Page images
PDF
EPUB

66

Edge and Sons, Ld. v. Gallon and Son.

[ocr errors]
[ocr errors]

"respectively. The said device was the origin of the word 'Dolly' applied "to laundry blues and for many years prior to 1884 Dolly Blue' denoted both "to the trade and to the public blue manufactured by the said Richard Ripley "and marked with his Trade Marks containing such device and no other blue 5 "whatsoever. (3) In the year 1884 when the Plaintiffs' predecessor first "began to manufacture laundry blue it had become or was becoming general "in the trade to make up laundry blue in small rounded packets wrapped in "loose calico fastened at the top and he adopted this mode of make-up for "goods of his manufacture. (4) In the year 1887 when the Plaintiffs allege 10" that their predecessor first began to call his laundry blue by the term 'Dolly "that term as applied to laundry blue though still very generally denoting and "used to denote blue of the manufacture of the said Richard Ripley and bearing the said device had begun to be sometimes associated with and used "as descriptive of blues made up in calico as hereinbefore mentioned whoever 15 "the maker might be. (5) The term Dolly Blue' as now used by the trade "and the public still very often denotes blue of the manufacture of the said "Richard Ripley and bearing the said device of a dolly tub and dolly but both "the trade and the public not infrequently use the term as descriptive of "blues got up as aforesaid without reference to the particular makers. Prior 20 "to the institution of these proceedings the Defendants had never heard of any claim or suggestion that the term 'Dolly' as applied to blues ever "meant or was capable of meaning and they deny the term ever meant or means blues manufactured by the Plaintiffs or their predecessor. If asked for Dolly Blue' they have almost invariably and not recently only supplied 25" customers with blue made by and bearing the name and Trade Mark of the "said Richard Ripley and no customer has ever suggested that he was being supplied with the wrong article. (6) The Defendants deny that they have. "been guilty of any wrongful act or that the Plaintiffs have suffered any damage.

30

66

66

[ocr errors]

66

66

[ocr errors]
[ocr errors]

The action having been ordered to be tried at the Lancashire Assizes came on for trial before Mr. Justice BRUCE without a jury on the 22nd of July 1898. Joseph Walton, Q.C., John Cutler, Q.C., J. G. Joseph, and Blair (instructed by Ernest Salaman, Fort, and Co.) appeared for the Plaintiffs; McCall, Q.C., Maberly, and J. Rutherford (instructed by Harold Bee James) appeared for 35 the Defendants.

Joseph Walton, Q.C.-The Plaintiffs' case is that their blue is known as "Dolly Blue," and that "Dolly Blue" means their goods and no else's, and that the Defendants are selling blue manufactured by Ripley, of Liverpool, to persons asking for "Dolly Blue." Ripley had used upon his laundry blue 40 since 1871 a Trade Mark, which he subsequently registered, consisting of a dolly tub or peggy tub, commonly used in washing, with something projecting from it, which is said to be a dolly. It was upon the use of this device that the Defendants' case rested. The Plaintiffs had spent large sums in advertising their blue as 66 Dolly," and it had a very large sale under that name. The 45 Plaintiffs had stopped all other persons that they had heard of from using the term Dolly" for other blue. The result was that " Dolly Blue" had come to be known to the trade and the public absolutely as Edge's blue, and what the Plaintiffs desired was to prevent the reputation, built up at so great an expense, being appropriated by others.

50

55

66

Witnesses were then called for the Plaintiffs, including Knowles Edge and Joseph Edge, directors of the Plaintiff Company, and a number of trade witnesses, all of whom spoke to "Dolly" meaning the Plaintiffs' blue. The evidence of the Plaintiffs' witnesses will be found referred to in the judgment of the learned Judge.

McCall, Q.C., for the defence.-This is not a case of a Defendant coming into a trade where the Plaintiff is already established, and trying to take away a portion of his trade, but it is a case of a subsequent manufacturer attacking

Edge and Sons, Ld. v. Gallon and Son.

an earlier manufacturer. Ripley had used his Trade Mark since 1871, when he registered it under the Copyright Act then subsisting, and when the Trade Marks Act of 1875 came into force he registered his Trade Mark under that Act. The essential portion of this Trade Mark was a dolly tub and dolly. It was not disputed that Ripley had generally invoiced his blue as "Oval," but 5 it had been sold by him as "Oval Blue with the dolly on it," and the public called it "Dolly Blue" because of such dolly. To justify the Plaintiffs' case they must prove that they had obtained such a universal and exclusive reputation for their "Dolly Blue" that any one hearing the word "Dolly" applied to blue would associate it with blue of their manufacture, and this must be 10 universal throughout the country. Witnesses would be called to prove that from the seventies Ripley's blue had been asked for, sold, and known as "Dolly Blue," or "Blue with the dolly on it." It was clear, therefore, there could be no such exclusive and universal user as to entitle the Plaintiffs to the monopoly of the name "Dolly."

Witnesses were then called for the defence, including Ripley and his manager Thornton, Frederick William Gallon, one of the Defendants, and a number of trade witnesses. The evidence for the defence will be found commented upon in the judgment of the learned Judge.

15

John Cutler, Q.C., addressed his Lordship shortly upon the law of the case, 20 and, after referring to Reddaway v. Bentham, L R. (1892), 2 Q.B. 639, 9 R.P.C. 503, Reddaway v. Banham, 13 R.P.C. 218, L.R. (1896), A.C. 199, and the judgments in Powell v. Birmingham Vinegar Brewery Company in the Court of Appeal, 13 R.P.C. 256, L.R. (1896), 2 Ch. 54, and in the House of Lords 14 R.P.C. 730, L.R. (1897) A.C. 710, he cited Barlow v. Johnson, 7 R.P.C. 395, Singer v. Spence, 25 10 R.P.C. 305, Daniel and Arter v. Whitehouse, 15 R.P.C. 134, and Ripley v. Bandey, 14 R.P.C. 591, in all of which concurrent user had been set up by the Defendants, and submitted that those authorities showed that in the present case no such concurrent user had been established by the Defendants as to defeat the Plaintiffs' claim.. The Plaintiffs had been very vigilant in asserting 30 their rights to the use of the name "Dolly" to denote their laundry blue.

McCall, Q.C., for the Defendants, contended that it was not sufficient for the Plaintiffs to have established that in Bolton and the district where their business was carried on, or to large co-operative societies, or, indeed, to any particular class, the words "Dolly Blue" had come to mean their goods, but 35 they must prove such a universal and exclusive user of "Dolly" that all classes regarded the word as synonymous with their manufacture. Ripley was first in the market, and he sold his blue with his "Dolly" Trade Mark on it before Edge began business. He registered that Trade Mark, whereas Edge never registered the word "Dolly" as a Trade Mark for blue, the nearest he got to 40 it being the registration of a Trade Mark containing the words "commonly "called Dolly Blue." I admit that Ripley called his blue "Oval Blue," and that Edge's blue has been called and ordered as "Dolly Blue," and has been advertised as "the only Dolly Blue." In 1890 Ripley wrote a letter to Edge, in which he asserted that his Oval Blue was commonly called "Dolly Blue by retail customers. [BRUCE, J.-You must take the whole of the correspondence together.] I submit that the Plaintiffs' evidence does not prove exclusive and universal user, especially as their evidence as to exclusive user after 1890 ought to be received with suspicion.

Counsel for the Plaintiffs were not called on for reply.

[ocr errors]

45

50

BRUCE, J.-There are, I think, in this case two questions to be determined; and the first question, as it seems to me, is the really important one, and the second the subordinate one. The first question, it seems to me, is this: Does "Dolly Blue" as applied to laundry blue mean laundry blue made by the Plaintiffs as distinguished from laundry blue made by other makers? Then 55 there is the second question, which is the subordinate one: Did the Defendants sell laundry blue manufactured by other makers, and which they knew was

Edge and Sons, Ld. v. Gallon and Son.

manufactured by other makers, as "Dolly Blue," to customers who asked for "Dolly Blue," so as to pass off the laundry blue of other makers as the laundry blue of the Plaintiffs?

The real issue is raised upon the first question. If the first question is 5 answered in the affirmative, if the phrase "Dolly Blue" is a phrase which is known to the trade and to the public as denoting blue of the Plaintiffs' manufacture, and no other, then I think it is clear, upon the admission in the pleading and upon the evidence that the Defendants have sold Ripley's blue as "Dolly Blue." In the fifth paragraph of the Statement of Defence the 10 Defendants say that if asked for "Dolly Blue" they have almost invariably, and not recently only, supplied customers with blue made by and bearing the name and Trade Mark of the said Richard Ripley. It is quite true that the Defendants add that no customer has ever suggested that he was being supplied with the wrong article. But if a customer who asks for one thing is given 15 another instead, although he may not find out the difference, yet that does not justify the conduct of the Defendants in passing off as blue of the Plaintiffs' manufacture blue that was not of the Plaintiffs' manufacture. It is quite true that the circumstance that the customers accept what is given to them without complaint may be evidence that they have got the article they asked for and 20 the article they wanted, yet that must depend to some extent upon the character of the article and the circumstances attending the transaction. The difference in appearance between the packets or bags of the Plaintiffs' blue and the packets or bags of Ripley's blue is not great. A large number of the purchasers of the penny or halfpenny packets are poor ignorant people, not 25 likely to discriminate very nicely between the one kind of blue and the other, and may be prone to accept the article given to them in the belief that it is the article they asked for. Having regard to the circumstances under which articles of the character in question are ordinarily sold by retail, I cannot doubt that if "Dolly Blue" means the Plaintiffs' blue as distinguished from 30 the blue of other makers, and the Defendants have, as they say they have, supplied customers who asked for "Dolly Blue" with Ripley's blue, they have been passing off Ripley's blue as the Plaintiffs' blue. Of course, I have not overlooked the words in the Defence, "not recently only "; but those words bear upon the first rather than on the second question. If the Defen35 dants have always been in the habit of selling Ripley's blue as "Dolly Blue," that would go to prove that "Dolly Blue" has not the distinctive meaning which the Plaintiffs allege that it has; in other words, there has been a concurrent user which would be inconsistent with the distinctive user. That I must consider presently. I only mention the matter now lest it should be 40 supposed that I have overlooked the exact words of the admission in the Statement of Defence.

But this part of the case does not rest upon the admissions made in the pleadings. The evidence of Mrs. Marie Mahon and Mr. Suggett is sufficient to prove that when "Dolly Blue" was asked for the Defendants gave as 45 "Dolly Blue Ripley's blue. I do not dwell upon this part of the case, because, as I have said, I do not see that it is really in dispute. The real case of the Defendants is that "Dolly Blue" has not the distinctive meaning which the Plaintiffs contend it has; and as part of their case the Defendants contend that not only have they sold, but they have a right to sell Ripley's 50 blue as "Dolly Blue."

I come then to the consideration of the first question upon which the real conflict of evidence arises. First I will consider the case made by the Plaintiffs. They have proved, beyond all question, that they have since 1887 applied the word "Dolly" to the laundry blue manufactured by them. (I 55 speak of the Plaintiffs for convenience; they were not incorporated till 1894; but when I speak of things done by the Plaintiffs before 1894, I mean done by their predecessors in title.) Before 1887 they called their blue "Filtered

Edge and Sons, Ld. v. Gallon and Son.

[ocr errors]

"Blue"; but in 1887 they adopted the word "Dolly," and from 1887 to the present time the word has been used as descriptive of the laundry blue manufactured by the Plaintiffs. For some time after 1887 the term "Filtered" was used together with "Dolly as descriptive of the blue, but in 1891 the use of the word "Filtered was discontinued, and since 1891 the word 5 "Dolly" has alone been used as descriptive of the Plaintiffs' blue. In 1891, a Trade Mark, which had been registered in 1889, and contained the words "Edge's Filtered Blue, commonly called Dolly Blue," was altered by expunging the words "Filtered Blue," the words "commonly called Dolly Blue remaining.

10

I mention this, not because the case in any sense depends upon the Trade Mark, but because those transactions, as it seems to me, amount to a public advertisement that the Plaintiffs called their blue "Dolly Blue." In 1896 the Plaintiffs began to advertise their blue as the "only Dolly Blue." The Plaintiffs have advertised their blue on a most extensive scale as "Dolly Blue" and 15 as the "only Dolly Blue." They have other articles besides laundry blue, such as tints, creams, and blacklead, to which they apply the term "Dolly," and they have spent about 30,0007. in advertising these "Dolly" specialities, of which about 20,000l., roughly estimated, has been spent in advertising "Dolly Blue." The advertisements have been in a great variety of forms. The 20 pictorial showcards were distributed by tens of thousands; advertisements were inserted in magazines, newspapers, and trade journals, such as "The "Grocers' Journal" and "The Grocers' Review.” In all these advertisements the blue was described as "Dolly Blue " or as the "oniy Dolly Blue." The Plaintiffs sell about 5,000,000 of blocks or pieces of this blue in the year. 25 They are sent out in boxes containing a quarter of a gross of blocks, and on the lid of each box and on a bill placed in each box the blue is described as Dolly Blue" or as the "only Dolly Blue." From 1889 the Plaintiffs' works have been known as "Dolly Blue Works.' The Plaintiffs exhibited "Dolly "Blue" at the Leeds Exhibition in 1890, and at the Grocers' Exhibition in London 30 in 1892. They have a stand in the Manchester Corn Exchange, and they have had a stand in the Manchester Corn Exchange since 1892 on which the words "Dolly Blue" are painted in large letters. I cannot dwell at length upon these advertisements. It is enough to say that it seems to me difficult to imagine a series of acts done by the Plaintiffs for a series of years more emphatically 35 asserting in the face of the public that their blue is known as "Dolly Blue' and as the " only Dolly Blue."

66

66

[ocr errors]

The Plaintiffs say that since they adopted the word "Dolly" until the matters came to their knowledge of which they complain in this action, they have never heard of any other blue offered or sold to the public as "Dolly 40 "Blue" without taking immediate steps to stop the sale of that blue under such designation. The Plaintiffs have proved that since 1887 they have always called their blue "Dolly Blue "; they always received orders for it as "Dolly "Blue," and they have always invoiced it as "Dolly Blue."

A large number of witnesses have been called engaged in the trade, com- 45 mercial travellers, managers of co-operative societies, retail grocers, chandlers, retail oilmen, severally acquainted with the trade in London, Manchester, Heckmondwike, Wigan, Birkenhead, Liverpool, Leeds, Bolton, Pendleton, Rochdale, Nottingham, Leicester, Otley, Bury, Lancashire, Yorkshire, Cheshire, Westmoreland, Cumberland, Ireland, Wales, and Scotland. These witnesses all 50 declare that "Dolly Blue" in the trade means Edge's blue, and no other blue; that it is a term well known in the trade. It is ordered as 66 Dolly Blue," it is invoiced as " Dolly Blue," asked for as "Dolly Blue," and sold as "Dolly Blue." There is one case I should mention, the case of Mr. Maudsley, a wholesale dealer in Manchester, who in some invoice to a customer invoiced Edge's blue 55 as Edge's Blue." This single case seems to me to be a matter which 1 cannot regard as affording evidence of any exception to the general rule. None of the

66

66

5

Edge and Sons, Ld. v. Gallon and Son.

witnesses called by the Plaintiffs had ever heard of any laundry blue other than Edge's called "Dolly Blue"; they had never known Ripley's blue called "Dolly Blue" or sold as "Dolly Blue," and they had always known Ripley's blue as "Oval Blue" or 66 Ripley's Round Blue."

If the case for the Plaintiffs rested here, it would, I think, be an exceedingly strong case, and sufficient, if uncontradicted, to establish that "Dolly Blue means Edge's blue, and Edge's blue only. But the Plaintiffs' case receives the most startling confirmation from an affidavit made by Mr. Richard Ripley, the manufacturer of the blue which the Defendants say is known as "Dolly Blue." 10 The affidavit was sworn on the 16th of July 1897 in an action of Colman v. Barringer. It is as follows:-"The manufacture of washing blue is in the "United Kingdom practically confined to a small number of important firms." He then mentions the leading firms, among others the firm of William Edge and Sons, of Bolton. He then says this in the third paragraph of his affidavit :15" It is the practice in the blue trade for the blues of each firm of manufacturers "to be designated and known by certain special and distinctive names which "have been adopted by the particular firm. Thus, one of my principal brands "is known and recognized by the name of Oval Blue'; Reckitts sell Paris "Blue'; Messrs. Keen Oxford Blue'; Messrs. Edge Dolly Blue'; Messrs. 20" Smith and Gregory 'Windsor Castle Blue,' and so on; and the blues of the "respective firms are generally recognized by such names."

[ocr errors]
[ocr errors]

But there is another affidavit used by Mr. Ripley in an action of Ripley v. Bandey; it is an affidavit of Henry Robert Eagle, sworn on the 21st of November 1896, in which affidavit Mr. Eagle says that he has been engaged in 25 his present business for twenty-five years, and he has for over twenty years past known the blue of various makers including Mr. Ripley. Then he says, "His laundry blue has to my own knowledge been got up and sold in oval "blocks or cakes and is the best laundry blue in the trade. He has widely "advertised it as 'Oval Blue,' and by reason of the special form of get-up, the advertisements which have been published particularly in the form of "leaflets, Mr. Ripley's blue has for years past been well known in Liverpool "and the district as 'Oval Blue,' and that is the only name by which my "customers ask me for Ripley's blue, which has attained a high reputation "under that name.'

30

35

66

[ocr errors]

There is one other remarkable statement which the witness Mahon says was made by Mr. Gallon, senior, one of the Defendants, about three and a half years ago. Mahon called at one of the Defendants' shops in Leeds and saw Mr. Gallon, senior, and asked for an order for "Dolly Blue." Mr. Gallon answered, "It's no use your calling here, I've no demand for Dolly Blue.'" Mr. Gallon 40 was not called to contradict it, and it is difficult to explain the statement unless Mr. Gallon knew that "Dolly Blue" meant Edge's blue.

The case thus supported, not only by the great body of evidence adduced by the Plaintiffs, but by the statements on oath made by Mr. Ripley, and by the affidavit of Mr. Eagle used by Mr. Ripley, and by the statement, uncontradicted, 45 of what is virtually an admission by Mr. Gallon, one of the Defendants, seems to me to be an exceedingly strong case, and one which can only be broken down by evidence of the most cogent and conclusive character. Of course in these cases one expects a considerable conflict of testimony; but the weight of evidence seems to me to preponderate greatly in favour of the Plaintiffs. At 50 the outset, consider the Defendants' case. The Defendants are hampered by this circumstance: Ripley's blue has never been advertised as Dolly Blue," but it has been advertised as “Oval Blue”; it has never been invoiced as Dolly "Blue"; it has always been invoiced as "Oval Blue or as "Round Blue." The statement made in the affidavit of Mr. Ripley, to which I have referred, is 55 supported by a considerable body of evidence adduced by the Defendants, which proves that Ripley's blue was commonly known as "Oval Blue."

66

66

The Defendants' counsel suggested, on the cross-examination of some of the

« PreviousContinue »