Bile Bean Manufacturing Company v Davidson (1906)
| Jurisdiction | Scotland |
| Judgment Date | 20 July 1906 |
| Docket Number | No. 174. |
| Date | 20 July 1906 |
| Court | Court of Session |
Lord Ardwall, Lord Justice-Clerk, Lord Kyllachy, Lord Stormonth-Darling, Lord Low.
Trade NameMisrepresentationEx turpi causa non oritur actioFalse statements made in advertising.
The Bile Bean Manufacturing Company, by means of extensive advertising, established a large business for the sale of certain pills, of an oviform shape, called Bile Beans for Biliousness. Many of the advertisements contained a story to the effect that Bile Beans were compounded of ingredients which included a vegetable substance, of wonderful curative properties, which was found in Australia and had long been known to the natives of that continent, but had only recently been discovered after thorough investigation by Charles Forde, an eminent scientist. The labels on the boxes described the Bile Beans as Charles Forde's, but did not contain any specific reference to Forde's discovery of the Australian vegetable substance.
The Bile Bean Manufacturing Company raised an action against Davidson, another trader, to have the respondent interdicted from selling as Bile Beans pills which were not of the complainers' manufacture. It was proved that there was no such person as Charles Forde, and that the complainers' Bile Beans did not contain any ingredient which was peculiar to Australia.
Held (aff. judgment of Lord Ardwall) that the repute of Bile Beanshad been established by fraudulent misrepresentations on the part of the complainers, and therefore that they were not entitled to interdict.
Trade NameInfringementDescriptive Name or Fancy NameBile Beans.
In 1899 the Bile Bean Manufacturing Company of Leeds began to sell pills of an oviform shape in the United Kingdom under the name of Bile Beans for Biliousness. In America, since 1887, the word bean had been applied to pills of an oviform shape, and appeared in American drug catalogues, but until the Bile Bean Manufacturing Company began to make and sell their pills the word bean had never been used in the United Kingdom to denote pills.
In an action by the Bile Bean Manufacturing Company to have Davidson, another trader, interdicted from selling as Bile Bean pills not of the complainers' manufacture, opinions (per the Lord Justice-Clerk, Lord Kyllachy, Lord Stormonth-Darling, and Lord Ardwall, Ordinary) that the complainers were not entitled to the exclusive use of the name Bile Bean, in respect that it was a descriptive name, and not a fancy name of the complainers' invention.
ProcessRecordInterdictTrade NameFraud by complainers not pleaded on record but disclosed at proof.
In an action for interdict against the use of the name Bile Beans which the complainers alleged to be their trade name, it was disclosed at the proof by the evidence of the complainers themselves that the repute of Bile Beans had been established by a fraud on the public, but there was no averment to that effect by the respondent on record. The respondent maintained that he was entitled to plead that the complainers' fraud disentitled them to interdict, although he had no plea to that effect on record, in respect that, the fraud having been divulged for the first time by the evidence of the complainers themselves, the respondent had not been in a position to plead fraud on record; and further that it was pars judicis to take notice of any fraud on the part of an applicant for the protection of a trade name.
The Lord Ordinary (Ardwall), in respect of the fraud of the complainers, refused to grant interdict, and on a reclaiming note the Court adhered.
In February 1905 the Bile Bean Manufacturing Company, Greek Street, Leeds, and Charles Edward Fulford and Ernest Albert Gilbert, the sole partners of that Company, presented a note of suspension and interdict against George Graham Davidson, wholesale and retail chemist, 1 Polwarth Place, Edinburgh, praying the Court to interdict the respondent from in any way advertising, exposing, or offering for sale or selling or in any way causing to be advertised or exposed or offered for sale or sold as Bile Beans, pills or other articles not made or supplied by the complainers, and from stamping or otherwise marking for sale, exposing, selling, or supplying as in implement of orders for Bile Beans, pills or other articles made by the respondent, or pills or other articles not made by the complainers, and from representing in any way that pills manufactured by the respondent or pills or other articles not made by the complainers are Bile Beans of the complainers' manufacture.
The note having been passed, a record was made up.
The complainers made the following averments, and the respondent the following answers thereto:
(Stat. 2) The complainers are the manufacturers of a remedy for the cure of biliousness and other ailments known as Bile Beans, the manufacture of which they commenced in England in 1899. Since their said business was so commenced they have advertised their pills as Bile Beans very extensively in England, Scotland, and Ireland. No other article had ever been advertised, sold, or known there under the same name. These pills have for several years been known in the trade and to the public as Bile Beans, and a purchaser asking for Bile Beans expects to receive pills of the complainers' manufacture designated Bile Beans, and the complainers' sales of Bile Beans have attained very large dimensions. The name Bile Beans has been exclusively used by the complainers to describe the pills manufactured by them, and the same means the complainers' goods only and no others. The name Bile Beans has never been used by anyone in Great Britain, except certain persons against whom injunctions have been obtained, other than complainers to describe any article. The complainers supply both wholesale and retail houses. The former distribute the Bile Beans amongst retail chemists and drug stores. The wholesale houses advertise the complainers' Bile Beans as Bile Beans in the price-lists which they circulate among their customers. With reference to the answer hereto, it is explained that the name of Charles Forde appeared on certain of the boxes and other articles of the complainers, but the Bile Beans were never known by the name, but only as Bile Beans.Quoad ultra the averments in answer are denied.
(Ans. 2) Admitted that the complainers sell Bile Beans and that they advertise largely. Explained that they advertise under their Company name and the name of a Charles Forde, and that said pills were also sold under Mr Forde's name. Quoad ultra denied. Explained that the complainers' Bile Beans are imported from Detroit, America, and are a common form of pill made from well-known ingredients, which are in common use for the manufacture of beans or pills for biliousness. There are many such pills in the market which are known under a variety of names, and it is in general a matter of indifference to the members of the public who desire pills or beans for biliousness whether they are made by complainers or not. Explained that the words bile and beans are common English words which the complainers cannot appropriate in connection with their business. They correctly describe a variety of pills or beans in the market which profess to form a cure for bile. The word bean as descriptive of a pill or pellet has been used for many years in connection with the sale of confectionery and other commodities.
(Stat. 3) The complainers have from time to time supplied the respondent with quantities of their Bile Beans, and they have also supplied to the respondent, and he has shewn and distributed, the complainers' advertisements including their showcards, and enlarged facsimile boxes so as to lead the public to believe that he is supplying the complainers' genuine Bile Beans. In the circulars and advertisements issued by the respondent as to the Bile Beans manufactured by him, and on the boxes containing the said Bile Beans the words Bile Beans are printed in very large type, so as at once to attract attention, while the respondent's name is printed in very small type so as to escape the notice of purchasers.
(Ans. 3) Admitted that the complainers have supplied the respondent with quantities of their Bile Beans, and explained that the respondent, during the few months he has been manufacturing Bile Beans, has sold considerably more of the complainers' Bile Beans, which he sells under their name, than he has done of his own Bile Beans, which are sold as Davidson's, are advertised as such, and are clearly distinguished from the complainers.' Quoad ultra denied.
(Stat. 4) The complainers have learned, and now aver, that the respondent has recently been advertising and selling an article of similar appearance not manufactured and supplied by them under the name of Bile Beans. The following are instances: The complainers then averred eleven specific instances of such sales between 1st October 1904 and 15th February 1905. In each case Bile Beans were asked forsometimes as Bile Beans for Biliousness, sometimes with reference to the complainers' advertisements. The explanations in answer are denied.
(Ans. 4) Admitted that the respondent sells small pills for biliousness which are accurately described by the name Bile Beans. These beans are all invariably sold under the respondent's own name as Davidson's, and he is careful to distinguish his Bile Beans from those of the complainers. It is not in the respondent's interest to sell his beans as those of the complainers, and he does not do so. The respondent accordingly advises the public that they are of his manufacture, and advertises to this effect. Believed to be true that most of the persons mentioned obtained a box of the respondent's pills, by purchase thereof at his shops. None of these persons thought the pills or beans which they so purchased were the Bile Beans of the complainers, and they were not sold as such. The persons mentioned were making the purchases on the...
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