June Perfect, Ltd v Saville Perfumery, Ltd, F. W. Woolworth and Company, Ltd v Saville Perfumery, Ltd (Consolidated Appeals)

JurisdictionUK Non-devolved
CourtHouse of Lords
JudgeViscount Maugham,Lord Russell of Killowen,Lord Romer
Judgment Date02 April 1941
Judgment citation (vLex)[1941] UKHL J0402-1
Date02 April 1941
June Perfect, Limited
and
Saville Perfumery, Limited
F. W. Woolworth and Company, Limited
and
Saville Perfumery, Limited (Consolidated Appeals).

[1941] UKHL J0402-1

Viscount Maugham

Lord Russell of Killowen

Lord Romer

House of Lords

After hearing Counsel, as well on Monday the 11th, as on Thursday the 14th, Monday the 18th, Tuesday the 19th, Friday the 22d, Monday the 25th, Tuesday the 26th and Thursday the 28th, days of November last, upon the Petition and Appeal of June Perfect, Limited, of 55 Oak Grove, Cricklewood, N.W.2, in the County of London, praying, That the matter of the Order set forth in the Schedule thereto, namely, an Order of His Majesty's Court of Appeal, of the 19th of December 1939, might be reviewed before His Majesty the King, in His Court of Parliament, and that the said Order might be reversed, varied, or altered, or that the Petitioners might have such other relief in the premises as to His Majesty the King, in His Court of Parliament, might seem meet; as also upon the Petition and Appeal of F. W. Woolworth and Company, Limited, whose registered office is at New Bond Street House, 1/5 New Bond Street, London, W.1, praying, That the matter of the Order set forth in the Schedule thereto, namely, the said Order of His Majesty's Court of Appeal, of the 19th of December 1939, might be reviewed before His Majesty the King, in His Court of Parliament, and that the said Order might be reversed, varied, or altered, or that the Petitioners might have such other relief in the premises as to His Majesty the King, in His Court of Parliament, might seem meet (which said Appeals were, by an Order of this House, of the 14th day of February 1940, ordered to be consolidated); as also upon the printed Case of Saville Perfumery, Limited, lodged in answer to the said Appeals; and due consideration had this day of what was offered on either side in these Appeals: It is Ordered and Adjudged, by the Lords Spiritual and Temporal, in the Court of Parliament of His Majesty the King assembled, That the said Order of His Majesty's Court of Appeal, of the 19th day of December 1939, complained of in the said Appeals, be, and the same is hereby, Varied, by omitting therefrom the Third Injunction and the Second Inquiry, and also by omitting from the Order for delivery up of all labels containers showcards and display material for the shampoo powders lipsticks and setting lotions the reference to setting lotions, and That, subject to the said Variation, the said Order of His Majesty's Court of Appeal be, and the same is hereby Affirmed: And it is further Ordered, That the Appellants do pay or cause to be paid to the said Respondents, five-sixths of the costs incurred by them in respect of the said Appeals to this House, the amount thereof to be certified by the Clerk of the Parliaments.

Viscount Maugham

My Lords,

1

This appeal relates to an action for alleged infringement of trade mark and passing off and incidental relief, cases which are not quite so common as they used to be some years ago, a fortunate circumstance for they are generally very long and troublesome and involve great expense to the litigants. The evidence is usually conflicting and the inferences to be drawn from the facts finally proved are generally of some difficulty. In the present case Mr. Justice Bennett after a long and careful hearing dismissed the action; but the Court of Appeal (Sir Wilfrid Greene, M.R., Clauson and Goddard, L.JJ.) took the contrary view and granted injunctions and other relief. There were three injunctions granted by the Court of Appeal, the first restraining the appellants from infringing the respondents' trade mark, the second restraining the appellants from passing off or enabling others to pass off shampoo powders, lipsticks or setting lotions not the goods of the respondents as and for the respondents' goods and from selling or offering for sale shampoo powders, lipsticks, or setting lotions under or in connection with the word "June" without clearly distinguishing the same from articles of the respondents. The third was an injunction to restrain the appellants from carrying on business in shampoo powders, lipsticks or setting lotions under their present name or any name comprising the word "June" and calculated to induce the belief that the appellants June Perfect, Ltd.'s said business is connected in any way with the business of the appellants.

2

There are thus three specified articles as regards which the respondents allege that their rights have been or are in danger of being infringed:—the shampoo powders, the lipsticks, and the setting lotions. Those are goods on which the appellants are said to have placed marks which are infringements of the respondents' marks and their use is said to result in a passing off. It is a case in which the dates are important. The writ was issued on the 9th April, 1937, and the parties are agreed that it is the rights at that time which have to be considered.

3

The respondents were incorporated on November 5th, 1926 for the purpose of acquiring and carrying on a business in perfumery and toilet preparations previously carried on under the trading name of City Perfumery Company and by an Assignment dated December 31st, 1926 the goodwill of the business of the City Perfumery Company was assigned to the Respondents.

4

In the month of July, 1925, the City Perfumery Company began to use the name "June," in the form in which it was ultimately registered, as a trade mark for perfume and they shortly thereafter extended the use of the mark to a whole series of toilet preparations including, inter alia, shampoo powders. On the acquisition by the respondents of the business and goodwill of the City Perfumery Company the respondents continued to use the trade mark in connection with the sale of perfume and toilet preparations generally, and in 1935 they began to use the trade mark also in respect of lipsticks. The respondents did not, however, at any time market any setting lotion under the said trade mark; but it is not disputed that setting lotion is a preparation which would be included in a typical range of toilet preparations marketed under one and the same trade mark. It is important to note that the respondents have at no time traded directly with the public. Their preparations have always been marketed through the medium of wholesale and retail traders, and mostly with chemists.

5

The trade mark was registered by the respondents on March 16th, 1928, in Class 48, in respect of "perfumery (including toilet articles, preparations for the teeth and hair, and perfumed soap)." It consists of the word "June" printed in a special manner with a bar as a kind of background behind the letters and a garland of flowers depending as an arc from either end of the bar. There was a disclaimer of the exclusive right to the flower device which we were informed is common to the trade.

6

The trade mark was extensively used and advertised by the respondents and their predecessor. A vast number of articles have been sold under it and a large sum has been expended in advertising the trade mark.

7

The appellants, June Perfect, Ltd., were incorporated in January, 1936, only a little more than a year before the issue of the writ. The whole of its shares are held by a Mr. Coakley and his wife Mrs. Coakley; but it is important to observe that the company did not acquire any goodwill from Mrs. Coakley. She had, in fact, started in business as early...

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2 books & journal articles
  • TRADEMARK INFRINGEMENT UNDER THE 1994 UK TRADEMARKS ACT IN THE SINGAPORE CONTEXT
    • Singapore
    • Singapore Academy of Law Journal No. 1998, December 1998
    • December 1, 1998
    ...section 2 as a resemblance “so near as to be likely to deceive or cause confusion”. 39 Per Greene MR in Saville Perfumery v June Perfect(1941) 58 RPC 147 at 162. 40 See W Cornish, supra n 1, at 16—24 — 16—25. 41 Section 46(2), Trademarks Act, Singapore. 42 See W Cornish, supra n 1, at 17—92......
  • The ‘Reasonable Man’, his Nineteenth‐century ‘Siblings’, and their Legacy
    • United Kingdom
    • Journal of Law and Society No. 44-3, September 2017
    • September 1, 2017
    ...smoother integration of theformer into the latter (in the area of trademark law specifically).431146 Saville Perfumery v. June Perfect (1941) 58 RPC 147, 176. It was also in the middleof the century that some (overseas) parliamentarians made specific reference to theconsumer-protection role......

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