Reuter (R J.) Company Ltd v Mulhens
| Jurisdiction | England & Wales |
| Judge | THE MASTER OF THE ROLLS,LORD JUSTICE BIRKETT,LORD JUSTICE ROMER |
| Judgment Date | 16 October 1953 |
| Judgment citation (vLex) | [1953] EWCA Civ J1016-4 |
| Date | 16 October 1953 |
| Court | Court of Appeal |
[1953] EWCA Civ J1016-4
In The Supreme Court of Judicature
Court of Appeal
The Master of the Rolls
(Sir Raymond Evershed)
Lord Justice Birkett
Lord Justice Romer
MR JAMES MOULD, Q. C., MR. R.G. LLOYD, and MR DAVID S. PAUL (Instructed by Messrs, Faithfull Owen & Fraser), appeared on behalf of the Appellant (Defendant).
MR GEOFFREY W. TOOKEY Q. C., and MR GUY ALDOUS, (instructed by Messrs. Slaughter & May), appeared on behalf of the Respondents (Plaintiffs).
MR J. P. ASHWORTH, (instructed by the Solicitor to the Board of Trade), held a watching brief on behalf of the Board of Trade.
This appeal and cross-appeal have raised a number of questions, some of them under the trading with the enemy legislation of 1939, and some under the Trade Marks Act of 1938, relating to a perfume which has been well-known in this country for very many years as "4711" Eau de Cologne.
The plaintiffs in the action, R.J. Reuter Co. Ltd. are an English company who are now the registered proprietors of a number of trade marks relating to "4711" Eau de Cologne and claim to be rightly registered as such proprietors and to be entitled to all the goodwill belonging to the marks and to the business of making and marketing "4711" Eau de Cologne in England.
The defendant, who is an infant appearing by his mother as next friend, is the present owner of the business in Cologne, Germany, which is, and has for several generations been, associated with the manufacture in Germany and the sale in Germany and elsewhere (but not now in England) of "4711" Eau de Cologne: and he now challenges the plaintiff company's claims, already stated, to proprietorship of the English trade marks and to the business in England of making and selling "4711" Eau de Cologne.
The action and counterclaim were tried by Mr Justice Danckwerts, and his full reserved judgment is recorded in the report of the case in 70 Reports of Patent Cases at page 102 and following.
Before I attempt any formulation of the many and complex issues that are raised (one of which appears to involve a consideration for the first time by the Courts of the change made in English trade mark law and in the nature and significance of a trade mark by the provision in section 22 of the Act of 1938 that trade marks are assignable with or without goodwill) it is necessary that I should make some recital of the history of the respective businesses of the plaintiff company and of the defendant, though, for reasons which will appear, it is unnecessary for me to go into all the relevant matters of fact in the same detail as they are set forth in Mr Justice Danckwarts' judgment.
The total number of the English trade marks relating to "4711" Eau de Cologne and other associated products is over fifty, but the present action was founded upon eleven only of them. For simplicity, it will suffice to describe one mark only, registered in Class 48 in respect of perfumery, being the mark well-known to users of "4711" Eau de Cologne. It consists of a blue and gold label upon the bottles, having prominently in the middle the figure "4711". enclosed in what has been referred to as a "scroll" of simple character but having a small bell depicted upon its right side. The so-called "scroll" appears in fact to be an elaboration of the letters "No", meaning "number". For the rest, the badge has at the top the words "Blue and gold", "Eau de Cologne" and "Double", and it contains representations of a number of medals symbolising awards which the product has gained at European exhibitions. There is at the bottom of the badge a space adapted for a statement of the business origin of the product. In the case of the German product there is in this space (inter alia) the name and address "Glockengasse No. 4711 Koln am Rhein" — the street name, accounting for the origin of the bell upon the scroll. In the case of the English product the space is occupied by the plaintiff company's name and address.
The German business to which the defendant hassucceeded and which, until the events later stated, was exclusively associated both in Germany and elsewhere with the name or. description of "4711" Eau de Cologne, is an old one, having been established in the second half of the eighteenth century. The use of the number "4711" arose out of the occupation of Cologne by the French armies about the year 1792. It then, occurred to Napolean I or his representatives to number all the houses in Cologne consecutively and without regard to streets. No. 4711 accordingly fell to the premises of the defendant's predecessor, who turned the circumstance to account by adopting the number as the distinguishing characteristic of his business and its products, calling the premises "Das haue der zahl". The large number of exhibits which we have seen, including printed cards for despatch by post to the German business in Cologne, establish clearly that No. 4711 Koln am Rhein had become, without more, well recognised as a sufficient and indeed the actual address. The number "4711" in an appropriate context had become as distinctive of a particular place and of the business carried on thereat as, for example, "No. 10" in a wholly different context may be said to signify the official residence of the British prima Minister.
Before the First World War the products of the German business (to which I will follow Mr Justice Danckwerts by sometimes referring to as "Mulhens") had achieved a great reputation inside Germany and elsewhere in Europe, but they were not sold in England directly or by agents. They were bought and imported into England by the firm of R.J. Reuter, who were given by Mulhens the solo right so to do.
In 1914 the undertaking of the firm of R.J. Reuter was transferred to a limited company, the plaintiffs in this action. The name of the plaintiff company underwent more than one change before assuming its present form. These changes are not, in my judgment, material, but, since they were referred to by Mr. Mould, I will state the fact that the earlier inclusion in the name of the number "4711" was later omitted at the request of the defendant's then predecessor.
We have not been told (and I therefore assume it to be immaterial) what exactly were the arrangements (if any) made during the First World War in regard to the trade marks then registered in Mulhens' name or in regard to the carrying on or preservation of the business of selling "4711" Eau de Cologne in England. I take it that under the trade mark law, as it then was and as it remained till the Act of 1938, it would not have been possible to dispose of the marks, for example by a sale to an English buyer, separately and dissociated from the German business from which the goods had originated. In any case, after that war had ended, the previous business arrangements appear to have been resumed, "4711" Eau do Cologne and associated products being bought and imported into England from Germany by the plaintiff company and sold by them in this country.
The first change in these previously existing arrangements occurred in the year 1930 upon the death of Mr. R.J. Reuter himself. 95 Per cent of the shares in the plaintiff company were at the date of Mr. Router's death held by him or members of his family. The whole of these shares were acquired by a Dutch company which was itself, albeit at one remove, wholly controlled by Mulhens. It thus came about that upon the outbreak of the Second World War the plaintiff company became enemy-controlled within the meaning of the trading with the enemy legislation.
The next material change In the old business productsand relationship occurred in or about the year 1931, and was the result of the fiscal problems then effecting most of the nations of the world. As a consequence, it became desirable that some part at least of the Mulhens' products should be manufactured here. To enable this to be done, and by arrangement between the plaintiff company and Mulhens, a manufacturing plant was established near the plaintiff company's place of business in Slough. Although most of the required personnel appear to have been provided by the plaintiff company, the plant itself was, and was always treated as, the property of Mulhens, The amount of actual manufacturing done was in fact strictly limited. So far as the ordinary "4711" Eau de Cologne perfume was concerned — which has bean called in this case "the classic Eau do Cologne" — this was always wholly made and packaged in Germany and imported as theretofore by the plaintiff company for sale in this country; and the classic Eau do Cologne continued to constitute the greater part of the total of the "4711" products. But in the case of the subsidiary "4711" products, a substantial proportion of them was there-forth manufactured in England in the sense that the final process of distillation or dilution of the essential essences was carried out at Slough with spirit acquired for the purpose in England. It has, however, been made clear, and it is not disputed, that these essential essences were made up in Germany, or outside England, under direct German supervision, and imported here, and that the formulae and methods for the making of these essences were, as they still are, closely guarded secrets.
The method of production of these essences may be properly called a secret process, and the composition of the essences is known only at any one time to three persons — at the present time, to the aunt and grandmother of the defendant and one of the two general managers of the defendants business, a Herr Schutte, who personally undertakes or supervises the blending, etc., of the essences under conditions of complete secrecy.
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