Cellular Clothing Company v Maxton & Murray
| Jurisdiction | Scotland |
| Judgment Date | 12 July 1898 |
| Docket Number | No. 177. |
| Date | 12 July 1898 |
| Court | Court of Session |
Ld. Kyllachy, Lord M'Laren, Lord Kinnear, Lord President.
Trade-NameName descriptive of class of goodsProof of exclusive rightInterdict.
Application by a wholesale dealer in cloth of a particular texture, which he sold under the name cellular, for interdict against another trader using the term cellular to denote goods not supplied by the pursuer, refused on the ground (1) that the term cellular was used in the trade in two senses(a) in its primary sense as denoting fabrics of a particular texture, of which there were several kinds in the market, including the pursuer's, and (b) as a trade-name for the cloth sold by the pursuer; and (2) that the defender had not used the term with the intention or result of inducing the belief that he was selling the goods of the pursuer.
Reddaway v. Banham, L. R. [1896], A. C. 199, commented on.
In July 1897 the Cellular Clothing Company, London, brought an action against Maxton & Murray, wholesale dealers in collars and shirts in Edinburgh, to have the defenders interdicted from using the name, word, or term cellular by itself or in combination or in conjunction with any word or words describing or distinguishing, or in connection with cloth or clothing so as to denote or indicate cloth or clothing not being cloth or clothing made or supplied by the complainers, and from selling or offering for sale, or causing to be sold or offered for sale, cloth or clothing not of the pursuers' manufacture, made or supplied by the pursuers, under the name, word, or term cellular, and from using trade-labels, window-tickets, wrappers, invoices, circulars, notices, or advertisements of any kind with the said name, word, or term cellular by itself or in conjunction with any other word or words thereon in connection with the manufacture or sale of cloth or clothing, bandages, sheets, curtains, shirts, or underwear not made or supplied by the pursuers, or upon or attached to any such goods or class of goods not made or supplied by the pursuers, and from publishing or issuing, or causing to be published or issued, circulars, notices, or advertisements of any kind containing or using the word cellular in such way as to denote goods not of the pursuers' manufacture, and from using said word in any way calculated to lead the public to infer or believe that the defenders are entitled to sell goods under the name cellular, which are not made or supplied by the pursuers, or that the goods which they so sell are made or supplied by the pursuers, and also from otherwise in any way infringing the pursuers' right to the name, word, or term cellular, by using it in any way so as to designate any goods not made or supplied by the pursuers.
The pursuers alleged that they had acquired an exclusive right to use the name cellular in connection with cloth or clothing, that the defenders disputed this right, and were passing off clothing not supplied by the pursuers so as to induce a belief on the part of purchasers that they were getting the pursuers' cloth.
The defenders denied the pursuers' exclusive right to the name cellular, which they said was accurately descriptive of a certain class of cloth. They admitted that they had sent a pattern-book to their customers containing a sample of this class of cloth, not of pursuers' make, described as cellular.
The pursuers pleaded;(1) Cellular cloth or clothing being known and understood by the trade and the public to be cloth and clothing made by the pursuers, and the defenders having offered for sale and sold as cellular cloth and clothing cloth or clothing which were not made or sold by the pursuers, the pursuers are entitled to decree of interdict as craved, with expenses.
The defenders pleaded;(3) The pursuers not having the exclusive use of the word cellular, the defenders ought to be assoilzied. (4) The defenders having in describing their said patterns only made use of English words in common use, they are entitled to absolvitor.
The following facts appeared from the proof:The pursuers, who were incorporated in 1888, were wholesale dealers in cloth of a particular open texture, manufactured for them by a firm in Lancashire, which they advertised and sold under the name cellular. The fabric, which was alleged to possess qualities of considerable hygienic value both for outer wear and underclothing, had been invented by Lewis Haslam in the end of the year 1886. Haslam patented his invention, and in 1886 he assigned his rights in the fabric to the pursuers. The term cellular was not registered as a trade-mark.
In support of their claim to an exclusive right to use the name, the pursuers adduced evidence shewing (1) that Haslam, whose rights they had acquired, was the first person who had used the term in connection with cloth, though cloth similar in texture to Haslam's had long been in the market; (2) that the pursuers had advertised their cloth largely as cellular; and (3) that they had induced a number of traders, under the threat of legal proceedings, to sign undertakings not to use the name in connection with cloth not supplied by the pursuers, and that other traders against whom they had taken legal proceedings had submitted to have injunctions pronounced against them, prohibiting them from using the name to designate other cloth than the pursuers'. The pursuers also produced (4) a considerable number of witnesses of standing in the trade to say that they understood the term cellular as denoting only goods of the pursuers' make.
On the other hand, it was shewn that the term cellular was appropriate to describe in a popular sense a particular class of cloth of open texture, of which there were various kinds in the market, including that supplied by the pursuers, and the defenders adduced witnesses of large experience in the trade, who said that they had frequently used the term cellular, and heard it used, to describe cloth of this class years before they heard of the pursuers' company, and that they in no way identified the name with the pursuers' goods. No documentary evidence of this alleged use of the term was produced.
In regard to the allegation that the defenders were passing off goods not supplied by the pursuers under the name cellular in a manner to deceive purchasers, the pursuers led evidence to shew that the cloth sold by the defenders as cellular bore a close general resemblance to the pursuers' cloth, and that, although they were distinguishable by an expert, the difference was not likely to be detected by a member of the public. On the other hand, while Mr Maxton, one of the defenders, admitted that his firm had sold to their customers, as cellular, cloth which was manufactured by a firm in Glasgow, he said that he had done so in ignorance of the existence of the pursuers' company, and there was no contrary evidence on this point. The evidence further shewed that the defenders were wholesale dealers who sold only to shopkeepers, and the defenders' customers who had purchased cellular cloth from them having all been examined as witnesses, the result of their evidence was to shew that in no case had they expected to be supplied with goods of the pursuers' make.
The details of the evidence sufficiently appear in the opinion of Lord M'Laren.
The Lord Ordinary (Kyllachy) assoilzied the defenders.*
The pursuers reclaimed, and argued;The question was whether what the defenders were doing enabled them to pass off their goods as the goods of the pursuers, and on the evidence the question admitted only of an answer in the affirmative, for the term cellular was proved to have acquired a secondary meaning in the market as denoting the pursuers' cloth. The term, though indicative of the character of the cloth, was not scientifically an accurate description, and had been first applied in connection with cloth fabrics by Haslam to the cloth which was now supplied by the pursuers, and although there had been other cloths of somewhat similar texture on the market long before Haslam invented the cloth now sold by the pursuers, they had always been known in the trade by other names descriptive of their qualities. In fact, until applied by Haslam, cellular had never been discovered to be a natural and appropriate term to describe this class of cloth. These facts raised a strong presumption that the pursuers were right in asserting that the term was known in the market as a trade-name denoting their goods, and their claim was further supported by the facts (1) that they had advertised the term widely
in connection with their goods; (2) that their exclusive right in it had been admitted by a large number of rival traders; and (3) that a number of witnesses of experience and standing in the trade were found to say that they knew the term only as denoting the pursuers' goods. The Lord Ordinary was wrong in desiderating evidence of members of the public to prove that the public were likely to be misled by the defenders using the term in connection with their goods. The proper evidence for the purpose was the evidence of members of the trade, which was the evidence adduced in Reddaway'sELR case.1 He was also wrong in desiderating more evidence of knowledge of the secondary meaning of cellular in the Scotch market, for Scotland and England commercially were not separate countries. Besides, there was sufficient proof that the term was known among Scotch traders to denote the pursuers' goods. The defenders' evidence did not meet the pursuers' case. As regarded the use of the term in connection with cloth not supplied by the pursuers, all that they had proved was that the term was sometimes so used in conversation. No documents, such as orders or invoices, were produced to shew that it had been so
used in trade dealings. It was also not a sufficient answer to say that the defenders' customers had not been misled. It was not necessary to prove fraud or intent to deceive, or...
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