1923.

Hollandia and AngloSwiss Condensed Milk Co. v. The Nestlé and Anglo-Swiss Condensed Milk Co.

Flowermaid Brand" in respect of condensed milk, but withdrew his
application owing to the opposition of the respondents (see R 2). In
1920 the present applicants placed on the local market, for the first
time, condensed milk with the label R 17, which is the same as the
subject of application No. 1,790, but, when threatened by the
respondents with legal proceedings, civil and criminal, the applicants'
agents, who still represent them in these actions, gave an undertaking
in writing (R 18) to refrain from placing condensed milk with mark
R 17 on the market. Soon afterwards they put on the market tins of
condensed milk with the label R 19. The respondents appear to have
again objected. Early in 1921 the applicants sought to obtain registra-
tion of the mark in R 19, the respondents opposed the application, and
took the necessary steps under the Ordinance. The applicants aban-
doned their application (see R 21). The applicants say that their
agents had no authority from them to give the undertaking (R 18), and
did so in ignorance of the history of their mark which they have set
out in A 1. However that may be, the applicants' agents were so
impressed with the justice of the respondents' opposition that they
gave the undertaking I have referred to. The applicants have regis-
tered another trade mark for condensed milk (R 30). To this the
respondents rightly raised no objection, as no confusion or deception
is likely to result from its use. In these circumstances, the applicants
now apply for the registration of the marks, subject of applications
Nos. 1,790 and 1,773, and the main question which the Court has to
decide is "whether the marks propounded by the applicants have such
resemblance to the trade marks of the opponents as to be calculated to
deceive"? This question is specifically raised by the third issue
framed for decision in this case. It was agreed by the parties that the
two cases should be heard together, and that the evidence in one case
(recorded in No. 930) should be taken as evidence in the other No. 931.
In the first place, then, the two sets of marks should be compared ;
when we do so, we undoubtedly find differences between them, and it
may be conceded that if they are placed side by side, an intelligent
and cautious purchaser who can read and understand English would
not be deceived. The marks propounded by the applicants, although
they contain the figure of a woman as the centra. figure or main feature.
have in the label, which is subject of application No. 1,790, a number
of medals above the figure and the word "Hollandia "prominently
displayed below it, followed by the name of the makers and the place of
preparation, and on the label the subject of application No. 1,773, the
differences are even more striking. Here, above the figure, we find the
words "Hollandia Brand" in large type, and on either side of it coats
of arms in circles attached by loops, and under the figure the word
"Hollandia" followed by the name of the makers and the place of
preparation. In the opponents' trade mark we have the same main
feature, the figure of a woman, a milkmaid in one (R 6) with the words
"Milkmaid Brand" above the figure, and the names of the makers and
the place of preparation under it—and in the other (R 5 and R 7) the
word "Milkmaid" or "Milkmaid Brand" with the name of the place
where it is prepared near the head of the figure. The two sets, there-
fore, are not the same throughout or exactly similar, and the names
of the brands are different, and the names of the persons preparing
them are also different. Those who can read and understand English
will not be easily deceived. This, however, does not conclude the
matter considering the local markets where the milk will be
sold.

1

The learned Judge then proceeded to discuss at length the cases on the point, and continued:

There is the further question: Do the applicants' marks contain a "leading characteristic" or "the dominating portion "or "a material and substantial" part of the opponents' trade marks? It is said that "two marks when placed side by side may exhibit many and various differences. Yet the main idea left in the mind by both may be the same, so that a person acquainted with the mark first registered, and not having the two side by side for comparison, might well be deceived if the goods were allowed to be impressed with the second mark, a belief that he was dealing with goods which bore the same mark with which he was acquainted. Take, for example, a mark representing a game of football, another mark may show players in a different dress and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade marked goods and relying, as they frequently do upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing . . . . When the question arises whether a mark applied for bears such resemblance to one on the register as to be calculated to deceive, it should be determined by considering what is the leading characteristic of each. The one might contain many, even most of the same elements as the other, and yet the leading-it may be the only impression left on the mind -might be very different, whilst, on the other hand, a critical comparison of two marks might disclose numerous points of difference, and yet the idea which would remain with any person seeing them apart at different times might be the same." The principles indicated in the above passage from the report of Lord Herschell's committee are stated in Kerly on Trade Marks to be in accordance with the leading cases on the subject, and the many reported decisions which I have had occasion to consult lead me to the same conclusion.

With regard to those two sets of marks, I feel that what impresses the eye most, or strikes the eye on looking at them, is the central picture-the woman's figure. In fact, there is nothing else that could impress persons in Ceylon who are unable to read and understand English. The medals or the coats of arms will not strike them and hardly convey any meaning to them. It is the "Nona," a lady in what appears to be European dress, that will impress them and signify anything to them. These remarks apply to the name of the applicants' brand "Hollandia," although very prominently displayed, as also to the names of the markers. Even with regard to persons able to read and understand English, Jessel M. R. said: People do not care very much about reading the names, so I do not think the difference of names very important." (In re Worthington's Trade Mark.) It is also not unimportant to bear in mind that the applicants' labels with these marks are intended to be affixed to tins similar in size, shape, and colour to those of the opponents. In my opinion the main feature in both sets of marks is the same-the figure of a

66

woman.

66

The Judge then proceeded to hold that the opponents' milk were widely known to those able to read and write English, and to others by the names Lady Brand Milk" and "Nona Kiri" in Sinhalese and "Nona Pal" in Tamil, and that the applicants' milk, if allowed to be sold under the proposed trade mark, would be called by the sa me na mes.

1 (1880) L. R. 14 Ch. 8 (ii).

1923.

Hollandia and AngloSwiss Condensed Milk Co. v. The Nestlé and Anglo-Swiss Condensed Milk Co.

"

He held, therefore, that the use of the proposed mark by the applicants
was calculated to deceive “ ordinary or unwary purchasers," and
the principle laid down in Kerly, p. 227 : "When the goods of a
particular trader have become known by a name derived from his trade
mark, any other mark which would be likely to suggest the use of the
same name for the goods on which it is used to resemble the former
as to be calculated to deceive," was applicable. After referring to
certain cases which had a striking similarity to the facts of the present
case, Johnstone & Co. v. Orr-Ewing & Co.,1 The Eastern Dye Works
Case, Anglo-Swiss Condensed Milk Co. v. Metcalff (supra), Seize v.
Prevesende," and In the Matter of Currie's Application for a Trade Mark,
in which application to register marks were disallowed, or in which trade
marks already registered were ordered to be expunged from the register,
he continued: I would therefore hold that the essential feature, viz.,
the figure of a woman in the opponents' trade marks is also the essential
feature or main characteristic of the applicants' marks, that there is thus
a resemblance between the two sets of marks, that the name "Lady
Brand Milk," "Nona Kiri," Nona Pal" derived from the essential
feature by which the opponents' goods are called will inevitably be
applied to the goods of the applicants if their marks be allowed to be
registered, and that confusion and deception are certain to result.
Some little difficulty is, however, caused by the more recent judgment
of the House of Lords in Boord & Son v. Bagots Hutton & Co. to
which I drew the attention of counsel. Mr. Hayley relies on this
case. But after careful consideration I think that that case can be
distinguished. In that case Messrs. Bagots Hutton & Co., the
respondents to the appeal, applied for registration as a trade mark
for gin of a pictorial label, of which the principal feature was the repre-
sentation of a cat got up as a puss in boots sitting on the snow and
holding in its forepaws a glass; on either side of the cat was a bottle
and a hat with feathers. The application was opposed by Messrs,
Boord & Son, on the ground that they were the registered proprietors of
various trade marks for gin and similar goods bearing representations
of a cat, that as a consequence their goods had become known in the
United Kingdom and in the markets of the world by the name of “The
Cat Brand," and that the trade mark which the respondents were
seeking to register was calculated, the goods being the same, to be
described as "Cat Brand "goods and to be passed off as and for the
appellants' goods. At the argument before the House of Lords, Messrs.
Boord & Son, through their counsel, admitted that the cat mark was
open to the trade in the English market, and did not object to its use
as a trade mark in England; but they contended that the registration
of the trade mark should be refused, as it was likely to deceive people
in the Eastern markets. The House of Lords held that the applicants
were entitled to have their mark registered. In my opinion the
decision of the case turned on the fact that the device of a cat per se
had become publici juris in England in connection with gin. Where
a mark or device has become publici juris, “registration should not be
refused for a new trade mark incorporating it, merely because people
might be misled by ignorance into construing its presence as signifying
that the goods which bore it were the goods of another person who
had previously incorporated that feature, without any exclusive right
to do so "to adopt the language of Lord Haldane in that case approving

1 (1880) L. R. 13 Ch. D 454 and
L. R. (1881) App. Cas. 219.

2 (1910) 27 R. P. C. 201.

3 (1886) L. R. 1 Ch. App. 192. 4 (1896) 13 R. P. C. 681.

5 (1916) L. R. 2 A. C. 382.

1923. Hollandia and Ango. Swiss Condensed Milk

Co. v. The Nestlé and

Condensed
Milk Co.

the judgment of Wright J. (In re Dextor's application.1) His Lordship continued: "My Lords, the difference in character ought always to be borne in mind between the question in a case where a man is trying to deceive by passing-off his goods as those of another and the question of interference with proprietary right, which is what the Registrar has, in the first instance, to consider in deciding whether registration ought to be allowed of a trade mark bearing some resemblance to another. If this difference in the questions is attended to, Anglo-Swiss I think it will be found that the authorities cited at the Bar on this appeal can, in the main, be classified and reconciled. It is for the most part where the difference has been forgotten that obscurity in expression has arisen." The observations of a general nature to be found in the judgment in this case which seem at first sight to lend support to the applicants' case here must be read in the light of the outstanding fact in the case-that the device of a cat was per se publici juris. For as Lord Halsbury L.C. remarked in Quinn v. Leathem2 "every judgment must be read as applicable to the particular facts proved or assumed to be proved since the generality of the expressions which may be found there are not intended to be expositions of the whole law, but governed and qualified by the particular facts of the case in which such expressions are found.' In Boord & Son v. Bagots Hutton & Co. (supra) both the parties were entitled to use the figure of a cat in their trade marks, and the opponents would not be allowed to interfere with the proprietary right of the applicants, unless the device was used in a combination so resembling the combination adopted by the opponents as to be likely to deceive. In the opponents' label the cat was depicted seated on a barrel, while in the applicants' label the cat was shown seated on the snow with accessories not to be found in the other label. What that case decided, therefore is this, that when a device is publici juris, the adoption of that device in combination with other things cannot be objected to, unless the device is used in a combination so resembling the combination adopted by another as to be likely to deceive. The figure of a woman in connection with condensed milk is not publici juris, at least, in Ceylon, and the present applicants have no proprietary right whatever to its use. That case can thus be distinguished from the present case, and the case of Johnstone & Co. v. Orr-Ewing (supra) which was frequently refened to there, without a doubt being cast in its soundness. Similar observations apply to a dictum of Lord Selborne L.C. in. Johnstone & Co. v. OrrEwing (supra), which Mr. Hayley pressed on me. This dictum which is cited by Lord Haldane in Boord & Son v. Bagɔts Huttɔn & Co. (supra) is as follows: "Your Lordships are not called upon to decide whether a ticket which was a rightful and bona fide trade mark of the trader using it should be excluded by injunction from particular markets (though unimpeachable everywhere else), merely because in these markets it might be liable to be called a name, which the mark of another trader had already acquired there. To that proposition I should not myself as at present advised be prepared to assent." P. 277. The words to be noted in this passage are the words: " A ticket which was a rightful and bona fide trade mark of the trader using it." In fact, in Boord & Son's case the House of Lords decided the very point which Lord Selborne had left undecided. In that case the applicants had a rightful and bona fide title to the mark in dispute, while neither in Johnstone & Co. v. Orr-Ewing (supra), nor in the present case, nor in the other cases cited by me, had the defendants or applicants any such right or title. This dictum. therefore, does not help 1 (1893) L. R. 2 Ch. 262. 2 (1901) L. R. A. C. 495 at 506.

1923.

Hollandia and AngloSwiss Condensed Milk Co. v. The Nestlé and Anglo-Swiss Condensed

Milk Co.

the applicants. The principles indicated by the House of Lords in Johnstone & Co. v. Orr-Ewing (supra) and by Neville J. in the Eastern Dye Works Case must guide me in the decision of this case. I hold, then, that in view of the facts and circumstances stated above, and the legal principles applicable to them, the marks propounded by the applicants have such resemblance to the trade marks of the opponents as to be calculated to deceive.

Hayley, for appellant.

Drieberg, K.C. (with him Schokman), for respondents.

Cur. adv. vult.

March 1, 1923. DE SAMPAYO J.-

The appellants are the Hollandia Anglo-Dutch Milk and Food Company of Vlaardingen, Holland, who are manufacturers of condensed milk, and the respondents are the Nestlé and Anglo-Swiss Condensed Milk Company, who also are manufacturers of condensed milk. Both parties use certain trade marks in respect of their goods, which are sold in tins, with the marks printed on a label. The respondents' mark is the figure of a maid with a pail on the head and another in the hand, and their condensed milk is thus known as the "Milkmaid Brand." The respondents' mark was registered under the provisions of the Trade Marks Ordinance, 1888, in June, 1893. The appellants' mark consists of a female figure, carrying a bunch of flowers in one hand and a sword in the other, enclosed in an oval with five medals above the figure, and words of guarantee in thick letters across it, and the word "Hollandia" displayed beneath. The appellants in June, 1920, applied to the Registrar for the registration of their mark, and were opposed by the respondents, and the case thus stood for the determination of the Court. The present proceedings were accordingly taken by the appellants under section 11 (1) of the Ordinance, and they applied for an order that notwithstanding the respondents' opposition the registration of the appellants' mark be proceeded with by the Registrar. The District Judge after inquiry dismissed the application, and hence this appeal.

The provision of the Ordinance relating to the matter in issue between the parties is that contained in section 15 (2) which enacts that "the Registrar shall not register with respect to the same goods or description of goods a trade mark having such resemblance to a trade mark already on the register with respect to such goods or description of goods as to be calculated to deceive." The question then is whether the appellants' mark has such resemblance to the respondents' mark as to be calculated to deceive. There are important differences, as the District Judge notes, between the two marks, and on the face of them they are distinctive marks, notwithstanding the appearance of a female figure in both. But the District Judge considers that, the leading characteristic of the respondents' mark being a female figure, the use of a female figure by the appellants,