iT* *l • i^CJlll* 
 
 UNIVERSITY 
 
 OF CALIFORNIA 
 
 LOS ANGELES 
 
 SCHOOL OF LAW 
 LffiRARY 
 
 I WILDY 4 SONS irn II-.SIW l!-vit;»lt9r»| 
 LONDON, VV.C.2 Valuers
 
 PASSING OFF
 
 f 
 
 o %^ • 
 
 T 
 
 ON 
 
 PASSING 
 
 OFF 
 
 OR 
 
 ILLEGAL SUBSTITUTION OF THE GOODS 
 
 OF ONE TRADER FOR THE GOODS 
 
 OF ANOTHER TRADER 
 
 BY 
 
 JOHN CUTLER, M.A. 
 
 ONE OF HIS majesty's COUNSEL 
 
 PROFESSOR OF LAW AT KING'S COLLEGE, LONDON, AND EDITOR OF 
 
 THE OFFICIAL REPORTS OF PATENT DESIGN AND 
 
 TRADE-MARK CASES 
 
 GAY AND BIRD 
 
 22 BEDFORD STREET, STRAND 
 
 LONDON 
 
 1904 
 
 All rights reserved
 

 
 PREFACE 
 
 This little work is a reproduction, with a few 
 
 — -clerical alterations and a few notes, of a course of 
 <r 
 
 - ' four lectures delivered by me in November, 1903, 
 at King's College, London. 
 
 JOHN CUTLER. 
 
 Lincoln's Inn, 
 
 January^ 1904- 
 
 ABBREVIATIONS 
 
 R.P.C. — Reports of Patent Design and Trade Mark Cases. 
 L.R. — Law Reports.
 
 CONTENTS 
 
 l-ART PAGE 
 
 I. GENERAL STATEMENT OB" RULES OF LAW - - I 
 
 IL PASSING OFF, A MATTER OF REPRESENTATION - 9 
 
 in. COPYING OR IMITATING TRADE MARKS - - 12 
 IV, PROTECTION OF TRADE MARKS, REGISTERED AND 
 
 UNREGISTERED - - - - - 20 
 
 V. DISTINCTIVE LABELS - - - - - 22 
 VI. LABELS DISTINCTIVE BY REASON OF DEVICE OR 
 
 CATCHWORD - - - - - 23 
 VII. LABELS DISTINCTIVE BY REASON OF ' GET-UP ' - 26 
 VIII. COMPARISON OF LABELS - - - -29 
 IX. TRADE NAMES - - - - - 36 
 X. FANCIFUL AND DESCRIPTIVE TRADE NAMES - 39 
 XI. EVIDENCE TO PROVE A TRADE NAME IN COURT - 43 
 XII. A TRADE NAME MUST BE KNOWN TO A SUB- 
 STANTIAL SECTION OF THE PUBLIC - - 47 
 
 XIII. TRADE NAME — HOW ESTABLISHED - - - 52 
 
 XIV. ILLEGAL REPRESENTATIONS AS TO A BUSINESS - 55 
 XV. NAME OF A PATENTED ARTICLE - - -65 
 
 XVI. NAME OF A NEW ARTICLE - - - - 67 
 XVII. TRADE NAME DESTROYED BY THE CONDUCT OF 
 
 THE OWNER - - - - - 68 
 
 vii
 
 viii CONTENTS 
 
 PART PAGE 
 
 XVIII. PASSING OFF GOODS OF A THIRD PARTY - - 70 
 
 XIX. CIVIL PROCEEDINGS TO RESTRAIN PASSING OFF - 72 
 XX. THREE GENERAL PROPOSITIONS - - "79 
 
 XXI. PECUNIARY COMPENSATION TO SUCCESSFUL PLAIN- 
 TIFF - - - - - - 80 
 
 XXII. THE MERCHANDISE MARKS ACTS - - -83 
 
 INDEX- - - - - - - 91
 
 PASSING OFF 
 
 PART I 
 
 General Statement of Rules of Law 
 
 It is a thoroughly well-estabhshed rule of law that 
 * no man has a right to pass off his goods as though 
 they were the goods of another.' Perhaps it would 
 be more strictly accurate to use the word ' trader ' 
 instead of ' man,' and to say that ' no trader has a 
 right to pass off his goods as though they were the 
 goods of another trader,' for the rule is undoubtedly 
 based on trade considerations. As will be men- 
 tioned more in detail later on, it is equally true that 
 A has no right to pass off the goods of X as the 
 goods of B. Another way of stating the proposition 
 is that, in supplying a customer who orders and 
 expects to get the goods of A, the substitution of 
 any other goods is illegal, unless the customer under- 
 stands that he is not getting what he ordered and 
 assents thereto. The above-mentioned rule is quite 
 in accordance with the principles of commercial 
 
 I
 
 2 PASSING OFF 
 
 honesty ; whether it is in accordance with com- 
 mercial practice is another thing.* Whether in 
 trade circles this rule of law is more honoured in 
 the breach than the observance in the present day 
 is a matter upon which there are many diverse 
 opinions. But this is certain, that breaches of the 
 rule are so common as to afford a great deal of work 
 to both branches of the legal profession, and to 
 occupy a great deal of the time of the Law Courts. 
 The rule under consideration is well established, 
 and it is easy of comprehension. The difficulties 
 that arise are in its application to the circumstances 
 of any particular case. When a plaintiff calls 
 
 * In the recent case of Dc Kuypcrand Son v. Baird (20 R.P.C. 
 581), the Irish Master of the Rolls said : 'It is melancholy for 
 one who has to sit in a Court of Chancery in this country to find 
 so many traders willing to go as close as they dare in order to 
 capture trade by false pretences. They are not confined to this 
 particular trade, though they swarm in it. Mineral waters, ale, 
 porter, whisky (of the different well-known brands), brandy, and 
 gin — all afford scope for this nefarious industry. No sittings 
 pass without my having to give injunctions with costs in cases 
 of this sort. It is a disgraceful state of facts ; though I have no 
 intention of censuring a whole trade (in which there are hundreds 
 of honourable men who would not stoop to anything mean or 
 even questionable) because there are dishonest persons engaged 
 in it. The effort of an honest man, anxious to commend his own 
 goods on the ground of quality or cheapness, or both, ought to 
 be to brand them with a mark as unlike as possible to other 
 brands, which have their own value, instead of trying to go as 
 close as he can with legal impunity in the way of imitating 
 them.'
 
 PASSING OFF 3 
 
 upon a Court to grant an injunction to restrain a 
 defendant from passing off his goods as being tlie 
 goods of the plaintiff, the question which the Court 
 has to decide is always a question of fact : Is the 
 defendant, in fact, doing that of which the plaintiff 
 is entitled to complain — is the defendant, in fact, 
 passing off, or doing that which is calculated to pass 
 off, his goods as those of the plaintiff? The answer 
 to the question depends upon all the circumstances 
 of the case — the circumstances affecting the plaintiff 
 and his trade, and the circumstances affecting the 
 defendant and his trade. It follows from this that, 
 although the principles on which a passing-off case 
 is decided are a guide to the decision of a subsequent 
 passing-off case, the facts in such prior case are not 
 and cannot be a guide to the decision of the subse- 
 quent case. As the view taken of the facts of the 
 case is a matter entirely personal to the judge who 
 tries it (or to the jury, if the case is tried with a 
 jury), in the sense that the tribunal is not fettered 
 by (indeed, ought not to regard for this purpose) the 
 decisions in previous cases, it is impossible to pre- 
 dicate beforehand with anything approaching to 
 certainty what that view will be. Another element 
 of uncertainty in passing-off cases is the circum- 
 stance that witnesses' statements before the trial 
 often so materially differ in character and in extent 
 from the statements which they make in the witness- 
 
 1—2
 
 4 PASSING OFF 
 
 box. Therefore, if A consults a lawyer as to whether 
 he would succeed in a passing-off case against B, 
 the utmost that the lawyer can conscientiously say 
 is either ' in my opinion you will not succeed,' or ' in 
 my opinion you will succeed provided the evidence 
 comes out at the trial as it now is upon paper, and 
 provided nothing adverse to your case is sprung 
 upon you in court.' Another element of uncertainty 
 arises from this, that sometimes the tendency of 
 the judges appears to be to err on the side of 
 severity towards defendants in passing-off cases, and 
 sometimes on the side of leniency. At present the 
 swing of the pendulum is towards what may well be 
 considered to be undue leniency. Competition in trade 
 is doubtless beneficial to the purchasing community, 
 but there is a vast difference between justifiable and 
 unjustifiable competition, although it is not so easy 
 as it ought to be to draw the line between them. 
 Competition which to most minds would be un- 
 justifiable is not always illegal. A trader brings out 
 a new article, or a new variety of an old article, 
 or adopts a novel method of putting an article on 
 the market. Directly he has begun to achieve a 
 measure of success, some of his rivals are sure to 
 begin trying to subtract a portion of his trade. If 
 it is done by running other goods on their merits 
 in competition with his, this is both justifiable and 
 legal ; if it is done by imitating his goods or the get-up
 
 PASSING OFF 5 
 
 of his goods, this is certainly morally unjustifiable. 
 It may or may not be illegal, because imitation 
 of a man's goods, or of the get-up of his goods, is 
 not always illegal. It is only illegal if it is carried 
 to such an extent as to lead to the imitation goods 
 being passed off as his. If the imitation stops short 
 of that, then it is only treated as the sincerest form of 
 flattery, but this is a form of flattery from which the 
 person imitated would be only too glad to be exempt. 
 
 The rule of the law that no trader will be allowed 
 to pass off his goods as those of another trader is, 
 as previously stated, a well-established rule. It may 
 be an interesting matter for lawyers to inquire when 
 it was first introduced or adopted into our legal 
 system. But for all practical purposes it is im- 
 material whether it was introduced, as some say, 
 only about a century ago, or whether it is, as others 
 say, of much older date. It is sufficient for us that 
 it has been in existence for many years, and is now 
 so firmly established that nothing short of an Act of 
 Parliament can abrogate it. 
 
 It may here be remarked, although more will be 
 said on the subject subsequently, that in passing-off 
 actions it is not necessary that the person charged 
 with passing off should be proved to have intended 
 to pass off his goods as those of the plaintiff. The 
 question is, What is the commercial effect of what 
 he is doing ? If the effect would be to pass off" his
 
 6 PASSING OFF 
 
 goods as those of the plaintiff, then his honesty of 
 purpose or the absence of any intention to deceive 
 is no defence. But his intention is by no means 
 immaterial, because whenever the Court is con- 
 vinced in a passing-off case that the defendant in- 
 tended to deceive — intended that his goods should 
 be passed off as the plaintiff's — it will be very 
 difficult, though not impossible, for him to satisfy 
 the Court that his fraudulent conduct will not have 
 the effect he intended it should have. In reference 
 to this, it must be observed that an intention to 
 imitate or copy, and an intention to pass off or 
 deceive by that imitation or copy, are two distinct 
 things. The former may be legal, but the latter 
 never can. 
 
 Again, when a plaintiff seeks an injunction to 
 restrain a defendant from passing off his goods as 
 the plaintiff's, the plaintiff is not obliged to prove 
 that the defendant's acts have had that effect — i.e., 
 he need not prove actual deception — he need not 
 prove that any person has, in fact, been misled by 
 the appearance of the defendant's goods into pur- 
 chasing them in the belief that they were the 
 plaintiff's goods, although it is far better for his 
 success in the action if he can do so, because 
 it is obviously an uphill game for a defendant 
 to contend that his goods are not calculated to 
 deceive when they, in fact, have deceived. But
 
 PASSING OFF 7 
 
 one isolated instance of deception, or even two 
 instances of deception, are not necessarily sufficient 
 in a doubtful case, because they may have occurred 
 to persons or under circumstances which predispose 
 the Court not to place reliance on them. Still, 
 evidence of actual deception of purchasers is always 
 most valuable to a plaintiff in a passing-off action, 
 and he should use all efforts to procure it. In short, 
 what the plaintiff has to do is to satisfy the Court 
 that what the defendant is doing is calculated to 
 deceive — calculated to lead to his goods being mis- 
 taken for the plaintiff's. 
 
 Again, the plaintiff need not prove that the pur- 
 chasers from defendant are likely to be deceived if 
 he can prove that sub -purchasers — i.e.^ purchasers 
 from those who purchase from the defendant — are 
 likely to be deceived. This is practically very im- 
 portant. In most passing-off cases the defendant is 
 the manufacturer of the goods complained of. The 
 purchasers from such a defendant will be wholesale 
 houses or retail traders, who buy to resell to the 
 public, or both. The wholesale houses will certainly 
 not be deceived ; the retail traders are very unlikely 
 to be deceived. They probably know that the goods 
 they are buying are the defendant's goods, and are 
 in no way connected with the plaintiff. They have 
 the requisite trade knowledge to protect them ; but 
 it may well be that the purchasers from the retail 

 
 8 PASSING OFF 
 
 traders — the public buying over the counter — may 
 be deceived : they have not the requisite trade know- 
 ledge to protect them. Therefore a defendant may 
 'pass off' not only by selling to purchasers who 
 think they are buying the plaintiff's goods, but by 
 selling goods to persons who are not deceived (who 
 know the goods are not the plaintiff's), but who buy 
 to resell to persons who may be deceived. Putting 
 it in another way, a man must not only not deceive 
 purchasers from himself by passing off, but he must 
 not put into the hands of purchasers from himself 
 goods which they can pass off on purchasers from 
 them. 
 
 Finally, it is not necessary for the plaintiff to 
 prove that the ultimate purchasers who are de- 
 ceived know him or his firm. They may or they 
 ma}' not. In the Yorkshire Relish case, to which 
 frequent references will be made, it was established 
 that numbers of the purchasers of Yorkshire Relish 
 had never heard of the plaintiff or his firm ; but 
 that on asking for Yorkshire Relish they meant 
 a particular sauce emanating from a particular 
 trade source. So, too, if a lady asks for Vinolia 
 Soap, she probably does not know who made it ; 
 what she requires is the article she has always 
 known under that name, and nothing else. Many 
 other instances might of course be cited, but it is 
 unnecessary to do so.
 
 PASSING OFF 9 
 
 PART II 
 
 Passing o^, a Matter of Representation 
 
 A TRADER must not pass off his goods as the goods 
 of another trader. This illegal passing off may be 
 effected in a variety of ways ; those most ordinarily 
 occurring will be mentioned hereafter ; but first it 
 should be remarked that passing off is really a matter 
 of representation. When B passes off his own goods 
 as the goods of A, B represents that the goods are 
 the goods of A, and the purchaser takes them on the 
 faith of that representation. In fact, the general 
 rule under consideration is sometimes laid down in 
 this way : ' No man has the right to represent his 
 goods as the goods of another.' This was the way 
 in which the proposition was stated by Lord Justice 
 Turner in Burgess v. Burgess and adopted by Lord 
 Halsbury, in Reddaway v. Banhani.* Lord Justice 
 Vaughan Williams, too, in one of the latest reported 
 cases of the kind, begins his enunciation of the law 
 thus : ' There can, of course, be no doubt that 
 nobody has any right to represent his goods as the 
 goods of somebody else.' 
 
 To give one more, and a longer quotation. Lord 
 Justice Cotton, in the Singer Manufacturing Com- 
 
 * 13 R.P.C. 218 ; L.R., 1896, A.C. 199.
 
 10 PASSING OFF 
 
 pany v. Loog* said : * The question is this, whether 
 the defendant has represented that the goods manu- 
 factured by him were manufactured by the plaintiffs, 
 or whether he has done anything calculated so to 
 represent. I quite agree that it is unnecessary that 
 a fraudulent intention in issuing the circulars com- 
 plained of should be established. If the natural 
 consequence of those things, even in circumstances 
 not known to him, is that they will represent the 
 goods to be those of another person, it is wrongful, 
 and, as this Court says, a fraud in him, to continue 
 the user after those circumstances are brought to 
 his knowledge. We must consider whether he has 
 represented, or done that which is reasonably cal- 
 culated to give that misrepresentation, and we must 
 consider what is relied on.' 
 
 In that case certain circulars, price-lists, and in- 
 voices issued by the defendant were relied on by the 
 plaintiffs as containing or involving a representation 
 that the defendant's goods were the plaintiffs'. The 
 Court of Appeal decided that they did not, and the 
 House of Lords affirmed the decision of the Court 
 of Appeal. Although in that case the circulars, etc., 
 were held not to contain the illegal misrepresenta- 
 tion, yet in other cases it has been held that similar 
 documents have contained or conveyed a representa- 
 tion that the defendant's goods in connection with 
 * L.R. i8 Ch. Div. 417.
 
 PASSING OFF II 
 
 which they were issued were the plaintiffs'.* The 
 plaintiff, in a passing-off action, then, must satisfy 
 the court that what the defendant has done amounts 
 to a representation, or will be taken to be a re- 
 presentation, that the defendant's goods are the 
 plaintiff's. Such a representation can be made in 
 a variety of ways, some of the most prominent of 
 . which will be mentioned later. 
 
 Lord Chancellor Halsbury dealt with this subject 
 in Powell v. Birmingham .Vinegar Brewery Company 
 in the House of Lords.t After referring to the rule 
 that no man has any right to represent his goods 
 as the goods of another, Lord Halsbury said : 
 * The most obvious way in which a man would 
 infringe this rule is if he were to say in terms, 
 *' these are the goods manufactured by " a rival 
 tradesman, and it seems to be assumed that unless 
 he says something equivalent to that no action will 
 lie. It appears to me that that is an entire de- 
 lusion. By the course of trade, by the existence 
 and technology of trade, and by the mode in which 
 things are sold, a man may utter that same proposi- 
 tion, but in different words, and without using the 
 name of the rival tradesman at all. A familiar 
 example, of course, is when, without using any 
 
 * See /rty v. Ladler, 6 R.P.C. 136; Faidder and Co. v. 
 Rushton, 20 R.P.C. 477. 
 t 14 R.P.C. 727.
 
 12 PASSING OFF 
 
 name, by the identity of the form of the bottle, or 
 the form of the label, or the nature of the thing sold 
 in the package, he is making the statement, not in 
 express words, but in one of those different forms, in 
 which the statement can be made, by something that 
 he knows will be so understood by the public' 
 
 PART III 
 
 Copying or Imitating Trade Marks 
 
 Now as to some of the ways in which the repre- 
 sentation complained of in a passing-off action can 
 be made. First of all, it can be made by copying or 
 colourably imitating the plaintiff's trade marks or 
 labels. It is not intended on this occasion to deal 
 more fully Nvith the trade marks than is necessary 
 for the exhaustive treatment of the subject under 
 consideration. The use of a trade mark was one of 
 the earliest, and is now the most general, and, in 
 fact, the most effectual means that a trader can use 
 to distinguish his goods in the market. It is a 
 means which easil}' impresses itself on the minds of 
 the purchasing public, and it lends itself admirably to 
 pictorial advertising. Of course, it is open to piracy, 
 but where the goods of A are known and distinguished 
 only by A's trade mark, a rival who wishes to pass
 
 PASSING OFF 13 
 
 off his goods as the goods of A can only do so by 
 copying or colourably imitating A's trade mark, which 
 is illegal. The simpler a trade mark is the better 
 for trade purposes, because a simple mark does not 
 lend itself so readily to colourable imitation as a 
 trade mark composed of or containing several 
 elements. Trade marks can, of course, be registered, 
 and by the Statute at present in force the registration 
 of a person as proprietor of a trade mark is prima facie 
 evidence, and, after five years, conclusive evidence of 
 his right to the exclusive use of the trade mark. In 
 such a case, if a rival simply copies the registered 
 trade mark, the proprietor can restrain the use of 
 the copy as a matter of course — i.e., he need not 
 establish that the use of the copy is calculated to 
 represent that the goods of the infringer are his 
 goods. When, however, the trade mark is not 
 simply copied, but only imitated, different con- 
 siderations come into play. In such a case, the 
 owner of the trade mark, to succeed in an action for 
 infringement, has to prove that the imitation which 
 he complains of is calculated to deceive — calculated 
 to lead to the goods of the infringer being taken for 
 his goods — in fact, he has to prove, just as he would 
 have in a passing-off action, that the infringer by 
 using the imitation of his trade mark is representing 
 his goods as those of the plaintiff. Is there, then, 
 no difference between an action for infringement of a
 
 14 PASSING OFF 
 
 registered trade mark by imitating it and an action 
 for passing off? Yes, there is a most important 
 difference. In the majority of passing-off actions 
 the plaintiff has to allege and prove that something 
 on which he relies denotes his goods in the market, 
 or (changing the phrase) distinguishes them from the 
 goods of other traders, and it is because of his goods 
 being so denoted or distinguished that he alleges 
 that the defendant's conduct amounts to a repre- 
 sentation that the defendant's goods are the plaintiff's. 
 This the plaintiff in a passing-off action often fails 
 to prove, and if he fails to prove it his action will be 
 dismissed with costs; whereas in an action for in- 
 fringement of a registered trade mark the Court 
 assumes — in fact, is bound to assume — that the 
 plaintiff's trade mark performs its proper function 
 of denoting or distinguishing his goods in the 
 market. This difference will be more fully appre- 
 ciated when it is seen how often a plaintiff, in an 
 action for passing off founded on a copying of that 
 which he claims as his trade name, fails to prove 
 that it is his trade name because he fails to prove that 
 it denotes or distinguishes his goods on the market. 
 
 It was in reality to assist trade mark owners by 
 relieving them of the necessity of proving in actions 
 of infringement that their trade marks denoted 
 or distinguished their goods in the market that 
 the system of registration of trade marks was
 
 PASSING OFF 15 
 
 introduced by the Trade Marks Registration x\ct, 
 1875. That Act provided for the registration of 
 marks which were trade marks within the definition 
 clause of the Act. By a section engrafted on this 
 Act of 1875 by an Act passed about a year after- 
 wards — i.e., in 1876, it was enacted that ' From and 
 after the ist day of July, 1877, a person shall not 
 be entitled to institute any proceeding to prevent 
 or to recover damages for the infringement of any 
 trade mark as defined by the principal Act until 
 and unless such trade mark is registered in pur- 
 suance of that Act, or until and unless with respect 
 to any device, mark, name, combination of words, or 
 other matter or thing in use as a trade mark before 
 the passing of the principal Act, registration thereof 
 as a trade mark under the principal Act shall have 
 been refused as hereinafter is mentioned.' 
 
 The last part of this provision of the Statute was 
 intended to preserve the rights of the owners of old 
 trade marks — that is, trade marks in use before the 
 13th of August, 1875 — the date of the passing of the 
 Act of 1875 — by allowing them to sue for infringement, 
 whether their marks were registered or not ; but in 
 an infringement action a plaintiff, the owner of an 
 old trade mark, must do one of two things, either 
 produce a certificate of registration, or produce a 
 certificate of refusal of registration. With regard to 
 trade marks that came into existence — i.e., began to
 
 i6 PASSING OFF 
 
 be used after the 13th of August, 1875, if they were 
 trade marks within the definition clause of the Act 
 of 1875, then, according to the provision under con- 
 sideration, they must be registered before they could 
 be sued upon. But then, what would be the position 
 of a mark which came into use after the 13th of 
 August, 1875, which was a trade mark properly so- 
 called because it denoted or distinguished the goods 
 of the owner in the market, but which could not be 
 registered because it did not fall within the definition 
 clause of the Act of 1875 ? Was such a mark with- 
 out protection ? No. But then, what was the pro- 
 tection ? It was this. The High Court, exercising 
 Equity jurisdiction, held that the Trade Marks Regis- 
 tration Act in no way interfered with the old juris- 
 diction of Courts of Equity to restrain a man from 
 doing that which was calculated to pass off his goods 
 as the goods of a plaintiff who was involving that 
 jurisdiction. This was the decision of the Court of 
 Appeal in the well-known case of Mitchell v. Henry.* 
 No more need be said about this provision of the Act 
 of 1875, but reference must be made to the one in 
 force now — namely, Section 77 of the Patents, De- 
 signs and Trade Marks Act, 1883. That section is in 
 these words : ' A person shall not be entitled to insti- 
 tute any proceeding to prevent or to recover damages 
 for the infringement of a trade mark unless, in the case 
 
 * L.R. 15 Ch. Div. 181.
 
 PASSING OFF 17 
 
 of a trade mark capable of being registered under this 
 Act, it has been registered in pursuance of this Act, 
 or of an enactment repealed by this Act, or, in the 
 case of any other trade mark in use before the 13th of 
 August, 1875, registration thereof under this part of 
 this Act, or of an enactment repealed by this Act, 
 has been refused. The Comptroller may, on request, 
 and on payment of the prescribed fee, grant a certifi- 
 cate that such registration has been refused.' 
 
 With regard to the wording of the section, it is 
 necessary to observe that the words 'trade mark 
 capable of being registered under this Act ' in effect 
 now mean a trade mark which is a trade mark 
 within the meaning of Section 64 of the Act of 1883, 
 as it stands after the alterations effected by the 
 amending Act of 1888. There is really no material 
 difference between Section "]"] of the Act of 1883 and 
 the corresponding provision of the previous Act to 
 which attention has just been drawn. 
 
 This being so, of course it has been held to have 
 no interfering effect with the equitable jurisdiction of 
 the High Court to restrain passing off. But the 
 point that it has such an effect has been raised and 
 argued, although without success. Thus, in the case 
 of the Great Tower Street Tea Company v. Lang f or d,'^ 
 in 1887, where the plaintiffs complained of the 
 defendants selling tea in packets which were a 
 
 * S R.P.C. 66.
 
 i8 PASSING OFF 
 
 colourable imitation of the plaintiffs' packets, it was 
 argued for the defendants that as some of the letter- 
 press on the plaintiffs' packets was capable of regis- 
 tration under Section 64 of the Act of 1883, and 
 was not so registered, the plaintiffs were prevented 
 by Section "]"] from suing in respect thereof; but 
 Lord Justice Stirling (then Mr. Justice Stirling) 
 said : ' I think the decisions of the court have gone 
 to the extent of sa3'ing that the old law still remains, 
 and that you are not entitled to sell your goods in 
 such a way as to lead the person buying them to 
 believe that they are the goods of another man. 
 That is the real question, and, as I understand it, 
 the decisions of the Court of Appeal come to this : 
 that the old law still remains, and it is upon that 
 ground that the present case is put. Therefore I 
 have to decide in this case whether the defendants are 
 really selling their goods in such a way as to get the 
 benefit of the reputation of the plaintiffs. I think 
 upon the evidence that I must take it that they are.' 
 The point arose in a few other cases subsequently, 
 and then, in 1895, came the well-known Yorkshire 
 Relish case, Powell v. Birmingham Vinegar Brewery 
 Company, which went ultimately to the House of 
 Lords. There the plaintiff had registered the words 
 * Yorkshire Relish ' as an old trade mark. Proceed- 
 ings were taken to get this mark removed from the 
 Register of trade marks, and they were successful,
 
 PASSING OFF 19 
 
 and the mark was removed from the Register on the 
 ground that the words had never been used by them- 
 selves as a trade mark on the goods themselves, and 
 therefore ought not to have been registered. Subse- 
 quent to this removal, the plaintiff commenced an 
 action against the Birmingham Vinegar Brewery 
 Company, complaining of their using the words 
 ' Yorkshire Relish ' on a sauce of theirs, and thereby 
 passing off their sauce as his. He succeeded in the 
 Court of First Instance, in the Court of Appeal, and 
 in the House of Lords.* It might have been well 
 expected that this and the other cases to which refer- 
 ence has been made would have set the point at rest. 
 But no ! Very recently, in the case of Faulder v. 
 Rushton,\ the point cropped up again. That was a 
 case in which the plaintiffs in a passing-off action 
 complained of the use by the defendants of the word 
 * Silverpan ' in respect of jams. This word the 
 plaintiffs had used for fourteen years for their jams, 
 and had registered as a prominent part of a trade 
 mark, which trade mark had, however, been expunged 
 from the Register. The plaintiffs having obtained an 
 injunction, the defendants brought the matter before 
 the Court of Appeal, who dismissed their appeal, and 
 held that the injunction was rightly granted. Lord 
 Justice Vaughan Williams, in delivering his judg- 
 ment, said : * Having said that the question in this 
 
 * 14 R.P.C. 720. t 20 R.P.C. 477. 
 
 2 — 2
 
 20 PASSING OFF 
 
 case is a mere question of fact, I had better, before 
 I go any further, dispose at once of a question of law 
 which Mr. Moulton mentioned in the earlier part of 
 his opening, but on which very little reliance was 
 placed, either by Mr. Moulton at the end of his 
 address, or by Mr. Maberly at any time in his 
 address. That is a suggestion that the effect of 
 Section 77 of the Act of 1883 is to disable the 
 plaintiffs from bringing this action at all. I cannot 
 agree. I only read Section 77 as defining the con- 
 ditions which are necessary if anyone claims the 
 benefits of that Statute. You cannot claim the 
 benefits of that Statute unless certain conditions are 
 present, one of which is that you have placed your 
 trade mark on the Register, and so placed it there as 
 to be entitled to keep it there. I shall say no more 
 upon that part of the case.' 
 
 PART IV 
 
 Protection of Trade Marks, Registered 
 and Unregistered 
 
 The last-quoted judgment puts the position quite 
 clearly. If a trade-mark owner finds that his trade 
 mark is being copied or colourably imitated, then, of 
 course, he desires to stop that infringement of his
 
 PASSING OFF 21 
 
 rights ; if his trade mark is registered, then he brings 
 an action for infringement of registered trade mark, 
 in which case he obtains what the Lord Justice calls 
 * the benefits of the Statute,' which are not incon- 
 siderable. He need not, as we have seen, prove that 
 his trade mark denotes or distinguishes his goods, 
 and if the defendant has, in the course of the pro- 
 ceedings, in any way questioned the right to the 
 exclusive use of the trade mark, the plaintiff, if he 
 wins the action, can get a certificate that such right 
 came in question, with the result that in any sub- 
 sequent action for infringement of the same trade 
 mark he will get solicitor and client costs, unless 
 the judge in such subsequent action expressly de- 
 prives him of the same. If, however, the trade mark 
 is not registered, then the plaintiff's action will be 
 one for passing off, and his claim will be that by 
 using a copy or a colourable imitation of the mark 
 which denotes or distinguishes the plaintiff's goods 
 in the market the defendant is representing that his 
 goods are the goods of the plaintiff. The plaintiff 
 will then have to prove two things — first, that the 
 mark on which he relies does in fact denote or dis- 
 tinguish his goods in the market ; secondly, that the 
 mark which the defendant is using is calculated to 
 represent his goods as being the goods of the 
 plaintiff.
 
 22 PASSING OFF 
 
 PART V 
 
 Distinctive Labels 
 
 Now as to labels. A label is very frequently used 
 as the principal or only means of denoting or dis- 
 tinguishing a trader's goods in the market. A label 
 that distinguishes or is capable of distinguishing a 
 trader's goods in the market must obviously be a 
 distinctive label. A distinctive label is one of the 
 things which, under the Statute, is capable of being 
 registered as a trade mark.* But there is a disposition 
 nowadays not to register distinctive labels as trade 
 marks because of the requirements of the Patent 
 Office as to disclaiming the right to the exclusive use 
 of portions of the label when registering. It is not 
 intended now to go into this question of disclaimer, 
 
 * It has been held that for a distinctive label to be registerable 
 as a trade mark it must contain one of the essential particulars 
 enumerated in the section of the Act as to registerable trade 
 marks (see Wright^ Crossley and Co!s Trade Mark, 17 R.P.C. 
 398). But this is erroneous. A ' distinctive label ' is of itself 
 an essential particular within the section ; to say that it shall not 
 be an essential particular unless it contains within itself another 
 essential particular is to override the language of the Act. 
 'Distinctive' was defined by Lord Halsbury, L.C, as 'dis- 
 tinguishing a particular person's goods from somebody else's 
 goods ' {Perry Davis v. Harbord, 7 R.P.C. 340). Why it should 
 be attempted to limit this common-sense definition it is difficult 
 to see.
 
 PASSING OFF 23 
 
 important though it is. It must suffice to say that 
 there is that disposition not to register labels as trade 
 marks to which allusion has just been made, and 
 that in consequence thereof there are numbers of 
 unregistered labels in use which could be, and would 
 be, registered if the Statute was properly construed 
 in this respect. 
 
 An unregistered label can only be protected by 
 means of a passing-off action. But in this way it 
 can be protected, for of course it is no more legal for 
 B to represent his goods to be A's goods by copying 
 or imitating A's label than in any other way. If in 
 a passing-off action the court is satisfied that the 
 plaintiffs label is known in the market as denoting 
 or distinguishing the plaintiff's goods, then it will 
 restrain another trader from using such a label as 
 would be calculated to deceive— z.^^., such a label as 
 will amount to a representation that such trader's 
 goods are the plaintiff's goods. 
 
 PART VI 
 
 Labels Distinctive by Reason of Device 
 or Catchword 
 
 For the purpose of the following remarks labels may 
 be divided into two classes— first, there are labels 
 in which the most prominent or salient feature is
 
 24 PASSING OFF 
 
 some device, which may or may not be a regis- 
 tered trade mark, or some catchword or catch- 
 words which the owner of the label claims as his 
 trade name; second, there are labels in which the 
 prominent or salient feature—/.^., that which catches 
 the eye or arrests the attention of the purchaser or 
 would-be purchaser — is the general appearance, or, 
 as it is called, the ' get-up ' of the label. With regard 
 to the first class, the owner of the label has to estab- 
 lish to the satisfaction of the court that the device 
 or catchword that he relies on is associated or iden- 
 tified with his goods in the market — i.e., distinguishes 
 them in the market — and then he can restrain a rival 
 from using this device or catchword, or any imitation 
 thereof, in such a way as to deceive — i.e., in such a 
 way as to make the actionable misrepresentation to 
 which reference is being frequently made. In such 
 a case it is no defence for the trader whose conduct is 
 complained of to say ' in all other respects my label is 
 quite different to yours,' or * I am using my own name 
 on my label.' A very striking illustration of this is 
 found in the Yorkshire Relish case {Powell v. Birming- 
 ham Vinegar Brewery Company). There the plaintiff 
 established that the words ' Yorkshire Relish ' were 
 his trade name — i.e., that they distinguished his sauce 
 from the sauces of other makers. He obtained an 
 injunction against the defendants to restrain them 
 from using those words, as they were using them,
 
 PASSING OFF 25 
 
 notwithstanding that the general appearance of their 
 label, on which the words appeared, was quite different 
 to his. Their label was a white label with gilt letter- 
 ing, and in the centre was St. George and the Dragon 
 on a gilt disc. Powell's label was one on which the 
 printing was partly in white and partly in red. 
 There was a great deal of blue about the label, and 
 in the centre was a willow-pattern plate in blue and 
 white. Then, again, Powell's firm name of Goodall, 
 Backhouse and Co. appeared conspicuously at the 
 bottom of his label, while the ' Birmingham Vinegar 
 Brewery Co., successors to Holbrook and Co.,' ap- 
 peared prominently at the bottom of their label. 
 In fact, for trade purposes there was no similarity 
 between the two labels, except that they both con- 
 tained prominently the words ' Yorkshire Relish.' 
 Yet the injunction awarded prevented the defendants 
 from continuing to use their label because of the 
 words * Yorkshire Relish ' being on it. If they had 
 liked to take out * Yorkshire Relish ' and substitute 
 ' Cornish Relish,' they might have gone on using the 
 label, but they did not, for reasons which are not 
 difficult to conjecture.
 
 26 PASSING OFF 
 
 PART VII 
 
 Labels Distinctive by Reason of ' Get-up! 
 
 The second class of labels are those which are dis- 
 tinctive of the owner's goods in the market, not by 
 reason of any one salient or prominent feature, but 
 because of the general appearance or * get-up.' Here 
 it may be remarked that it is by no means an easy 
 matter for a trader who relies solely on the general 
 appearance or get-up of a label to protect such a 
 label, because it is not easy to satisfy the court that 
 it is the general appearance of a label which attracts 
 would-be purchasers, or which purchasers go by as 
 denoting the goods they wish to obtain ; and, in 
 addition, there is a growing disposition on the part of 
 judges to give the go-by to what is the real point — 
 i.e., whether the label complained of is, as a whole, 
 calculated to deceive, and in lieu thereof to take this 
 line- to dissect the two labels, the plaintiffs and 
 defendant's, to pick out the points of resemblance 
 and the points of difference between the two, and 
 then to give the greatest weight to the points of 
 difference, or, indeed, even to ignore the points of 
 resemblance, if those points are matters common to 
 the trade. This process utterly ignores the fact that 
 in a case where the plaintiff relies on general get-up 
 he is not rel3ang on any element or elements of that
 
 PASSING OFF 27 
 
 get-up, but on the combination of the whole, and 
 upon the effect which that combination has in the 
 ordinary course of trade. The question really is, not 
 how many of the elements the defendant has taken, 
 or how many he has not taken, or what additions, if 
 any, he has made, but does his label as a whole look 
 so like the plaintiff's as a whole that unwary customers 
 would take his label for the plaintiff's ? The case of 
 Lever v. Goodwin* decided in 1887, is a very good 
 illustration of what is meant. There the plaintiffs put 
 their soap into wrappers of imitation parchment paper 
 (which was then not a common thing), and printed 
 (which was unusual) some letterpress on it in spaced 
 or broken type ; i.e., so that the letterpress read in two 
 ways, either straight ahead or, as it were, in jumps — 
 i.e., reading only the lines which were printed in large 
 capitals and omitting the intermediate parts in smaller 
 type, and this get-up was identified with Lever's soap. 
 The defendants put up their soap in wrappers of 
 imitation parchment paper, and they also printed on 
 the wrappers letterpress in spaced or broken type. 
 Their letterpress was quite different from the 
 plaintiffs', and the defendants' name, ' Goodwin's,' 
 appeared in capitals four times among the letter- 
 press. Mr. Justice Chitty, who tried the case, decided 
 in favour of the plaintiffs. He said : * I hold, as a 
 matter of fact, that when these things are looked at 
 
 * 4 R.P.C. 492.
 
 28 PASSING OFF 
 
 in the way in which they would be by an ordinary 
 purchaser, not side by side, but where a man or a 
 woman has bought the plaintiffs' and then goes to 
 the shop and gets this other thing, the defendants', 
 handed, the things are so alike as to be calculated to 
 deceive. I do not think it is necessary to read through 
 the whole of the wrappers, because I am satisfied the 
 purchasers do not do that as a rule. There is a large 
 class of purchasers who do not ; but the thing is just 
 in regard to form, in regard to shape, and in regard, 
 in fact, to all that should be intended to distinguish 
 the one from the other, in such a form as, I think, is 
 calculated to deceive. A point, and a strong point, 
 which was made for the defendants was that their 
 nartie appeared, and so it does. I am afraid that it 
 is that which led the defendants, when they were 
 preparing their wrapper, to think that they could 
 escape. " If I put my name on it, I can then always 
 say that my name would not be mistaken for the 
 plaintiffs'," but, unfortunately for them, and for their 
 point of view, but fortunately, I think, in the interests 
 of justice, that is not a sufficient answer. It is a 
 matter to which I have, of course, given great weight, 
 but I think it is not sufficient.' 
 
 The case went to the Court of Appeal, who upheld 
 the decision of Mr. Justice Chitty. It was strongly 
 contended in the Court of Appeal on behalf of the 
 defendants that the plaintiffs had no monopoly in the
 
 PASSING OFF 29 
 
 elements of their wrapper, and that the defendants 
 ought not to be restrained from using things in which 
 the plaintiffs had no monopoly. This Lord Justice 
 Cotton characterized as an obvious fallacy. He said : 
 ' There may be no monopoly at all in the individual 
 things separated, but if the whole are so joined 
 together as to attempt to pass off, and to have the effect 
 of passing off, the defendants' soap as the plaintiffs', 
 then, although the plaintiffs have no monopoly either 
 in "Self-washing " or "Self- washer," or in the parch- 
 ment paper, or in the spaced printing, yet if those 
 things, in which they have no sole right, are so com- 
 bined by the defendants as to pass off the defendants' 
 goods as the plaintiffs', then the defendants have 
 brought themselves within the old common law doc- 
 trine, in respect of which equity will give to the 
 aggrieved party an injunction in order to restrain the 
 defendant from passing off his goods as those of the 
 plaintiff.' 
 
 PART VIII 
 
 Comparison of Labels 
 
 A RECENT important label case is that of Fayion v. 
 Snelling, which was before the House of Lords in 
 1900.* There the plaintiffs relied on the general get- 
 up of their coffee tins, and the facts were substan- 
 
 * 17 R.P.C. 628.
 
 30 PASSING OFF 
 
 tially these : The plaintiffs began by seUing their 
 coffee in circular tins, surrounded by paper labels. 
 The predominant colour of the label for one quality 
 was red, for another quality blue, and for another 
 quality green. There were three sizes of the tins of 
 each colour. The plaintiffs subsequently adopted 
 enamelled tins in red and blue, displaying a repro- 
 duction of the labels for the two larger sizes of the 
 two higher qualities. The smaller tins of these 
 qualities, and all of the lowest quality, were still 
 used with paper labels. The brand ' Royal ' ap- 
 peared on the back and front of all the plaintiffs' 
 tins. The defendants sold coffee in circular red, 
 blue, and green tins, all of which were enamelled, 
 resembling in general appearance, but differing in 
 details, from the plaintiffs' tins. The brand ' Flag ' 
 appeared upon the back and front of all the defen- 
 dants' tins, and their trade mark a flag, in tricolour, 
 was on the front of each tin. The names and ad- 
 dresses of the plaintiffs and defendants were not 
 placed upon their respective tins. The action was 
 tried before Mr. Justice Byrne, who held in effect 
 that the defendants' tins were calculated to deceive, 
 and gave judgment for the plaintiffs. The defendants 
 then went to the Court of Appeal, who differed from 
 Byrne J., and decided against the plaintiffs. The 
 plaintiffs then went to the House of Lords, who 
 affirmed the decision of the Court of Appeal. Lord
 
 PASSING OFF 31 
 
 Lindley, in his judgment in the Court of Appeal,* 
 said : ' What is it that the plaintiffs must make out 
 in order to entitle them to succeed in this action ? 
 They must make out that the defendants' goods are 
 calculated to be mistaken for the plaintiffs'; and 
 where, as in this case, the goods of the plaintiff and 
 the goods of the defendant unquestionably resemble 
 each other, but where the features in which they 
 resemble each other are common to the trade, what 
 has the plaintiff to make out ? He must make out, 
 not that the defendant's are like his by reason of 
 those features which are common to them and other 
 people, but he must make out that the defendant's 
 are like his by reason of something peculiar to him, 
 and by reason of the defendant having adopted some 
 mark, or device, or label, or something of that kind, 
 which distinguishes the plaintiff's from other goods 
 which have, like his, the features common to the 
 trade. Unless the plaintiff can bring his case up to 
 that, he fails. It appears to me that when once you 
 get that clearly in your mind, when you eliminate 
 those features which are common to the trade and 
 ask yourselves, not whether the plaintiffs' and the 
 defendants' things are alike, but whether the de- 
 fendants have copied that which distinguishes the 
 plaintiffs', the conclusion must be different from that 
 at which the learned Judge arrived.' 
 
 * 17 R.P.C. 52.
 
 32 PASSING OFF 
 
 In the House of Lords this expression of Lord 
 Lindley's opinion was not dissented from. It was 
 not expressly referred to, but Lord Macnaghten and 
 Lord Davey both said that they entirely agreed with 
 the judgments of the Court of Appeal. Therefore it 
 appears to lay down the present rule of the court on 
 the subject, and that rule is quite different to what it 
 was when Lever v. Goodwin was decided. The 
 rule now seems to be that you must eliminate every- 
 thing that is common to the trade before you begin 
 to consider whether a defendant's label so closely 
 resembles a plaintiff's label as to be calculated to 
 deceive. In the case of Lever v. Goodwin, if you 
 had eliminated everything common to the trade in 
 the plaintiff's label, you would have had only the 
 word * Sunlight ' left, and if you had eliminated every- 
 thing common to the trade from the defendant's label, 
 you would have had only the word ' Goodwin's ' left. 
 No one could have traced any resemblance to * Sun- 
 light ' in 'Goodwin's,' so that if the elimination pro- 
 cess had been applied in that case the plaintiff must 
 have failed. It cannot be that the last word has 
 been said on this subject. The Courts in comparing 
 labels of the kind now under consideration for the 
 purposes of passing-off actions, may return to the 
 old, and, as is submitted, the correct way of looking 
 at them, and look at them as a whole — i.e., look at 
 them as they are actually used, and as they actually
 
 PASSING OFF 33 
 
 strike the eye of the purchaser or intending pur- 
 chaser. It is quite possible to have a label on which 
 every single element may be common to the trade, 
 and yet the combination of those elements may be 
 so novel and so striking that the whole may be so 
 distinct from any other label in use in the particular 
 trade as to be admirably suited to distinguish the 
 owner's goods in the market. Such a label ought to 
 be entitled to protection, but so long as the elimina- 
 tion rule prevails it is not. 
 
 It may be remarked that when comparing a 
 plaintiffs label and a defendant's label in a passing- 
 off action, where the plaintiff relies on his label as a 
 whole, the question which the Court has to decide is 
 really the same whether the label is registered as a 
 trade mark or not, the question being, of course. 
 Is the defendant's label as a whole so like the 
 plaintiffs label as a whole that the defendant's 
 goods on which it is used will be taken to be the 
 plaintiffs ? Therefore the recent and very instructive 
 case of Hennessy v. Dompe * may be mentioned, where 
 the plaintiffs sought an injunction to restrain the use 
 by the defendants of a label on brandy bottles, which 
 they contended was an illegal imitation of their well- 
 known brandy label, which is registered as a trade 
 mark. Hennessy's label was oblong — a common shape 
 in the trade. In the centre was 'James Hennessy 
 
 * 19 R.P.C. 333. 
 
 3
 
 34 PASSING OFF 
 
 and Co.'s Cognac' — cognac being below the firm's 
 name. The word * cognac ' is, of course, common to 
 the trade, and the position of the firm's name is common 
 to the trade. All round the label were garlands of vine 
 leaves ; but garlands of vine leaves are common to 
 the trade. At the top of the label, over the name 
 ' Hennessy and Co.,' was a bar with curved and 
 scrolled ends, from which rose a mailed arm holding 
 a battle-axe. This was the only part of the label, 
 except the firm's name, peculiar to the plaintiffs ; 
 but it was not established that the public paid atten- 
 tion to this device in purchasing the plaintiffs' goods, 
 although one of the plaintiffs' witnesses said that it 
 was well known as denoting their brandy. The 
 plaintiffs' label in use was printed in white and gold, 
 a method of printing common to the trade. The 
 defendants' label, of which the plaintiffs complained, 
 was of the same shape as the plaintiffs', and was 
 similarly printed in white and gold. In the centre 
 was 'Jules Chateau et Cie. Cognac' printed, with 
 cognac placed below the firm's name. Round the 
 label were garlands of vine leaves. On the top of 
 the label over the firm's name was a bar with curved 
 and scrolled ends, very closely resembling in shape 
 and appearance the plaintiffs' bar (which, by the 
 way, the plaintiffs did not claim to be peculiar to 
 them), but nothing rose from the defendants' bar. 
 In fact, the general resemblance in appearance of the 
 
 J
 
 PASSING OFF 35 
 
 two labels was very striking. The case came before 
 Mr. Justice Kekewich, who decided against the 
 plaintiffs, holding that the defendants' label was not 
 calculated to deceive. He adopted in his judgment 
 the elimination process. He disregarded all the 
 elements that were common to the trade, and went 
 solely on the presence of the arm and battle-axe in 
 the plaintiffs' and its absence in the defendants', 
 and the substitution of Jules Chateau et Cie. for 
 James Hennessy and Co. Of course, the plaintiffs 
 appealed, and it would have been an excellent thing 
 in the interests of honest trade if the Court of 
 Appeal had had to give their views on the case, but 
 they had not ; for before the appeal was reached in 
 the list the parties appeared before the Court of 
 Appeal, and the defendants admitted that their label 
 was an infringement (although, as they said, an 
 innocent infringement) of the plaintiffs' registered 
 label. Whereupon, by consent, the judgment of 
 Mr. Justice Kekewich was reversed, and an injunc- 
 tion was granted to restrain the further use of the 
 defendants' label.* Of course, the defendants would 
 not have taken this course had they thought that the 
 Court of Appeal would have supported the judgment 
 of Mr. Justice Kekewich. 
 
 * 20R.P.C. 175. 
 
 3—2
 
 36 PASSING OFF 
 
 PART IX 
 
 T^'ade Names 
 
 The next branch of the subject to be dealt with 
 is passing off by unlawfully using the trade name 
 which denotes or distinguishes the goods of a trader 
 in the market. ' Trade name ' may for present pur- 
 poses be defined as a word or a combination of words 
 {i.e., a phrase) which is used by the trade or the 
 public, or, as is more generally the case, by both 
 the trade and the public, when asking for, or ordering, 
 or otherwise in relation to the goods (or some of the 
 goods) of a particular trader. It should be borne in 
 mind that a trade name may be given to the goods 
 of a trader either by the trader himself or by those 
 who are in the habit of purchasing his goods, who 
 may be called the purchasing public ; in either case, 
 if it be his trade name, he can protect it. A trade 
 name may be given to goods by the purchasing 
 public in one of two ways, of which the most 
 common is by abbreviating the trade name given to 
 his goods by the trader himself. Thus Bass's Ale 
 is often abbreviated by the purchasing public into 
 * Bass,' so that Bass's Ale and * Bass ' are both trade 
 names for ale brewed by Bass, Ratcliff, and Gretton, 
 Limited. The other way in which the purchasing
 
 PASSING OFF 37 
 
 public may give a trade name to a trader's goods is 
 by applying to them a nickname, or a name derived 
 from some trade mark or portion of a trade mark, 
 or something in the get-up of the trader's goods. 
 Thus in a case tried seventeen or eighteen years 
 ago* it was proved that, although the Anglo-Swiss 
 Milk Company called their goods * Milkmaid ' and 
 * Milkmaid Brand,' many people called them * Dairy- 
 maid ' and ' Dairymaid Brand,' so the words 
 ' Dairymaid ' and ' Dairymaid Brand ' were treated 
 by the Court as being trade names denoting the 
 company's goods. In another case a manufacturer 
 of cherry brandy used on one kind of his cherry 
 brandy a label which represented a hunting scene, 
 with two huntsmen in * pink ' as the prominent 
 feature, and underneath ' Sportsman's Special 
 Quality.' This became known as ' Sportsman 
 Cherry Brandy,' but many people called it * Hunts- 
 man Cherry Brandy,' and this was recognised in 
 certain legal proceedingsf as the trade name of the 
 manufacturer's goods. In all cases of this kind the 
 question is whether a particular word or phrase is 
 in fact the trade name of the plaintiff's goods, not 
 who gave those goods that particular name. 
 
 Here it may be observed that it is quite possible 
 for a trader to have two trade names for the same 
 
 * Anglo-Swiss Milk Co. v. Metcalf, 3 R.P.C. 28. 
 t Re Barker's Trade Mark, 53 Law Times N.S. 24.
 
 38 PASSING OFF 
 
 goods, and if he seeks to protect one of such names, 
 it is no defence to say that his goods are as much 
 known by the one as by the other.* A trader's 
 goods may have two or more trade names in the same 
 district, or they may have two or more trade names 
 in different districts, and each and every one of 
 these trade names will be alike entitled to protection. 
 Again, a trade name, if it fulfil the conditions of 
 the Statute, is capable of registration as a trade 
 mark. If it is registered as a trade mark, it is pro- 
 tected by an action for infringement of trade mark ; 
 if it is not registered, it can only be protected by 
 means of a passing-off action. In the remarks on 
 trade names, which follow, only those are dealt with 
 which either cannot be or, in fact, are not registered 
 as trade marks. 
 
 Trade names may obviously be of different kinds. 
 One form of trade name is that in which the name 
 of the owner, or of his predecessor in business, or a 
 portion of such name, forms part of the trade name. 
 One instance of this has already been mentioned — 
 Bass's Ale ; others are Pears' Soap and Beecham's 
 Pills. Another kind of trade name is that into 
 which the place of origin of the goods, in respect of 
 v/hich it is used, enters. Instances of trade names of 
 this kind which have been upheld and protected 
 are * Glenfield Starch ' and ' Stone Ale.' ' Glenfield 
 * See Orr Ewi'ng V. Johnston^ L.R. 13 CD. at p. 446.
 
 PASSING OFF 39 
 
 Starch ' was the trade name of starch originally 
 made at Glenfield, but subsequently at another 
 place. * Stone Ale ' was the trade name of ale brewed 
 by a firm who had carried on business at Stone 
 over 100 years. * Yorkshire Relish,' too, may be 
 quoted as another instance. It was used as the 
 trade name of a sauce or relish (which are con- 
 vertible terms) made in Yorkshire. It is impossible 
 in a limited space to deal exhaustively with trade 
 names from a geographical point of view. All that 
 can here be said is that there is no difference in prin- 
 ciple between trade names which are geographical 
 and other trade names ; but they are difficult to 
 maintain, because it is generally difficult to establish 
 that they exist — i.e., that they are trade names. 
 
 PART X 
 
 Fanciful and Descriptive Trade Names 
 
 The two kinds of trade names which have been 
 the most frequent subjects of cases in the law are 
 fanciful trade names, and what are generally called 
 descriptive trade names. Fanciful trade names are 
 those which in no sense can be said to describe the 
 goods to which they are applied : such are * Eureka,' 
 as applied to shirts ; ' Excelsior,' as applied to soap. 
 Descriptive trade names are those which more or
 
 40 PASSING OFF 
 
 less completely describe the goods in respect of 
 which they are used. It is with regard to this kind 
 of trade names that the chief difficulties arise. The 
 judges are setting their faces strongly against traders 
 establishing trade names which are descriptive. 
 They do not say that it is impossible, but what they 
 say is that a man who wishes to establish as a trade 
 name that which is in fact a description of his goods 
 has a very difficult burden to discharge ; in fact, 
 some judges have gone so far as to say it is a burden 
 which he ought not to be able to discharge — i.e., 
 that a trader ought not to be permitted to claim 
 a descriptive term as his trade name. This arises 
 from a natural reluctance to allow one man in effect 
 to monopolize common descriptive words in the 
 English language which would be as appropriate to 
 describe the goods of others as to describe his goods. 
 This may be right in theory, but, still, when a trader 
 can establish that a descriptive term is in fact his 
 trade name the Court ought not to shrink, and 
 indeed will not shrink, from protecting it, although 
 the effect may be to give him virtually a monopoly 
 of the term. Thus in an old case the word ' Anatolia ' 
 was upheld as applied to liquorice, although Anatolia 
 was a district whence the liquorice root largely 
 came.* ' Yorkshire Relish ' has been upheld as the 
 trade name of a sauce or relish which was made 
 * McAndreiu v. Bassett, 4 De Gex, Jones and Smith, 380.
 
 PASSING OFF 41 
 
 in Yorkshire.* ' Camel Hair Belting ' was about the 
 same time upheld as the trade name for belting made 
 from a substance known in the trade as camel-hair, 
 and which in fact mainly consists of camel's hair.t 
 More recently ' Silverpan Jams ' was upheld as a 
 trade name for jams boiled in silvered pans4 On 
 the other hand, ' Flaked Oatmeal ' was held not to 
 be a trade name for the plaintiff's oats, which were 
 partially reduced to powder and virtually in a flaky 
 condition.^ ' Erect Form ' was held not to be a 
 trade name for ladies' corsets put upon the market 
 by the plaintiff, which were intended to produce 
 an erect or upright form in the wearer, |i and in 
 another late case, ' Naptha Soap ' was held not 
 to be a trade name for the plaintiffs' soap, in 
 which naphtha in one of its forms was an im- 
 portant ingredient.51 But why were the one lot of 
 cases decided one way, and the other lot the other 
 way ? The reason is this— in every trade name 
 case the plaintiff must satisfy the Court, upon the 
 evidence adduced, that that which he claims as his 
 trade name does in fact distinguish his goods in the 
 market from like goods of other traders. In the first 
 
 * Powell V. Birmtnghatn Vinegar Brewery Co. (ubi supra). 
 
 t Reddaway v. Bankain, 13 R.P.C. 218. 
 
 + Faulder v. Rushton, 20 R.P.C. 477- 
 
 § Parsons v. Gillespie, 15 R.P.C. 37. 
 
 II Weingarten v. Bayer., 20 R.P.C. 649. 
 
 \ Pels V. Hedley and Co., 20 R.P.C. 437-
 
 42 PASSING OFF 
 
 lot of cases the plaintiff succeeded in establishing 
 this ; in the second lot of cases he was held to have 
 failed to do so. It really depended upon the evidence 
 in each particular case. This is quite right in 
 theory, but, unfortunately, in practice it works rather 
 hardly on the owners of trade names. A plaintiff in 
 a trade-name case can never tell beforehand how 
 much evidence will satisfy the particular tribunal 
 before whom his case comes, therefore he ought to 
 be prepared with a considerable body of witnesses 
 to call, who can testify as to the identification of his 
 trade name with his goods in the market ; but when 
 he comes into Court he often finds that the judge 
 turns restive at the large number of witnesses, and 
 after some six or eight have been called, says to 
 the plaintiff's counsel, ' Cannot you shorten this ?' 
 If the plaintiff's counsel persists (as in reality he 
 ought to persist) in calling the rest of his witnesses, 
 the judge, being human, often resents his suggestion 
 not being complied with, and it is never politic to 
 ruffle the judicial ermine; but if the plaintiff's 
 counsel calls only a few witnesses to prove the 
 crucial part of his case, he runs the very great risk 
 of being told, when he gets before the Court of 
 Appeal, ' Oh, the plaintiff's evidence is much too 
 weak to establish the identification of this term with 
 his goods,' and the result is a decision against the 
 plaintiff. Nevertheless, it is perfectly certain that
 
 PASSING OFF 43 
 
 in a trade-name case the plaintiff must prove by 
 evidence that that on which he rehes as his trade 
 name does in fact denote or distinguish his goods 
 in the market. In the Yorkshire ReHsh case the 
 Court treated it as proved that when people asked 
 for Yorkshire Relish, they meant a particular sauce 
 made by a particular maker {i.e., the plaintiff) ; in 
 a Naptha Soap case the Court of Appeal held that, 
 upon the evidence, persons asking for Naptha Soap 
 merely wanted a soap with naphtha in it — i.e., not 
 necessarily the plaintiff's soap.* 
 
 PART XI 
 
 Evidence to prove a Trade Name in Court 
 
 Two questions that then naturally occur are : 
 (i) What is the nature of the evidence by which 
 a trader can prove that that which he claims as 
 his trade name does in fact denote or distinguish his 
 goods in the market ? and (2) what is the quantity 
 or amount of such evidence that he must adduce to 
 prove his proposition ? The answer to the first of 
 these questions is comparatively easy ; the answer to 
 the second is very difficult. As to the nature of the 
 evidence, the plaintiff has to prove that a con- 
 
 * Fds V. Thomas^ 21 R.P.C. 87.
 
 44 PASSING OFF 
 
 siderable proportion of the trade, or a considerable 
 proportion of the public, or better still, both — but 
 obviously not all the trade or all the public — in 
 asking for or ordering goods verbally, or in writing, 
 or in both wavs under his trade name, expect and 
 intend to be supplied with his goods sold under that 
 trade name and nothing else ; or, as it is sometimes 
 put more compendiously, that to them the trade 
 name means the plaintiff's goods and nothing else. 
 The evidence of this can and ought to be given by 
 traders — wholesale or retail — generally retail, because 
 retailers can speak, not only as to retail traders 
 generally, but also as to the public, which wholesale 
 traders cannot. Retail traders, speaking as to their 
 own purchases, either from the plaintiff direct or 
 from wholesale houses, can testify that when they 
 order goods under the trade name they expect and 
 intend to get the plaintiff's goods and nothing else, 
 and that if they got anything else, they would not be 
 getting what they wanted. They may also be able 
 to say that as far as their experience goes this is 
 true of the retail trade generally. They may be 
 able to go further, and state that they use the trade 
 name themselves in the ordinary course of their 
 business as denoting the plaintiff's goods, and to 
 distinguish them from other similar goods ; for 
 example, in their price-lists, if they issue any, or in 
 show-cards, or window-tickets which they use when
 
 PASSING OFF 45 
 
 displaying goods on the counter or in their windows. 
 But they ought to go still further and say, if they can 
 say it, that their customers, when they order goods 
 under the name which the plaintiff claims as his trade 
 name, expect and intend to get the plaintiff's goods 
 and no others. What proof of this assertion can 
 the retail traders give ? Sometimes they can quote 
 a customer's own words, but this is exceptional. 
 What they can always say is, that when a customer 
 asks for goods under the trade name in question 
 they always supply the plaintiff's goods, and they 
 have never known s a customer to say, ' That is not the 
 thing I wanted.' A retailer may, perhaps, say in the 
 witness-box (but this for obvious reasons will be 
 exceptional), 'Once when I had an order for goods 
 under the plaintiff's trade name I by inadvertence 
 supplied goods of another brand ; these were imme- 
 diately sent back by the customer as not being what 
 he had ordered.' 
 
 But the kind of evidence on which apparently 
 the greatest weight ought to be placed is the 
 evidence of members of the purchasing public. A 
 witness is called who says, ' I have been in the habit 
 of purchasing and using this article for a long time. 
 I am quite familiar with it, and I know it as so-and- 
 so (giving the trade name), and when I order goods 
 under this name I always expect and intend to get 
 the same article as that which I have been so long
 
 46 PASSING OFF 
 
 familiar with, and if I got another article I should 
 not be getting what I wanted.' This is extremely 
 strong evidence of the proposition that the trade 
 name does denote the plaintiff's goods to the public, 
 and it is increasingly the practice to adduce evidence 
 of this sort in trade-name cases. Of course, to call 
 one such witness would be insufficient, as no court 
 would place much, if any, reliance upon the evidence 
 of one such witness. But, then, how many such 
 witnesses ought the plaintiff to call ? It may be stated 
 that he ought to be prepared with from twenty to 
 thirty of such witnesses ; whether he will have to 
 put them all into the witness-box is another matter. 
 Probably not, for it may be anticipated that generally 
 (though not invariably) the same thing will happen 
 that happened in a recent case,* where, after the 
 plaintiff had called nine of such witnesses, the 
 counsel for the defendant admitted that if the rest 
 of the plaintiff's witnesses were called they would 
 give substantially the same evidence that was 
 given by those who were called, and the case was 
 tried out on this basis — i.e., on the basis that some 
 twenty or more witnesses had given this evidence, 
 and not simply the nine who had appeared in the 
 witness-box. In selecting his twenty or thirty 
 witnesses, the plaintiff must not take them all from 
 one locality, but from different parts of the countr)', 
 * Fels V. Hedley and Co., 20 R.P.C. 437.
 
 PASSING OFF 47 
 
 and in particular he ought to have some from the 
 locaHty where the defendant's trade is carried on. 
 The reason for this will be seen from a subsequent 
 reference to the case of Faulder v. Rnshton. 
 
 PART XII 
 
 A Trade Name must be known to a Substantial 
 Section of the Public 
 
 It is often said that a plaintiff to establish a trade 
 name must prove that it is ' generally ' known as de- 
 noting or distinguishing the plaintiff's goods from 
 other similar goods. Sometimes it is contended that 
 it must be universally so known. Universality of 
 recognition, it has been contended, is necessary to 
 the establishment of a trade name. ' Universally ' is 
 intelligible ; ' generally ' is an ambiguous term. If 
 'generally' means to a substantial section of the 
 public purchasing the goods, then it is certain that 
 the trade name must be * generally ' known ; but if 
 'generally' is to be taken as synonymous with 
 'universally,' then it is now estabhshed that it is 
 not necessary for a plaintiff to prove that his trade 
 name is either generally or universally known — ix.y 
 that all purchasers, or intending purchasers, in every 
 district in England know the trade name, and know 
 i1 as denoting or distinguishing the plaintiff's goods
 
 48 PASSING OFF 
 
 from other similar goods. On this subject Lord 
 Justice Romer, in Faulder v. Rushton* said : ' I 
 will take the first question which had to be decided, 
 and that may be stated as follows : At the time 
 when the defendants first commenced to use the 
 term " Silverpan," had that term acquired in the 
 markets of Lancashire, and in other markets, the 
 meaning of the plaintiffs' jams — that is to say, of 
 jams manufactured and sold by the plaintiffs? As 
 I have said, I think that on the evidence it had. Of 
 course, I do not mean that in every town in which 
 there was a market for jams you could find a majority 
 of the inhabitants who knew about this jam ; still 
 less do I suppose that a majority of inhabitants of 
 the districts in which this jam was chiefly sold, as 
 a whole, knew the jam intimately, or possibly at all ; 
 but I think that in the markets I have referred to 
 a substantial number of persons who were interested 
 in the question, and whom, from their position, one 
 would expect to have known about the jam, did so 
 know the plaintiffs' jam ; and I certainly think upon 
 the evidence that all who knew the phrase at all, as 
 applied to jam, before the acts of the defendants 
 which are complained of, identified the term as 
 meaning the plaintiffs' goods.' 
 
 Universality of recognition, therefore, is not re- 
 quired. What is required is that a substantial section 
 
 * 20 R.P.C. 477.
 
 PASSING OFF 49 
 
 of the purchasing public should be proved to identify 
 the trade name with the plaintiff's goods, and that 
 this should be true of the district in which the defen- 
 dant's trade is done. That this is so is shown by the 
 Silverpan case.* In that case, which was before the 
 Court of Appeal in 1903, the plaintiffs carried on 
 business at Stockport, and the defendants' trade was 
 in Wigan and the surrounding district. The plain- 
 tiffs' trade in Wigan was small, but they had a few 
 customers there. The defendants also had a shop at 
 Chorley, in which town the plaintiffs' goods were 
 known. It was contended by the defendants that, as 
 the plaintiffs had no real trade or reputation in Wigan, 
 therefore they could not complain of what the 
 defendants were doing there. The Court gave 
 judgment in favour of the plaintiffs. The passages 
 from the judgments of the Lords Justices bearing 
 on the point immediately under consideration were 
 these. Lord Justice Vaughan Williams said : * I 
 quite agree with Mr. Moulton that it is necessary 
 that the plaintiffs should identify the word " Silver- 
 pan " with their firm Faulders. . . . And I agree with 
 him further, that it is not only necessary that there 
 should be proof of the identification of this word 
 "Silverpan" with the plaintiffs' firm, but it is 
 necessary to show that that identification is recog- 
 nised within the district in which the defendants, 
 
 * Faulder v. Rushton^ 20 R.P.C. 477. 
 
 4
 
 50 PASSING OFF 
 
 whose use of the word' is complained of, carry on 
 business. But this does not mean that there must 
 be proof that the word " Silverpan " is recognised 
 by everyone in the district.' Lord Justice Romer 
 expressed himself on this point as follows : ' It 
 is true, as is said on behalf of the defendants, that 
 in Wigan itself the number of customers estab- 
 lished by evidence before the Court who have used 
 and been acquainted with the plaintiffs' jams is 
 not large ; that the amount of the plaintiffs' trade 
 there, as proved, is small. But looking at the 
 circumstances of the case, and how the plaintiffs' 
 goods have been advertised in Wigan and the neigh- 
 bourhood, I cannot come to the conclusion that the 
 customers, who know the plaintiffs' goods under the 
 term " Silverpan," are so few that they ought to be 
 disregarded in considering the question I am now 
 deahng with. But I may point out that the defen- 
 dants' shops are not even confined to Wigan. For 
 example, they have a shop at Chorley, where, again, 
 the plaintiffs have customers and where the plaintiffs' 
 goods are known ; and I need scarcely point out that 
 there is no reason, if the defendants are not stopped, 
 why they should not establish shops elsewhere than 
 in Wigan or in Chorley. If they have a right to 
 establish them in Wigan and in Chorley under exist- 
 ing circumstances, they may as well say they have a 
 right to establish them in other districts. And it is
 
 PASSING OFF 51 
 
 to be noticed that no one can say that the defendants 
 only execute orders from persons dwelhng in Wigan, 
 or even from persons dwelling in Chorley. If orders 
 came from persons not dwellers in Wigan and Chorley, 
 would the defendants refuse to execute them ? Of 
 course they would not.' 
 
 In this case it is clear that the Court of Appeal 
 came to the conclusion that the plaintiffs' goods were 
 known under their trade name in the district where 
 the defendants traded, although their sales were small. 
 But supposing a plaintiff's goods were well known 
 under his trade name in the district where the plain- 
 tiff traded, but were absolutely unknown in the dis- 
 trict where the defendant's trade was done, would the 
 plaintiff under such circumstances succeed in obtain- 
 ing an injunction to restrain the defendant from using 
 his trade name on his, the defendant's, goods ? The 
 answer must be in the negative, because the defendant 
 by using the trade name could not possibly pass off 
 his goods as the plaintiff's goods on customers who 
 had never heard of the plaintiff's goods, and therefore 
 never expected or intended to get the plaintiff's goods. 
 But this is confined to a case in which the plaintiff's 
 goods are absolutely unknown in the defendant's 
 district — the word * absolutely ' being emphasized. 
 Now, suppose another case — i.e., where the plaintiff's 
 goods under his trade name are slightly known in 
 the district where the defendant's trade is done. 
 
 4—2
 
 52 PASSING OFF 
 
 Would the plaintiff succeed in such a case ? Not if 
 * slightly ' means so slightly that it ought to be dis- 
 regarded. But if ' slightly ' means not to a very 
 large extent, then if that extent is such that com- 
 mercially it could not, and in fact would not, be 
 disregarded, then the plaintiff would succeed. All 
 such cases are matters of degree. This may be 
 safely said : that where the plaintiff's goods have 
 been identified by the plaintiffs trade name for a 
 long period in the other districts, and a fortiori in 
 districts adjacent to the district in which the de- 
 fendant's trade is done, it will not be necessary to 
 prove an extensive knowledge of the plaintiffs trade 
 name in this latter district, provided some substantial 
 recognition is established. 
 
 PART XIII 
 
 Trade Name — how Established 
 
 Here it should be pointed out that the establish- 
 ment of a trade name — i.e., the getting it recognised 
 by the trade or the public as denoting the plaintiffs 
 goods — is a matter of time. It is obvious that if 
 A puts goods on the market to-day under a new name, 
 which he intends to use as his trade name, he cannot 
 prove to-morrow that the trade or the public identify
 
 PASSING OFF 53 
 
 that name with his goods. Consequently, if B to- 
 morrow puts similar goods on the market under the 
 same name, A cannot complain, because he cannot 
 establish that it is his trade name. That which 
 is true of to-morrow would certainly be true of 
 to-morrow week, and probably of to-morrow month. 
 But, then, how long does it take to establish a trade 
 name on the market ? There is no fixed time limit, 
 and there can be none. It entirely depends on 
 circumstances. If the goods in respect of which the 
 trade name is used ' catch on ' — to use a very ex- 
 pressive colloquial term — then the sales soon begin 
 to be large, and the goods are soon widely known 
 under the trade name. If the sales grow slowly, the 
 recognition of the trade name grows with equal slow- 
 ness. This much is perfectly certain, that it is far 
 easier to establish in Court a trade name when the 
 goods in respect of which it is used have been a long 
 time on the market than it is when they have been a 
 short time on the market. In the leading cases in 
 which trade names have been held to have been 
 established the plaintiff's goods had been on the 
 market under the trade name for many years. In 
 the Yorkshire Relish case the period was over 
 twenty-five years ; in the Silverpan case about 
 fourteen years. On the other hand, in the Anatolia 
 Liquorice case the period was only about six 
 weeks. 
 
 iiii &
 
 54 PASSING OFF 
 
 Before passing away from the subject of the evidence 
 by which a trade name can be estabhshed it should 
 be remarked that the strongest evidence that can be 
 adduced is that which is sometimes furnished by the 
 defendant himself, by which is meant something that 
 the defendant has done or said, or letters written by 
 or to the defendant before the action was com- 
 menced. If the Court is satisfied that the defendant 
 has, in fact, recognised the plaintiffs trade name as 
 denoting the plaintiff's goods on the market, that 
 will turn the scale against him when there is any doubt 
 in the matter. This was what happened in Reddaway 
 V. Banham, the Camel-Hair Belting case. There what 
 turned the scale in the plaintiff's favour was a letter 
 written to the defendant by one of his customers in 
 which the customer desired that the belting he was 
 ordering should bear no other stamp than ' Camel- 
 Hair Belting,' and added if that were done he could 
 take the order away from Reddaways. This letter 
 the defendant apparently acted upon. This the 
 House of Lords found was very strong evidence that 
 he knew that * Camel- Hair Belting' meant in the 
 market Reddaway's goods. This is no novel 
 doctrine. In the old case about the Anatolia 
 liquorice a letter sent to the defendant ordering 
 some liquorice from them to be stamped * Ana- 
 tolia,' which letter contained a sample of the 
 plaintiff's goods stamped 'Anatolia,' was said by
 
 PASSING OFF 55 
 
 the Lord Chancellor abundantly to prove that the 
 plaintiff's goods so stamped were known and 
 accepted in the market.* 
 
 PART XIV 
 
 Illegal Representation as to a Business 
 
 Passing to another and still more difficult branch 
 of this subject, if, as has been previously stated, a 
 trader does, in fact, represent his goods as the goods 
 of another trader — it is immaterial how he makes 
 the representation — he will be restrained by injunc- 
 tion from repeating it. One w^ay in which the 
 representation can be made is by representing that 
 his business is the plaintiffs business, or a branch of 
 the plaintiff's business, or connected with the plain- 
 tiff's business. Any such representation, if made, 
 will be restrained. A trade name may consist of a 
 personal name plus the name of the goods. Such a 
 trade name, if established — i.e., if it be proved to 
 denote and distinguish the owner's goods in the 
 market — is a perfectly good trade name, and entitled 
 to the same protection as any other kind of trade 
 name. Instances are ' Bass's Ale,' ' Pears' Soap,' 
 ' Beecham's Pills,' and ' Cash's Frillings.' It has 
 often been contended that such trade names are on 
 * McAndrcw v. Basse/f, 4 De Gex, Jones and Smith, 380.
 
 56 PASSING OFF 
 
 a different footing to others, but it is perfectly well 
 settled now that they are not. 
 
 Supposing the plaintiff in a passing-off case is not 
 relying on trade mark or trade name, but only on this, 
 that his name or his firm name is very well known, 
 and that the defendant is using the same name, or the 
 same firm name, or a name so closely identical, that 
 the public would not know the difference, and that by 
 reason of the similarity of the defendant's trading 
 style to the plaintiffs trading style the public will 
 suppose that the defendant's business is the plaintiff's 
 business, and will buy the defendant's goods in the 
 belief that they are the plaintiffs— will the Court at 
 the instance of the plaintiff stop the defendant ? 
 
 Suppose a firm of Battleaxe and Co. to be a firm 
 which for very many years have had a very large sale 
 for boots, and they are very well known as sellers of 
 very good boots, and there are no other sellers of 
 boots named Battleaxe. A man opens a shop, 
 say, in Regent Street, for the sale of boots, and 
 trades there as F. Battleaxe. Obviously confusion 
 and probably deception will arise. Can Battleaxe 
 and Co. stop him ? This is a somewhat intricate 
 question, and several considerations arise. First, is 
 the defendant's real name Battleaxe? If it is not 
 his real name, he will be stopped from continuing to 
 use it on the ground of fraud.* But suppose Battle- 
 
 * But see p. 58.
 
 PASSING OFF 57 
 
 axe is the defendant's real name, will he be stopped 
 from trading under his own name ? If all that can 
 be proved is that he is honestly using his own name 
 in the course of his trade, he cannot be stopped from 
 doing that, although it would be probable, it may 
 be said certain, that some confusion would arise, and 
 that some customers might go to his shop supposing 
 it to be a shop of Battleaxe and Co. A man will not 
 be restrained from simply using his own name in the 
 course of his trade or on his own goods ; and if he has 
 been carrying on his trade in this way and takes a 
 partner, his firm may use the ordinary designation of 
 a firm. In reference to this the language of Lord 
 Justice Stirling (then Mr. Justice Stirling) may be 
 quoted in the case where Tussaud and Sons, Limited, 
 the proprietors of the well-known exhibition of wax- 
 works, sought to restrain Louis Tussaud from 
 bringing out a company called Louis Tussaud, 
 Limited, to run a waxwork exhibition. The learned 
 judge, after referring to the well-known cases of 
 Burgess v. Burgess and Turton v. Turton, said : ' It 
 follows from the decisions in those two cases that 
 the defendant is at perfect liberty to open on his own 
 account and to carry on in his own name an exhibi- 
 tion of waxworks. Further, he might take partners 
 into his business, and carry it on under the name of 
 " Louis Tussaud and Co." That seems to me to 
 have been expressly decided in Turton v. Turton.
 
 58 PASSING OFF 
 
 Having commenced business on his own account, I 
 apprehend that he might sell it, with the benefit of 
 the goodwill, to third parties, and that the third 
 parties might, if they thought fit, continue to carry 
 on the business under the same name, that of the 
 defendant — that is to say, they would be entitled to 
 the full benefit of the goodwill which they had 
 honestly and legitimately purchased from the defen- 
 dant. Again, the third parties might transfer the 
 business and the goodwill to a joint-stock company ; 
 and without expressing a final opinion on the point, 
 I am not prepared at the present moment to say that 
 that company might not be registered under the 
 same name as had previously been used in connec- 
 tion with the business.'* 
 
 The learned Judge's proposition is quite right as 
 far as it goes, but it really does not go very far, 
 because, although a man can use his own name in 
 the course of his own trade, yet if he uses it in such a 
 way — i.e., with such accompaniments — as to amount 
 to a representation that his business is the plaintiff's 
 business, or his goods are the plaintiffs goods, he 
 will be restrained from making that representation. 
 In all cases of this kind the question is whether he 
 is making that representation or not — whether in 
 carrying on trade under his own name, which he is 
 entitled to do, he is carrying it on in such a way as 
 * Tussaudv. Tussaud, L.R. 44 CD. 687.
 
 PASSING OFF 59 
 
 to represent his business or goods to be the plaintiff's 
 business or goods, which he is not entitled to do. 
 Whenever the Court comes to the conclusion that 
 the defendant's conduct is dishonest, that he is not 
 simply exercising his right to trade under his own 
 name, but he is seeking to pass off his business or his 
 goods as the plaintiff's, the Court will always restrain 
 him. Thus, in the Tussaud case, the Court, having 
 come to the conclusion that the object of the 
 defendant in promoting the proposed company was 
 to induce the world to believe that the business 
 intended to be carried on was the business of the 
 plaintiff company, or a branch of it, granted an 
 injunction against the defendant. In the old case 
 of Croft v. Day* relating to Day and Martin's 
 blacking. Lord Justice Cotton said of the defendant 
 in that case : * He had got somebody of the name of 
 Martin, who was no connection in business with him, 
 to agree to come in and be his partner, so as to get 
 the benefit of the name of Day and Martin. Getting 
 a man who is not interested in the business to come 
 in and join him for the purpose of saying he has the 
 name of Day and Martin would be very strong 
 evidence indeed to show that he was trying to repre- 
 sent his goods as those of the old firm.' 
 
 Whenever a defendant who is trading in his own 
 name has imitated the ' get-up ' of the plaintiff's 
 
 * 7 Beavan, 84.
 
 6o PASSING OFF 
 
 goods, or has imitated his labels or show cards, or 
 has issued circulars, or price-lists, or advertisements 
 tending to induce intending purchasers to believe 
 that his business and goods, or either of them, are or 
 is the business or goods of the plaintiff, he will be 
 restrained by injunction, because on the whole 
 circumstances he will be held to have made the 
 illegal misrepresentation which has been so fre- 
 quently referred to. 
 
 Before quitting this subject, two cases relating to 
 trade names, both decided by Lord Justice Romer 
 (then Mr. Justice Romer), must be referred to, inas- 
 much as they go further than any other similar 
 reported case. One is the case, in 1898, of the 
 Eastman Photographic Materials Company v. John 
 Griffiths Cycle Corporation* The Eastman Com- 
 pany had invented and applied the term ' Kodak ' to 
 certain of their cameras. These were largely adver- 
 tised and largely sold, and the name * Kodak ' became 
 identified with these cameras, and also with the 
 Eastman Company and its goods in general. It 
 became, as it were, the trade mark of the company. 
 The company did not deal in bicycles, but it dealt 
 in cameras specially adapted for cyclists, and these 
 it called ' Cycle Kodaks ' or ' Bicycle Kodaks.' The 
 defendant company registered the word 'Kodak' 
 for cycles without the knowledge of the Eastman 
 
 * 15 R.P.C. 105.
 
 PASSING OFF 6i 
 
 Company, and then proceeded to incorporate another 
 company, called the Kodak Cycle Company, for the 
 purpose of selling Kodak cycles. When this came 
 to the knowledge of the Eastman Company they took 
 proceedings to get the trade mark Kodak expunged 
 from the register, and to obtain an injunction to 
 stop the defendant companies from doing what they 
 were doing in the way of trade — i.e., selling cycles as 
 Kodak cycles. The plaintiff company succeeded on 
 both heads. They got the trade mark removed from 
 the register, and they got an injunction, which was 
 worded thus : * To restrain the defendant companies, 
 or either of them, from carrying on business under 
 the name of " Kodak Cycle Company, Limited," or 
 under any name comprising the word "Kodak" 
 likely to mislead or deceive the public into the 
 belief that the defendant company is the same 
 company as, or is connected with, either of the 
 plaintiff companies, or that the business of the said 
 companies, or either of them, is the same as, or is in 
 any way connected with, the business of the plaintiffs, 
 the Eastman Photographic Materials Company, 
 Limited.' An injunction was also granted to restrain 
 the defendant companies, and each of them, from 
 selling, or offering to sell, any of their cycles or goods 
 as ' Kodak.' 
 
 The other of the two cases was decided about 
 ten months later. It was the case of the Dunlop
 
 62 PASSING OFF 
 
 Pneumatic Company v. Dunlop Lubricant Company * 
 There the plaintiffs, the Dunlop Pneumatic Com- 
 pany, sold tyres and other accessories for cycles, 
 and their goods were known as ' Dunlop.' The 
 defendant was carrying on business under the name 
 of the Dunlop Lubricant Company, and sold oils 
 and lubricants for cycles under the name of 
 Dunlop. The plaintiff company did not deal in oils 
 or lubricants. The plaintiffs obtained an injunction 
 to restrain the defendant ' from carrying on business 
 under the style of the Dunlop Lubricant Company, 
 or under any other style or title comprising the 
 word " Dunlop," so as to induce the belief that the 
 defendant company is the same company as the 
 plaintiff company, or is in connection with them, or 
 that the business of the defendant company is the 
 same or in any way connected with the business of 
 the plaintiff company ' ; and, with regard to the 
 goods the defendant was selling, the injunction went 
 on to restrain the defendant, his servants and agents, 
 from selling goods in any labels having the word 
 * Dunlop ' upon them, so as to represent or induce 
 the belief that the goods were the goods of the 
 plaintiff company. Lord Justice Romer, in giving 
 judgment in this case, said : ' It appears to me 
 it would be wrong to allow him [i.e., the defendant] 
 to carry on business under that name, and to 
 
 * 16 R.P.C. 12.
 
 PASSING OFF 63 
 
 describe the goods as he does as " Dunlop " goods, 
 for that is the chief word that he uses on the 
 covers of his goods with regard to his burning oil 
 and his graphite, which he sells. The word " Dun- 
 lop " is put in a very prominent way, and I am 
 satisfied that he does that with a view of inducing 
 customers to believe that those goods, if they are 
 not the goods of the plaintiffs, are goods used in 
 some way with their sanction, or connected in some 
 way with them, so as to get the benefit of the plain- 
 tiffs' name. It appears to me that the plaintiffs are 
 entitled to say that the word " Dunlop " ought not 
 to be allowed to be used under those circumstances, 
 with those objects, by the defendant ; that it would 
 injure them in their business very considerably if it 
 is not stopped. They themselves are sellers of cycle 
 accessories, though, as a matter of fact, up to the 
 present time they have not sold burning oil or 
 lubricants. But they may do so, and in the mean- 
 time it appears to me that they are entitled to 
 come into Court and say that a name substantially 
 identical with theirs ought not to be allowed to be 
 used by the defendant in the way in which he is 
 using it.' 
 
 These two cases show that even when the goods 
 which a defendant is selling are not goods in which 
 the plaintiff deals, yet, if the defendant represents 
 that his business is the plaintiffs business, or is
 
 64 PASSING OFF 
 
 connected with the plaintiff's business, he will in that 
 case be deemed to represent that his goods are the 
 plaintiffs goods, although the plaintiff does not, in 
 fact, deal in such goods. But in reference to these 
 two cases it should be noticed that in the first 
 case it was proved that there is an intimate con- 
 nection between the camera trade and the cycle 
 trade, and that it was a common thing for both 
 cameras and cycles to be sold in the same shop. So 
 that there would be nothing improbable in the notion 
 that the Eastman Company had taken to selling 
 cycles. In the second case the Dunlop Company 
 sold, not only tyres, but other accessories for cycles, 
 although they did not sell oils and lubricants, so there 
 would be nothing improbable in the notion that they 
 had taken up the sale of oils and lubricants for cycles. 
 In other words, cyclists might easily suppose that the 
 defendants' business was connected with the plain- 
 tiffs' business. Such a confusion would not be 
 unnatural. But what of a case where the supposition 
 could not reasonabl}' arise — where the idea of con- 
 fusion between the two businesses would be 
 unnatural ? If in the Dunlop case the goods in 
 which the defendant dealt had been, say, cheese 
 instead of oils and lubricants for cycles, would the 
 decision have been the same ? Would the defendant 
 have been restrained from selling * Dunlop cheese ' ? 
 It may be presumed he would not, although the point
 
 PASSING OFF 65 
 
 is believed to have never yet come up for judicial 
 decision. The reason why it may be presumed he 
 would not is because it is difficult to see how anyone 
 could possibly suppose that a company whose busi- 
 ness it was to make and sell tyres and other cycle 
 accessories sold cheese, and if he did not suppose 
 this, how could he suppose that the business of a 
 man who sold cheese was in any way connected with 
 the business of the Dunlop Company ? But although 
 it may be presumed that this point would be decided 
 in the way just indicated, yet this is only certain in 
 a case where the defendant was an honest man. 
 If he was a dishonest man it would be quite a 
 different matter. If the Court thought that the 
 defendant had the fraudulent design of representing 
 his business to be the plaintiff's business, or con- 
 nected with that business, the Court would probably 
 assume against him that his fraud would be attended 
 with some measure of success, in spite of the differ- 
 ence in the goods, and so would decide against 
 him. 
 
 PART XV 
 
 Name of a Patented Article 
 
 The name which denotes the plaintiffs goods in 
 the market and distinguishes them from similar goods 
 
 5
 
 66 PASSING OFF 
 
 of rival traders is the plaintiffs trade name, and he has 
 the right to object to its use by others. Is there any 
 exception to this ? It is often stated that there is. 
 The exception is generally formulated thus : When 
 a man has a patent, and during the existence of the 
 patent, he makes and sells the patented article under 
 a trade name, of course, during the life of the patent 
 that trade name denotes in the market the article sold 
 by him, and nothing else : but when the patent expires 
 everyone is at liberty to make the article and to call 
 it by the name the patentee has given to it ; other- 
 wise he would be able to prolong his monopoly 
 beyond the legal limit — the life of the patent. Lord 
 Herschell once said : ' When a patentee attaches a 
 particular name to the product he patents, that 
 name becomes common property as the na.me of 
 the patented article. It possesses, indeed, no other 
 name.' But this way of stating the proposition is, 
 perhaps, too wide. First, it has been doubted by 
 as eminent a lawyer as the late Lord Justice Kay 
 whether this proposition extends to the name of the 
 patentee or to a purely fanciful name, not descrip- 
 tive* ; and, secondly, it was decided by the Court of 
 Appeal! some years ago (although this is often for- 
 gotten) that the proposition only applies when the 
 patented article is a new article, and not merely a 
 
 * See 13 R.P.C., at p. 257, 
 
 + Slazenger v. Felthani^ 6 R.P.C. 531.
 
 PASSING OFF 67 
 
 new variety of an old article. If this decision holds 
 good, the language of Lord Herschell needs qualifi- 
 cation. 
 
 PART XVI 
 
 Name of a New Article 
 
 Again, it is sometimes contended that when a 
 new article (not protected by a patent) is put on the 
 market under a particular name, everyone is at 
 liberty to make and sell that article, and to call it by 
 that name, as there is nothing else to call it by. 
 That may be, and probably is so, as long as the 
 name does not ripen into the trade name of the 
 original maker's goods, which it will do unless rival 
 traders begin to make and sell the particular article 
 and call it by the particular name soon after the 
 original maker has introduced it. If A introduces an 
 article into the market, no matter whether it is an 
 old article or a new article or a new variety of an 
 old article, under a new name, (unless he is protected 
 by a patent) his rivals in trade can make or sell the 
 same article under the same name, provided they 
 begin to do so promptly. Then all the trade will 
 have an absolute right to use the new name. But 
 suppose the trade do not exercise that right 
 promptly ? They will allow the name to ripen into 
 
 5—2
 
 68 PASSING OFF 
 
 A's trade name, and then the trade will be in one of 
 two positions — either they cannot use it at all, or, 
 if they use it, they must take care, when doing so, 
 clearly to distinguish their goods from the goods of 
 A. Which position they are in will depend upon 
 whether in fact it is possible to * clearly distinguish ' 
 or not, as will be seen later on. It may be con- 
 tended, and probably will be contended by some, 
 that this proposition is put too widely, but really it is 
 not, especially in view of the Camel-Hair Belting 
 case in the House of Lords,* to which allusion has 
 been made, and the subsequent cases relating to the 
 same article which have followed it. 
 
 PART XVII 
 
 Trade Name Destroyed by the Conduct of 
 
 the Owner 
 
 As a trade name is really acquired through the 
 laches of the market, so, too, a trade name may be 
 lost through the laches of the owner. If the owner 
 of a trade name allows his rivals to use his trade 
 name on their goods without objection it will cease 
 to be his trade name. It will become, in legal 
 phraseology, publici juris — i.e., common property. 
 
 * Reddaway v. Banham, 13 R.P.C 218.
 
 PASSING OFF 69 
 
 What is the test whereby to ascertain whether 
 that which was originally a trade name has become 
 pnhlici juris — i.e., common property ? It becomes 
 so when it ceases to be distinctive — when it ceases 
 to denote solely the original man's goods in the 
 market. Of course, it ceases to denote his goods 
 solely if it is habitually used on similar goods by 
 other traders. But this state of things — habitual 
 use by other traders — can only arise with the 
 acquiescence — i.e., by the sanction of the ^original 
 trader. If when he becomes aware that another 
 or others are using his trade name he takes legal 
 proceedings to stop that use, presumably he will 
 succeed ; if he does not, then he will be held to have 
 acquiesced in what is being done, and will be pre- 
 cluded from interfering afterwards. If, therefore, a 
 trader becomes aware that his rights to his trade 
 name are being invaded, he must take steps promptly 
 to assert and protect those rights, if he wishes to 
 preserve them, and he must not content himself 
 with a mere protest, or even with a threat of legal 
 proceedings ; but if the infringer sets him at defiance, 
 he must follow up his threat with the proceedings 
 he threatened.* 
 
 * Under exceptional circumstances, a trader, who knows that 
 his rights to his trade name are being infringed, can lie by for a 
 time without prejudicing those rights. See Rowlandv. Mitchell, 
 14 R.P.C. 37, and Reddaway v. Stephenson, 20 R.P.C. 276.
 
 70 PASSING OFF 
 
 There is another way in which a trader may by his 
 own conduct destroy his own trade name. Let us 
 suppose AB, a manufacturer, sells his pickles under 
 the trade name of, say, ' Pickaxe,' and that ' Pickaxe ' 
 pickles means in the market pickles made by AB 
 and no one else. CD, a retail grocer, comes to AB 
 and says, ' I want a quantity of your " Pickaxe " 
 pickles, but I want a label of my own on them, 
 and I want on the label " Pickaxe pickles, made of 
 the finest vegetables and the purest vinegar, by CD 
 of So-and-so." ' The manufacturer executes the 
 order, and the pickles are put on the market by CD. 
 The manufacturer will have destroyed his own trade 
 name by himself putting forward the assertion that 
 someone else besides himself manufactures * Pickaxe ' 
 pickles. In short, he cannot afterwards deny 
 
 * Pickaxe ' pickles means pickles manufactured by 
 AB or CD, and does not mean pickles manufactured 
 by AB solely. If the label, instead of ' made by,' ran 
 
 * sold by,' or 'selected by,' matters would be different, 
 and the same mischief would not arise. 
 
 PART XVIII 
 
 Passing- off Goods of a Third Party 
 
 The foregoing remarks upon illegal passing off have 
 been mainly, though not exclusively, addressed
 
 PASSING OFF 71 
 
 to cases in which A passes off goods of his (A's) 
 manufacture as the goods of B ; but substantially the 
 same principles are applicable to cases where A 
 passes off the goods of a third party (say X) as the 
 goods of B.* This kind of passing off may be 
 effected in a variety of ways, of which three may 
 be specifically mentioned. One is where a customer 
 goes into a shop and asks for the goods of B, and 
 is handed the goods of X. Another is where a 
 showcard of B's is exhibited conspicuously in con- 
 nection with the goods of X, in the expectation 
 that purchasers, seeing the showcard, will think 
 that the goods in connection with which it ap- 
 pears are the goods of B. A third is by exhibiting a 
 few of the goods of X in conjunction with a quantity 
 of the goods of B, so that when a purchaser asks 
 for 'one of those' — meaning to get one of B's 
 articles — he may be handed one of X's articles, 
 and may take it without discovering his mistake.f 
 
 * See also p. i. 
 
 t A trader is responsible for passing ofif by his servants, if 
 done in the course of his business ; and this though it may not 
 only not have been suggested by him, but even unknown to 
 him {Tojigev. Ward, 21 Law Times, New Series, 480). The Court, 
 however, will not act upon one isolated case of passing off by 
 a servant who has left a defendant's employment {Lea/iy v. 
 Glover, 10 R.P.C. 141). It has been held in England that a 
 trader is liable for passing off by his servants, even though they 
 acted contrary to his orders {Gricrson v. Birminghain Hotel Co., 
 18 R.P.C. 158), and the Lord Ordinary in Scotland has simi-
 
 72 PASSING OFF 
 
 The methods of commercial dishonesty are many 
 and various, and if they amount to fraud they are 
 illegal. 
 
 PART XIX 
 
 Civil Proceedings to restrain Passing off 
 
 Coming now to civil proceedings, which have for 
 their object to restrain the defendant from passing 
 off his goods, or those of a third party, as the goods 
 of the plaintiff, but exclusive of proceedings based 
 upon registered trade marks. Such proceedings are 
 not brought in pursuance of any Act of Parliament, 
 but are based upon the equitable jurisdiction of the 
 Courts to restrain a man from doing that which passes 
 off, or is calculated in the opinion of the Court to 
 pass off, his goods, or the goods of a third party, as 
 the goods of the plaintiff. If the Court is satisfied 
 that the defendant is doing this, it will grant an 
 injunction to restrain him from doing it in the 
 future, and will order him to pay pecuniary compen- 
 sation to the plaintiff for any injury he may have 
 sustained in the past. In all actions for passing off 
 
 larly held in the course of the case of Montgomerie v. Young 
 (20 R.P.C. 781). His decision was reversed by the Appellate 
 Court, but it is not clear how far the Appellate Court departed 
 from his views on this point.
 
 PASSING OFF 73 
 
 the burden of proof is, of course, on the plaintiff to 
 estabhsh his case — i.e., to establish to the satisfaction 
 of the Court that the defendant is, in fact, doing that 
 which either results in passing off or is calculated to 
 result in passing off goods which are not the plaintiff's 
 as the plaintiffs goods. What exactly the plaintiff 
 has to prove depends upon the nature of the case — 
 i.e., the character of the passing off of which the 
 plaintiff complains. No general rule applicable to 
 all cases can be laid down, but, for the purposes 
 of the remarks which follow, a trade-name case may 
 be taken where the plaintiff in effect says, ' I have 
 a trade name, and the defendant is passing off by 
 using my trade name or a colourable imitation of it.' 
 Now, in such a case the plaintiff has to prove two 
 things, and if he fails to prove either of them, his 
 action will be dismissed. The first thing he has 
 to prove is that that which he claims as his trade 
 name is, in fact, his trade name — that it is a word or 
 phrase which does denote his goods on the market, 
 and distinguishes them from similar goods of 
 other traders. So much has been previously said 
 herein on this point that no more need be said 
 now. The second thing he has to prove is that the 
 defendant is using the same word or phrase or a 
 colourable imitation, and using it in such a way as 
 to lead, or to be calculated to lead, to his goods being 
 mistaken for the plaintiff's. It will be observed that
 
 74 PASSING OFF 
 
 this has two branches— the defendant must be using 
 the same word or phrase or a colourable imitation 
 thereof, and also must be using it in such a way as 
 to lead, or be calculated to lead, to his goods being 
 mistaken for the plaintiffs. This is important. A 
 trader has the right to the exclusive use of his trade 
 mark. He has, in fact, the monopoly of it. But 
 a trader has no such monopoly in his trade name. 
 He cannot claim the right to the exclusive use of his 
 trade name ; all he can claim is that no one else 
 shall use that trade name in a deceptive way. If 
 it is possible for one of his rivals to use the word 
 or phrase in a non-deceptive way, he is entitled to do 
 so, although in most cases it would be difficult, and in 
 many cases it would be impossible. Therefore, what 
 may be called the orthodox form of injunction in 
 a trade-name case is, not an injunction to restrain 
 the defendant from using the trade name absolutely, 
 but an injunction to restrain him from using the trade 
 name in connection with his goods without clearly 
 distinguishing such goods from the plaintiffs goods. 
 This was the form of the injunction granted in the 
 Camel-Hair Belting case, in the Yorkshire Relish 
 case, and in the Silverpan Jam case. Sometimes 
 a defendant against whom such an injunction has 
 been awarded alters his mode of trade — i.e., continues 
 to use the term, but in a different manner or with 
 different accompaniments. He is then liable to be
 
 PASSING OFF 75 
 
 attacked by a motion to commit him to prison for 
 a breach of the injunction. If such a motion is 
 made, the Court has to decide whether or not he has 
 obeyed the injunction — i.e., whether in continuing to 
 use the name he has or has not clearly distinguished 
 his goods from the plaintiffs. It is rare for a defendant 
 to run the risk of such a motion, and still more rare 
 for him to succeed if he does. In many cases, how- 
 ever, the Court has granted the injunction in the 
 unorthodox form — i.e., has granted an injunction 
 restraining the defendant absolutely from using the 
 trade name. In a well-known case the judge at 
 the trial had granted an injunction restraining the 
 defendant absolutely from selling his ale as ' Stone 
 Ale,' which was the trade name of the plaintiffs ale. 
 Against this the defendant appealed, and asked that 
 the injunction should be varied so as not to restrain 
 him from using ' Stone Ale ' absolutely, but from 
 using it * so as to induce persons to believe that the 
 defendant's ales are the plaintiffs.' But the Court 
 of Appeal dismissed the appeal. The defendant then 
 appealed to the House of Lords, but with the same 
 result.* Several of the law lords expressed the 
 opinion that they would have preferred the injunc- 
 tion in the qualified form, but they thought that 
 under the circumstances of this particular case the 
 injunction awarded ought not to be varied. The 
 * Montgomery v. Thompsoii. 8 R.1\C. 361.
 
 76 PASSING OFF 
 
 circumstance which apparently influenced them in 
 deciding as they did was that it had been estabhshed 
 in the case that it was perfectly impossible for the 
 defendant to sell his ale as Stone Ale without de- 
 ceiving customers. Between the times when this case 
 was before the Court of Appeal and when it was before 
 the House of Lords, the case of Slazenger v. Feltham* 
 came before the Court of Appeal. In that case, in 
 1889, the Judge at the trial granted an injunction 
 restraining the defendant absolutely from using a 
 name for his goods which was a colourable imita- 
 tion of the plaintiff's trade name, but the Court of 
 Appeal thought the injunction was too wide, and 
 varied it by adding the words ' in such a way as to 
 represent that his goods are the goods of the plaintiff.' 
 In that case it does not appear to have been sug- 
 gested that it was absolutely impossible for the 
 defendants to use the term without deception. Then 
 there is the Magnolia case,t in which the plaintiffs 
 appealed for the purpose of getting an injunction in 
 the limited form turned into an absolute injunction. 
 The judge at the trial held that * Magnolia' meant a 
 particular alloy which anyone could manufacture, 
 * but,' he said, ' it is quite clear that the manufacture 
 of " Magnolia " has been to such an extent identified 
 with the plaintiffs that nobody, in my opinion, would 
 
 * 6 R.P.C. 531. 
 
 t Magnolia Metal Co. v. Atlas Metal Co., 14 R.P.C. 389.
 
 PASSING OFF ^^ 
 
 be justified in using the word "Magnolia" without 
 taking steps to distinguish his manufacture from the 
 " MagnoHa " that is, in point of fact, manufactured 
 by the plaintiffs, and therefore, in the injunction 
 which I propose to grant in this case, words carrying 
 out that object must be introduced, but I do not hold 
 that the plaintiffs are entitled to a monopoly in the 
 word "Magnolia" per se.' The injunction which 
 was awarded was to restrain the defendants from 
 using the word * Magnolia ' ' as descriptive of, or 
 in connection with, any anti-friction metal manu- 
 factured by them or either of them, without clearly 
 distinguishing such anti-friction metal from the 
 anti-friction metal of the plaintiffs.' The plaintiffs 
 appealed to the Court of Appeal, asking that the 
 injunction might be made an absolute one against 
 the use of the term ' Magnolia,' but the Court of 
 Appeal refused to do this. They went upon the 
 finding of the Judge that ' Magnolia ' only meant the 
 metal, and did not denote that it was the goods of 
 the plaintiffs — i.e., it was not the plaintiffs' trade 
 name.* This being so, it looks as if, not only ought 
 not an absolute injunction to have been awarded, 
 but no injunction ought to have been awarded at 
 all, and one would not have been awarded but for 
 the fact that, for reasons which can be surmised, 
 though they are not quite clear in the report 
 
 * 14R.P.C. 401.
 
 78 PASSING OFF 
 
 of the case, counsel for the defendants acquiesced 
 in the granting of an injunction in the Hmited 
 form. 
 
 One more case should be referred to on this point 
 — viz., the case of /. and J. Cash, Limited, v. Joseph 
 Cash. There the plaintiffs, whose frillings were 
 known as ' Cash's Frillings ' {i.e., it was their trade 
 name), sought to restrain Joseph Cash, who was 
 trading as Joseph Cash and Co., from trading in 
 frillings or other goods similar to the plaintiffs' goods 
 under that name or any other name including 'Cash.' 
 At the trial the defendant's counsel stated that he 
 did not claim for the defendant the right to sell 
 frillings as ' Cash's Frillings,' but only the right to 
 trade under his own name. The judge granted an 
 injunction restraining the defendant absolutely from 
 trading in frillings, etc., as Joseph Cash and Co. or 
 under the name ' Cash.' The defendant appealed, 
 but only on the ground that the injunction restrained 
 him absolutely from carrying on business under his 
 own name. The Court of Appeal held* that the 
 injunction went too far, and they varied it into an 
 injunction restraining the defendant absolutely from 
 selling his frillings as ' Cash's Frillings,' and also 
 restraining him from carrying on business in frillings, 
 etc., under the name of 'J. Cash and Co.,' while not 
 in partnership with anyone else, and from carrying 
 
 * 19 R.P.C. 181.
 
 PASSING OFF 79 
 
 on such a business under the name of * Cash ' or any 
 style in which ' Cash ' appeared, without taking 
 reasonable precautions to clearly distinguish his 
 business from the plaintiffs' business. 
 
 PART XX 
 
 Three General Propositions 
 
 The following propositions may be laid down as 
 
 correct : 
 
 1. A man will not be restrained from simply 
 carrying on business in his own name, even though 
 confusion may arise. 
 
 2. A man will be restrained from carrying on busi- 
 ness in his own name dishonestly — ix., when he not 
 only uses his own name, but uses it in such a way 
 (that is, in conjunction with other circumstances) as 
 to represent that his business or his goods are the 
 business or goods of another trader. 
 
 3. If a trader has a trade name for his goods 
 which denotes those goods solely in the market, and 
 distinguishes his goods from similar goods of other 
 traders, so that the trade and the public, when asking 
 for goods under that name, mean and intend to get 
 particular goods emanating from one particular trade 
 source (although they may not know such trader's
 
 8o PASSING OFF 
 
 name), then he is entitled to be protected by the 
 Court against other traders using that name in such 
 a way as to be calculated to pass off other goods 
 as his. 
 
 PART XXI 
 
 Pecuniary Compensation to Successful Plaintiff 
 
 Next comes the question, What is the form of 
 the pecuniary compensation (if any) awarded to a 
 plaintiff in a 'passing-off' case? It may take one 
 of two forms — either an account of the profits made 
 by the defendant by the acts of which the plaintiff 
 complains, and payment to the plaintiff of the amount 
 of such profits, or payment to the plaintiff of a sum 
 of money as damages for the loss or injury which the 
 plaintiff has sustained by the acts of the defendant. 
 It was supposed until very recently that the plaintiff 
 in a * passing-off ' case could choose which of the 
 forms of compensation he liked, but that is apparently 
 not so now. In the recent case of Weingarten v. 
 Bayer, which was a 'passing-off' action, the plaintiffs 
 succeeded at the trial in getting an injunction, and 
 in addition they asked for and obtained an account 
 of profits. The defendants tried to get the Judge 
 to alter his Order by awarding damages in lieu of 
 profits, but the judge declined to do so. He said 
 that according to the rules of law the plaintiffs were
 
 PASSING OFF 8i 
 
 entitled to elect between profits or damages, although 
 he said that he thought the Court ought to be able 
 to determine in such a case which the plaintiffs 
 should have, and further, that he thought that in the 
 present case there was a great deal to say in favour 
 of damages being given and not profits."^ The case 
 went to the Court of Appeal, who decided in favour 
 of the defendants on the merits of the case, and dis- 
 missed the action, t so they had not to decide as 
 between damages and profits. But Lord Justice 
 Cozens-Hardy said : ' In any point of view I think 
 the relief given by the learned Judge contrary to his 
 own opinion — namely, an account of profits — is wrong 
 in a case like this. The plaintiffs' trade was confined 
 to a few towns, and there were whole districts in 
 which the plaintiffs' goods and the plaintiffs' name 
 were alike unknown. On the other hand, the defen- 
 dants' trade extends all over the kingdom, and is very 
 large. To give the plaintiffs the profits of this large 
 trade would, in my view, be grossly unjust. Damages 
 alone ought to be given, and I see no ground for 
 supposing that any substantial damages could be 
 recovered.' Lord Justice Vaughan Williams said 
 that he quite agreed with these observations of Lord 
 Justice Co2ens-Hardy. Lord Justice Romer, the 
 third member of the Court, said nothing on this 
 point in his judgment, but as he had in a case before 
 
 * 20 R.P.C. 289. + 20 R.P.C. 649. 
 
 6
 
 82 PASSING OFF 
 
 him in 1898,* refused a successful plaintiff in a 
 passing-off action an account of profits as most unjust 
 in the particular case, and restricted him to damages, 
 it may be assumed that his views were the same as 
 those of his colleagues on the Bench. So it may now 
 be treated as settled that in * passing-off' cases it is 
 in the discretion of the Court to give profits or 
 damages, and it may be anticipated that they will 
 generally give damages. When damages are given, 
 the Court may settle the amount at the trial if it has 
 the necessary materials before it ; if it has not (and 
 this is generally the case), the Court directs an inquiry 
 to be held before one of the official referees to deter- 
 mine what is the amount of the damage that the 
 plaintiff has sustained. The costs of the inquiry are 
 generally reserved, because if the plaintiff fails to 
 prove that he has sustained any damage he will 
 generally fail to obtain the costs of the inquiry, even 
 if he is not ordered to pay them himself. 
 
 Subject to this, a successful plaintiff in a passing- 
 off action almost always gets the costs of the action. 
 It must be said ' almost always,' because a successful 
 plaintiff is not entitled to his costs as a matter of 
 right, and if there is anything in his conduct or 
 anything in the special circumstances of the case to 
 warrant it, the Court can and will leave him to pay 
 his own costs. 
 
 * Hodgson a/hi Simpson v. Kynoch, 15 R.P.C. 465.
 
 PASSING OFF 83 
 
 PART XXII 
 
 The Merchandise Marks Acts 
 
 The provisions of the Merchandise Marks Acts, 
 
 having for their object to prevent a trader from 
 
 passing off his goods as those of another trader, 
 
 should now be dealt with. The first section of the 
 
 Merchandise Marks Act, 1887, makes it an offence, 
 
 among other things, (i) to forge a trade mark ; (2) to 
 
 falsely apply to goods any trade mark or any mark 
 
 so nearly resembling a trade mark as to be calculated 
 
 to deceive ; (3) to apply any false trade description 
 
 to goods ; and (4) to cause any of these things to be 
 
 done. But it is not to be an offence if the person 
 
 charged proves that he ' acted without intent to 
 
 defraud.' Trade mark in this and the provision next 
 
 referred to means a trade mark registered at the Patent 
 
 Office, but it also includes certain foreign and colonial 
 
 trade marks, for which the Act itself must be consulted. 
 
 The other provision* requiring mention makes it an 
 
 offence to sell or expose for sale, or possess for the 
 
 purposes of sale or any other trade purpose, any 
 
 goods or things to which a forged trade mark or a 
 
 false trade description is applied, or to which any 
 
 trade mark or any mark so nearly resembling a trade 
 
 mark as to be calculated to deceive is falsely applied 
 
 * Section 2 (2). 
 
 6—2
 
 84 PASSING OFF 
 
 But it is not to be an offence if the person charged 
 proves — ' (a) that, having taken all reasonable precau- 
 tions against committing an offence against this Act, 
 he had at the time of the commission of the alleged 
 offence no reason to suspect the genuineness of the 
 trade mark, mark, or trade description ; and (6) that 
 on demand made by or on behalf of the prosecutor 
 he gave all the information in his power with respect 
 to the persons from whom he obtained such goods 
 or things ; or (c) that otherwise he had acted inno- 
 cently.' 
 
 Forging a trade mark is defined by the Act as 
 follows : ' A person shall be deemed to forge a trade 
 mark who either — (a) without the assent of the pro- 
 prietor of the trade mark makes that trade mark, or 
 a mark so nearly resembling that trade mark as to 
 be calculated to deceive ; or (b) falsifies any genuine 
 trade mark, whether by alteration, addition, efface- 
 ment, or otherwise ; and any trade mark or mark so 
 made or falsified is in this Act referred to as a forged 
 trade mark. Provided that in any prosecution for 
 forging a trade mark the burden of proving the 
 assent of the proprietor shall lie on the defendant.' 
 
 Applying a trade mark or mark or trade descrip- 
 tion to goods is defined by the Act : ' (i) A person 
 shall be deemed to apply a trade mark or mark or 
 trade description to goods who — (a) applies it to the 
 goods themselves ; or {b) applies it to any cover-
 
 PASSING OFF 85 
 
 ing, label, reel, or other thing in or with which 
 the goods are sold or exposed, or had in posses- 
 sion for any purpose of sale, trade, or manufac- 
 ture ; or (c) places, encloses or annexes any goods 
 which are sold or exposed, or had in possession 
 for any purpose of sale, trade, or manufacture, 
 in, with, or to any covering, label, reel, or other 
 thing to which a trade mark or trade description 
 has been applied ; or {d) uses a trade mark or mark 
 or trade description in any manner calculated to lead 
 to the belief that the goods in connection with which 
 it is used are designated or described by that trade 
 mark or mark or trade description. (2) The expres- 
 sion "covering" includes any stopper, cask, bottle, 
 vessel, box, cover, capsule, case, frame, or wrapper, 
 and the expression "label" includes any band or 
 ticket. A trade mark or mark or trade description 
 shall be deemed to be applied whether it is woven, 
 impressed, or otherwise worked into, or annexed, or 
 affixed to the goods, or to any covering, label, reel, 
 or other thing. (3) A person shall be deemed to 
 falsely apply to goods a trade mark or mark who 
 without the assent of the proprietor of a trade mark 
 applies such trade mark, or a mark so nearly re- 
 sembling it as to be calculated to deceive ; but in any 
 prosecution for falsely applying a trade mark or 
 mark to goods, the burden of proving the assent of 
 the proprietor shall lie on the defendant.'
 
 86 PASSING OFF 
 
 A trade description is defined by Section 3 of the 
 Act as any description, statement, or other indica- 
 tion direct, or indirect, as to certain things not 
 material for the present purpose. A false trade 
 description is defined by the same section as follows : 
 * The expression " false trade description " means a 
 trade description which is false in a material respect 
 as regards the goods to which it is applied, and 
 includes every alteration of a trade description, 
 whether by way of addition, effacement, or other- 
 wise, where that alteration makes the description 
 false in a material respect ; and the fact that a trade 
 description is a trade mark, or part of a trade mark, 
 shall not prevent such trade description being a false 
 trade description within the meaning of this Act. 
 The expression " goods " means anything which is 
 the subject of trade, manufacture, or merchandise. 
 The expressions "person," "manufacturer, dealer, or 
 trader," and "proprietor," include any body of persons 
 corporate or unincorporate. The expression " name," 
 includes any abbreviation of a name.' The de- 
 scription must be false ' in a material respect ' — 
 which means that it must be materially or substan- 
 tially false, and not necessarily wholly false ; and it 
 may be remarked that the section does not extend 
 to mere verbal descriptions. 
 
 Going back to the offences, the first offence de- 
 scribed consists in doing something illegal to goods ;
 
 PASSING OFF 87 
 
 the second consists in dealing with goods to which 
 something illegal has been previously done. The 
 first is aimed mainly at manufacturers, the second 
 at sellers, wholesale or retail, not being themselves 
 the manufacturers of the fraudulent goods. 
 
 As to the first offence, it is not to be held to be 
 committed when the person charged proves (the 
 burden of proof is, of course, on him) that he * acted 
 without intent to defraud.' This does not mean 
 intent to defraud any particular purchaser or other 
 individual, but intent to defraud generally by passing 
 off an article as different to that which it really is. 
 It does not cover what are mere cases of inaccuracy 
 of description. 
 
 With regard to the second offence, the exonerating 
 provisions are more elaborate. There are, in fact, 
 two grounds of exoneration : (i) That which arises 
 under heads (a) and (6), and (2) that which arises 
 under (c). If a man charged with an offence can 
 bring himself within (a) plus (b), he need not bring 
 himself within (c), and if he can bring himself within 
 (c), he need not bring himself within (a) or (6). This 
 is clear on the language of the provision now under 
 consideration, and particularly by the use of the 
 word 'otherwise' in (c). It has been held in a 
 recent case in Ireland,* and held correctly, that 
 * innocently ' in (c) does not * necessarily mean an 
 * Thwaites and Co. v. M' Evilly, 20 R.P.C. 663.
 
 88 PASSING OFF 
 
 absence of an intention to defraud purchasers. 
 The goods sold may be equal, or superior, to those 
 to which the trade mark lawfully belongs. The 
 purchaser may even buy with knowledge that the 
 brand was false, and with the intention of gaining 
 thereby by disposing of the goods at a large profit. 
 In such a case he would not be defrauded, yet the 
 sale to him would not be innocent. To prove in- 
 nocence, the vendor must show that he was not 
 aware that he was violating Section 2 (2)* of the 
 Merchandise Marks Act. 
 
 The preceding remarks on the Act have been of 
 a more or less general character. Now attention 
 should be called to the provision which is specially 
 aimed at passing off. It is that which enacts that 
 ' The provisions of this Act respecting the applica- 
 tion of a false trade description to goods shall extend 
 to the application to goods of any such figures, 
 words, or marks, or arrangement or combination 
 thereof, whether including a trade mark or not, as are 
 reasonably calculated to lead persons to believe that 
 the goods are the manufacture or merchandise of some 
 person other than the person whose manufacture or 
 merchandise they really are.'f Under this provision 
 anyone who attempts to pass off his goods as the 
 goods of another by using any figures, words, or 
 marks, or arrangement or combination thereof, 
 * Ante, p. 83. t Section 3 (2).
 
 PASSING OFF 89 
 
 which are reasonably calculated to lead to the belief 
 that his goods are the goods of that other, may be 
 charged with an offence under the Act, and will be 
 convicted unless he proves that he acted without intent 
 to defraud. The provision is a very valuable one as 
 a protection against passing off. It is frequently 
 resorted to, and would be resorted to more often but 
 for three circumstances : (i) In civil proceedings an 
 injunction as to future acts can be obtained, and 
 also compensation for the loss occasioned to the 
 plaintiff by past acts, which is not the case in pro- 
 ceedings under this provision. (2) It is much easier 
 in a doubtful case to get a judgment against the 
 wrong-doer by civil proceedings than it is to get him 
 convicted of a criminal offence. (3) The provision 
 under consideration never ought to be resorted to 
 unless the aggrieved party feels satisfied that the 
 person to be charged had in fact an intention to 
 defraud, or, putting it another way, unless he feels 
 satisfied that the person charged will not be able 
 to prove an absence of intent to defraud.
 
 INDEX 
 
 Acquiescence : ►'a^e 
 
 Trade name gained by - - - - - 69 
 
 Trade name lost by - - - - - - 7° 
 
 Business : 
 
 Trader must not represent his business as the business of 
 
 another - - - . - -55-65. 79 
 
 Circulars : 
 
 Illegal representation conveyed by - - - 10. 60 
 
 Civil Proceedings to restrain 'Passing off': 
 
 What plaintiff must prove - - - - - 73 
 
 Form of injunction granted in trade-name case - - 74 
 
 Damages (not profits) generally given to successful plaintiff 82 
 
 Commercial Honesty - - - - - " ^ 
 
 Compensation : 
 
 Given to successful plaintiff - - - • - 80 
 
 Competition : 
 
 Justifiable and unjustifiable • - - - -4 
 
 Costs of Action : 
 
 Generally given to successful plaintiff - - -82 
 
 Damages : 
 
 Amount of, how fixed - - - • - 82 
 
 Deception : 
 
 Actual, need not be proved - - - - - 6 
 
 Instances of, valuable to a plaintiff - - - - 7 
 
 Likelihood of, sufficient - - - - "7 
 
 Sub-purchasers may be deceived, though original are not - 7 
 
 91
 
 
 PAGB 
 
 43. 
 
 50. 
 
 72 
 
 
 - 
 
 43 
 
 
 • 
 
 45 
 
 
 - 
 
 55 
 
 
 5. 
 
 10 
 
 6, 
 
 ■ 58. 65 
 
 
 83. 
 
 87 
 
 92 INDEX 
 
 Evidence : 
 
 To prove trade name - - - . . 
 
 Of retail traders - . . . . 
 
 Of purchasing public - - - - . 
 
 Fraud : 
 
 Trade name may not be adopted for the purpose of 
 Intentional fraud not necessary in passing-off cases 
 Fraudulent intent often material 
 Intent to defraud under the Merchandise Marks Act 
 
 Imitation of ' Get-up ' : 
 
 When illegal - - - - - • .5 
 
 Innocence ; 
 
 Not a defence in passing-off cases - - - - 5 
 
 Under Merchandise Marks Act - - - -87 
 
 Intention to Pass off : 
 
 Need not be proved - • • - - 5. 10 
 
 Not immaterial - - - - . - 6 
 
 Intention to imitate and intention to deceive different - 6 
 
 Label : 
 
 Use of to distinguish goods - - - - - 22 
 
 When may be registered as a trade mark - - - 22 
 
 How unregistered labels are protected - - - 23 
 
 Distinctive, what is a ? - - - - - - 22 
 
 Distinctive, through containing device as prominent feature 23 
 Distinctive, through general appearance - - 23, 26 
 
 ' Get-up ' of, not easy to protect - - - - 26 
 
 Elimination of common elements on - - - 26, 32 
 
 Use of own name on, no defence to a charge of passing off 28 
 
 Merchandise Marks Acts : 
 
 Provisions of - - . - • - - 83 
 
 Special provision of, against passing off - • - 88 
 
 Why not more often resorted to - • - - 89 
 
 Name. See also Trade Name : 
 
 Trader may honestly use his own name - - 57, 79 
 
 Trader may not use his own name with accompaniments 
 
 which may deceive - - - - 58, 39, 79
 
 INDEX 93 
 
 Name — continued : page 
 
 Use of own, no defence to a charge of passing off - - 28 
 
 Trader adopting a name which is not his own - 53. 54 
 
 Of patented article, when it may be used - ■ - 66 
 
 Of new article, when it may be used • - - 67 
 
 New Article : 
 
 Name of a - - - - • -52.67 
 
 ' Passing off ' : 
 
 A matter of representation - - - • 9. ^^ 
 
 Various methods of - - - • - 9. 11. 7^ 
 
 General principles of - - - - • - i . 9 
 
 Question of fact - - - - - - 3 
 
 Patented Article : 
 
 Name of a - - - - - • - 65 
 
 Representation. See also Passing off : 
 
 That the goods of A are the goods of B, illegal - 9, 59 
 
 Servants : 
 
 Trader responsible for acts of - - - -71 
 
 Substitution of Goods : 
 
 When illegal ------- i 
 
 Trade Description : 
 
 Under Merchandise Marks Act - - • - 86 
 
 Trade Mark : 
 
 Best way of distinguishing goods - - - - 12 
 
 Registration of - - - - • - ^5 
 
 Benefits of registering - - - - - 21 
 
 Unregistered, how protected - - ■ 16, 21 
 
 Limitation of actions for infringement, under Act of 1877 - 15 
 
 Limitation of actions for infringement, under Act of 1883 - 17 
 Copy of ------- ^3 
 
 Colourable imitation of - - - - - ^3 
 
 Provisions of Merchandise Marks Act as to - 83, 84 
 
 Trade Name: 
 
 Defined 3^
 
 94 INDEX 
 
 Trade Name — continued : 
 
 How it originates .... 
 
 Nickname of goods may be - 
 
 Abbreviation of - - - - 
 
 Trader may have more than one for same goods 
 
 When may be registered as trade mark 
 
 Comprising a personal name 
 
 Of a geographical nature 
 
 Fanciful 
 
 Descriptive - - - 
 
 How proved to exist - 
 
 Establishment of, a matter of time 
 
 Evidence of the trade as to - 
 
 Evidence of the purchasing public as to 
 
 Must be widely (though not universally) known 
 
 Must be known in defendant's district 
 
 Defendant's conduct often proof of - 
 
 Subsequently becoming common property - 
 
 PAGE 
 
 37 
 36 
 37 
 38 
 
 38.55 
 3S 
 39 
 39 
 
 43. 49 
 52 
 44 
 45 
 47 
 48 
 
 50 
 69 
 
 Destroyed by conduct of owner - - - 68, 70 
 
 Imitation of - - • - - - - 73 
 
 Form of injunction to restrain infringement of - - 74 
 
 Protected, although owner's name is not known to 
 
 customers - - - . . - 8 
 
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