiff; Birrell, Q.C., and Ingle Joyce (instructed by Hollams, Sons, Coward, and Hawkesley), appeared for the Defendant. A number of witnesses were called by both parties. The nature of the 15 evidence appears from the judgment of the learned Judge; but it may be added that, for the Plaintiff, Clara Hughes and Kate Green were called in respect of the matters stated in paragraph 6 of the Statement of Claim. They deposed to going to the shops of Boulding, Boon, and White, and handing in, in each case, a written order for (among other things) one packet of "Eiffel Tower" lemonade, 20 which, in each case, was executed by supplying a packet of the Defendant's preparation. Eve, Q.C., and John Cutler, Q.C., for the Plaintiff.-The similarity in appearance between the Plaintiff's packet and the Defendant's packet is such as to Clark v. Sharp. suggest copying, and there is evidence, not only of the probability of deception, but of expert persons being actually deceived at first sight. The packets of De Carle and Pollitis which have been put in are quite different from the Plaintiff's, and no white and gold packet of lemonade powder but the Plaintiff's 5 and Defendants' has been proved, except that of Tilley Brothers, of Brighton, which the Plaintiff stopped by negotiation, as he stated in his evidence. The Plaintiff, in getting up his penny packet, followed the lines of his 41d. packet; but, whereas the Defendants' 4. packet is brown and different from the Plaintiff's, in adopting their penny packet they make it white and gold, 10 resembling the Plaintiff's. The Plaintiff does not claim a monopoly of any of the several elements that compose his get-up, but says that his get-up as a whole distinguishes his goods, and the Defendants' get-up as a whole is calculated to deceive (Lever v. Goodwin, 4 R.P.C. 492; Re Christiansen's Trade Mark, 3 R.P.C. 54; Powell v. Birmingham Vinegar Brewery Company, 14 R.P.C. 720). 15 Birrell, Q.C., for the Defendants.--In Lever v. Goodwin, the Plaintiff's distinctive name of "Self-washer" was copied by the Defendants. Here the Plaintiff's name, "Eiffel Tower," is not copied by the Defendants. The Defendants' get-up is in other respects different from the Plaintiff's, and their packets are not the same shape as the Plaintiff's, being thicker; in fact, there is 20 nothing common to the two except that they are both printed in white and gold, and this is common to the confectionery and grocery trades. There is no case of actual deception proved. The young women who bought at the grocers' shops were not deceived. The Plaintiff, in order to succeed, must prove that the Defendants have put an instrument of fraud into the hands of the retailers, 25 and this he has failed to do. Then the Defendants, immediately upon being served with the writ, made an offer which the Plaintiff ought to have accepted, and on this ground the Plaintiff is not entitled to an injunction. Eve, Q.C., in reply.-As to the last point, we rely upon Upmann v. Forrester, L.R. 24 Ch.D. 231, and Birmingham &c. Company v. London and North 30 Western Railway Company, 57 L.T. 185. An offer, in order to save costs, must be of everything that the Court holds the Plaintiff is entitled to. All that the Plaintiff need do, in a case like this, is to prove that the Defendants' goods are so marked or got up, or described by them, as to be calculated to mislead ordinary purchasers, and to lead them to mistake the Defendant's goods for the 35 goods of the Plaintiff's. (Per Lindley, L.J., in Reddaway v. Bentham, 9 R.P.C. 507.) This the Plaintiff has done in this case. Besides, it is impossible to believe that the Defendants were unaware of the Plaintiff's penny packet, and we ask the Court not to accept the Defendants' story that they designed their penny packet independently. 40 BYRNE, J.-The Plaintiff, who is a manufacturer and general merchant carrying on business at Maidstone, sells, amongst other articles, a noneffervescing powder for making lemonade. For some four or five years before 1895 he sold, and still sells, such a powder in bottles enclosed in cardboard boxes, the ground of the outside being of white glazed paper with gold lettering, 45 and a representation of the "Eiffel Tower" upon it. The retail price of this powder is 44d. per bottle. The powder so sold is described as "concentrated," and is in fact a powder more unmixed with sugar, and less in bulk, than the powder sold in the penny packets, in reference to which the present case arises. 50 The Defendant is a manufacturing confectioner carrying on business at Maidstone. For some years, before 1895, he was selling a non-effervescing powder, for making lemonade, in 7 lb. tins. In the year 1895, the Defendant began to sell a more concentrated form of powder (that is, with less sugar admixed) in 4d. bottles in brown cardboard boxes, quite unlike the Plaintiff's 55 in appearance, and no question arises in respect to these. In the Spring or early Summer of 1895, the Plaintiff began to sell non |