November 22, 1909.]
SUPREME COURT.
Monday, 15th November.
IN ORIGINAL JURISDICTION.
BEFORE HIS HONOUR MR. W. REES DAVIES, K.C. (ACTING CHIEF JUSTICE).
THE FLORIDA `WATER TRADE-MARK CASE,
The case concluded in which Edward Kemp and others, trading as Lanman and Komp. of New York, seek to obtain an injunction against the Kwong Sung Firm, of 246, Des Voeux Road Central, Hongkong, their servants or agents, to restrain them from selling or exposing for sale, or procuring to be sold, any Florida water bearing the label annexed to the claim or any other label so contrived or expressed as by colourable imitation or otherwise, to represent or lead to believe that the Florida water sold by defendants was the Florida water manufactured and sold by plaintiffs,
The trial was before his Honour the Acting Chief Justice and special jury composed of Messrs. D. W. Craddock (foreman), L. Gibbs, G. H. Medhurst, C. J. Lafrentz, D. R. Law, A. Shelton Hooper and A.
Mackenzie.
&
Mr. M. W. Slade, instructed by Mr. H. W. Looker (of Messrs. Deacon, Looker and Deacon) appeared for the plaintiffs, while the defendants were represented by Sir Henry Berkeley, K.C., and Mr. Eldon Potter, who were instructed by Mr. F. C. Barlow, acting on behalf of Mr. H.
K. Holmes.
In the statement of defence the defendants denied that the plaintiffs possessed the right to the exclusive use of that portion of the design which consisted of a floral wreath, or the right to the exclusive use of the words Florida Water surmounting the design. The said mark was not used as a trademark in Hongkong by the plaintiffs or their predecessors in the business before August 15th, 1875. They denied infringing the plaintiffs trademarks, or imitating the get-up of the plaintiffs' goods. The trademark applied by the defendants to the Florida water sold by them was a distinc- tive trademark, and the plaintiffs had distinctive right to use such bottles as they did, or such floral wreaths. Defendants denied that the plaintiffs had been damnified, and contended that their competition with the plaintiffs was fair frade competition. Defen- dants denied that they had sold or passed off any goods not of the plaintiffs' manufacture. as and for the plaintiffs' goods.
no
Mr. Slade, after reading the pleadings, said the action was brought by Messrs. Lanman and Kemp, old established manufacturers of Florida water, against the defendants on two main grounds. One was, the infringement of a trademark, and the other the imitation of the get-up of the plaintiffs? Florida water. Exactly copying a trademark was seldom done, but it was just as much an infringement to so nearly imitate a trademark as to produce a mark which was calculated to deceive. To take parts of an old established mark and to make differences which to an unwary person might not be im- mediately perceptible; to enable a dishonest retail dealer to pass off one article for another was infringement. The law said that a trader might not endeavour to get some of his rival's trade by imitating the get-up of his goods. Lanman and Kemp had been importing Florida water into this Colony since before 1875, and from that date onwards. A criminal charge was brought with regard to these bottles and the jury found a verdict of not guilty. The actual result of that case had no bearing on the present one, but he would make use of certain admissions made in that case by the defendant. It was admitted by them that before they started the manufacture at all, they knew of the plaintiffs' bottles. In this instance, knowing the trademark and bottles, the defendants started to sell Florida water their manufacture about the year 1905 or 1906 in similar bottles. Counsel produced one of the bottles, which he wished to pass to the jurors.
Sir Henry Berkeley-My friend must not put to the jury now any document or exhibit that may be excluded in the course of the trial.
His Lordship-Do I understand you going to dispute the right hereafter ?
Sir Henry Berkeley—Yes.
aro
CHINA OVERLAND TRADE KEPORT.
Mr. Slade I am going to prove that the defendants sold Florida water in that particu-| lar bottle to a witness I am going to call,
His Lordship Is that admitted?
443
His Lordship-In your statement of claim Mr. Slade, you do not limit your action to one particular mark, but this interim injunction deals with one mark only.
Mr Slade The one mark they were then
Sir Henry Berkeley No. The action is brought against us for infringing the trade-using mark on the bottle before your Lordship by means of a trademark which will presently be put in by them, which is not the mark on that bottle.
His Lordship Is not this. the alleged in fringement ?
Sir Henry Berkeley-No, it is not. Mr. Slade-We claim there are two in- fringements, first of all by that mark and subsequently by another mark.
Sir Henry Berkeley-Nothing of the kind, An attempt is being made, to bolster up a case that must fail.
Sir Henry Berkeley said the plaintiffs used the word "labels" in the statement of claim, but that word was used in connection with the labels on the bottle. It was clear there. the pro- were only two labels mentioned ceedings, only two labels they were called' upon in this action to defend themselves against. the use of He submitted Mr. Slade was not entitled to hand the bottle he wished to the jury. The defendants were not there to answer? any other charge than the specific one of having infringed the plaintiffs' "phoenix and fountain" labels by the use of defendants
Mr. Slade-I don't know whether my friend"two girls" brand is at liberty to interrupt me in my opening.
Sir Henry Berkeley-You must not open with what you are not going to prove.
Mr. Slade Will you please allow me, Sir Henry. Don't try to shout me down. The pleadings show that for some time past the defendants have been selling Florida water not of the plaintiffs' manufacture under labels so closely resembling the plaintiffs' trademark as to be calculated to deceive. For some time
they sold Florida water under this particular label, and that, we claim, is an infringement of our mark. Subsequently they made certain alterations and sold the water under another mark, which we claim is an infringement.
His Lordship- Is there a strong similarity between the two that you object to ?
Mr. Slade very strong similarity. His Lordship-If the plaintiffs are going to prove that they purchased this article from the defendants as the defendants' bottle, I don't see how I can exclude it.
Sir Henry Berkeley-If they are entitled to prove it you cannot exclude it, but before they are entitled to prove it they must have a claim in respect of that particular mark. To properly understand paragraph 8 of the statement of claim, to which his learned friend referred, Counsel informed his Lordship that he must read paragraphs 9 and 10 with it. Plain- tiffs complained in the writ of summors that the defendants were infringing their label by using a label which they attached, and they asked that defendants should be restrained from using that label or any other label they might thereafter use which was calculated to deceive. His friend knew perfectly well that the mark he now wished to put to the jury was a mark the defendants had not used since une, 1906, and had in that year only used for a few months.
His Lordship--Was this particular mark in dispute at the criminal trial?
Sir Henry Berkeley No, it was only brought in in cross-examination to show that we, when we first started, had used a label still more like theirs than the two girls" mark in respect of The next step the which they prosecuted us. plaintiffs took was to go to the Puisne Judge for an interim injunction. What they are ask ing for to-day is a permanent injunction.
Mr. Slade And damages.
Sir Henry Berkeley-The plaintiffs must be confined to the claim they have made.
Mr. Slade My friend in extremely irregular in interrupting me, and I strongly object to him reading an affidavit which he cannot put in evidence,
Sir Henry Berkeley--This was in the action when they were asking for an interim injunc- tion. They ought to be confined to the action they have brought against us. If they want to bring an action in connection with any other mark than the one concerned, let them do so and we will meet it.
His Lordship-The point turns, as far as I can see, on the construction of the pleadings themselves,
Mr. Slade-Exactly, and the affidavit in support of the interim injunction will show what was claimed in respect of it. The interim injunction is one thing, and the action for damages and a permanent injunction is another. Sir Henry Berkeley-I am surprised that my friend should address your Lordship in that way. By an interim injunction they sought to stop us using the two girls" brand; to-day they are seeking to have an interim injunction made perpetual.
His Lordship I see, Mr. Slade, in paragraph 8 of the statement of claim that you say the defendants have for some time past been selling.
Mr. Slade-Yes.
His Lordship-That would imply that at the time of the action they were also selling.
Mr. Slade-I beg your Lordship's pardon, but the words are equally good English the other way.
His Lordship-Not if they had ceased to sel I understood you to say there has been no sal of this particular bottle since 1906.
Mr. Slade-We complain of their earlier in- fringement and later infringement.
His Lordship -I think it is rather unfor tunate that I am called upon to construe a figure of speech in a question of fact.
Mr. Slade I think it is quite plain. We want proper remedy for the injury they have done us. Suppose they had revived the use of the old label again, the words of the injunction would cover it absolutely.
Sir Henry: Berkeley-You could not get an injunction against a thing if it had not been done for two years.
His Lordship -Supposing the user of this mark ceased in 1906 it would be a case of very small damages.
Mr. Slade-But we are entitled to them. The action is brought in respect of both bottles.
Sir Henry Berkeley-We could have paid a farthing into Court if we had any idea such a complaint was being made, and that would probably have been too much. I rely on the words of section 8.
His Lordship-Taking the record as a whole, it certainly appears to me that the action is constructed on the particular mark on which the interim injunction was based. I rule that the damages claimed only apply to the inark or marks in respect of which interim injunc- tion was granted, and in respect of which there is user proved or action brought.
Mr. Slade then applied to amend his state- ment of claim by adding, the word "various " before labels.
ام الرسمية
ir Henry Berkeley opposed the application, as it would mean that the plaintiffs could set up an absolutely new case. To patch-work a claim of that kind into the pleadings when he was there to meet a different case altogether would be embarrassing and vexations, and harassing in the extreme. The sole question at issue was whether or not the "two girls" brand was an infringement of the "fountain" brand.
His Lordship said he did not propose to allow the amendment.
Mr. Slade then proceeded with his address, remarking that he would refer to the bottle which he was not allowed to show the jury as a matter of historical interest. The defendants started manufacturing Florida water in Hong- kong some time at the beginning of 1906. When they first manufactured Florida water they adopted this label (Counsel handed label to usher to pass to jury).
Sir Henry Berkeley objected,
Mr. Slade I am going to show by positive evidence that first of all the defendants used that mark, and when they applied to register it they did not obtain registration. They then made slight alterations and applied again to have it registered, but were again refused. They then got registration of the label of "two girls" only, but proceeded to use the mark for which registration had been refused. That is what I am going to use the label for; to show the deliberate fraud. '