Hodgson and Simpson v. Kynoch, Ld. Held, that the Plaintiffs had not established a case of infringement of Trade Mark, but were entitled to an injunction to restrain the Defendants from selling, or offering for sale, soap in the wrappers complained of or so as to induce the belief that the Defendants' soaps are manufactured by the Plaintiffs. The Plaintiffs in this action, Messrs. Hodgson and Simpson, of Wakefield, 5 Soap Manufacturers, in the year 1891, acquired the business and Trade Marks of The Lion Soap Company and subsequently sold soap under the names of "Red Lion Soap," "Golden Lion Soap," "Lion Carbolic Soap," and "Lion Trans"parent Soap," and the name "Lion" and the device of a lion became identified with their soaps, particularly the "Red Lion Soap," for which there was a large 10 sale. Previous to the acts of the Defendants which led to this action no one, except the Plaintiffs and their predecessors The Lion Soap Company, had used either the device of a lion or the word "Lion" in connection with ordinary soap, although the device of a lion had been used by others for kindred articles such as dry soap and extract of soap. In 1896 the Plaintiffs heard that the 15 Defendants were about to make and sell soap, and when the soap was put upon the market the Plaintiffs found that the Defendants' wrappers bore conspicuously the device of a lion's head, which was the Defendants registered Trade Mark for ammunition. The Plaintiffs also found that the Defendants had put up a large red lion over the soap works, which they had built as an 20 addition to their ammunition works. The latter were rebuilt in 1861, and at that time a white lion was put up over the gateway and had remained there ever since. The Defendants commenced to use for the purpose of their soap business a van with a large golden lion on the top of it and a large red lion on the side. The Defendants issued a price list for their soaps, on the outside of 25 which appeared the lion's head with "Trade" on one side and "Mark" on the other. When these things came to the notice of the Plaintiffs they had a short correspondence with the Defendants, and as the Defendants refused to alter their method of doing business in soap, the Plaintiffs commenced this action on the 13th of October 1897. 30 A firm of Shotter and Son had acted as the Plaintiffs' agents for Birmingham and Midland Counties for over twenty-eight years. On the 5th of April 1897, they gave three months' notice to the Plaintiffs to determine their engagement, and in July 1897, they entered into the employment of the Defendants as their agents for the sale of their soap; but it appeared that they 35 had for some time previous to their giving notice to the Plaintiffs been in negotiation with the Defendants, and it appeared that the Defendants had consulted Shotter and Son in reference to the wrappers to be used for their soaps. The Plaintiffs were the owners of eighteen registered Trade Marks for various kinds of soap and other similar products, some of which were registered by 40 The Lion Soap Company and some by the Plaintiffs themselves. One of these Trade Marks consisted of the word "LION," and all the others comprised the device of a lion, not always the same, with other matters. The Plaintiffs did not use any of these Trade Marks as Trade Marks on their soap wrappers, but they used the device of a lion in various forms and colourings on their soap 45 wrappers, boxes, and show cards. 66 The Defendants sold four kinds of soap:-(1) Kynoch's "Cleanser," the wrapper of which was copiously studded with small lions' heads; (2) Kynoch's "Victory "Soap," the wrapper of which bore two large and two small lions' heads, one of the large ones having REGD on either side of it; (3) Kynoch's "Popular 50 Washer," the wrapper of which bore four small lions' heads, each with "Trade" on one side and "Mark" on the other; and (4) Kynoch's "Carbolic "Soap," the wrapper of which was copiously studded with small lions' heads, and besides, bore two large lions' heads, each having "Trade Mark" within the double circle that surrounded it. 55 55 Hodgson and Simpson v. Kynoch, Ld. Representations in black and white of the material portion of the "Victory" and of one side of the " Carbolic wrapper will be found on pages 468 wrapper and 469. 66 66 10 " 66 66 66 The Plaintiffs, by their Statement of Claim, after stating that they carried on 5 their soap business, which was first established in 1818, alleged :-" (2) In the year 1891 the Plaintiffs purchased the business goodwill and Trade Marks of a firm which had then been carrying on business for several years as "manufacturers of various kinds of soap under the name of The Lion Soap "Company, and the Plaintiffs amalgamated the business so purchased with their own, and have ever since continued to carry on business in succession to the "said Lion Soap Company as well as in continuation of their own original "business. (3) The said Lion Soap Company had throughout the existence "thereof associated its products with the word 'Lion,' and with various "representations of a lion, and the Plaintiffs have continued and greatly 15 "extended the said practice, and the name and device of a lion have in the "minds of the trade and the public become and are exclusively appropriated to "and associated with the business and products of the Plaintiffs. (4) The "Plaintiffs are the registered proprietors of the following among other Trade "Marks which respectively consist of or contain the name and device of a lion 20 or one or other of them, and which were registered at various dates between 66 the year 1883 and the present time some by the said Lion Soap Company and 66 some by the Plaintiffs; all of which said Trade Marks now stand on the Trade "Marks Register as the property of the Plaintiffs in respect of various kinds of soap and other similar products. [Then followed an enumeration of the 25 registered numbers of eighteen Trade Marks.] (5) The Plaintiffs and their "said predecessors in business have for a considerable number of years last past "used the said word 'Lion' and the device of a lion in a great variety of ways "in connection with and in respect of their soap. Sometimes they have used "the expression 'Lion' or 'Lion Brand.' Sometimes Red Lion' or 'Golden 30" Lion or the like. Sometimes they have used the figure of a lion in a standing or walking attitude and sometimes they used a rampant or couchant "lion. They have used the said name or device or both in respect of hard soap "toilet soap musk soap transparent soap carbolic soap pale soap and generally. (6) The various kinds of soap manufactured and sold by the Plaintiffs under 35 the name or device of a lion as aforesaid are of high quality and have been "sold in considerable quantities, and by reason of the good quality of the soap "and of the large extent to which the same has been sold under and in "connection with the name 'Lion' and under and in connection with the device "of a lion in various different colours and attitudes the name and device of a 40 "lion have acquired and possess a high reputation with the trade and the public, "and have come to be and are universally associated by them with soap of the "Plaintiffs' manufacture, and anyone who sees and hears of soap sold or offered "for sale under the name or description Lion Soap' or 'Lion Brand Soap' or "Red Lion Soap' or 'Golden Lion Soap' or any similar name or description or bearing the device of a lion at once understands that such soap is soap of "the Plaintiffs' manufacture. The Plaintiffs' soap long has been and is asked "for and ordered bought and sold as 'Lion Soap,' and anyone who asks for or "orders 'Lion Soap' or soap bearing the device of a lion expects and intends to "receive soap of the Plaintiffs' manufacture and none other. (7) The Defen50 "dants are a Joint Stock Company who carry on an established business in “Birmingham as manufacturers and vendors of ammunition and similar goods, " and they have very recently begun to manufacture and sell soap and to associate "with such soap the devices of a lion and of a lion's head by placing a figure of 66 a red lion on the top of their new soap factory and a figure of a golden lion 55 on their soap vans and the device of a lion's head on their soap price lists "and on their soap wrappers and on the lids of their boxes containing their soap. On their price lists the Defendants have not only placed the device of 45 66 66 66 66 66 66 66 Hodgson and Simpson v. Kynoch, Ld. a lion's head together with the words 'Trade Mark' (whereas the Defendants "have registered no Trade Mark for soap), but they have placed at the head "thereof the statement Established 1851' (whereas the Defendants have only "just commenced the sale of soap) and the factory represented thereon is "really the Defendants' ammunition factory their soap factory being nearly a 5 "trivial part thereof. The representations made by the said price list are "calculated to deepen the impression produced in the minds of the public by "the Defendants' conduct that the Defendants are the old established manu"facturers of Lion Soap' and that 'Lion Soap' has througbout been and is of "their manufacture. (8) In all their acts herein before mentioned or referred to 10 "the Defendants have been representing and their said acts are calculated to and "will lead to the belief that their soap is 'Lion Soap,' that is to say soap of the "Plaintiffs' manufacture, and the Defendants have been thereby infringing the "Plaintiffs' registered Trade Marks and they have been and are receiving and "retaining profits which ought to belong to the Plaintiffs and causing damage 15 "and injury to the Plaintiffs and they will continue to do so unless they are "restrained by the Order of the Court." The Plaintiffs claimed (1) an injunction to restrain infringement of their Trade Marks; (2) an injunction to restrain the Defendants from using the device of a lion and the word "Lion" in their soap trade; (3) an injunction to restrain the Defendants from passing off their goods 20 as the Plaintiffs'. The Plaintiffs also claimed delivery up of wrappers &c., damages or an account of profits, and costs. By their Defence, the Defendants did not admit the statements in the second, fourth, and fifth paragraphs of the Statement of Claim. They denied the facts stated in the third and sixth paragraphs of the Statement of Claim, and the 25 third paragraph of the Defence was as follows :-" The Defendants admit that, 66 66 66 as alleged in the seventh paragraph of the Statement of Claim, they carry on an established business in Birmingham as manufacturers and vendors of "ammunition and similar goods, and that they have recently begun to manu"facture and sell soap and that in connection with the sale of the said soap 30 "which is manufactured at the Lion Works' of the Defendants, which are and "have been since the year 1857 known as the 'Lion Works,' they are using "the device of a lion and a lion's head, and that they have placed a lion on the "top of their new factory and a lion on their soap vans and that they have on "their price lists the device of a lion's head together with the words 'Trade 35 "Mark.' The said lion appearing on the said price lists is the registered Trade "Mark of the Defendants and has been used by them for many years and long prior to any business being carried on by the Plaintiffs. On all vans works price lists advertisements and documents of every description the said device "of the lion is associated in letters of the largest size and of the clearest possible 40 type with the name of the Defendants' firm and it is wholly untrue that anything that has been done by the Defendants in fact leads or is in any way "calculated to lead to the belief that soap of the Defendant Company's manu"facture is soap of the Plaintiff Company's manufacture. Save as herein "admitted the Defendants deny each and every of the facts set out in paragraphs 45 "7 and 8 of the Statement of Claim." 66 66 66 66 The action came on for trial before Mr. Justice ROMER. Neville, Q.C., John Cutler, Q.C., and Sebastian (instructed by J. S. Salaman) appeared for the Plaintiffs; Moulton, Q.C., A. J. Walter, and Gray (instructed by Field, Roscoe, and Co., agents for Pinsent and Co., of Birmingham) 50 appeared for the Defendants. Neville, Q.C., opened the Plaintiffs' case.-He read a correspondence between Shotter and Huxham, the secretary of the Defendant Company, and contended that it was clear that Huxham anticipated that he would get through the Shotters the soap trade they had been doing up to that time in Birmingham, and that it 55 was obvious that Huxham had set himself to get the trade by adopting marks that would assist him in so doing. The Defendants sought to justify their |