The Leather Cloth Company Ltd, - Appellants; The American Leather Cloth Company Ltd, - Respondents
| Jurisdiction | England & Wales |
| Judgment Date | 04 April 1865 |
| Date | 04 April 1865 |
| Court | House of Lords |
English Reports Citation: 11 E.R. 1435
House of Lords
Mews' Dig. xiv. 106, 107, 122, 133, 141. S.C. 35 L.J. Ch. 53; 12 L.T. 742; 13 W.R. 873; 11 Jur. N.S. 513; 6 N.R. 209; and, below, 33 L.J. Ch. 199; 9 L.T. 558; 12 W.R. 289; 10 Jur. N.S. 81; 2 N.R. 481; 3 N.R. 264; 4 De G. J. and S. 137. On point (i.) as to principle on which "passing off" is actionable (11 H.L.C. 538), applied in Reddaway v. Banham (1896), A.C. 199; (ii.) as to misuse of term "Patent" (11 H.L.C. 543), see Ford v. Foster, 1872, L.R. 7 Ch. 625; and Hubbuck and Son v. Brown Sons and Co., 1900, 17 R.P.C. 153.
Trade Marks Infringement.
[523] The LEATHER CLOTH COMPANY (Limited),-Appellants; The AMEKICAN LEATHER CLOTH COMPANY (Limited),-Respondents [March 31, April 3, 4, 1865J. [Mews' Dig. xiv. 106, 107, 122, 133, 141. S.C. 35 L.J. Ch. 53; 12 L.T. 742; 13 W.R. 873; 11 Jur. N.S. 513; 6 N.R. 209; and, below, 33 L.J. Ch. 199; 9 L.T. 558; 12 W.R. 289; 10 Jur. N.S. 81; 2 N.R. 481; 3 N.R. 264; 4 De G. J. and S. 137. On point (i.) as to principle on which "passing off" is actionable (11 H.L.C. 538), applied in Reddaway v. Banham (1896), A.C. 199; (ii.) as to misuse of term 1435 XI H.L.C., 824 LEATHER CLOTH CO. V. AMERICAN LEATHER CLOTH CO. [1865] "Patent" (11 H.L.C. 543), see Ford v. Foster, 1872, L.R. 7 Ch. 625; and Hubbuck and Son v. Brown Sons and Co., 1900, 17 R.P.C. 153.] Trade Marks Infringement. A company purchased all the property, utensils, goodwill of business, and trade marks, etc., of a manufacturer : this purchase would authorise the company, really carrying on business at the same place, to continue the use of the manufacturer's name and marks, so as to be .protected thertiu against infringement of the same. There may be a property in a trade mark which, on the sale of the right to manufacture the goods which it designates, may also be sold and transferred. Semble, a paper descriptive of a trade does not constitute a " trade mark." Where an advertisement, or trade mark, states that which is not true, it cannot be made the subject of protection by the Court of Chancery. Persons of the name of Crockett manufactured leather cloth, and put on it a stamp, describing it as manufactured by them at " New Jersey, U.S., and West Ham, Essex," and as being patented and being tanned. The Appellants bought their manufactured articles, their materials for manufacture, goodwill, and premises at West Ham, and their trade marks. Semble, that on such a purchase the continued use by the purchaser of Crockett's original bill was not a fraud on their part, and if the use of it had been infringed, it might have been protected. But where in a stamp used by the Defendants, the form of the printed words, the words themselves, and the pictured symbol introduced among them, so much differed from that of the Plaintiffs', that any person with reasonable care and observation must see the difference, and could not be misled into taking the one for the other: Held, that there had been no infringement. This was an appeal against a decree of Lord Chancellor Westbury, which had reversed a previous decree of Vice Chancellor Wood. The Plaintiffs (and Appellants) who constitute " The Leather Cloth Company (Limited)," complained in their [524] bill that the Defendants, who constituted " The American Leather Cloth Company (Limited)," had illegally used their trade mark. The facts on which the complaint proceeded were stated to be these. The manufacture of leather cloth or cotton wove fabric made to imitate leather, was an American invention. The manufacture was carried on at Newark, in the state of New Jersey, U.S., by J. R. and C. P. Crockett. Their agents in London were Messrs. Dodge and Brewster, merchants, of Coleman-street, whose partnership was dissolved in 1854, and another was constituted of Messrs. Dodge, Bacon, and Giandonati. In the same year, Bacon became a member of the firm of J. R. and C. P. Crockett. In October 1855, the members of that firm, together with other persons, established in America a joint stock company, which was incorporated in the State of New Jersey, under the name of " The Crockett International Leather Cloth Company." Dodge, Bacon, and Company, acted in England as the agents of this incorporated company: the company obtained in England a patent for its manufacture, and used a stamp on its cloth, in the form of the first of the patterns subjoined. The company manufactured much of its cloth at premises at West Ham in Essex, and continued to do so until 1857, when it was resolved to sell those premises. C. P. Crockett received a power of attorney for this purpose, and he sold to the Appellants " the lease, buildings, machinery, tools, and fixtures belonging to the company at West Ham, situate at West Ham; together with the trade marks and goodwill of the business carried on there, and also all goods manufactured and unmanufactured, and in the process of being manufactured, and all materials used for manufacturing, and other things at [525] West Ham; and all patents issued in England or France, owned by the company, or to or in which the company was entitled or had any interest." The Appellants' company, called " The Leather Cloth Company (Limited)," was formed to effectuate this purchase. The Appellants 1436 LEATHER CLOTH CO. V. AMERICAN LEATHER CLOTH CO. [1865] XI H.L.C., 626 claimed the exclusive right to use the stamp, or trade mark, which had before been used by the Crocketts. Another company (the Respondents' company) was in August 1861 constituted in this country, called " The American Leather Cloth Company (Limited)," and incorporated under the Joint Stock Companies Act of 1856; it carried on business in the Kent-road, at premises formerly belonging to the private partnership of Dodge and Giandonati. This new company issued its bills with a stamp of the second pattern, represented [below]. It was to prevent the use of this form that the bill was filed. The case came on before Vice Chancellor Wood, who thought that the stamp or form used by the Defendants was a colourable imitation of that used by the Plaintiffs, and so granted the injunction. On appeal to Lord Chancellor Westbury, his Lordship, on the grounds that the bill (or trade mark) of the Plaintiffs did not truly represent the appellant's mark . 2 PATENTED ^ J.R.&CR CROCKETT * MANUFACTURERS V 4-12 Yds* * respondent's mark. LEATHER CLOTH e MANUFACTURED BYTHem/tMAMCf/? LATE WITH J.R.&C.P.CROCKETT&C? 12 Yd. OLD KENT ROAD,LONDON. facts, but untruly pretended that the Appellants' cloth was manufactured by Crocketts, was patented and was tanned, declared it not entitled to protection in equity, reversed his Honor's decision, and dismissed the bill, but without costs. This appeal was then brought. Sir H. Cairns and Mr. Dickinson for the-Appellants.-Though there may not be on the part of those who infringe a trade mark any positive intention to deceive, if the result is deceptive, the Court will interfere to restrain the use of that which occasions the deception. [526] That is the principle laid down in Millington v. Fox (3 Myl. and Cr. 338). A colourable imitation of a trade mark is, in equity, a fraud which it is the especial duty of the Court to prevent. An injunction may be maintained against the seller of goods who has imitated the trade mark of another trader, even though those who bought them were aware that they were not of the Plaintiff's manufacture, Edelsten v. Edelsten (1 De G. Jo. and Smi. 185). It may be admitted that, in this case, there are certain differences between the two trade marks, but there is a general resemblance between them, and the leading words in both are the same; any but a very cautious purchaser would be liable to be deceived. The Appellants have a complete right to their trade mark, for they are the assignees 1437 XI H.L.C., 527 LEATHER CLOTH CO. V. AMERICAN LEATHER CLOTH CO. [1865] of all the property and all the rights of the original patentees; no one has a right to imitate these marks. In answer to the claim for the interference of the Court, the cases of Pidding v. How (8 Sim. 477), and Perry v. Truefitt (6 Beav. 66), will be cited. But each of these cases is inapplicable to the present. In Pidding v. How, the injunction was refused because the Plaintiff had himself made false representations as to the article he sold, and was therefore held not entitled to ask for protection in respect of that article; and the same doctrine was laid down in Perry v. Truefitt, but it was there distinctly declared that the ground on which a court of equity protects trade marks is, that it will riot permit a party to sell his own goods as the goods of another. That declaration ought to be applied in this case, where there has not been any false representation whatever to prevent its application. On that point, Perry v. Truefitt proceeded on the principle laid down in Millington v. Fox, [527] and acted on at law in Sykes v. Sykes (3 Barn, and Ores. 541), where a manufacturer had adopted a particular mark for his goods, to denote that they were manufactured by him, and the imitation of that mark by the Defendant, who manufactured and sold goods of a similar kind, was held to be a good ground of action. [The Lord Chancellor: In this case, to what does the word " manufactured " in this mark apply?] To " J. K. and C .P. Crockett." [Lord Kingsdown : The injunction, then, is to be a declaration that the Defendants have no right in any way to use the words " Crockett and Company," in reference to the manufacture of leather cloth?] It is to restrain them from selling, as the cloth of those manufacturers, cloth which the Plaintiffs alone possess...
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