Supreme Court of Canada
Hurlbut Co. v. Hurlburt Shoe Co., [1925] S.C.R. 141
Date: 1925-02-03
The Hurlbut Company (Plaintiff) Appellant;
and
The Hurlburt Shoe Company (Defendant) Respondent.
1924: December 15; 1925: February 3.
Present: Anglin C.J.C. and Idington, Duff, Mignault, Newcombe and Rinfret JJ.
ON APPEAL FROM THE EXCHEQUER COURT OF CANADA
Trade-mark—Secondary meaning—Evidence—Use of owner's name—Person of same name in same business—Passing of—Intent.
A manufacturer registered a trade-mark consisting of his own name and was stamped upon the goods he sold.
Held, Idington J. dissenting, that in order to prove that the trade-mark had acquired a secondary meaning denoting that the goods on which it was stamped were those of its proprietor who has an exclusive right to the use of that particular name it must be shown that knowledge of such meaning was universal throughout the area in which the business was carried on. S. Chivers & Son v. S. Chivers & Co. (17 Cut. P.C. 420) fol.
Though a tradesman cannot be prevented from honestly using his name in connection with the sale of his goods he has no right to use it with the intent of passing off his goods as those of another person of the same name or, without such intent, of so using it and wilfully persisting in such use that it will have that effect.
Held, affirming the judgment of the Exchequer Court ([1923] Ex. C.R. 136) Idington J. dissenting, that in this case neither such intent nor such effect was proved.
APPEAL from the judgment of the Exchequer Court of Canada dismissing the appellant's application to have the respondent's trade-mark expunged from the registry.
The Hurlbut Co. had registered a trade-mark consisting of the word "Hurlbut" with the family crest and another of the name "Hurlbut" alone. These marks were stamped on shoes made and sold by the company. The Hurlburt
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Co. also registered a trade-mark, namely, the word "Hurlburt" with a device of bow and arrow. This company sold a special kind of shoe with its trade-mark stamped on it and the Hurlbut Co. brought action to have it expunged from the registry and for an injunction. The Exchequer Court refused the application but ordered a variation of respondent's mark by striking out the word "Hurlburt" and substituting "Hurlburt Shoe Company."
Fetherstonhaugh K.C. and Fox for the appellant. An essential part of our trade-mark is infringed which is an infringement of the whole. See Partlo v. Todd; Seixo v. Provezende, at page 196.
As to the amount of similarity necessary to constitute infringement see Davis v. Reed; Leather Cloth Co. v. American Leather Cloth Co.; Cash Ltd. v. Cash; Brooks & Co. v. Norfolk Cycle Co.; Landreth v. Landreth;, and Slater v. Ryan, were also referred to.
Arthur A. Macdonald for the respondent, referred to Teofani v. Teofani, and Guimaraens v. Fonseca.
Fetherstonhaugh K.C. and Fox for the appellant.
Arthur A. Macdonald for the respondent.
The judgment of the majority of the court (The Chief Justice and Duff, Mignault, Newcombe and Rinfret JJ.) was delivered by
Duff J.—The critical question in this appeal is whether the respondents are, by the use of the name "Hurlburt" in connection with the goods they sell, representing that these goods are the goods of the appellants. The law is quite clear that no man can acquire a monopoly of his own surname in such a way as to prevent another person of the same name honestly using that name in connection with his goods or his business, but that is subject to the important qualification that no man is entitled by the use of his own name or in any other way to pass off his goods as the goods of another, and if he is using his own name with that purpose, or even, without the conscious intention of doing so, with the effect of doing so, and if, when he becomes aware of the fact that such is the effect of his
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conduct, he persists in that conduct without taking reasonable care to qualify the representation implied in his conduct in such a way as to avoid deceiving persons who otherwise would be deceived by it, he cannot be said to be using his own name in good faith for his own legitimate business purposes. This general statement of the law is supported by a multitude of authorities, to some of which particular reference must be made later.
The appellant company is an incorporated company; the respondents are a partnership, the partners being Frank H. Hurlburt and his wife.
The appellant company has been manufacturing shoes at Preston, Ont., since 1902, and since that time the name of the principal proprietor, Hurlbut, has been associated with the shoes produced by them, and the appellants' allegation is that the name "Hurlbut" and the phrase "Hurlbut Shoe" have acquired a secondary meaning, which is that they denote a shoe made by them and by them alone. It appears that from 1907 to 1909 there is some reason to believe that the practice was discontinued. From 1909 down to the commencement of the action there is evidence that the name was used in increasing degree as a trade-mark or part of a trade-mark for their product. In 1913 a trademark was registered, consisting of the name Hurlbut with the family crest below, and particularly with regard to one class of goods, cushion sole shoes, it seems reasonably clear that this trade-mark has been stamped upon the inside of the sole almost invariably since it was registered. In 1920 another trade-mark was registered, consisting only of the name HURLBUT in block letters.
The respondents have a shoe shop in Barrie which they acquired from the Carey Shoe Company some six years before the commencement of the action, the respondent F. H. Hurlburt having acted as manager of the Carey Shoe Company for several years prior to that. Before that again he had been engaged either as clerk or manager or proprietor in buying and selling merchandise in general stores in Thornbury and Meaford, in which he says the sale of boots and shoes always constituted a very important part of the business. In 1919, he says, it occurred to him that a certain shoe known as Dr. Wirth's Cushion Sole Shoe, made by Ames, Holden & Co., which he had been selling,
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having become very expensive, it would be desirable to attempt to get a cheaper shoe of the same general description, and he conceived the idea of a shoe which he thought would meet the requirements he had in mind, and he then proceeded to register a trade-mark on behalf of the respondent firm, consisting of his own name with a device of a musket and a bow and arrow beneath it. Having obtained his trade-mark he entered into an arrangement with a manufacturing concern in Galt by which they were to manufacture shoes according to his specification and sell them under his trade-mark, the manufacturer allowing him a specified royalty. The appellants having complained of this and an action having been brought, the action was settled upon terms which included the abandonment of this arrangement, but which need not otherwise concern us, and thereafter Hurlburt had shoes made for him according to his specification by the Weston Manufacturing Co. That company having taken out a patent upon Hurlburt's process with improvements, the respondents sell the shoes made by it according to this specification, stamped with their trademark, and advertise them as Hurlburt's Cushion Sole Shoe.
Before the commencement of the present action the respondents offered to amend their "commercial literature," as they called it, by stating in explicit terms that they had no connection with the Hurlbuts of Preston, and by adding to the mark stamped upon their shoes and containers any short phrase which might reasonably be suggested by the appellants to make it quite clear that their goods were not the appellants' goods. The appellants rejected the respondents' offers, demanding that they should eliminate from their advertisements and from the mark used in connection with their goods all mention of the name Hurlburt. This attitude was persisted in, both at the trial and before this court.
It may be said at once that the evidence adduced by the appellants falls far short of establishing their allegation that their name has acquired a secondary signification in the only relevant sense. It is indisputable and it is, in fact, undisputed, that the appellants have a considerable trade, and that their goods are favourably known to their customers, but the evidence is wholly inadequate to shew that the words "Hurlbut's Shoe" or the name "Hurlbut" has
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passed into common use as denoting the shoes made by the appellants and by them only. What the appellants must prove is shewn by the following passage from the judgment of Farwell J. in S. Chivers & Sons v. S. Chivers & Co., at page 429:
I have heard an argument from Mr. Hughes which seems to me to have, if it were sound, a very far-reaching effect; but I do not accept it. It is not enough, in my opinion, for a man to say that he has been the only manufacturer of his name of a particular article, and that his customers, therefore, necessarily only know that article, and that no one else of that name having ever traded in that article there can be no other name under which that article can be sold except his own, and, therefore, he has a right to the sole use of that particular name. It appears to me that the issue thrown upon the plaintiff in a case of this sort is to prove that the world has come to know that particular article associated with his name as meaning his manufacture., and that only. When I say "the world" I am using another phrase similar to that used by Lord Shand, I do not, of course, mean every human being in the kingdom, but I mean all persons whom it in any way concerns. A man's own customers know his own jelly and do not know other people's because they have never troubled themselves to ascertain whether there were such other persons at all. But in order to give the name "Chivers Jelly" that secondary signification which the plaintiffs desire to attach to it, and not to make it mean a jelly made by a person of the name of Chivers, they must, in my judgment, show first of all that that user has been locally universal, at any rate in the sense that it extends in any locality over the area in which the defendant has traded. If it were necessary for the decision of this case I should hold myself that the universality must be co-extensive, at any rate, with England and Wales. I leave out Scotland because there is a different system of jurisprudence there, and it might not be necessary to shew that it extended to Scotland; but I think you must at least shew that the universality was such that it extended to England and Wales, for this reason: it would be intolerable, to my mind, to allow a man by simply trading in the eastern counties, say, to acquire for himself a monopoly in his own name. The gist of it as decided in Reddaway v. Banham. is that you take out of the dictionary of the English language, for the purpose of a particular trade, a word which bears a primary signification, and you attach to that word in the dictionary a secondary signification. To say that can be done at all is, I agree with Lord Shand, a very great step. But when you have once the finding of a jury, as you have in Reddaway's Case (2), that it had in fact been done with those words, it seems to me the law follows as a matter of course. The real difficulty is the finding of fact. Speaking for myself, I should never find the fact to be that the word had obtained that secondary signification unless it was proved to my satisfaction that the use had been locally universal in the sense I have attached to it—universal in point of space. I think Lord Halsbury also would certainly not have decided Reddaway's Case (2) as he did otherwise than on the facts found, because he expressly guards himself by saying it is a question of fact. If it is found as a fact that the words "camel-hair belting" have ceased to mean belting made of camel's hair, and have come to mean for all persons whom it concerns
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to know it—all persons in the trade and all persons buying camel-hair belting—the belting made by Reddaway, and not belting made of camel-hair, the law follows as a matter of course.
The appellants, to repeat what has already been said, have quite failed to establish the existence of any such usage as that pointed to in these observations in relation to the words in which they claim to have a monopoly.
In great part the evidence adduced by the appellants in support of this allegation is inadmissible as being merely hearsay, and as to the residue it is, for the most part, too vague to be of any real value. There is little or no admissible evidence definitely pointing to an identification of the name "Hurlbut" or the phrase "Hurlbut's Shoe" with the appellants as makers. The absence of such evidence is in itself significant. If there were any substance in the allegation that the alleged signification had attached as a secondary meaning to these words, if the words had gained currency in the sense alleged, there should have been no difficulty whatever in establishing the fact by abundant evidence.
This, however, is only one branch of the appellants' case: Another contention is put forward, and that is that the respondents deliberately laid their plans with the object of capturing the appellants' trade or, at all events, of establishing a trade for themselves, by adopting as a trade-mark something that would convey to the public the impression that their goods were the appellants' goods. It is, perhaps, convenient, before discussing the facts, to state explicitly the law bearing upon the issue arising out of this allegation. The law appears, if one may respectfully say so, to be stated with accuracy in some passages in judgments delivered in the Court of Appeal, which had best be quoted verbatim. The first passage is from the judgment of Lindley M. R., in Jamieson & Co. v. Jamieson, at page 181:
We are asked to restrain a man from carrying on business in his own name simply. That is really what it comes to. I do not say that cannot be done. It can be done, and there are cases in which it has been done. I can refer to one—the Holloway Pill Case, with which lawyers are familiar, which is reported in, in which the court did restrain a man of the name of Henry Holloway from selling pills with "H. Holloway" on them at the instance of the original Holloway, who started the sale of "Holloway's Pills." There are, perhaps, one or two cases of that kind.
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There is that one certainly. There are other cases where a man, having a name which is useful in the trade, has been laid hold of by somebody who wants to carry on that business, and make use of his name, although he has nothing whatever to do with it, the object being to avail themselves of that name in order to unfairly obtain the benefit of the trade of somebody else of the same name. Now when we are asked to restrain a man who is carrying on business in his own name, we must take very great care what we are about. The principle applicable to the case, I take it, is this: The court ought not to restrain a man from carrying on business in his own name simply because there are people who are doing the same and who will be injured by what he is doing. It would be intolerable if the court were to interfere, and to prevent people from carrying on business in their own names in rivalry to others of the same name. There must be something far more than that, viz., that the person who is carrying on business in his own name is doing it in such a way as to pass off his goods as the goods of somebody else. We must not lose sight for a moment of the real question which we have to try—the question of fact. The most recent case on that point is the "Yorkshire Relish" case, which came before the House of Lords, where Lord Halsbury read with approval that passage which Mr. Daldy has read from Lord Justice Turner's judgment in Burgess v. Burgess. He says: "The proposition of law is one which I think has been accepted by the highest judicial authority, and acted upon for a great number of years. It is that of Lord Justice Turner, who says, in terms: "No man can have any right to represent his goods as the goods of another person. In an application of this kind, it must be made out that the defendant is selling his own goods as the goods of "another." That is what we must look to; and what we have to satisfy ourselves upon is—that the defendant has been selling his goods as the goods of the plaintiff.
Then in Teofani & Co., Ltd. v. A. Teofani, at p. 456, Cozens-Hardy M.R., referred to the judgment of Turner L.J., in Burgess v. Burgess. He said:
Lord Justice Turner put the case with his usual extreme accuracy. I will read what he said: "Where a person is selling goods under a particular name, and another person, not having that name, is using it, it may be presumed that he so uses it to represent the goods sold by himself as the goods of the person whose name he uses; but where the defendant sells goods under his own name, and it happens that the plaintiff has the same name, it does not follow that the defendant is selling his goods as the goods of the plaintiff. It is a question of evidence in each case whether there is false representation or not." I do not think there is any case in which any doubt is expressed that this is the true principle of law. It is said in the present case that there is no evidence that the defendant has sold his goods or has threatened or intended to sell his goods in such a manner as to represent them as the plaintiff's goods.
And at page 458, Kennedy L. J., says:
As I understand the law, there is nothing to prevent a person who is setting up in a trade in which there are already others of the same name from using his own name, but alike from the legal and from the moral point of view a person is forbidden to use his own name in connection
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with the goods in that business in such a way as to represent that the goods are the goods of somebody else of that same name. If he does that he is doing that which is wrong and which the courts, as it seems to me, have consistently through a long list of cases refused to allow him to do. He must carry on the business under his own name honestly, and he does not carry on the business in his own name honestly if he so uses his name in connection with the business or goods—in this case it is the goods—as to lead those who deal with him in that business as purchasers to believe that they are goods which are the goods of another trader of the same name.
And again at page 459, there is this paragraph in the judgment of Swinfen Eady L. J.:
The law is that no man may pass off his goods as and for the goods of another; and that proposition of law may be amplified, and be perfectly accurate, if it is put in this way, that a man may not, by the use of his own name or otherwise pass off his goods as and for the goods of another.
/These passages exhibit an uninterrupted current of authority, beginning with the judgment of Turner L. J., in Burgess' Case, continuing through Reddaway v. Banham in 1896, down to Teofani's Case in 1913, in the same sence.
If the appellants had succeeded in establishing their allegation that the respondents have deliberately adopted a trade-mark with the object of representing to the public that the goods sold by them are goods produced by the appellants, which have acquired some reputation, then two results might follow; first, that design in itself, the respondents being persons of considerable experience in the trade of boots and shoe, would be some evidence to shew that in some degree, at all events, the name Hurlbut had become associated in the minds of people buying shoes with shoes of the appellants' manufacture; and, secondly, it would be some evidence to shew that the respondents were using their own name, not only in such a manner as to advance their own trade in a legitimate way, but in such a manner also as to represent that their goods were the appellants' goods.
The appellants place a great deal of emphasis, naturally and properly, upon a letter written by the respondent F. H. Hurlburt on September 12, 1919, in which the respondent makes proposals to a dealer in boots and shoes, and, in doing so, refers to the appellants' product in a way
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calculated to excite suspicion, to say the least, that he was contemplating pursuing that course of conduct which the appellants charge he has been pursuing. That letter, taken in conjunction with the circumstance that the respondent F. H. Hurlburt had acted for the appellants in selling their shoes in Barrie, had it stood alone would have required some better explanation than any which has been forthcoming. But the respondent F. H. Hurlburt was not in cross-examination pressed for an explanation of that letter, and when his conduct is looked at as a whole it seems very difficult indeed to say that the learned trial judge was wrong in acquitting the respondent of any deliberate design to steal the appellants' reputation and trade. There appears to be ground for the statement—Mr. Weston, of the Weston Shoe Manufacturing Company, gives explicit evidence on the point—that the cushion sole shoe designed by the respondent, or the shoe which developed ultimately from his design, is one which is free from the fault usually ascribed to shoes of that description, namely, the tendency of the cushion sole to become lumpy. As already mentioned, the respondent's design or process as improved by Mr. Weston has been patented, and Mr. Weston says that he manufactures and sell these shoes in large quantities, and that there is a large market for them. The respondent's shoe, he says, is of the same design as those which he sells to his other customers, but is made of the highest grade of material. There is, moreover, practical unanimity in the testimony upon the point that, as one witness put it, "anybody who knows anything about a shoe" would at once distinguish the respondents' make from that of the appellants. Then there is the conduct of the respondents already mentioned, on the eve of the litigation.
The respondents' course in offering to amend their advertisements and circulars and to modify their trade-mark for the purpose of distinguishing themselves from the appellants in almost any reasonable way short of abandoning the use of their own name does seem to lend a real corroboration to the contention that their design has been to manufacture a superior class of goods, to sell them under their own name, and to get a reputation and a trade in that way.
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At first sight the dealings with the Galt Manufacturing Company seemed to tell heavily against the respondents. The evidence of Mr. Weston, however, appears to put a different colour upon this transaction. It seems reasonable to think, in view of that evidence, that the respondent F. H. Hurlburt had conceived what he honestly believed to be a design according to which an exceptionally good cushion sole shoe could be made at a moderate price, and it is not incredible that he should have supposed, as he says he did, that the trade-mark gave him some sort of exclusive right in respect of which he was entitled to charge a royalty; and again it is a little difficult, in view of the circumstances, to accede to the contention that the trial judge's acquittal of the respondent on the charge of dishonesty should be reversed.
At all events, the appellants have quite failed to establish any case entitling them to inhibit the use by the respondents of their own name, nor have they made out a case which would justify the imposition upon the respondent's of any undertaking broader than the undertaking they offered before the commencement of the action. It is important to notice that apparently the respondents sell largely, if not exclusively, to the retail trade, and so far as the trade is concerned, as has already been said, there is no sort of duplicity whatever. Any possible risk of confusion in the minds of the ultimate customer would be entirely obviated by the measures suggested by the respondents.
Therefore, upon the respondents undertaking to state in their advertisements and circulars that they have no connection with the appellants and to amend their trade-mark by attaching to it the name of the respondent, Frank Hurlburt, the appeal will be dismissed with costs.
Idington J. (dissenting).—The appellant is a joint stock company organized under the laws of the Dominion and doing business in the Town of Preston in the County of Waterloo.
The respondent is a partnership carrying on business in the Town of Barrie in the County of Simcoe.
The former carries on the business of a manufacturer and dealer in foot-wear in a somewhat large and extensive way throughout the Dominion and, in connection therewith,
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adopted and put into use, on or about the year 1902, a trade-mark consisting of the word "HURLBUT" used in connection with the manufacture and sale of foot-wear from thenceforward for many years, and at least until the 4th of August, 1913, when it registered its trade-mark by using the Hurlbut Arms, and below that the word "HURLBUT," and surrounding it with the words "Genuine-Welt-Patented."
It was sworn to at the trial that this surplusage was adopted because of mistaken legal advice that the name "HURLBUT" alone could not be registered, but this was corrected later and the name "HURLBUT" was registered as appellant's trade-mark on the 11th November, 1921.
The respondent meantime had registered, on the 5th of September, 1919, as its trade-mark, to be applied to the sale of foot-wear, a representation of a musket and of a bow and arrow, surmounted by the name "HURLBURT'S," and underneath that, the word "SHOE".
The appellant brought this action on the 22nd of February, 1922, setting forth the foregoing facts and then alleging the following charges:
8. The said defendant., knowing that the plaintiff had established a reputation in the business relating to the manufacture and sale of shoes and knowing that the word "HURLBUT" had acquired a distinctive trademark meaning, has for some time heretofore placed upon the market articles of footwear bearing the name "HURLBURT," with the object of deceiving the public and of unfairly competing with your petitioner and trading upon its name and the reputation it has established.
9. By reason of such actions of the defendant, the plaintiff has suffered great loss and damage.
10. As a matter of fact the plaintiff was the first to make use of the word "HURLBUT" to be applied to the manufacture and sale of footwear.
11. That there is a possibility of confusion between the said trademark registered by the said THE HURLBURT SHOE COMPANY, and the plaintiff's trade-mark "HURLBUT." The plaintiff is aggrieved by the registration of the said trade-mark by the defendant and claims that the said registration was made without sufficient cause.
That was followed by the following prayer for relief:
(a) That an order may be made asking that the "HURLBURT" contained in the said trade-mark registered in folio 25,255 of Register 106, of the Register of Trade-Marks, be expunged.
(b) An injunction restraining THE HURLBURT SHOE COMPANY its servants or agents from infringing the plaintiff's said trade-mark and from using the word "HURLBURT" in connection with the sale of footwear.
(c) Damages.
(d) Costs.
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(e) Such further and other relief as the nature of the case may require and to the court shall seem just.
The case came on for trial before Mr. Justice Audette of the Exchequer Court who held as follows:
Therefore the case is complicated by this very fact that the most conspicuous part of each trade-mark—that part which appeals to the eye—is the name of the respective parties.
It cannot be denied that any person has the undoubted right to use his own name for the purpose of his trade and that no one bearing a similar name has a right to arrogate to himself the exclusive use of the same.
However, that rule must be qualified under numerous judicial decisions to the effect that where such person makes use of his own name for the purpose of fraud and satisfactory evidence of fraudulent intention has been produced, such unfair conduct will be restrained even though the free use of the man's own name may be thereby hindered. Holloway v. Holloway; Burgess v. Burgess; Sebastian, Law of Trade-Marks, (5th ed.) 39, 40; Smart, Law of Trade-Marks, 112; 27 Hals. 749; Kerly, 4th ed. 593; Saunders v. Sun Life Ass'ce Co.; Brinsmead v. Brinsmead, (and dismissed) action with costs, and furthermore ordering to vary the registration of the defendant's specific trade-mark No. 106, Folio 25,055, of the 5th September, 1919, by striking out therefrom the word "Hurlburt's" and substituting therefor the words "The Hurlburt Shoe Company."
With great respect I cannot agree with either the conclusions of fact or of law reached by the learned trial judge.
There seems to me, in the history of the respondent's dealings in relation to what is charged against him, much clearer evidence of fraud than in many cases where such conduct as his, in trying to get an advantage over another who has used his own name, as a trade-mark, or an essential feature thereof, for a long period of time and that to the knowledge of the respective defendants, in such cases, has been held so fraudulent, or savouring of fraud, that relief has been granted such as appellant seeks herein.
Take the case of J. H. Brooks & Co. v. The Norfolk Cycle Company and John Brookes; or the case of Valentine Meat Juice Company v. Valentine Extract Company, or the case of Teofani & Co. v. A. Teofani; or the case of John Palmer Co. v. Palmer-McLellan Shoe Pack Co., each shewing a distinctly different angle, in the facts to be looked at, of what was held to be a fraudulent course of dealing which entitled the plaintiff to relief, and in these
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four which I cite the respective personal names were involved as herein, or more directly so.
These cases I have picked out of many because I wanted to present a variety, and also such cases as had involved a use of the trade-mark in question by the originator of it, or successor, for a quarter of a century or less, before seeking successfully relief against him infringing it.
That of the appellant herein going back to and including 1902, or part of it, being only a period of twenty years, it occurred to me that possibly that might not be supported as long enough to give that secondary meaning to a person's name to which we find importance so often attached in many decisions but, I submit, long enough to acquire, under the circumstances, a secondary meaning.
I selected those approximately the same or less; for we so often find the Bass name, and the like, vastly longer in one than any I am now referring to.
But is proof of a fraudulent design necessary? From Millington v. Fox down, there are cases such as Reddaway v. Bentham Hemp-Spinning Co.; Johnston v. Archibald Orr Ewing, and Powell v. Birmingham Vinegar Co., and J. & J. Cash v. Cash, in which it was pointed out that proof of fraudulent intent was not necessary to entitle plaintiff to relief, but proof that it might reasonably be made the foundation of fraud upon the public, and hence an injury to the plaintiff which would entitle him to relief.
The said case of Cash v. Cash turned upon the question of the use of the personal name of the defendant, and, apart from its probably misleading the public, presented no element of fraud.
There is far more evidence of fraud in this case than in that of Warner v. Warner, cited by appellant, which also points strongly in same direction.
The respondent's dealings with the Galt Shoe Company, and the imitation by it of making a shoe alike to the appellant's make of what the appellant had introduced to the market and called "The Cushioned Sole Shoe for Children,”
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which the appellant had used long before the respondent, and in the use of the skeleton foot design (which was designed and adopted by the appellant) the respondent has committed that class of fraud which Lord Justice Cotton, in the case of Turton v. Turton, referred to as "garnishing the use of his name" by imitating the get-up of appellant's goods.
The case of Burgess v. Burgess, and cases cited therein, may also profitably be considered.
Many cases which also may well be considered are cited in the head-notes of the reprint of this case, on page 351 of vol. 43 of said reprint.
The appellant's factum contains a wealth of references which if followed out might suggest writing a treatise on the questions involved herein, but I do not intend to do so for the disposal of this case.
I am tempted, however, to adopt its quotation from the judgment of Lord Justice James in the case of Levy v. Walker, which is as follows:
It should never be forgotten in these cases, that the sole right to restrain anybody from using any name that he likes in the course of any business he chooses to carry on, is a right in the nature of a trade-mark, that is to say, a man has a right to say: "You must not use a name whether fictitious or real—you must not use a description, whether true or not, which is intended to represent, or calculated to represent, to the world that your business is my business, and so, by a fraudulent misstatement, deprive me of the profits of the business which would otherwise come to me." That is the principle, and the sole principle on which this court interferes;
and that from the judgment of Lord Alverstone M.R., in the Valentine Case at page 680, as follows:
A strenuous effort was made by Mr. Upjohn in his very able argument to draw a distinction in cases in which the word which has been used was the name of the defendant, that is the name of the person who was carrying on the business which is complained of. In my opinion there is no difference in principle. You still have to apply the test which the Lord Chancellor laid down in the passage I have read, namely, whether or not the goods of the defendant have been represented as the goods of somebody else. Of course it is more difficult to deal with cases where the name is the name of the person, or the name of both the persons, as distinguished from a fancy name which has been created for the purpose of the particular goods; but I can see no difference in principle between the two cases.
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as guiding principles in the relevant law needed to be applied in this case.
I would adopt each of these expressions as applicable herein.
For the foregoing reasons I would allow this appeal with costs here and below and give the relief prayed for by way of injunction to be framed (if the majority of this court agree in the result I have arrived at), in settling the minutes of the formal judgment, if the parties cannot agree thereon so as to amply protect the appellant.
Appeal dismissed with costs.
Solicitors for the appellant: Fetherstonhaugh & Co.
Solicitors for the respondent: Denton, Macdonald & Denton.
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