Scottish Court of Session Decisions

John Cunninghame Montgomerie carried on a business of over ninety years’ standing as a manufacturer, producer, and finisher of stones and hones for sharpening edged tools and for polishing purposes, at Dalmore, which is in the parish of Stair, and is bounded by the river Ayr. James A. Donald & Company carried on at the date of this action a similar business for the sale of stones and hones produced from the estate of Barskimming, which is also bounded by the river Ayr, and only separated from Dalmore by the glebe lands of the parish church. Montgomerie presented this petition in the Sheriff Court of Lanarkshire praying the Court to interdict James A. Donald & Company, and their agents and servants, “from Selling, or advertising, or offering for sale, any stones or hones as of the pursuer's manufacture, production, or finish, or as bearing his trade name or trade-mark, having thereon as the most prominent and distinctive feature the words ‘Water of Ayr Stone,’ … which have not been manufactured, produced, or finished by the pursuer, and from representing as the manufacture, production, or finish of the pursuer, or as bearing his trade name or trade-mark, any stones or hones which are not of the pursuer's manufacture, production, or finish, and from selling, or advertising, or offering for sale any such stones or hones not manufactured, produced, or finished by the pursuer, to which the pursuer's said trade name or trade-mark, or any trade name or trade-mark similar thereto, or only colourably different therefrom, shall be affixed, and from affixing to any such goods any label or other mark having the words ‘Water of Ayr Stone’ thereon.”

The complainer averred that the Dalmore stones had been always known in the trade, and generally to the public, as “Water of Ayr Stone”—a name which was purely arbitrary and distinctive, and not descriptive, and was first and had hitherto been exclusively used and applied to Dalmore quarry stones by him and his predecessors. He had by himself for five years and upwards continuously manufactured, advertised, and sold whetstones and hones under the title of “Water of Ayr Stone”—a designation which had been for that period his trade name or trade-mark. In addition, he had for the last three years used in connection with them a distinctive label or trade-mark consisting of a group composed of a hand grasping a hone, in the centre of which group was a wheelstone with four blocks bearing conjointly the words “Water of Ayr Stone,” and disposed on each side of the group. This he had registered on 7th February 1883 by virtue of the Trade-Marks Registration Act 1875, “but independently of such registration he had by the long and continued use of the name acquired the sole and exclusive right to use the same as a

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trade name or trade-mark in connection with the mannfacture, production, finish and sale of stones and hones manufactured for sharpening edged tools and polishing purposes.” By reason of skill and experience in their manufacture, and of their general good qualities, the stones at Dalmore had become widely known at home and abroad as a valuable article. He further averred that the respondents were advertising and selling stones under the name of “The Water of Ayr Stone” of a greatly inferior quality to those sold by him under that name, and in consequence were injuring his business.

The respondents averred, that in the parish of Stair, and more particularly in the lands situated to the north and south of the river Ayr, there were numerous beds of a superior stone admirably adapted for sharpening edged tools and for polishing purposes, which was known as Water of Ayr Stone. “The name ‘Water of Ayr Stone’ is the only name by which the stone in question is known, and it is not confined to the stone worked from any particular quarry in the locality. The stone has been worked, described, and sold by the same name without challenge on the part of anyone at different intervals during the last fifty years from the quarries situated on the estates of Stair Bridge, Enterkinholm, Barskimming, and Knockshoggle, all in the vicinity of the Water of Ayr.” The stone from which their goods were manufactured was, they also averred, pure Water of Ayr stone, and could not be described in any other way than by that term. Stones manufactured from Water of Ayr stone were sometimes called snake stone from its spotted appearance, and also Scotch Hone. The complainer had attempted to incorporate these names into his alleged trade-marks, as well as the name of the stone itself, with the result, that if his contention were given effect to, they would not be able to sell their goods at all by any descriptive term.

The complainer pleaded—“(1) By the continued use of the trade name or trade-mark in question, and also by the registration thereof under The Trade-Marks Registration Act 1875, the pursuer has acquired a right of property, or at least of exclusive use therein. (2) The use by the defenders of pursuer's trade name or trademark complained of being calculated to deceive purchasers into the belief that the goods of the defenders bearing the same are the goods of the complainer, the latter is entitled to interdict as craved. (3) The pursuer's right of property in or exclusive use of his said trade name or trade-mark having been infringed by the defenders, the pursuer is entitled to have the same protected by interdict.”

The respondents pleaded—“(2) The goods sold by the defenders being made from ‘Water of Ayr Stone,’ they are entitled so to describe them. (3) The pursuer having no exclusive right to use the term ‘Water of Ayr Stone’ in describing his goods, interdict should be refused.”

The Sheriff-Substitute ( Guthrie), after a proof, the import of which fully appears in his note and in the opinion of the Lord Justice-Clerk, pronounced this interlocutor:—“Finds that it is not proved that the defenders have infringed the pursuer's trade-mark: Finds that the pursuer is not entitled to the exclusive use of the words ‘Water of Ayr Stone’ as descriptive of the whetstones or hones produced in his quarry at Dalmore, in Ayrshire, and manufactured by him: Therefore refuses the interdict craved, and decerns.”

“ Note.—The complainer is proprietor of a hone quarry and manufactory at Dalmore, in the parish of Stair, in Ayrshire, and he asks in this petition that the respondents, who are agents for the lessee of another hone quarry in the same neighbourhood, shall be interdicted in the usual terms (1) from infringing his registered trademark, of which he avers that the words ‘Water of Ayr Stone’ are the most prominent feature, or his trade name (presumably the same words); and-(2) from affixing to any goods not manufactured, produced, or finished by the complainer any label or other mark having the words ‘Water of Ayr Stone’ thereon. There is no attempt to prove a violation of the complainer's rights in his trade-mark, except so far as the respondents use the phrase ‘Water of Ayr Stone’ in describing the hones or whet-stones which they produce and sell; and the real question to be decided is, whether the complainer has acquired right to the exclusive use of these words as descriptive of the hones produced in his quarry? The evidence adduced is sufficiently copious; but the facts may be shortly stated. The kind of whet-stone in question was originally found, according to the tradition reported by some of the witnesses, in the channel of the river Ayr a hundred years ago, and for a great part of the century it has been an article of commerce as wrought in quarries, chiefly at the quarry now belonging to the complainer. The stone has a specific character different from other whet-stones and polishing stones, and has a specific use in various manufactures. For a good many years at different times during the present century, and certainly from about 1868–9 till 1882, the complainer's was the only quarry in operation where this stone was produced. But frequently quarries have been wrought at various places in the vicinity, beyond the complainer's boundaries, and the geological map and other evidence show that rock of the same description prevails over a considerable area of this portion of the valley of the Ayr. The quarries have been in operation at Knockshoggle at various dates, especially from 1830 to 1840, when that quarry almost seems, according to the important witness Dickie, to have taken precedence of Dalmore, at Enterkine on the other side of the river from Dalmore, at Quilkieston, where the respondents’ quarry now is, about 1852, and at Bridgend about 1868–9, all within a mile or little more from the complainer's property. No endeavour has been made to obtain documentary evidence from the books of the proprietors or their factors and agents as to the dates and terms on which these various quarries were worked. It is certain, however, that Dalmore has all along, or almost always, been the most important quarry, and that at various periods besides the years from 1868–9 to 1882 it has been the only quarry in the neighbourhood actually producing whet-stones. These facts make it natural that the complainer should imagine that he has a peculiar right to the distinctive name by which this kind of hone has been best known, and that many witnesses should be found who say that by Water of Ayr stones

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they understood hones produced at Dalmore quarry, and those only. That, however, if it stood alone and uncontradicted, would not suffice to give the complainer a complete right to the remedy he asks. And it is here that a saying of Lord Blackburn in the Singer Manufacturing Company v. Wilson [cited infra] has an important application. While he sees no difference in the wrong done by passing off goods as the plaintiffs' which are not his, whether that be done by using a fraudulent trade-mark or by advertising under a trade name which is his, ‘yet the inferences as to the facts and the relief to be given may depend upon whether the case is one of a trade-mark or of an advertisement’— i.e., by a trade name. I take it that the only question here is whether the complainer has a property in the trade name ‘Water of Ayr Stones.’ The exclusive use of a trademark for 12 or 14 years, or for a much shorter time, if it be merely a trade mark distinguishing the complainer's goods from others, even if the same mark had previously been used and then disused by others, would be enough to give an exclusive right. But in the case of a trade name which was formerly used by many, and has come to be used by one alone, and that one for the time the sole producer of the article, it is a very natural and probable inference that the name has been used both by the many and the one to indicate the specific quality or character of the article, and not its origin or manufacture. Accidental circumstances gave the owners of Dalmore a temporary monopoly of Ayrshire or Water of Ayr hones; but it does not follow that they acquired by that accident a monopoly of the name by which such hones are known. If all the breweries in Alloa or Edinburgh except one at each place were for some years to be given up, the surviving breweries would not easily be held to acquire a right to the exclusive use of the title Edinburgh or Alloa Ale; and so, to use a more cognate illustration, if all the granite works at Aberdeen or Dalbeattie were to cease with one exception at each place, these would not, without some very strong and peculiar evidence of user, become sole proprietors of the names Aberdeen or Dalbeattie granite. I do not go so far as to say, in such cases as this or those which I put, that such a trade name might not by possibility be acquired by an individual to the exclusion of other traders subsequently beginning business in the same place and dealing in the same article. But the presumption is against such a monopoly, and the evidence here is not sufficient to overcome the presumption. In fact, till 1879, when I presume there was some prospect of opposition from the present respondents, or from the Messrs Macpherson, it does not appear that the complainer made any very special use of the name Water of Ayr. He did not treat it as a trade name or trademark till then, but, like other people, used it as he would have used any other name which happened to be the accepted and understood name of the hones in which he dealt. Nor does it appear ever to have come to denote to the outside public buying the hones that they were the product of any particular quarry or manufactory. Had this been distinctly proved it might have evercome the presumption referred to. But one peculiarity of the witnesses for the complainer is, that they consist almost entirely of quarrymen and labourers, very few or none of a superior grade, living in the neighbourhood, and whose ideas may be easily accounted for by the superior importance of Dalmore quarry, and the occasional or frequent cessation of all other quarries. Another is the paucity of evidence of outside traders coupling the name with Dalmore. And perhaps the most striking peculiarity of all is the absence of anyone who can tell us by what name the goods were sold by the Manchester agency of Messrs Goldsworthy, so often referred to, who seem to have supplied consumers, not only in England but in Scotland, more largely than any other house. I cannot doubt that the complainer would have brought forth any evidence of theirs, or of their books or papers, which would favour his contention. Upon the whole, and keeping in view the principles followed in such cases as Wother spoon v. Currie (Glenfeld case), Singer Company v. Wilson, Cheavin v. Walker, 46 LJ Ch 686, L.R. 5 Ch. D. 857, and the very similar American case of Canal Company v. Clark, 13 Wall. 311, I am clearly of opinion that the respondents are entitled to succeed.”

On appeal the Sheriff ( Clark) adhered.

The complainer appealed, and argued—The complainer's business memoranda, labels, letter paper, &c., all bore the words “Water of Ayr Stone,” and also the name of his property Dalmore. It was clear on a consideration of the evidence that the name had been for about a century identified with the distinctive output of his quarry at Dalmore, and had acquired a commercial value. The attempt therefore to adopt the name made by the respondents had only been made in order to get the benefit of the reputation in the market, both at home and abroad, which the Dalmore stones had acquired on account of their excellence both in respect of their material, manufacture, and finish. After an article had acquired a high character in the market under a particular name—even though that name were that of a natural product such as a seam of fire-clay—the Court would not allow another trader to make use of the name.— Loch—gelly Iron & Coal Company v. Bumphinnans Iron Company, January 15, 1879, 6 R. 482; Dunnachie & Co. v. Young & Sons, May 22, 1883, 10 It. 874. This rule had been carried so far that where the competing manufacturer made the article in the same locality he had been restrained— Wother—spoon v. Currie ( Glenfeld Starch), April 18, 1872, L.R. 5 E. & I. App. 508; Seixo v. Provezende, January 22, 1866, L.R., 1 Chan. App. 192; Brdham v. Beachim, February 12, 1878, L.R. 7 Ch. Div. 848. This rule applied as well to the superiority of the manufacture as to the material principle or process made use of— Singer Manufacturing Company v. Kimball & Morton, January 14, 1873, 11 Macph. 267, 45 Scot. Jur. 201; Singer Manufacturing Company v. Wilson, December 13, 1877, L.R. 3 App. Ca. 376.

Replied by respondents—The proof clearly showed that the name was not confined to the output of any particular quarry in the locality. It was in fact the name applied to a natural product, and derived from the district where it was found. It was used in this sense by the respondents, and with no desire to infringe on any supposed rights of the complainer. The name of such a natural product could not become the exclusive property of any one manufacturer so

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long as the product used in the manufacture was, as here, really the same in both cases, and the articles made equally good— Canal Company v. Clark (Larkawanna Coal Case), December, 1871, 13 Wallace's Amer. Rep. (S. Ct. of U.S.), p. 311; Sebastian's Digest of Trade-Mark Cases, p. 196; “ Loch Katrine Whisky” Case, ibid. p. 271; Young v. Macrae, March 21, 1863, 9 Jur (NS) 322—and there was no attempt to pass the articles off as made by the original manufacturer — James v. James, February 23, 1872, L.R. 13 Eq. 421.

At advising—