William Grant & Sons Ltd v Glen Catrine Bonded Warehouse Ltd (No.3)
| Jurisdiction | Scotland |
| Judgment Date | 16 May 2001 |
| Date | 16 May 2001 |
| Docket Number | No 72 |
| Court | Court of Session (Inner House - First Division) |
FIRST DIVISION
Lord Cameron of Lochbroom
Intellectual propertyPassing offPersonal barAcquiescenceWaiverWhether failure to assert rights against passing off in past bars remedy against passing off in future
InterdictWhether pursuers' right to interdict was barred by delay in raising proceedingsWhether territorial effect of interdict was too wideWhether by prohibiting exports to other member states of the European Community it infringed European lawTreaty of Amsterdam, art 291
The pursuers carried on a long-established business producing high quality whisky and marketing it world-wide. The name Grant's was associated with their products and business. From about 1960 they also began producing and marketing gin and vodka. The defenders originated as a small bottling business, which expanded into the wholesale blending market in the 1960s and 1970s. In 1972 they acquired the business of John Grant (Wine and Food) Limited, and thereafter used the name Grant on their products. In the late 1980s they expanded into the retail market and into sales overseas. The pursuers became aware of the defenders' products in 1984. They waited to see how matters developed. In 1989 they became concerned about the defenders' use of the name Grant. In 1992 the pursuers raised an action for interdict of the defenders from passing off their alcoholic drinks as the pursuers', and in particular from labelling, packaging, marketing, exporting, wholesaling or retailing of alcoholic drinks under the name Grant; and for interdict of the defenders from passing off their business as the pursuers'. There was no conclusion for damages. After proof, the Lord Ordinary (Cameron of Lochbroom) found inter alia that the defenders had passed off their gin and vodka as the pursuers'. He granted interdict in respect of the defenders' products, but refused it in respect of their business. The defenders reclaimed. They did not challenge the Lord Ordinary's finding that they had passed off their products as the pursuers'. They contended that the pursuers were barred by acquiescence from insisting in the action, because of their delay in raising proceedings; and that the interdict was too wide. The pursuers cross-appealed against the refusal of interdict in respect of the defenders' business.
Held (1) that it was essential to the doctrine of personal bar that the defender should have been induced to act and change his position by his reasonable belief that the pursuer was consenting, and in the present case the defenders accepted that they had used the name Grant because they believed they were entitled to do so, not in reliance on a belief induced by the pursuers (pp 923G, 938F, 943F); (2) that since the only remedies sought by the pursuers related to the future, to hold that they were barred by acquiescence from insisting in the action would be to hold that they had granted an irrevocable consent or licence to passing off by the defenders (p 924H); (3) that while the court had a discretion to refuse final decree of interdict where the pursuer was entitled to it, there was no adequate reason to do so in the present case, and although the pursuers' loss was difficult to quantify it did exist, whereas it was irrelevant to consider any loss to the defenders which might accrue from having to stop committing a legal
wrong (pp 929A931G, 939E, 948H949C); (4) that the interdict granted by the Lord Ordinary was not too wide in its territorial effect, since interdict was granted on the basis that when goods were exported which were intended to deceive abroad, the wrong was committed in the United Kingdom (pp 931H933B, 939FI, 949CG); (5) that the interdict did not infringe European law, because it was not designed to provide an advantage for the pursuers products and sales at the expense of the products or trade of other member states (pp 936AB, 940AF, 949G); and (6) that where the Lord Ordinary had found that the defenders had taken advantage of the pursuers' investment in their name to further their own business, it would have been appropriate to grant interdict prohibiting the defenders from passing off their business as the pursuers' (p 936FI); and defenders' reclaiming motion refused, and pursuers' cross-appeal allowedWilliam Grant & Sons Limited and Others raised an action for interdict of Glen Catrine Bonded Warehouse Limited and others from passing off their products and business as the pursuers. After sundry procedure, a proof was heard before the Lord Ordinary (Cameron of Lochbroom).
At advising, on 18 August 1999, the Lord Ordinary granted interdict of the defenders from passing off their products as the pursuers' but refused it in respect of their business. The defenders reclaimed, and the pursuers cross-appealed in respect of the refusal of interdict.
Cases referred to:
Armia v Daejan DevelopmentsSC 1979 SC (HL) 56
Bank of Scotland v StewartUNK (1891) 18 R 958
Bargaddie Coal Co v WarkUNK (1859) 3 Macq 467
Ben Nevis Distillery (Fort William) Ltd v North British Aluminium Co LtdSC 1948 SC 592
British Linen Bank v CowanUNKSC (1906) 8 F 704
Buccleuch (Duke of) v Magistrates of EdinburghUNK (1865) 3 M 528
Bulmer (HP) Ltd and Showerings Ltd v J Bollinger SAUNK[1978] RPC 79
Cairncross v LorimerUNK (1860) 3 Macq 827
Cairncross v MeekUNK (1858) 20 D 995
Caledonia North Sea Ltd v London Bridge Engineering Ltd 2000 SLT 1123
Cantors Properties (Scotland) Ltd v Swears and Wells LtdSC 1978 SC 310
Clippens Oil Co Ltd v Edinburgh District Water TrsUNK(1897) 25 R 370
Couper v BurnUNK (1859) 22 D 120
Cowan v Lord KinnairdUNK (1865) 4 M 236
Craigdallie v AikmanENRENR (1813) 1 Dow 1 and (1820) 2 Bligh 529
Cumming v QuartzagSC 1980 SC 276
Daimler Chrysler AG v AlaviUNK (Ch D unreported) 26 January 2001
Deutsche Renault AG v Audi AG Case C-317/91 [1993] ECR 16227
Electrolux Ltd v Electrix LtdUNK (1953) 70 RPC 23
Ewing v Buttercup Margarine Co LtdELR [1917] 2 Ch 1
Farmers Build Ltd v Carier Bulk Materials Handling LtdUNK[1999] RPC 461
Gatty v Maclaine 1921 SC (HL) 1
Grahame v Magistrates of Kirkcaldy (1882) 9 R (HL) 91
Grant (William) & Sons v Glen Catrine Bonded Warehouse Ltd 1995 SLT 936
Groenveld (PB) BV v Produktschap voor Vee en VleesCase 251/78 [1979] ECR 3409
Grundt v Great Boulder Pty Gold Mines LtdUNK (1937) 59 CLR 641
Habib Bank Ltd v Habib Bank AG ZurichWLR [1981] 1 WLR 1265
Houldsworth v Magistrates of WishawUNK (1887) 14 R 920
Industrie Diensten Groep (BV) v JA Beele Handelmaatschappij BV Case 77/81 [1982] ECR 707
Johnston v Orr-EwingELR (1882) 7 App Cas 219
Kelso (School Board of the Parish of) v HunterUNK (1874) 2 R 228
Keurkoop BV v Nancy Kean Gifts Case 144/81 [1982] ECR 2853
Kintore (Earl of) v Pirie & Sons LtdUNK (1903) 5 F 818
MacKenzie v Catton's TrusteesUNK (1877) 5 R 313
My Kinda Town Ltd v Soll and AnotherUNK [1983] RPC 407
Oebel Case 155/80 [1981] ECR 1993
Pickard v Sears (1837) 6 A & E 469
Price's Patent Candle Co v Ogston and TennantUNK [1909] 26 RPC 797
Reckitt & Colman Products Ltd v Borden Inc (No 3)WLR[1990] 1 WLR 491
Robson v Chalmers Property Investment Co Ltd 1965 SLT 381
Singer v LoogELR (1880) 18 Ch D 395
Taylor Fashions Ltd v Liverpool Trustees Co LtdELR (Note) [1982] QB 133
Walker (John) & Sons Ltd v Douglas McGibbon & Co 1972 SLT 128
Walker (John) & Sons Ltd v Henry Ost & Co LtdWLR[1970] 1 WLR 917
West v Jones (1851) 20 LJ Ch 362
Wilmott v BarberELR (1880) 15 Ch D 96
Textbooks, etc, referred to:
Bell, Principles
Burn-Murdoch, Interdict
Gloag, Contract (2nd ed)
Halsbury, Laws of England (4th ed reissue) vol 16
Rankine, Personal Bar
Wadlow, The Law of Passing Off (2nd ed)
The cause called before the First Division, comprising the Lord President, Lord Nimmo Smith and Lord Clarke, for a hearing on the summar roll on 9, 11, 16, 18, 19, 2326, 30, 31 January and 1, 2, 69 February 2001.
At advising, on 16 May 2001
LORD PRESIDENT (Rodger)[1] In this case there are three pursuers and respondents. The first pursuers are William Grant & Sons Limited, a company incorporated in 1991. They are the parent company of the second and third pursuers, William Grant & Sons Distillers Limited and William Grant & Sons International Limited. At a procedure roll hearing at a relatively early stage in the proceedings, the Lord Ordinary (Lord Abernethy) repelled the defenders' second plea-in-law relating to the second and third pursuers' title and interest to pursue the action. See William Grant & Sons v Glen Catrine Bonded Warehouse Ltd at pp 945E946C. No point is now taken about the title and interest of these pursuers. Before 1991 the business was carried on by a company, William Grant & Sons Limited, which had been incorporated in 1903. In 1991 the first pursuers acquired inter alia the whole industrial property, goodwill and claims to which the original company then had right. At the proof held before Lord Cameron of Lochbroom, the defenders advanced an argument about the supposed extinction of the goodwill of the original company in the course of the reorganisation of the group of companies after the incorporation of the first pursuers. The Lord Ordinary rejected that argument and counsel for the defenders did not reopen it before this court. It follows that nothing now hinges on the exact twists and turns in the saga of the development of the pursuers' business structure. For the sake of simplicity, I shall therefore generally refer to the pursuers, irrespective of the exact entity which may have been involved at any particular time.
[2] The defenders and reclaimers are three companies: first, Glen Catrine Bonded Warehouse Limited, secondly, William Morton Limited and, thirdly, A. Bulloch & Company (International) Limited. Again, for most purposes it will not be necessary to differentiate among them and I shall simply refer to the defenders, except where one particular company was involved in an aspect of the business.
[3] As the Lord Ordinary's long and...
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