CHAPTER II.

WHAT WILL, AND WHAT WILL NOT CONSTITUTE A TRADE MARK.

IT has been stated in pp. 1 and 2 that there does not appear anything in the definitions in sect. 10 of the Act of 1875 materially inconsistent with the leading decisions given before the passing of that Act, as to what constitutes a trade mark. It must be observed also that clause 10 of the Act is directory, not negative. It says what may be a trade mark: but it does not say what shall not be a trade mark. What it does say, in the concluding paragraph, in reference to trade marks used before the Act, is "That any special or distinctive word or words, or combination of figures or letters, used as a trade mark, before the passing of the Act, may be registered as such;" viz., as a trade mark.

As, therefore, it is not only possible, but probable, that some one or more of the decided cases may include as a trade mark something that is not specifically noticed in sect. 10 of the Act, it becomes necessary to review the leading cases decided before the passing of the Act, in order to see how far a trade mark not exactly defined in the Act of 1875, may be supported.

In the case of McAndrew v. Bassett (a) (on an appeal from V.C. Wood), it was held that the name of a country, or part of a country, may constitute a trade mark. The circumstances of the case were very simple. The plaintiffs had applied the word Anatolia to certain preparations of liquorice, as a name, on the sale of their goods, so that they were known in the market under the name of Anatolia. The defendants

(a) 4 De G. J. & S. 380.

upon receiving an order for the particular kind of liquorice, caused a stamp to be prepared, imitating the plaintiff's stamp; that is, with the word Anatolia upon it, and sold their goods under that mark. The defendants contended that the trade mark had not been used long enough by the plaintiffs, for them to acquire a right in the nature of a trade mark; that is, not long enough to acquire general notoriety and public reputation (b). But the L.C. said, that an element of the right to property in a trade mark, "may be represented as being the fact of the article being in the market as a vendible article, with that stamp or trade mark, at the time when the defendants imitated it " (c).

It was also argued for the defendants, that the word Anatolia was a general expression, and that there could be no property in it; but the L.C., admitting that property in a word cannot exist for all purposes, said, "property in the word, as applied by way of stamp upon a particular vendible article, exists the moment the article goes into the market so stamped, and there obtains acceptance and reputation, and gets currency as an indication of acceptance and superior quality, or of some other circumstances which render the article so stamped, acceptable to the public" (d).

In Wotherspoon v. Currie (e) a similar point was decided, as to the name of a place, being a trade mark. In that case the bill had been filed by Wotherspoon against Currie, to restrain him from using the word Glenfield in connection with starch made by him; and Malins, V.C., had granted an injunction.

The order was discharged on appeal by James, L.J., (b) See p. 384 of the judgment.

(c) Ibid.

The word Anatolia, it appears, was the geographical description of a tract of country, wherein liquorice root is largely grown (see p. 386 of the judgment), and does not seem to fall within any of the positive definitions of sect. 10 of the Act of 1875. But it is presumed that, following the decision in McAndrew v. Bassett, and in other cases, the name of a country, or tract of land, or of a town, may be protected as a trade mark, under the last clause of sect. 10 of the Act.

(e) L. R. 5 House of Lords, 508.

and on the subsequent hearing of the cause, the learned Vice-Chancellor, who had granted the injunction, following (as of course) the decision of the Appeal Court, dismissed the bill.

Against this decree Wotherspoon appealed to the House of Lords, and their Lordships reversed the decree of the Court below.

The facts were as follows: Wotherspoon had purchased the business of a starchmaker, from a firm of Fulton & Co., who manufactured and sold at Glenfield, near Paisley, a species of starch, to which they gave the name of "Glenfield Double Refined Powder Starch," and by that name it was known to the public. In the agreement for the purchase, Fulton & Co. gave the sole right to Wotherspoon, of using the words "Glenfield Double Refined Powder Starch," and agreed to retire wholly from the business. The firm of Wotherspoon "then carried on the business for some years at Glenfield, and afterwards went to Maxwell Town, near Paisley; their works were called "The Glenfield Starch Works," and the article sold by them, was commonly known by the name of " Glenfield Starch."

The respondent Currie afterwards began making starch at Glenfield, and sold the starch so made, as manufactured by Currie & Co., but with the words "Glenfield Starch" printed on the sale labels. The labels of the appellants had been and were headed by the words "Glenfield Patent Double Refined Powder Starch" in three lines; the word Glenfield being in good sized type; the words "patent double refined powder in smaller type, and the word "starch" being in larger type than the word "Glenfield" (f). The respondent's labels were headed "The Royal Palace Double Refined Patent Powder Starch," and at the bottom of the labels, was the name of the firm " Currie & Co.," in very modest sized type; and below, in very large type, was the word Glenfield.

(f) See p. 510 of the Report.

The whole, or at least material, question was, whether the respondent Currie had a right to use the word Glenfield; and the House of Lords held that he had no such right, their Lordships coming to the conclusion, upon the evidence, that the word Glenfield had become a trade mark in the hands of the appellant. On the question, What will amount to infringement? Lord Chelmsford said (g): "For the purpose of establishing a case of infringement, it is not necessary to shew that there has been the use of a mark in all respects corresponding with that which another person has acquired an exclusive right to use, if the resemblance is such, as not only to shew an intention to deceive, but also such as is likely to make unwary purchasers suppose, that they are purchasing the article sold by the party to whom the right to use the trade mark belongs." And Lord Westbury, in reference to the use of the word Glenfield, said (referring to the evidence) that the word was wholly taken out of its ordinary meaning, and in connection with starch, had acquired that peculiar secondary signification, to which he had referred; the word Glenfield therefore as a denomination of starch, had become the property of the appellants; it was their right and title in connection with the starch."

In Woollams v. Ratcliff (h), the plaintiff (a silk throwster), was in the habit of making up his bundles of silk in a particular form; and he used to place under the centre string of each bundle, a label of a particular form, describing the quality of the silk, and containing the following particular mark, "St. A." which it was alleged, represented "St. Albans," where the plaintiff's manufactory was; and this mark was known as the plaintiff's trade mark. The defendant made up his bundles in exact imitation of the plaintiff's bundles, but did not add the mark "St. A." Wood, V.C., though observing that the conduct of the defendant was indiscreet, refused an injunction. In (g) See p. 519 of the Report. (h) 1 Hem. & M. 259.

And

this case there was no evidence to shew that anyone had been deceived, and had taken the defendant's silk in mistake for that of the plaintiff's.

A mere title of honour given to a tradesman for his trade merit is not a trade mark; thus, where A., a pickle merchant, had obtained a prize medal from the jurors of "the International Exhibition" of 1862, "for pickles and preserved fruit," and he sought to obtain an injunction to restrain the defendant, who had not obtained a prize, from using labels bearing the words "prize medal, 1862," the Court refused an injunction, on the ground, it would seem, that the words "prize medal" could not give to the person so rewarded, any property in the nature of a trade mark (i).

The words "prize medal" may not now, however, under an Act of Parliament, be used, when it is a falsehood to use that title (j).

In Kinahan v. Bolton (k), there was not, and could not be, any doubt. Hudson Kinahan and G. Kinahan, wine and spirit merchants, carried on their business under the firm of "Kinahan & Sons," and they presented a petition to the Court of Chancery against the defendant, for an injunction, and an account of whisky sold by the defendant, as LL Whisky.

The petitioners had for many years sold their whisky under the name of "LL Whisky," and on the casks, bottles, and jars used by them for such sales, were printed a ducal coronet and the letters and word "LL Whisky." The whisky so sold acquired a high reputation, and was known to the trade and public as "LL Whisky." The imitation by the respondent was not discovered till 1863, and the petitioners then gave notice to the respondent to desist from using the letters "LL."

The respondent sold the whisky in bottles, jars, and

(i) Batty v. Hill, 1 Hem. & M. 264.

(j) Exhibition Medals Act, 1863. See 1 Hem. & M. 271. (k) 15 Irish Ch. Rep. 75.