REPORTS

OF

PATENT, DESIGN, AND TRADE MARK CASES.

EDITED BY JOHN CUTLER, ONE OF HER MAJESTY'S COUNSEL.

Vol. XV.] WEDNESDAY, JANUARY 12, 1898.

[No. 1.

5

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE NORTH.

November 9th, 10th, 11th, 12th, 13th, and 16th, 1897.

MEABY AND CO. LD. v. TRITICINE, LD., AND OTHERS

AND

IN THE MATTER OF THE REGISTERED TRADE MARK, No. 52,389.

Action to restrain infringement of Trade Mark and passing off-Motion to rectify.-"Triticumina." - Fancy word. Representations as to patents.Alleged infringement.-" Triticine."-Action dismissed.-Mark struck off10 Patents, &c. Act, 1883, Section 64 (1) (e).

In March 1886, the Plaintiffs' predecessors in business registered the word "Triticumina" as a Trade Mark in Class 42, in respect of leaven and wheatmeal biscuits, bread, cakes, and other preparations from wheat. Patents were taken out in 1885 and 1886 for improvements in wheaten meal by the same 15 persons. In 1891, this Trade Mark and these patents became vested in the Plaintiffs. In 1896, the Plaintiffs brought an action (1) for infringement of the said Trade Mark, and (2) alleged passing off by the Defendants of their goods as the Plaintiffs' by the use of the word "Triticine." The Defendants alleged that they had used the words "Triticine" before the invention of the 20 word" Triticumina." They moved to expunge the Trade Mark from the

A

Meaby and Co. Ld. v. Triticine, Ld., and Others

and

In the Matter of the Registered Trade Mark, No. 52,389.

Register on the grounds (1) that it was the name of a patented article; (2) that it was descriptive. The Plaintiffs had for some years sold "Triticumina" flour, "Triticumina" meal," Triticumina" food, and other products in the name of which the word "Triticumina" occurred. It appeared that in certain advertisements the Plaintiffs had used the word "patent" in connection with 5 these articles. The trial of the action and the hearing of the motion came on together.

Held, (1) that the word " Triticine" had been used by the Defendants' predecessors for wheat-meal products before the registration or use by the Plaintiffs of the word" Triticumina"; and, further, (2) that the Plaintiffs had not shown 10 that the use of "Triticine" by the Defendants would deceive, and that the action must be dismissed, but, under the special circumstances of the case, without costs.

Held also, that the word "Triticumina" was not a fancg word, being derived from "Triticum" wheat by the addition of the suffix "ina," and being intended 15 to be descriptive; also that the word was either the name of a patented article, in which case it was not a good Trade Mark, or else that the Plaintiffs and their predecessors had represented their articles sold under the word" Triticumina" as patented, and semble (without deciding the point) that in such case the word could not be a good Trade Mark. The Trade Mark was, therefore, ordered to 20 be expunged, with costs against the Plaintiffs. The test laid down in re Van Duzer and Leaf's Trade Mark, 4 R.P.C. 31, has not been altered by the decision in Re The Trade Mark Bovril, 13 R.P.C. 382.

On the 26th of March 1886, Albert Meaby and Arthur Burton Lester registered the word "Triticumina " as a Trade Mark in Class 42, under 25 No. 52,389, in respect of leaven and wheatmeal biscuits, bread, cakes, and other preparations from wheat.

On the 7th of October 1891, the interest of the said A. B. Lester in the said Trade Mark was assigned to the said A. Meaby and S. A. M. Farnworth, who were then carrying on the business of millers and dealers in meal and 30 wheaten products formerly carried on by the said A. Meaby and A. B. Lester.

On the 9th of October 1855, Letters Patent (No. 12,037 of 1885) were granted to A. B. Lester and A. Meaby for "Improvements in wheaten meal and in making entire wheatmeal bread and in the preparation of leaven."

On the 15th day of September 1886, Letters Patent (No. 11,732 of 1886) were 35 granted to A. B. Lester and A. Meaby for further improvements of a similar nature. The Letters Patent (No. 12,037 of 1885) were amended on the 21st of December 1888, and were allowed to lapse in October 1892.

On the 13th of October 1891, a Company was incorporated as Meaby's Triticumina Company, and the business carried on by A. Meaby and S. A. M. 40 Farnworth was assigned to this Company together with all patents and Trade Marks used in connection therewith; and on the 26th of January 1892, the Company was registered as the proprietor of the said Trade Mark.

The name of the Company was, as from the 31st day of August 1893, changed to Meaby and Co., Ld.

On the 22nd of December 1896, Meaby and Co., Ld., commenced an action against Triticine, Ld., and Harry Goodall and Joshua Hamilton Goodall,

45

Meaby and Co. Ld. v. Triticine, Ld., and Others

and

In the Matter of the Registered Trade Mark, No. 52,389.

two of the directors of the Defendant Company, to restrain infringement of the said Trade Mark, and to restrain the Defendants from selling &c. any food stuff or preparation from wheat under the name "Triticine," or any food stuff or preparation from wheat (not being an article prepared or manufactured by the 5 Plaintiffs) under the name of "Triticumina," or under any other name of which "Triticine" or "Triticumina" formed part, or which constituted a colourable imitation of the Plaintiffs' trade name "Triticumina," or under such names as to be calculated to lead the public or purchasers to believe that the article sold &c. was, in fact, prepared or manufactured by the Plaintiffs, and from trading or 10 carrying on business under the style of Triticine, Ld., or under any style of which the name "Triticine" or "Triticumina" formed part, or under any other name which constituted a colourable imitation of the Plaintiffs' trade name "Triticumina," or which might be calculated to lead the public or persons having dealings with them to believe that the trade or business carried on by them 15 respectively was the trade or business of the Plaintiffs or in any way connected therewith, and for ancillary relief.

On the 23rd of January 1897, the Plaintiffs gave notice of motion for an interlocutory injunction in the terms of the writ. Shortly afterwards. the Defendant Company gave notice of a motion to rectify the register by 20 expunging the Plaintiffs' said Trade Mark. These motions were, on the 26th of February 1897, respectively ordered to stand over until, and to come on to be heard with, the said action, and either party was to be at liberty to use the affidavits in such order mentioned, and to adduce oral evidence and to crossexamine any of the Deponents upon reasonable notice.

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The Plaintiffs' Statement of Claim, after setting out the facts as to the Trade Mark and patents and the title to their business, alleged :

"7. The said Trade Mark has, ever since the year 1886, been used by the "Plaintiff Company and their said predecessors in title in connection with the "various articles manufactured by them, and in particular with the following 30" articles; that is to say, flour, meal, bread, porridge, biscuits, and the said food "for infants, children, and invalids.

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"8. Ever since its registration as a Trade Mark, the name 'Triticumina' has "been associated with the name of Meaby, and has for many years denoted, "and now denotes, both to the trade and the public, that the article to which it "is attached is the manufacture or production of the Plaintiff Company. The "Plaintiff Company's flour, meal, bread, porridge, biscuits, and food are known, "asked for, ordered, and bought as 'Triticumina' flour, Triticumina' meal, "Triticumina' bread, Triticumina' porridge, Triticumina' biscuits, and ""Triticumina' food respectively, and the name 'Triticumina' has become 40 "identified with the productions of the Plaintiff Company.

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"9. The said 'Triticumina' food, which is a particular preparation of malted "wheat meal, in the production of which the said patent process is used, has "been largely advertised, and has acquired an extensive and favourable reputa❝tion as a food for infants and invalids. It is sold in cylindrical tins bearing 45 "the name "Triticumina' thereon in conspicuous letters.'

The Plaintiffs' Statement of Claim further contained allegations to the effect (paragraphs 10 to 16) that the Defendants, the Goodalls, had carried on business at Castleford in partnership with C. H. Goodall under the style of H. Goodall and Sons; and that about the month of March 1892 (as the Plaintiffs had 50 recently ascertained), the Defendants applied to register the name "Triticine" as a Trade Mark, but the registration was refused on the ground that the same resembled the Plaintiffs' registered Trade Mark; that in or about the commencement of the year 1896, the Defendants H. Goodall and J. H. Goodall took part in the promotion of a Company, and the name Triticine, Ld., was taken with

Meaby and Co. Ld. v. Triticine, Ld., and Others

and

In the Matter of the Registered Trade Mark, No. 52,389.

the object of acquiring part of the business of the Plaintiffs; that the Defendant Company was registered about the month of November 1896, and took over the business of H. Goodall and Sons, and that the Defendants, the Goodalls, were two of its directors; that "Triticine was a wheaten product practically indistinguishable from Semolina; (paragraph 17) that the name of the Defendant 5 Company closely resembled the Plaintiffs' said Trade Mark and name, and confusion had arisen by reason thereof, and there was probability of damage to the Plaintiffs; and that (paragraphs 20 and 21) in the early part of 1896, the firm of H. Goodall and Sons, began without the knowledge of the Plaintiffs, to advertise "Triticine" as a food for infants and invalids, and to sell the same in cylindrical 10 tins with the name "Triticine" thereon in large letters, such tins being neither readily or clearly distinguishable from the tins of "Triticumina" food sold by the Plaintiffs, and that the Defendant Company since its incorporation continued to sell the said product in the same manner.

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The Defendants, in their Defence, set out the above stated facts as to the said 15 Letters Patent (No. 12,037 of 1885), and alleged "the said Patentees give to the "meal prepared by the said patent process the descriptive name of Triticumina,' "and advertised and offered the same for sale and sold it as their patent Triti"cumina," and the name 'Triticumina' thereupon became, and has ever since "been, the sole descriptive name for wheaten meal prepared by the said patent 20 process, and for articles manufactured from such wheaten meal, and ever since "the said Letters Patent lapsed as aforesaid, no one has possessed any special or "exclusive right in the said name, but the same has been common to the trade "in such goods, and the Plaintiffs are not now entitled to assert any special "rights in respect of the said name." The Defence also contained allegations to 25 the effect that the registration of "Triticumina" was improper; that the Plaintiffs (following the universal practice in the trade) were selling "Triticumina " meal in cylindrical tins, on which the said name "Triticumina" appeared as the descriptive name of the said meal, save as aforesaid the Defendants did not admit any of the statements contained in paragraphs 1 to 9 of the Statement of 30 Claim, and did not admit that the said name had become, or was identified with, the productions of the Plaintiffs otherwise than as being the descriptive name of the meal prepared in accordance with the said process, and of articles manufactured from such meal; that the Defendant Company were manufacturing and selling a special wheaten product, entirely distinct from the Plaintiffs' 35 "Triticumina" meal, under the name of "Triticine," and claimed to be entitled to do so; that the name "Triticine was invented, adopted, and used by the Defendant Company's predecessors in business as the distinctive name for the said wheaten product, not only before the Plaintiffs came into existence, but before the word "Triticumina was used or adopted or even invented by the 40 Plaintiffs' predecessors in business, and had ever since been continuously used; that "Triticine" was refused registration as a Trade Mark in 1892, but on the ground of being descriptive of wheat products; that the allegation that the name "Triticine, Ld.," was given to the Defendant Company by reason of resemblance to the Plaintiffs' name was untrue, and save as aforesaid the 45 Defendants did not admit paragraphs 10 to 16 of the Statement of Claim; the Defendants did not admit that the name of the Defendant Company closely resembled the Plaintiffs' Trade Mark or name, and denied the allegations in paragraph 17 of the Statement of Claim; that the Company's predecessors in business were selling their wheaten product under the name of "Goodall's York- 50 "shire Triticine," or "Triticine," long before the Plaintiffs came into existence; that the Defendant Company were selling their wheaten product in cylindrical tins of the type in universal use in the trade, having the name "Triticine thereon, as they were entitled to do, but nothing that they had done could

Meaby and Co., Ld., v. Triticine, Ld., and Others

and

In the Matter of the Registered Trade Mark, No. 52,389.

deceive; save as aforesaid they denied every Statement in paragraphs 18 to 2 of the Statement of Claim.

On the 9th of June 1897, the Plaintiffs, by their Reply, joined issue.

This was the trial of the action and the hearing of the motion to expunge the 5 Plaintiffs' Trade Mark.

Bousfield, Q,C., and A. J. Chitty (instructed by Dale, Newman, and Hood) appeared for the Plaintiffs; Swinfen Eady, Q.C., T. Terrell, Q.C., and Sebastian (instructed by Plunkett and Leader) appeared for the Defendants.

Bousfield, Q.C., opened the Plaintiffs' case.-We allege infringement of our 10 Trade Mark and passing off by the use of the word" Triticine." The Defendants apply to expunge our Trade Mark, and in support of that say, first, that it is the name of a patent product. Our answer is, that we have used it to distinguish our goods just as a man might use his own name; therefore, we are not within the "Linoleum" case, where "Linoleum" was the name per se of a patented pro15 duct. [NORTH, J.-What does "Triticumina" porridge mean?] The name "Triticumina" is applied to our products; it is applied to some, e.g., some biscuits, having none of the patent product in them. Secondly, it is said that the mark is descriptive; I shall rely on the "Bovril" case, 13 R.P.C. 382. It is also alleged that "Triticine" was invented before the date of our mark. "Triticine" is an 20 infringement of our Trade Mark, and we can also restrain the Defendants on the ground of passing off. We do not base the case on get-up. Our products have been known for eleven years. "Triticine" must deceive by reason of its similarity. They advertise their food for infants and invalids as we do. Since 1893, when we bought the business of the Reading Biscuit Co., Ld., we 25 have made products not called by the name "Triticumina." Apart from Trade Mark, we can succeed on our common law right; Powell v. Birmingham Vinegar Co., 14 R.P.C. 727. [NORTH, J. mentioned the "Camel-hair" case.] The cases establish that if the word is so identified with the Plaintiffs as to mean their goods, no one else can use it without clearly distinguishing his goods from ours, 30 and there may be cases in which it is impossible to distinguish. It does not matter that the name of the Plaintiffs was unknown to purchasers, There must, in this case, of necessity be passing off by the use of the word "Triticine." Some of the affidavits on behalf of the Plaintiffs were read, and the Deponents were called, and cross-examined and re-examined.

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Terrell, Q.C., for the Defendants.—I submit that there is no case to meet on either branch. There is no evidence of anything capable of being registered as a Trade Mark. The evidence is that the name was applied to a patented article. The case of the Magnolia Metal Company's Trade Marks, 14 R.P.C. 621, covers this case. “Triticumina" was the name of a new article. It makes no 40 difference whether the Letters Patent had or had not expired. On the Plaintiffs' evidence, the mark ought to be expunged on this ground. Then also it is descriptive. The "Bovril" case was decided on the ground that "Bovril" was not, in fact, descriptive. (In the Matter of Trade Mark "Bovril," 13 R.P.C. 382, L.R. (1896), 2 Ch. 600.) The words held not to be fancy words are given in 45 Sebastian, page 46. They are descriptive either in English or some fairly known language. We rely also on Re Meyerstein, 7 R.P.C. 114, 43 Ch.D. 604 ("Satinine "), and the "Somatose" case, and Re Farbenfabriken &c. Co.'s Trade Mark, 11 R.P.C. 84 L.R., (1894) 3 Ch.166. The only similarity between "Triticumina" and "Triticine "lies in the part derived from the Latin "triticum." If" Triticumina" 50 is a fancy word by reason of its termination, ours is a fancy word distinct from theirs. As to the claim in respect of passing off, there may be passing off by using the leading word which a Plaintiff uses in his trade. The case here is very different, however, from the "Yorkshire Relish" case. No such large and continuous sale has been proved here. The food products are only a small proportion of their