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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
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
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).
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
1 (1880) L. R. 13 Ch. D 454 and
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
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.
Hollandia and AngloSwiss Condensed Milk Co. v. The Nestlé and Anglo-Swiss Condensed
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,