Judgment
Jenkins C. J:-
The plaintiffs are manufactures of ink and they have brought this suit for the protection of what they claim to be their exclusive right to certain labels and trademarks. On this appeal we are only concerned with the case they make against the 6th defendant, the present appellant, and that is formulated in paras-6"to 9 of the plaint. For the appellant it was urged that he was an innocent purchaser, and that as he had offered to submit to an injunction, no costs should have been awarded against him: but it is unnecessary to consider this, point, as both in the Court below and before us he has challenged the plaintiffs right.
His point is that the labels or trade-marks were so tainted in their conception and origin, that it cannot from the basis 1 of any relief- and in any case not of an injunction.
The witness Hoshangji Sorabji Kotwal thus describes the mode in which the original "Waterloo" label took its form:
"I first collected the bottles of the European makers who had the largest sales. Water law and Sons, Lyons and Co, Stephens and Hollidge were four of the principal ones. The label I designed was by combination of all four labels."
The plaintiff of the other hand says he invented the name Waterloo:
" The name .he says,. was suggested by the Waterbury steal pen, and I liked the name. So I called my ink Waterloo. That is the only explanation I can give."
Which of these accounts is to be accepted? Hoshangjis is in harmony with the remarkable coincidence, that the appearance of the label strongly supports the suggested association with the inks sold by the manufacturers, named by Hoshangji: while the 1st. Plaintiffs explanation can in my opinion claim little attention on the score of probability Further than this I find that on one point the plaintiffs evidence cannot be accepted: in the course of his re-examination he says " the label I now use was submitted to Mr. Gilbert after decree was passed and he agreed on behalf of his client to the use of that label." Mr. Gilbert is a member of the firm, who act as the plaintiffs attorneys in this suit, but he was not in this country, when the case was before Crowe. J. Now, however, he is, and, as some stress was placed on this imputed agreement, we allowed Mr. Gilbert to be examined before us. He gives a very different version- for questioned as to this agreement he Bays, .I would not have agreed to their using it." Mr. Gilbert cannot be charged with hostility to his own client in this suit and I do not hesitate to accept his evidence as a reputation of what was sworn to by the 1st. Plaintiff. This shows that the plaintiffs evidence must be accepted with caution and having regard to the probabilities of the case, 1 would certainly in this conflict give the preference to Hoshangjis version, but not without doubt if I thought the learned Judge before whom the witnesses were examined had in his appreciation of the evidence taken another view, even though he had not the advantage of hearing or considering Mr. Gilberts evidence. As a matter of fact there is nothing in his judgment to suggest he so viewed the evidence,
But fearing that this might have been due to an oversight on the part of the learned Judge, I have consulted him on this point, and he informs me that he believed Hoshangjis account, but for the reason expressed in the penultimate paragraph of his judgment he deemed the circumstances attending the origin of the labels unimportant.
Under these circumstances I have no hesitation in adhering to my estimate of the evidence, and in holding that the original label originally came into existence as Hoshangji has deposed.
Still confining myself to the original label I will first consider whether if it were the subject of this suit an injunction in respect of it could be granted. The principles on which an injunction can be claimed in a case of this class are thus stated by Lord Westbury in the Leather Cloth Company Ld. V. The American Leather Cloth Company Ld. (1): These conclusions seem to follow immediately from the very principle to which a plaintiff seeking protection for a trademark appeals. He desires to restrain the defendant from selling his own goods as the goods of another person: but if by the use of the trade-mark in question the plaintiff himself is representing and selling his goods as the goods of another, or if his trade-mark gives a false description of the article, he is violating the rule on which he seeks relief from the defendant." This is after all but a particular application of the more general rule that a plaintiff must come into a Court of Equity with clean hands, and by parity of reasoning a plaintiff who seeks the relief of an injunction in this Court (and it is with that form of relief alone that we are concerned in this Case) must answer the same description. How far then do the plaintiffs in this case comply with that test? We start with the fact that the original label was a deliberate combination of the four labels of the leading ink manufacturers-Water low and Sons, Lyons and Co, Stephens and Sons and Hollidge, and when I look at the result I feel no doubt it was by the use of the label to represent and sell the ink covered by that label as the ink of another that the label was calculated to mislead the public in the direction intended. If that be so, there can in my opinion be no doubt that had Hoshangji been
the plaintiff, and the subject-matter of the suit the original label no injunction could have been awarded.
But does it make any difference that Hoshangji is not the plaintiff? Do Mahomedalli Hyderalli Chinai and his co-plaintiffs stand in a better position ? I think not - for apart from anything else Mahomedalli was interested with Hoshangji in the original mark at its inception, and in the face of his evidence he cannot be heard to say that he did not know how it came to assume the form it actually took. The presence of his co-plaintiffs in no way better the case. I have hitherto been dealing with the original labels and marks- so that I will now consider whether the labels and marks to which this suit relates are entitled to more favourable consideration. The injunction granted by Crowe J. forbids the sale of any ink or writing fluid other than that manufactured by the plaintiffs in bottles bearing the Waterloo ink labels referred to in the deed of dissolution dated the 13th day of December 1894- or any colourable imitation thereof."
These labels differ slightly from the original and this is due to an injunction obtained at the suit of Stephens and Sons, but the difference is so slight that the initial vice still adheres, and in my opinion the same considerations apply to the labels protected by Crowe, Js injunction.
But it is urged that though the objections, which I have set forth, might have been of weight at one time, that is no longer so, because Stephens and Sons have taken no further steps nor have Waterlow and Sons or Lyons or Hollidge ever taken proceedings- therefore, it is urged, that to which they might have objected has become publici juris. But even if this argument were well founded, it contains its own reputation, for what is publici juris for the plaintiff, is also such for the defendant. The result is that in my opinion the marks of the plaintiff are not such as to entitle them to the relief of an injunction. I would, therefore, reverse the decree under appeal and dismiss this suit with costs throughout.
Russell, J.-By the decree in this case the 6th defendant strained from selling or exposing for sale or procuring to any ink or writing fluid other than that manufactured plaintiff in bottles having the "Waterloo" ink labels in the deed of dissolution dated 13th December 1894 Table imitation thereof. One has only to read the plaint to see that .Waterloo" is the distinctive feature in their labels which the plaintiffs ask this Court to protect. Mr. Justice Crowe in his judgment (and here I agree with him) says .the distinctive mark of the plaintiffs label is the use of the term Waterloo as applied to the ink."
The real question to be decided in the case therefore is: Is the plaintiff legally entitled to the protection of the Court in his use of the said distinctive feature or mark .Waterloo" as applied to ink.
To decide this question it is obviously necessary to show how this feature or mark was (a) originated and (b) acquired by the plaintiff, (a) how it originated is thus stated by the witness Hoshang:
"I started in 1836 but adopted this label in 1887-Jubilee year. I first collected the bottles of the European makers who had the largest sales. Waterlow and Sens, Lyon and Co, Stephens and Hollidge were four of the principal, ones. Exhibit 3 is the Stephens label and this is the Waterlow label (put in Exhibit 16). This is the Hillidge label (put in Exhibit 17) the former Hollidge label was slightly different. This is the Lyons label (Exhibit 18). The label I designed was by a combination of all four labels. I sold under that label till Stephens and Sons filed a suit against me in 1889. They got interim injunction against me. Plaintiff was paid a fixed salary- I and Mahomedally were principal partners. Plaintiff was a paid partner. I had to pay Rs.3,800 as damages. I tried to get my label registered in England. Exhibit 12 is the label I sent with the reply from the Trademark Office: I also got letters from Waterlow and Hollidge. I cant find them after search, Waterlow objected to the use of the name .Waterloo" and threatened proceedings in case of refusal. I got notice from Waterlow in 1887 and from Hollidge in 1886. I replied that I was not injuring their rights nor imitating their labels and I intended to use the labels."
And again at p. 10 the plaintiff says:
.I have manufactured ink 16 years. I formed firm of Davoodbhoy Allibhoy and Co. in 1891. Before that I was in business as ink manufacturer for 5-7 years. I manufactured ink known as Waterloo ink for 2 years before 1891. I used the labels attacked to plaint (Exhibits B and C), Daoodbhoy Allibhoy and Co. took over the business of manufacturing Waterloo ink in 1891. Up to that time 1889 no one had made Waterloo ink besides myself and partners. Prom 1891 to 1394 we made Waterloo ink and need the labels. No one else to my knowledge manufactured it. Waterloo ink had acquired a good reputation. The sales were Urging. I know the accounts not the number of bottles. Ink worth Re, 15,000 was Bold in a year. It was sold at Re. 7 per dozen imperial quart Partnership was dissolved in December 1894 and a deed was executed (Recital that all the trade-marks had been delivered over). It that my partners delivered over to me all the trade-marks and tome since the suit was filed from defendant No. 1 About 8,000 dissolution I began to make Waterloo inks en account of my Company business "Waterloo Ink Manufacturing Co." I hare partner I used the name "Waterloo" 14 years ago. I then traded alone. I have as book to show 1 sold neither Waterloo Ink 14 year ago nor any document 1 invented the name I. The name was suggested by the nana of Watertarys pen, and I liked the name so I called my ink Watarlow.
Watarlow and sans have gold their ink in basar for many years past before I sold my "Waterloo," I did not adopt ay name for "Water low."
As to the genera] get up of the labels invented by Hosbang Stephens & Co. filed suit No 676 of 1889 against Hoshang and the present defendant to which the present plaintiff was not a party as it appears he was a " paid partner". Ex. No. 7 is the plaint. In that suit the said Messrs. Stephens & Co got a decree Ex. No. 8 and No. 9. No reference to the mark .Waterloo" is made in that plaint obviously because it did not affect Messrs. Stephens & Co. After the decree in that suit the defendant firm therein changed their labels to the present one which on the dissolution in December 1894 was assigned to the plaintiff herein by the deed Ex. E (p. 31). In my opinion, the present labels, when compared with those complained of in that case, suit as closely to the kind as possible, whether Mr. Gilbert actually sanctioned them or not. As regards the use of the word "- Waterloo" the Advocate General argued that it has become publici juris. Is this so? There is an exact definition of this term to be found in Ford v. Foster (I) per Mellish L. J_:-
"What is the test by which a decision is to be arrived whether a word which was originally a trade mark has become publici juris? I think the test must be, whether the use of it by other persons is still calculated to deceive the public, whether it may still have the effect of inducing the public to bay goods not made by the original owner of the trade mark as if they were his goods. If the mark has become so public and in such universal use that no body can be deceived by the use of it, and can be induced from the use of it to believe that he is buying the goods of the original trader, it appears to me, however bard to some extent it may appear on the trader, yet practically, as the right to a trade mark is simply a right to prevent a trader from being cheated by ether persons goods being sold as his goods through the fraudulent use of the trade mark, the right to the trade mark must be gone."
In the present case .Waterloo " has not become of public and universal use, in fact if we confirm the decree we declare it not- to be publici juris but privati juris. It seems to me that the present case comes within the words of Mellish, L. J., in L. R., 9 Ch., pp. 630-631 :-
"Then would it he a defence to that action at law that the plaintiff has made false representation to the public that his article was patented when in fact it was not? If the false representation was in the trade mark itself, although I cannot find that that point has ever been decided or raised in a Court of Common Law, yet I am disposed to think, and indeed I have a pretty clear opinion, that if that question were raised it would be held, that the fact of the trade mark itself containing a false representation to the public would bean answer at law to an action brought for a deceptive use of the trade mark by the defendant. The declaration at law always begins by setting out that the plaintiff had need for a length of time a certain particular trade mark, and that his goods were known by that trademark, and it substantially sets tip that by the user of that mark, and his goods being known in the market by it, he has practically got a right to the use of that mark. It appears to me that it would come within the rule Ex turpi causa non oritur actio- and if the trade mark contains a false representation calculated to deceive the public, a man cannot by using that, which is in itself a fraud, obtain-I do not say an exclusive right-bat any right at all,"
I would further refer to Leather Cloth Co. v. Lorsont (2):-
"It was there decided that there was a representation of a matter of fact in the trade mark which was calculated to deceive- that there was evidence that it did deceive certain peasons- that such a trade mark could not be the subject of any right whatever that this Court would recognize, and, to use the expression of Sir Roundel Palmer, that it was outlawed.
See also, Fuentes Trade Marks (3). The evidence of Mr. Oliver shows how very easily the term Waterloo may be mistaken for Waterlow. One of the plaintiffs own witnesses Hussanally at p. 14 referring to the specification form issued by the Railway Company- says p. 14. Prom my point of view Waterlow and Sons is a mistake for Waterloo. The plaintiff himself is known by the witness Abdul Kayum as .Waterloowallah" p. (23.). Insert a in place of the 2nd. "0" and he becomes "Waterlow wallah." I, therefore, disagree with the conclusion arrived at by Crowe J. that "it is not necessary to refer to the fact that the name Waterloo bears a strong resemblance to those of the English firm Waterlow. That firm though they did some years ago raise an objection to the plaintiffs label has not thought it necessary to take any further steps and must be considered to have acquiesced in the use by the plaintiffs of this label and to have come to the conclusion that their rights are not infringed by its use..
As the Lord Chancellor said in the Leather Cloth Cos case (4) .There is a homely phrase, long current in this Court, that a plaintiff must come into Court with clean hands." I am of opinion that the plaintiffs hands are not clean and his suit should fail and the decree of the Court below be reversed Abdul with costs.
WhitwORTH J.-In my opinion the general resemblance of the label in question to Messrs. Stephens labels, is of itself alone sufficient to debar it from protection. But I concur generally in the reasons and conclusions of the learned Chief Justice and Mr. Justice Russell and would decree the appeal, and dismiss the suit with costs.
Appeal allowed.
Attorneys for appellant: Messrs. Edgelow, Gulabchand and Wadia.
Attorneys for respondent: Messrs. Payne, Gilbert, Sayani and Moos.
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