Stuart & Company v Scottish Val de Travers Paving Company Ltd
| Jurisdiction | Scotland |
| Judgment Date | 16 October 1885 |
| Date | 16 October 1885 |
| Docket Number | No. 1. |
| Court | Court of Session |
Lord Justice-Clerk, Lord Young, Lord Craighill, Lord Rutherfurd Clerk.
Trade-mark—Patents, Designs, and Trade-Marks Act, 1883 (46 and 47 Vict. c. 57)—Registration of descriptive name—Granolithic.—
In 1880 Stuart, a manufacturer of artificial stone, registered a device bearing the words ‘Stuart's Granolithic,’ as a trade-mark for artificial pavement made by him out of cement and crushed granite. This material, compounded in various proportions, had been long known to the trade, and was not protected by patent, but the name had now for the first time been invented by Stuart. In 1884 he registered the word ‘granolithic’as his trade-mark for the pavement under the Patents, Designs, and Trade-Marks Act of 1883, which for the first time allowed a word to be registered as a trade-mark.* In a petition for interdict to prevent certain persons from using the word ‘granolithic’ in connection with the manufacture and sale of artificial stone pavements, or otherwise infringing his trade-mark, he complained that these persons had offered to supply pavements under that name, and had issued circulars and price lists in which that name was used to describe the pavements offered for sale. Defenders assoilzied, the Lord Justice-Clerk holding there had been no infringement in respect that the name was a descriptive name, and had not been shewn to have been used by the defenders for any other reason than that it was a descriptive name, Lords Young and Craighill holding that the name was not such as could be registered under the Act, in respect it was not a distinctive word, and had been shewn by the evidence in the case to have been in common use between 1880 and 1884, and Lords Young and Rutherfurd Clark holding that, assuming the word to be a protected trade-mark, the use complained of was not an infringement.
Stuart&Company, cement and artificial stone manufacturers, Edinburgh, presented a petition in the Sheriff Court at Glasgow against the Scottish Val de Travers Company, Glasgow, praying the Court ‘to
interdict the defenders from using the word “granolithic,” or any colourable imitation thereof, in connection with the manufacture and sale of artificial stone pavements, or otherwise infringing the pursuers' registered trade-marks, consisting of (1) the word “Stuart's” in combination with the fancy word “Granolithic” on the centre of a shield supported by a lion rampant, as represented on page 155 of Number 190 of the Official Trade-Marks Journal, dated 31st March 1880; and (2) the fancy word “Granolithic” alone, as shewn on page 605 of Number 328 of the official Trade-Marks Journal, dated 9th July 1884, by making or selling or using labels, wrappers, or invoices, or any other document with the said trade-mark thereon, or colourable imitation thereof, in connection with the manufacture or sale of the goods or class of goods included under class 17 of the first schedule, framed in virtue of section 7 of the Trade-Marks Registration Act, 1875, and more particularly with reference to the manufacture and sale of artificial stone pavements.’
The pursuers stated,—‘6. The pursuers have recently learned that the defenders have been offering to supply artificial stone pavements under the name of “granolithic,” and have issued circulars and price lists in which the word “granolithic” is used to describe a particular class of artificial stone pavement.’
No complaint was made of the defenders stamping their goods with the word ‘granolithic.’ As matter of fact they had never done so.
The pursuers pleaded;—(1) The pursuers, as owners of the said respective trade-marks, are entitled to protection against infringement thereof. (2) The pursuers, having coined the said fancy word ‘granolithic’ for the purpose of identifying their manufacture of artificial stone pavement, and so used it, are entitled at common law to prevent the use of the same for a like purpose by others. (3) The actings of the defenders complained of constitute an infringement of the pursuers' rights in the said respective trade-marks, and the pursuers are entitled to interdict as craved.
The defenders stated;—‘(3) For many years prior to 1880 the word “granolithic” was used by manufacturers to describe a composition of a somewhat similar nature to the artificial stone referred to. The word “granolithic” is a mere colourable imitation of the word “granoline.” (4) The word “granolithic” is a descriptive word, which accurately describes the nature of the artificial stone referred to, and is not a valid trade-mark within the meaning of the “Patents, Designs, and Trade-Marks Act, 1883,” and was registered or is continued on the Register of Trade-Marks through error. (5) Between the date of the pursuers' first application to register on 2d February 1880 and their second registration in 1884 the word “granolithic” was in common use by the public to describe the artificial stone referred to, and has no special application to the pursuers' manufacture. Accordingly, prior to said registration the defenders issued to their customers and to the public the circular and price list mentioned in answer 6. Said circular merely intimates that “the laying of granolithic or granite-faced concrete in the monolithic form for foot-pavements, … &c., receives the special attention of the company,” and then goes on to describe the composition and mode of laying the granolithic or granite-faced concrete pavement. This is the sole use which the defenders have made of the name “granolithic.”’
These statements were denied by the pursuers.
The defenders pleaded;—(1) The pursuers having no exclusive right to use the name ‘granolithic’ to describe the stone manufactured by them, interdict ought to be refused. (2) The defenders having committed no infringement of the pursuers' rights, are entitled to absolvitor. (3) The word ‘granolithic’ does not come within the definition of a trade-mark under the ‘Patents, Designs, and Trades-Marks Act, 1883.’ (5) The word ‘granolithic’ being a descriptive word in common use to describe a certain kind of artificial stone by whomsoever manufactured, and having no distinctive application to the pursuers' manufacture, interdict should be refused.
A proof was led, in which the following facts were proved:—
Mr Peter Stuart was the sole partner of the firm of Stuart & Company. That company had been in business under the management of himself, his father, and grandfather, in Peterhead and Edinburgh, for 120 years. Their business was building and working in concrete. In 1874 Mr Stuart specially directed his attention to the manufacture of granite concrete, chiefly for paving purposes.
The use of concrete for paving purposes is as old as the days of the Romans. Of late, however, it has taken a fresh start under various forms and names. The usual basis was a mixture of cement with sand or gravel. But by degrees it was found that crushed granite was a fully better material than either of the latter. It formed an element of the composition of Ransom's Silicious stone, of Buckwell's ‘Granitic Breccia stone,’ and of the defenders' ‘Victoria patent silicated granitic stone,’ where it was mixed with Portland cement; which manufacture was commenced by the defenders, the Scottish Val de Travers Company, about 1879.
Till 1880 Mr Stuart manufactured his pavements of crushed granite, mixed with Portland cement, under the name of granite concrete. Desiring to get a special name for his own manufacture, he consulted various distinguished Greek scholars; one of them suggested ‘granilithic.’ By the mistake of a clerk this was written ‘granolithic.’ This was at once adopted by the pursuers, who got it registered as a trade-mark in November 1880, with the device of a lion rampant supporting a shield, on which the words ‘Stuart's Granolithic’ were printed. The device was used in obedience to the Act then in force, by which the registration of a mere name was not sufficient. The pursuers had applied for this registration some months previously, and largely advertised their manufacture under the name ‘granolithic,’not only in Scotland, but all over the world.
The name ‘granolithic’was a great success, and architects, builders, and measurers began to use it when they meant granite concrete. In issuing their schedules they inserted the word ‘granolithic’ when they wanted offers for granite concrete. … They issued such schedules to various manufacturers, including pursuers and defenders. This state of things lasted for two or three years, and the name granolithic thus came into general use as a name for the thing produced, viz., a granite concrete, irrespective of the maker's name. No doubt, in places where no other granite concrete was known than pursuers', the name granolithic was only known in connection with pursuers' manufacture; but where other manufacturers made the same thing, architects and others asked them to offer for it under the name ‘granolithic,’ and the offers of many other offerers besides pursuers' were accepted in such circumstances. In some quarters there seems to have existed a mistaken idea that the thing itself was patented, and therefore that the pursuers were the only people who had a right to make it. Mr Purchas, for instance, of Worcester, says in his evidence in this action that if he had got defenders' circular (see infra) he would have supposed that they had got a license from pursuers to lay granolithic pavement. But this was not so in Glasgow, where a number of manufacturers have competed with pursuers for contracts for which granolithic was wanted.*
A new Act, the Patents, Designs, and Trade-Marks Act, 1883 (46 and 47 Vict. c. 57), having passed authorising the registration of names as trade-marks, the...
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