Cowie Brothers & Co. v. Herbert

Factual and Procedural Background

A firm of export merchants, referred to as the Plaintiff, owned a registered trade-mark depicting the Glasgow Town Hall. The Plaintiff brought an action to interdict a biscuit manufacturer, the Defendant, from using the Plaintiff's trade-mark or any mark substantially similar in connection with the sale of biscuits not exported by the Plaintiff. The Defendant's label also displayed the Glasgow Town Hall but from a different perspective. The alleged infringement was limited to the Burmese market. The Plaintiff and several witnesses testified that the two labels were known by the same name among native buyers in Burma and that there was a similarity likely to mislead such buyers. No direct evidence of actual deception was presented.

The Sheriff Court initially granted the interdict in favor of the Plaintiff. The Defendant appealed, and also petitioned for rectification of the trade-mark register to expunge the Plaintiff's trade-mark, but this petition was ultimately not pursued. The appeal was heard by the Court of Session.

Legal Issues Presented

1. Whether the Defendant's use of a trade-mark substantially similar to the Plaintiff's registered trade-mark was likely to mislead purchasers, particularly in the Burmese market.
2. Whether the Plaintiff had established infringement of their trade-mark rights by the Defendant.
3. Whether the Plaintiff's trade-mark registration should be expunged on the basis that the Defendant was the prior user of a similar mark.

Arguments of the Parties

Plaintiff's Arguments

• The Plaintiff had used the trade-mark, a representation of the Glasgow Town Hall, since 1889 on biscuits exported to Rangoon and elsewhere, acquiring a favorable reputation.
• The mark was known in the Burmese market by native names such as "El Musjid" or "The Palace."
• The Defendant's label was similar enough to cause confusion among native buyers, especially up-country buyers in Burma.
• The Plaintiff relied on the principle that no trader is entitled to use a trade-mark so nearly resembling another's as to mislead the incautious, even if no direct evidence of deception was shown.
• They contended that the interdict was justified to prevent misleading use of the trade-mark in the Burmese market.

Defendant's Arguments

• The Defendant had used his label, depicting the Glasgow Municipal Buildings from a different perspective, prior to the Plaintiff's registration.
• The Defendant argued there was no sufficient similarity between the labels to cause confusion, as the views of the building were distinct.
• They emphasized the absence of any evidence of actual deception despite the labels coexisting in the market.
• The Defendant also contended that the Plaintiff's trade-mark registration was invalid as the design was not original and was in common use.
• It was argued that native buyers were sufficiently discerning to distinguish between the labels.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Singer Manufacturing Company v. Loog, 8 A.C. 15	Burden on a party to show that a trade-mark is not ambiguous or misleading to a careful and intelligent observer.	The Court referenced this case to highlight the principle that a trade-mark should not mislead purchasers and that the Plaintiff must prove the likelihood of deception.
Carver v. Bowker, Seb. Dig. p. 350	Precedent for granting interdict restricted to a particular locality.	The Court noted this case in discussing the possibility of granting interdict limited to the Burmese market, although the Plaintiff did not pursue this limitation.
Barber v. Manico, 10 R.P.C. 93	Support for localized interdicts in trade-mark disputes.	Referenced to support the principle that interdicts can be geographically limited.
Rodgers v. Rottgen, 5 Times Reports, 678	Authority on trade-mark protection and interdicts.	Considered in the context of the scope of trade-mark protection and remedies.
Kerly on Trade-Marks, p. 206 (textbook)	Legal principle that actual deception need not always be proved in trade-mark infringement cases.	Defendant cited this to argue that absence of actual deception was significant when marks had coexisted.

Court's Reasoning and Analysis

The Court focused on the factual question of whether the Defendant's label so resembled the Plaintiff's registered trade-mark as to be likely to mislead purchasers. The Court acknowledged the absence of direct evidence of actual deception but noted that such evidence is not always indispensable, especially considering the remote market and differing purchaser demographics.

The Court observed that the Plaintiff failed to establish a case for the British market, and the evidence for the Burmese market was thin, general, and largely speculative. Witness testimony about the similarity and potential confusion was limited to a few individuals, some of whom were not commercial experts, and their opinions were tentative.

The Court emphasized that the two labels depicted the same building from different perspectives—one a symmetrical front view and the other a perspective angle—making them visually distinct. The Court rejected the Plaintiff's contention that native buyers would indiscriminately classify all large buildings as the same, noting that such a rule would unduly restrict lawful trade-mark use.

The Court further noted that the Plaintiff sought a universal interdict based on evidence relevant only to the Burmese market, which was inappropriate. The Court found no sufficient evidence that the Defendant's label was likely to mislead purchasers, including native buyers in Burma.

Accordingly, the Court concluded that the Plaintiff had failed to prove infringement of their trade-mark rights.

Holding and Implications

The Court REVERSED the interlocutors of the Sheriff Court and DISMISSED the Plaintiff's action for interdict against the Defendant.

The Court held that the Plaintiff failed to prove that the Defendant's labels so resembled the Plaintiff's registered trade-mark as to be apt to mislead purchasers, including in the Burmese market. Consequently, the Plaintiff's trade-mark rights were not infringed.

No order was made to expunge the Plaintiff's trade-mark from the register, as the marks were not identical or so similar as to constitute infringement.

The decision directly affects the parties by allowing the Defendant to continue using his label without restriction, and no new legal precedent was established beyond the application of existing trade-mark principles to the facts.