Bayer v Baird
| Jurisdiction | Scotland |
| Judgment Date | 12 July 1898 |
| Date | 12 July 1898 |
| Docket Number | No. 182. |
| Court | Court of Session |
Lord Low, Lord President, Lord Adam, Lord M'Laren, Lord Kinnear.
Trade-NameInitial letters of nameRival trader with same initialsMisleading publicInterdict.
A corset maker whose corsets were marked with the letters C. B.the initials of his nameraised an action of interdict against a rival trader who sold corsets made by Connell Brothers & Company which were stamped C. B. & Co. A proof shewed that C. B. corsets had come to be known in the trade as corsets made by the pursuer and nobody else, and that the defenders had, by printing the letters C. B. in large type and the letters & Co. in very small type, so marked their corsets as to be likely to mislead purchasers into taking them for the pursuer's corsets. The Court granted interdict against the defenders selling corsets not made by the pursuer marked in such a manner as to be calculated to mislead purchasers into the belief that these corsets were C. B. corsets made by the pursuer.
Trade-MarkDisclaimerRight of owner of trade-mark to protect the matter disclaimed.
Held that the registration of a trade-mark does not preclude the holder of it from preventing rival traders from misusing another name by which his goods are known, even although in applying for the trade-mark he disclaimed the exclusive use of that other name.
Rosenthal v. Reynolds, 1892, 9 Pat. Cas. 189, distinguished.
This was an action at the instance of Charles Bayer, trading as Charles Bayer & Company, corset manufacturers, London, against J. & L. Baird, corset manufacturers, Glasgow, concluding that the defenders should be interdicted from marking for sale, exposing, selling, or advertising or offering for sale as C. B. corsets, corsets not made or supplied by the pursuer, and from marking for sale, exposing, selling, or supplying as in implement of orders for C. B. corsets, corsets made by the defenders, or corsets not made by the pursuer. There was also a conclusion for damages.
The pursuer averred that he had twenty years ago introduced into the market corsets manufactured by him which he had described as C. B. corsets, and that these corsets were known in the market as C. B. corsets. He further averred that he had found that the defenders were marking and selling articles as and under the description of C. B. corsets which were not manufactured by the pursuer, that they refused to discontinue doing so, and that in consequence the pursuer had sustained loss and damage.
The defenders admitted having sold corsets manufactured by Connell Brothers & Company, of Dublin, which were stamped C. B. & Co. They denied that the corsets of Connell Brothers & Company were liable to be mistaken for the C. B. corsets of the pursuer, and they also denied that they ever offered for sale corsets of Connell Brothers' make on the representation that they were the pursuer's.
The pursuer pleaded;(1) C. B. corsets being known and understood by the public to be corsets made by the pursuer, and the defenders having offered for sale and sold as C. B. corsets corsets which were not manufactured or sold by the pursuer, the pursuer is entitled to decree of interdict as craved, with expenses.
The defenders pleaded;(1) No title to sue. (5) The defenders not having sold the corsets of any other maker on the representation that they were the pursuer's, and not having done or proposed to do anything in infringement of the pursuer's legal rights, the action is unnecessary and should be dismissed.
After a proof, the import of which sufficiently appears from the note given below, * and the Lord Ordinary's opinion, the Lord Ordinary
(Low), on 22d October, pronounced this interlocutor:Finds that the defenders have sold and offered for sale corsets made by Connell Brothers & Company, marked C. B. & Co. in such a manner as to be calculated to mislead purchasers into the belief that the said corsets are C. B. corsets made by the pursuer: Therefore interdicts, prohibits, and discharges the defenders from selling or offering for sale corsets not made by the pursuer, marked in such a manner as to be calculated to mislead purchasers into the belief that the said corsets are C. B. corsets made by the pursuer: Quoad ultra dismisses the conclusions of the summons, and decerns, &c.*
The defenders reclaimed, and argued;The pursuer had registered a trade-mark, and secured the benefit which such registration gave him. In doing so he had made his election as to what should protect his goods. He had, at the same time, expressly disclaimed the right to an exclusive use of the letters C. B. A disclaimer was equivalent to a notice to the public that they were free to use what was not claimed, and it was extravagant for the pursuer now to say that he had acquired as good a trade-mark by use and custom as he had secured by registration. The disclaimer invalidated his present claim,1 and he was not entitled to an interdict. In point of fact the letters C. B. had not acquired the secondary meaning which the pursuer claimed for them, and had not come to denoteas applied to corsetsarticles exclusively manufactured by the pursuer. They were not susceptible of exclusive appropriationthey were not a fancy name or fancy word, nor were they mere symbols. They were the actual initials of the makers' firm name, and it was proved that the universal practice of corset-makers was to mark the corsets with the initials of the maker's name. They were accordingly in the same category
gory as a name. But a trader could not be interdicted from using his own name, merely because another trader in the same articles had the same name.1 Besides, the mark used by the defenders was C. B. & Co., and there was no evidence that anyone had in fact been misled into purchasing C. B. & Co. corsets under the impression that they were C. B. corsets. The two kinds of corsets were readily distinguishable, and the only features in which they resembled each other were features common to all corsets. The pursuer had entirely failed to prove any such active passing off by the defenders of C. B. & Co. corsets for the pursuer's corsets as would warrant an interdict, which should therefore be refused. In any view, the interdict granted by the Lord Ordinary was altogether inappropriate, for it was impossible for the defenders to understand from it what the measure of the restraint imposed was intended to be. If interdict were granted it should be in the form used in the case of ReddawayELR.2
Argued for the respondent;The disclaimer of the letters C. B. as part of the most recent trade-mark registered by the pursuer did not disentitle him to protect himself against the misuse of these letters by a rival trader.3 The case of Rosenthal4 was very different in its circumstancesso far as these appearedfrom the present, but there...
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