Scottish Court of Session Decisions

Cowie Brothers & Company, export merchants, Glasgow, raised an action in the Sheriff Court of Lanarkshire to have George Herbert, biscuit manufacturer, Glasgow, interdicted from using, in connection with the sale of biscuits not exported or selected or prepared for exportation by the pursuers, the pursuers' trade-mark, or any mark substantially the same as, or only colourably different from, the pursuers' trade-mark.

The pursuers averred that they had for several years exported goods to Rangoon and elsewhere, and had acquired an extensive and favourable reputation for the goods exported by them, of which biscuits formed a part. They further averred that in 1889, in order to protect themselves and the public from imposition, they adopted as a distinctive trade-mark a representation of the Glasgow Town Hall. In particular, they averred that they had used the said mark on tins of biscuits exported by them to Rangoon and elsewhere, and that the said mark was known in the Rangoon market as “El Musjid” or “The Palace.” In July 1889 the pursuers were registered as proprietors of the trade-mark in question.

“(Cond. 4) The pursuers have recently

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ascertained that the defender is using on tins or packages containing biscuits exported by him, or, at all events, not exported by the pursuers, nor selected for exportation by them, a representation of Glasgow Town Hall, in imitation of, and substantially the same as the complainers' trademark above mentioned. Inter alia, the defender recently consigned to Rangoon for sale a quantity of tins or packages containing biscuits and bearing such counterfeit trade-mark.”… “(Cond. 5) The defender's use of the label complained of is calculated to lead buyers to believe that the goods consigned by him have been selected and consigned by the pursuers, and is injurious to pursuers' trade, and an infringement of their said trade-mark.”

The defender averred—“(Stat. 4) One of the pursuers' firm, in 1888, requested the defender to give the pursuers' firm a sample of his biscuits along with quotations, as they stated that they intended to begin the exportation of biscuits to foreign markets. The defender submitted a box or boxes of biscuits to pursuers, which had a label or labels thereon containing a perspective view of the Glasgow Municipal Buildings, which defender had in use for some considerable time before that date. It is believed and averred that pursuers took the box containing the label to the defender's own printers, and desired them to make and print a label similar to the one adopted by the defender. The printers objected to do this until they had asked the permission of defender. Defender on being approached by the printers, cautioned them against making or printing labels for the pursuers which might be mistaken for his own, and this the printers undertook to do.”… “(Stat. 5) Defender was not aware until immediately before the raising of the present action, that pursuers had appropriated and registered the design of the Glasgow Municipal Buildings used by them as a trade-mark. A copy of pursuers' label is now produced in process. The design in question was, at the date of registration by pursuers, incapable of registration, in respect that it was not the design of the pursuers; it was in common use, and specially a representation of the Glasgow Municipal Buddings had been used by the defender as a trade-mark for his biscuits; and further, that it did not come under the definition provided by the Trades Mark Acts. (Stat. 6) The pursuers, or one or other of them, were quite aware that the defender had adopted and used the label with the design now complained of, and exhibited in process prior to the registration by them of the trade-mark adopted by them. The defender, as stated, was unaware until recently of the registration of the pursuers' design or label, and pursuers have purposely avoided raising any objection to the defender's use of the label in question until the expiry of five years from the date of such registration.”

The pursuers pleaded—“(1) The defender having infringed and still continuing to infringe the pursuers' trade mark as condescended on, the pursuers are entitled to the interdict craved with expenses.”

The defender pleaded—“(3) The defender not having infringed any alleged trademark, is entitled to absolvitor with costs. (4) The pursuers' statements, so far as material, are insufficient to support the conclusions of the summons, and absolvitor should be granted with costs.”

A proof was allowed.

For the pursuers Archibald Cowie, one of the pursuers, deponed—“Our first shipment to Rangoon under the Town Hall label was in October 1889. So far as I know, until October last year (1894) there were no other biscuits being sold in Rangoon or elsewhere under a similar label. We had no advice from Rangoon until the receipt of the telegram on 31st October 1894.… I think that [defender's labels] are likely to cause the goods under them to be mistaken for ours.… From my knowledge of the Eastern trade I say that goods are usually sold by mark. Cross.—I am not aware if any person in this country was deceived by the similarity of the two labels. We never sold a tin of biscuits in this country, and I cannot give an opinion.… I have no personal knowledge of anyone having been deceived, because I have never been in Rangoon.… Assuming that I was a stranger to the city of Glasgow, I most certainly say that I would be deceived by the two designs.”

Charles Rennie Cowie deponed—“The first shipment of biscuits was in October 1889. I frequently heard of Herbert's biscuits in Rangoon under a label giving his name and his works. The first intimation I got of Mr Herbert's use of the Town Hall label was the date of the telegram, October 1894. I only arrived home at that time. At the time I left Rangoon in September I did not hear of the Town Hall label being used by Mr Herbert. By a subsequent mail we received a copy of the label said to be used out there. That label was likely to cause confusion of our goods and Mr Herbert's. I think there is such a resemblance between the label complained of and ours that buyers are likely to be deceived. That class of trade is entirely in the hands of native buyers. The goods are known by the trade—marks entirely. Our design is known out there as a mesjid or mosque, or a girgo or church. The label complained of is known by the same name. We had a case of candles and other goods where we had a view a little like this, and it was a mesjid. We took proceedings against the people using it in Rangoon, and were successful. He was found liable to pay a fine of 200 rupees or go to prison for three months.” …

Andrew Symington, Indian Civil Service, and Assistant Commissioner in Burmah, deponed—“It is eight years since I went out to Burmah. I come a great deal in connection with traders. I have seen Cowie's Town Hall label and Guthrie & Company's Town Hall label. I think there is a similarity between these two marks which might deceive a native buyer. In Burmah goods are known by the brands on them. The brand appears on Cowie & Company's label as the Glasgow Town

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Hall. In Burmah the Town Hall would be known as a palace, and in India as a temple. A native that bought goods under Cowie's label might in a subsequent purchase take by mistake goods under Guthrie & Company's label.”

Thomas Purdie, general assistant of Cowie & Company, Rangoon, deponed—“I am in the employment of C. R. Cowie & Company, merchants, Rangoon.… Last October a box was brought into the place bearing the Town Hall label. That was the first time I had ever seen the Town Hall label except on our own goods. That same day I caused a lawyer out there to take proceedings against the man who had been selling them. I was in Court when the evidence was taken and. sentence pronounced. He was fined 200 rupees or three months' imprisonment. He paid the fine. Out in Rangoon and Burmah goods are known by the trade-mark. The goods bearing our Town Hall label are known by the mark. That is a natural result from the fact that the natives don't read English. I don't think a native who was buying under Cowie & Company's mark would notice the difference between it and Guthrie & Company's mark. When I was in Court one of the natives was asked to distinguish between the two labels, and he was unable to do so. I have tested some of the natives in the office, and they could not tell the one from the other. They call our mark girgo or church, and mesjid or mosque. They would also call Guthrie & Company's mark a mesjid or mosque ticket. Cross.—I tested the natives by putting one tin of Guthrie's before them and another of ours, and asking them to select which was which. I asked them to tell me which was ours, and they said they were both ours.”

James Galbraith, sole partner of James Galbraith & Sons, East Indian merchants, Glasgow, deponed—“I was in Burmah for about eighteen years. I came home in 1876, and since then I have been in business in Glasgow and connected with Burmah. The natives as a rule distinguish one maker's goods from another by the trademark. The principal trade-marks in use in the East are photographs or designs. Letterpress would be of no use to them out there. I have seen the labels in question. I consider that there is a similarity between Guthrie & Company's labels and Cowie & Company's labels. The similarity is such as would deceive a native buyer in Rangoon. The natives are in the way of giving the different tickets names of their own. I think the labels in question would go under the same name, and confusion would arise between the two. (Q) If a native who had been buying under Cowie & Company's Town Hall mark ordered goods, how do you think he would order them?—(A) He would order them in the native language as a house or palace or large building.”

Francis Park, Glasgow representative of Sir Jacob Behren & Sons, East Indian merchants, deponed—“From my experience of the Eastern market, goods are known by the brand or mark almost entirely. The natives ordered goods by the ticket. That is how imitations are got up sometimes. I have seen the labels of Cowie & Company and Guthrie & Company. I think there is a similarity between these labels such as would deceive native buyers, especially up-country buyers. In ordering Cowie's biscuits or Guthrie & Company's biscuits they order them by the native name. (Q) A native who has been in the habit of getting goods under Cowie's label might get goods under Guthrie's label passed on him as the same goods he had got before?—(A) Very easily; and it is almost certain it would pass. The native would expect them to be the goods that he had got before.”

For the defender, Hugh Peter Buchanan, merchant, Glasgow, deponed—“(Q) If a dealer was wantng to order goods, having once seen them under this label of Cowie & Company's, and if he wished to renew the order, how would he describe it?—(A) Messrs Cowie Brothers and the natives would have a name for it in their own office. (Q) Supposing the name was a church or a mosque, would not another label which came under the same category be apt to be confused ?—(A) There are so many buildings on biscuit labels that a dealer would not be such a fool as to specify loosely what he wanted, nor would the merchant be foolish enough to have any doubt on the subject. It is the case that these labels go by a name in the market. They sometimes go by an elevation, sometimes a mosque, and sometimes a church. (Q) If a native buyer was ordering it by the name of mosque, church, or palace, might there not be confusion between these two labels ?—(A) They are too wide-awake to leave any doubt. They have an elevation in fifty different forms, and it might be twenty different houses. They are quite accustomed to the difference in buildings, of formation, or names of firms. It is the case that the native dealer does not read English. A native dealer would not be able to read letterpress; in a case of this kind he would go by the label and mark. I am familiar with Guthrie & Company's label. (Q) From your recollection of Guthrie's label can you tell me what is the difference between Herbert's and that one of Cowie's you see before you, No. 19, as regards the building ?—(A) I am fully convinced in my own mind that even an up-country native would not be confused between them. [Question repeated]—(A) For my part I could not recollect that. There is the difference that Cowie's building is facing and Guthrie's is from the corner. I think that is a kind of distinction that a native would carry in his mind. (Q) Supposing he had only seen Cowie's label once before, could he recollect that difference?—(A) I expect he would. (Q) Is it not a thing that is doubtful?—(A) It might be.”

Lewis Osborne Smith, merchant, Glasgow, deponed—“(Q) Do you think from your experience that the people out in Rangoon are liable to be deceived?—(A) No. I would say no. (Q) They are pretty well up in the matter of design?—(A) I don't think there is any question. They are both buildings. I think a native could carry in his mind pursuers' building, and

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would not be liable to confuse that with No. 6/2. Cross.—I never resided for any length of time in Rangoon. The last time I was there I stayed for six or seven weeks, and the previous time not so long. (Q) Did you sell any goods out there ?—(A) I went out with our salesman, but I could not deal with the dealer because I could not speak the language. I think that the man who is selling the biscuits for pursuers would know that we were using that label. I presume that the design on the labels represent the same building. That is obvious to anyone looking at the two. I don't pretend to know anything about buildings. I understand they are both taken from the Municipal Buildings, Glasgow.”

On 9th November 1895 the Sheriff-Substitute ( Guthrie) granted interdict as craved.

Note.—“The pursuers' title to their trademark having formerly been sustained, the only question is whether the trade-mark used by the defender is so like it as to have a tendency to mislead. It is not necessary to the pursuers' case that they should show that the defender had an intention to deceive, and I do not think that is alleged or proved. Neither have I anything to do, as has already been held, with the question whether the pursuers are properly registered. They are registered, and that is conclusive for the present purpose.

Further, an attentive consideration of the question of similarity satisfies me that purchasers are likely to be deceived by the resemblance of the one label to the other. A good deal is said about the greater probability of uneducated (?) Orientals being deceived, but it does not seem at all unlikely that an average English buyer might mistake the one picture for the other. It must be observed that deception occurs, not when the two pictures are presented at the same moment for comparison, but when the defender's picture is seen by itself, and can only be compared with the representation of the registered trade-mark which the intending buyer carries in his memory.”

The Sheriff ( Berry) having adhered, the defender appealed.

The defender also presented a petition to the Court of Session under section 90 of the Patents Designs, and Trade Marks Act 1883 (46 and 47 Vict. cap. 57), and the amending Act of 1888 (51 and 52 Vict. cap. 50), sec. 23, craving an order for the rectification of the Register of Trade-marks by expunging therefrom Messrs Cowie & Company's trade-mark. This application is alluded to in Lord M'Laren's opinion, and was refused by the Lord Ordinary ( Kincairney), against whose interlocutor the petitioner reclaimed, but it was ultimately not insisted in by the petitioner.

Argued for the defender—The Sheriffs were wrong. The pursuers had completely failed in their proof. To begin with, there was no similarity between the labels. They represented the building from totally different points of view and could not be mistaken for one another. But even assuming that there was a superficial resemblance, the pursuers had not proved a single case of actual deception. It was quite true that, as a general rule, actual deception need not be proved; but when the rival trademarks had been circulating side by side in the market where deception was alleged to be probable, the fact that no one appeared to have been misled was very material—Kerly on Trade-Marks, p. 206; Rodgers v. Rodgers, 31 L.T. 285; Estcourt v. The Est-court Hop Essence Company, L.R., 10 Ch. 276; Lambert, 5 Reports Patent Cases 556; Baker v. Rawson, 45 C. D. 519; Talbot, 11 R. P. C. 77. In view of the dissimilarity of the labels, this was eminently a case where deception must be proved. Even if it were hot, the pursuers' evidence was of the vaguest description, and failed to establish the probability of deception. The distinction they attempted to draw between an Englishman and an Oriental was rejected even by the Sheriff—Substitute who had decided in their favour. In any event, no probability of deception had been proved except in Burmah, and the interdict sought by the pursuers was of universal application.

Argued for the pursuers—The Sheriffs were right. The principle relied on by the pursuers was this, that no trader had a right to use a trade-mark so nearly resembling that of another trader, as to be calculated to mislead the incautious— Sykes v. Sykes, 3 B and Cr. 541, Sebastian's Digest No. 40; Perry v. Truefitt, 6 Beav. 66, Seb. Dig. 73; Orr, Ewing & Company v. Johnston & Company, 7 A. C. 219. When a trade-mark had been exclusively appropriated by some one for a series of years, and had obtained a certain exclusive meaning in the trade, then it was his property as a trade-mark— Singer Manufacturing Company v. Kimball & Morton, January 14, 1873, 11 Macph. 267, per L. P. Inglis at p. 272. The pursuers here had used the representation of a house as a trade-mark for more than five years after the date of registration in 1889, before the defender first employed the representation of a house as his trade-mark, and such use was, under section 76 of the Patents Act of 1883, conclusive evidence of an exclusive right to that mark. There was no evidence of the defender's use of the representation of a house prior to October 1894, but in any case the question of use by the pursuers before 1889 was immaterial— Hudson, 32 C. D. 311. It was unnecessary for the pursuers to aver or prove fraud on the part of the defenders— Singer Manufacturing Company v. Wilson, 3 A. C. 376, per Lord Cairns at p. 391. Nor, in order to entitle the pursuers to relief, must the identity between the labels be absolute or such as would deceive persons seeing them together side by side— Seixo v. Provezende, L.R., 1 Ch. 192. Again, it was unnecessary for the pursuers to prove absolute deception. Proof that deception was liable or likely to occur was sufficient, especially when the witnesses would have to be procured from a distant foreign market, and there was ample evidence to that effect here—Kerly, p. 206. It was no justification for the defender

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to show that his trade-mark was ambiguous, or that it might not mislead a person who carefully and intelligently examined it— Singer Manufacturing Company v. Loog, 8 A. C. 15. A distinction must be drawn between the educated European and the Oriental purchaser, for whose consumption the goods in question were intended. It was urged by the defender as a reason for refusing interdict that there was no evidence of probability of deception except in the Rangoon market. That was quite true, but the pursuers were nevertheless entitled to a remedy co-extensive with their right. Even if they were not, there were precedents for granting interdict restricted in its operation to a particular locality or otherwise— Carver v. Bowker, Seb. Dig. p. 350; Barber v. Manico 10 R. P. C. 93 per A. L. Smith, J.; Rodgers v. Rottgen, 5 Times Reports, 678.

At advising—