736 Brine 18 at 7183 SUPREME COURT: VICTORIA. [V. L. R. 1891 Nov. 30. Dec. 1, 2, 3. MITCHELL & CO. v. JOSHUA BROTHERS. Trade Marks Act 1890 (No. 1146), s. 6-Trade mark-Label-Parts in common use-Whole distinctive-Infringement of trade mark-Registration for five years-Defence-Trading on reputation of plaintiff—Injunction. A trade mark is a distinctive picture which would indicate to a purchaser of the article bearing it the means of getting the same article in future, by getting an article with the same mark on it. It may be registered, even though parts of it consist of matters in common use in the trade on articles of similar description, if the other parts are sufficient to make it a distinctive device. In an action for infringement of a trade mark which has been registered for more than five years, the defendant may raise as a defence that the trade mark ought not to have been registered, as at that time it was in common use, and was not a distinctive mark. A person using only such parts of a label registered as a trade mark as are common to the trade is not liable to an action for infringement of the trade mark; but if, in addition, the general get-up of his label as to size, colour, and the like is such as to show an intention to profit by the reputation of the article bearing such registered label, and an actual misleading of purchasers, he may be restrained from using any device or mark which might represent or lead to the belief that his article is that of the plaintiff. ACTION by Mitchell & Co., manufacturers of whisky in Belfast, Ireland, against Joshua Brothers, manufacturers of whisky in South Melbourne, in the colony, for infringing their registered trade mark and fraudulently imitating their bottles and labels, with the intention of profiting by the reputation obtained in this colony by the plaintiffs for their whisky. The plaintiffs commenced importing their whisky into Victoria in 1871, at a time when the one Irish whisky in the market using a label at all similar to that used by the plaintiffs was Dunville & Co.'s. The plaintiffs used several labels, all of them having a representation of the rose, thistle, and shamrock, the words "Old Irish Whisky," "Belfast," and their name surrounded by a floral border comprised of the rose, thistle, and shamrock. The rose, thistle, and shamrock was afterwards used in the Victorian market upon labels of other manufacturers besides Dunville's and Mitchell's, and in May 1882 the plaintiffs registered a trade mark thus described : "A label across the centre of which is a tablet bearing the words 'Old Irish Whisky.' Above and resting on the tablet is a crown, and on the arched ribbon at the top is the word 'Mitchell's.' Beneath this tablet is a shield bearing a monogram composed of the letters M. & Co.,' with the representation of a rose, thistle, and shamrock underneath. Below this again is the word 'Belfast' on another ribbon, the whole being surrounded by a floral border composed of the rose, thistle, and shamrock." The bottles used by the plaintiffs were short, squat, imperial quart bottles. The defendants until recently used a white label, bearing on it in red the device of a lion rampant and their own name. Lately the defendants had taken to use another label, similar in size, shape, and colour to the plaintiffs, and bearing a similar crown and a floral border composed of the rose, thistle, and shamrock, and having on it." Old Irish Blend," but not bearing their name. Their whisky was sold in similar sized bottles to those used by the plaintiffs. Besides a denial of the fraud the defence alleged that the registered trade mark was publici juris, and the device used one general in the trade. It was shown in evidence that whiskies were divided into two classes, called " Irish whisky" and "Scotch whisky," not because they were necessarily made in Ireland and Scotland, but because of their distinct flavour. The whisky manufactured by the plaintiffs was of the class known as "Irish whisky.' Dr. Madden and Higgins for the plaintiff. Mitchell and Weigali for the defendant. HODGES, J. Mr. Mitchell, Mr. Joshua gives evidence that his whisky would not sell with their name on it, not by reason of any odium attaching to their name in connection with whisky or apart from it, but because their name indicated colonial manufacture, and that that prevented their whisky selling; therefore, he said: "I must suppress my name," but the suppression of his name. would be of no advantage to him, and his object would not be attained unless he succeeded in suppressing the fact that it was of colonial manufacture. Having determined to suppress that fact by wiping out his name, he then proceeds to get some Irish labels for the purpose-taking his own statement of getting something which will bear the common qualities of an Irish label. That cannot be of the slightest use to him unless it suggests an Irish 1891 MITCHELL & Co. v. JOSHUA BROS. Hodges, J. 1891 manufacture as distinguished from a colonial, consequently his MITCHELL & Co. object was to suggest to the person who was to consume his v. Hodges, J. JOSHUA BROS. Whisky, an Irish and not a colonial manufacture. That, I take it, is a distinct fraud. So far, it is only a fraud on the public, not on the plaintiffs. I have to see whether that further step is proved, and I should infer that men who will commit a fraud on the public will not hesitate to perpetrate a fraud on an individual. As they want to pass off their whisky as an Irish manufacture, and as they take an Irish label, and as I infer that they are ready to defraud individuals, I do not think it at all unlikely that they should seek to get a label that most corresponds with the label of the most popular of Irish whiskies. The label is like that of a favourite Irish whisky, and I cannot believe it to have been an accident; I believe it was done purposely. Mitchell-I must admit that it was because there was a prejudice against colonial whisky that the defendants did what your Honor has described as working a fraud on the public. Mr. Joshua manufactured what is called Irish whisky, and he believed his whisky to be as good as any other Irish whisky, but he was unable to sell it, merely because it was a colonial manufacture, and he desired to get over such an unreasonable prejudice. But it is submitted that he had no intention whatever of copying the plaintiffs' label, apart from any other label on Irish whisky, and, in the result, the label produced did not more nearly resemble the plaintiffs' than it did Fogarty, Doyle & Co.'s, or Daly's. The rose, thistle, and shamrock, and the crown, were common characteristics of all labels on Irish whiskies, and the whisky produced by the defendants was, in fact, what is known to the trade as an Irish whisky, i.e., a whisky with a peculiar flavour. It is perfectly clear that the defendants did not use the same shaped bottles as the plaintiffs with any intent to deceive, because they had used them previously, and there were twenty-six other kinds of whisky sold in similar shaped bottles in this market. The rose, thistle, and shamrock, being in common use in the trade, ought not to have been registered as a trade mark: Baker v. Rawson (a). No (a) 45 Ch. D. 519. MITCHELL & Co. v. doubt that case was an application to amend the register, but it is 1891 66 Higgins in reply-Baker v. Rawson was an action to restrain infringement of a trade mark as well as a motion to expunge the registration of the trade mark, and the distinction between the two is referred to by North, J., at p. 534, who says that so long as the mark remains on the register it gives the person who has registered it the exclusive use of it. It is submitted that after five years the registration is, until expunged, conclusive evidence of the exclusive right to use the trade mark, except in a case where it should not have been registered as a trade mark" as if it were not a distinctive mark: Sebastian on Trade Marks (2nd ed.), 45; Re Wragg's Trade Mark (d). So long as it is a "trade mark," and it is registered for five years, it is conclusive evidence of the sole right to use: Sec. 6 of the Trades Marks Act 1890 (No. 1146). The question whether or not a trade mark is "distinctive" within the meaning of the Act is whether it is capable of distinguishing apart from the facts the particular class of goods, of indicating to a purchaser the goods of one particular purchaser: Sebastian on Trade Marks (2nd ed.), 22, 35-6. [HODGES, J. Is there any provision in our Act for disclaiming a portion of a trade mark ?] JosHUA BROS. Hodges, J. No; not in the Act of 1890. Since the commencement of this action an Act enabling that to be done was passed in December 1891. c / The plaintiffs' is the only registered trade mark in this colony, and it has been registered for more than five years. At the time the plaintiffs began to sell in this colony, in 1871, there was only one whisky (Dunville's) in the market having a similar label. HODGES, J. Long before your registration in 1882 there were several others.] The Court has to find not only that there were a few cases of whisky with similar labels in the market, but that it was in such (6) 12 V.L.R. 421 & 887. (d) 29 Ch. D., pp. 556-7. (c) 14 V.L.R. 963. 1891 common use in the trade as to have become common property: MITCHELL & Co. Burland v. Broxburn Oil Co. (e). v. JOSHUA BROS. Hodges, J. Mitchell referred to Sebastian on Trade Marks (3rd ed.), 383. HODGES, J. The plaintiffs in this case claim to be owners by assignment of a label for whisky, which was on the 22nd May 1882 registered under the "Trade Marks Statute 1876," and they charge the defendants with infringing their rights in respect of such trade mark by using on bottles containing whisky made by the defendants' labels which are imitations of the plaintiffs' registered label, or only colourably differing from it, and by selling the whisky so labelled. The plaintiffs also charge the defendants with fraudulently and with intent to profit by the reputation which the plaintiffs' whisky has obtained in the market, selling their whisky in bottles of such shape and so labelled as to lead people to think that it is the whisky of the plaintiff company, and thereby deceiving purchasers. The label in respect of which the plaintiff company claims was registered on the 22nd May 1882 by William Charles Mitchell and D. Mitchell, and the defendants challenged the assignment of this trade mark, but they have not adduced any argument in support of their contention, and the plaintiffs appear to have substantiated this part of the claim by the assignment of the two Mitchells to the company, put in on commission. Their contention is borne out by the case of Shipwright v. Clements (ƒ), which seems to show that the trade mark is ancillary to the goodwill of a business, and passes with the goodwill, though not specifically mentioned. The next matter on which the defendants rely is that the trade mark is no trade mark, and ought never to have been registered. In my opinion, looking at the trade mark apart from the evidence of the use of similar labels at the date of the registration, plaintiffs' label is a distinctive device within the meaning of the Trade Marks Statute. It is a picture; and a trade mark, as observed by Lord Justice Brett, is not an essay, or a treatise, or a poem, but it is a picture, and I think that the plaintiffs' label is a (f) 19 W.R. 599. (e) 42 Ch. D. 274. |