Vot'XXI.,No.13.] AND TRADE MARK OASES. 261

Anglo-Swiss Condensed C(Jmpanyv. Pearks; Gunston; and Tee, Ld. In the Matte1" of the Trade Marks Nos. 15,920 and' 238,790 of the Anglo-Swiss Oompans).

IN THE COURT OF 'ApPEAL. . ,

Before 1.40R'DB JUSTICES VAUGHAN WILLIAMS, STIRLING, and COZENS-HARDY. , . . Downloaded from

February 9th and 10th, 1904.

ANGlJO-SWISS CONDENSED ~IILK· COMPANY v. PEARKS,·· .. G'UN·STON, http://rpc.oxfordjournals.org/ 5 AND TEE, LD.

IN'THE 'MA'TTER 'OF THE 'TRADE M.(RKS Nos. l5,920 AND '238',190 OF THE ANGLO-SWISS CONDENSED MILK COMPA'Ny.

Action for 'infringement of Trade ~Mdrks and for passing off-Motion to rectify by exclusion of certain goods.....:.-No intention to use Trade Mark for such by guest on March 22, 2016 10 goods.-Mark common to'the Trade.~Acti01i dismissed.---':'Order'fiJr'rectljicalion ojRegister.

In 1878 a Oompa1ly registered a Trade Mark, consisting of a figure of a lnilkmdid! ioith. ·ther·words" Milkmaid Brand," in Class '42, for 'eubetancee ueedae food or ,ingred'ients in food, ~,.with the exception of certain goods, not 15 i~clud{'I2gbittter'iti'~uch exceRUo~s. In 1901 the same Oompany registered '~~oiiie~- T~ade "Mark consist-ing of a er;lightly different figure of a milkmaid with the same words .for ·the whole of Olas» 42. The OOJnparty had also other TradeMark» with the figure of a milkmaid in them, but not for . Their principal trade was in condensed milk, and they never traded in butter in the 20 United Kinqdomunti! May 1901, although they hadformed the intention ofso trading in 1897, and had traded abroad in butter. In 1902 they commenced an action. against another. Oompany for infringement oj, in particular, the Trade Ma1'tks of 1878 and 1901, andfor passing of!, and in it complained of the use by the Defendants ofcoloured posters and handbills having thereon the figure ofa 25 milkmaid with the Defendants' trade name prominently thereon and the words " ll1ilk Blended Butter" ; theseposters and handbills ioerefirst used in November 1 ~O1. _..The .Plai;ntijfs aZleged ..that they had a reputation in. various. article« of aftiry piY!,duce under the -brand of a milkma?:d,and that the posters were calt'uletted to leadpB,4sons to belieue i(tat tbe butter to UJhich they r~!iJrred was y REPORTS OF ·PATENT, DESIGN, [May 11, 1904.

Anglo-Swiss Oondensed Milk Oompany v, Pearks, Gunston; and Tee, Ld. In the Matter of the Trade Marks Nos. 15,920 and 238,790 of the Anglo-8'wiss Condensed Milk Company.

the Plain'tiffs' butter. The Plai'ntijJs had only a small retail trade in butter, and used only the 1901 Trade Mark, and not that of 1878, in connection with such trade. The Defendants had a very large retail trade in their milk blended butter. The.lJ denied infringement .and passing off, and moved to exclude butter from/ the goods for which the Trade Marks uiere registered on 5 the grounds that the Plaintiffs had never used or intended to use the 1878 Trade Mark for butter, and that in 1901 a milkmaid toas common to the trade: The action and motion were heard toqether. Held, by Joyce, J., that the action

failed as to passing off, and that the Register must be rectified so as to exclude Downloaded from butter from the goods for which the Trade Marks were reqistered, on the 10 ground, as to the 1878 Trade Mark, that there had been no real intention to use it for butter, and, as to the 1901 Trade Mark, that at the date of its regis• tration the device of a milkmaid uias common to the butter trade. The action

was dismissed, and an Order made for rectification in the manner mentioned. http://rpc.oxfordjournals.org/ The Plaintiffs appealed. 15 Held, by the Court of Appeal (ajfirmi'ng Joyce, J.), that the action failed as to passing off, and that the Register must be rectified so as to exclude butter from the class of goods for which the Trade Marke were renstered, on the ground, as to the 1878 Trade Mark, that there had been no real intention to use it for butter, and, as to the 1901 Trade Mark, that at the date ofits reqistration 20 the device ofa milkmaid was i1~ common use in the trade as an ornamentation by guest on March 22, 2016 and indication ofgoods sold, and also as a Trade Mark for butter. The action was dismissed, and an Order made for consequential rectification of the Register.

On the 17th of December 1878 Charles Terry Sparks, manager in England 25 of the Anglo-Swiss Condensed Milk Company (hereinafter referred to as the Swiss Company), applied on their behalf for the registration of a Trade Mark, which is shown below, in Class 42, for substances used as food or as ingredients

in food, except condensed' , .coffee and milk, chocolate and milk, ....a~d essence of coffee. .No user before the 13th of August 1875' was claimed. .'This 30 markwaa registered under ,No.·15;920. -Ou-the 12th of.J~ne·-190t -the~Sl'pi"f Vol. X.XI.,No. 13.] AND TRADE MARE CASES. 263

Anglo-Swiss OondensedMilk Oompany vcPearks, Gunston, and Tee, Ld, In the Matter of the Trade Marks No.~. 15,920 and 238,790 of the Anglo-Swiss Condensed Milk Company.

Company applied for the registration of another Trade Mark, which is. shown below, in Class 42, for substances used as food or as ingredients in food. This mark was registered under No. 23S,790. On the 16th of June 1902 the Swiss

M:lKMAID BRAND. Downloaded from http://rpc.oxfordjournals.org/

Company commenced an action against Pearks, ·Gunston and Tee, Ld., claiming 5 an injunction to restrain infringement of the above-mentioned .Trade Marks and of three others, or any of them, and from selling, offering for sale, or passing off, or enabling others to sell or pass off, goods not of the Plaintiffs' manufacture or merchandise as or for the Plaintiffs' goods by the use of the representation of a milkmaid, or any device only colourably differing from. the by guest on March 22, 2016 10 Plaintiffs' said Trade Marks, or by the use of any device enabling the Defendants' goods to be described or called" Milkmaid Brand," and for other relief. . The short particulars of the three other Trade Marks mentioned in the writ, but of which infringement was not alleged at the trial (not being registered for 15 butter) are as follows :-(1) No. 8831, registered on the 26th of August 1876 as ...... an old mark, consisting- only of the representation of a milkmaid contained in Trade Mark No. 15,920, and registered for condensed milks, coffee and milk, chocolate and milk, and essence of coffee; (2) No. 189,720, registered on the 9th of September 1895 for the same goods as No. 8831, and being the same as 20 Trade Mark No. 238,790; (3) No. 189,891, registered on the 18th of September 1895, and being the same as, and for the same goods as, the last mentioned mark, except that the words" Milkmaid Brand" were omitted. The Plaintiffs, by their Statement of Claim, alleged (1) they were a Company Incorporated-under the laws of Switzerland, and carried on an old 25 established business as manufacturers and vendors of condensed milk and milk products, with factories in Switzerland, England, Bavaria, and Norway, and offices at 10, Mark Lane, in the city of. London, and also in Switzerland. and that their business was believed to be the largest of the kind in the world; and that for many years past an important branch of the Plaintiffs' business had 30 consisted in the manufacture and sale of butter; (2) that, for 35 years past, or thereabouts, the Plaintiffs had used as the distinguishing mark of their goods a Trade. Mark representing a figure of a milkmaid, the same being in manycases accoml)aniedby the words "Milkmaid," or" Milkmaid Brand," and they had also frequently used the words" Milkmaid" or "Milkmaid Brand," without 35 ths.figure: that in,the case of butter the said device was stamped upon the butteritself, and wasalsousedupon wrappers, show-cards, and in, other ways ;' y ~ 264 REPORTS OF PATENT, DESIGN, [May 11, 1904.

Anqlo-Sioiee OondensedMilk Company v. Pearks, Gunston, and Tee, Ld. In the Matter of the Trade Marks Nos. 15,~20 and '238,790 ofthe Anglo-Swiss Condensed Milk Compans].

(3) tliat the Plaintiffs were the proprietors of the aforesaid five Trade Marks; (4) that during many years the Plaintiffs had expended very large sums of money in advertising their said goods under the name of "Milkmaid" or " Milkmaid Brand," and usually in connection with their said device, in the United Kingdom and in various foreign countries, and by reason of the 5 distinctiveness of the Plaintiffs' "aid name and brand, and of the inherent merits of their goods and of such expenditure as aforesaid, the Plaintiffs' said goods were thoroughly well known in the United Kingdom and in most parts of the world under the name "Milkmaid" or "Milkmaid Brand," and in conjunction with the representation of a milkmaid; that the said name and 10 device were exclusively applied to the Plaintiffs' goods, and were associated and identified with them, and that anyone who asked for or ordered any such Downloaded from goods under either of the names aforesaid, or under the device aforesaid, intended and expected to.receive the Plaintiffs' goods and no other; (5) that the Defendants were a Limited Oompany carrying on business at 6, Bayer Street, 15 Golden Lane, in the city of London, and elsewhere, as dealers in goods similar to those manufactured and sold by the Plaintiffs; that the Defendants began, for the first time a few months ago, to use a representation of a milkmaid in http://rpc.oxfordjournals.org/ advertisements relating to their butter, and they had very recently begun to use the said device in the shops in which their butter was sold and in. connection 20 with the sale of their butter, so as to represent that the same was "Milkmaid " Butter," or in other words the Plaintiffs' butter; that the Defendants were, moreover, .taking advantage of such device to supply their own butter in response to the orders for "Milkmaid Butter," or in other words for the Plaintiffs' butter; (6) that the Defendants were, in manner aforesaid, repre- 25 senting that their butter was "Milkmaid Butter," and they were causing the same to be bought and sold by the same name by which the Plaintiffs' butter and other milk products were bought and sold, and they had, by such means as by guest on March 22, 2016 aforesaid, been making profits which ought to belong to the Plaintiffs, and causing damage and injury to the Plaintiffs, and that unless they were restrained 30 the public would be deceived and the Plaintiffs further injured. The Defendants by their Defence alleged-(l) that they had not infringed the said Trade Marks or any of them; (2)' that the Defendants had not passed off or attempted to pass off any butter of their manufacture or merchan• dise as the butter of the Plaintiffs; (3) that the Defendants, who sold butter of 35 their manufacture and merchandise under the name" Milk Blended Butter," had for the purposes of advertisement and shop display used pictures in which there was a figure of a milkmaid with the words 4' Pearks' Milk Blended " Butter," clearly printed thereon; that the use of pictures, statuettes, and drawings of or containing a milkmaid was common to the trade, and, the use of 40 the said advertisements and pictures did not, and had not, and could not, pass off any butter of the Defendants as and for the butter of the Plaintiffs, and did not lead, and had not led, to the description of the Defendants' butter as " Milkmaid "Butter." As instances of such common general user of the figure and device of a milkmaid in the trade in connection with produce, the Defendants 45 would refer to figures, posters, and handbills in use by, amongst others, the proprietors of Nestle's Swiss Milk and their customers throughout the trade, the' Danish Da~ry Company at their branches throughout the realm, the Dairy Supply Company and their customers throughout the trade, Coopman and Y01lJng, of John Street, London, and their customers throughout the trade; 50 (4) that the Plaintiffs had not as an important or any branch of their business in this realm any business as manufacturers or sellers of butter; that the Plaintiffs had no reputation in this realm for butter of their manufacture or merchandise under the title or description of "Milkmaid Butter," or at all, and that the titie." Milkmaid J3ntte;r" was entirely unknown in this realm, and no butter 55 V()l~ XXI~, -No. 13.] AND TRADE MARK CASES. 265

Anglo-Swiss Condensed Milk Oompany v, Pearks, Gunston, and Tee, Ld. In the Matte'r of the Trade Marks Nos. 15,920 and 238,790 of the Anglo-Swiss Condensed Milk Company.

was sold by the Plaintiffs upon which, or the wrappers of which, or the show• cards of which the mark of a milkmaid or the words" Milkmaid" or "Milkmaid " Brand" were used; (5) that the Defendants had not supplied and did not supply in answer to orders for" Milkmaid Butter" butter of their manufacture 5 or merchandise; if any orders were given for "Milkmaid Butter," which was not admitted, such orders did not mean and would not be understood to mean butter of the Plaintiffs' manufacture or merchandise; (6) that the Defendants admitted that the Plaintiffs had a large business in condensed milk mixed with coffee, cocoa, and chocolate, and that in respect of such goods the Plaintiffs 10 "had a reputation in connection with the words "Milkmaid" and" Milkmaid " Brand"; save in respect of such goods, the Defendants denied that the Plaintiffs had any reputation in connection with the said word or words; Downloaded from (7) that if the Plaintiffs had any. reputation in connection with the sale of of their manufacture or merchandise in connection with the device of a 15- milkmaid or the words" Milkmaid" or "Milkmaid Brand," which was wholly denied, they were not entitled to restrain the Defendants from the acts therein• before admitted by reason that the Plaintiffs had for a long period been acquainted

with the conduct of the Defendants now complained of and the common general http://rpc.oxfordjournals.org/ use of the device of a.milkmaid by the trade, and had acquiesced therein, and 20 had by their laches lost their rights, if any, to restrain the Defendants from the continuance of the said acts; (8) save as therein admitted the Defendants denied each and every of the allegations in the Statement of Claim as if the same were specifically denied. Pursuant to an Order of the Court of the 8th of December 1902 the Defen- 25' dants gave further and' better Particulars of paragraphs 3 and 7 of the Defence which alleged the URe byeJIenry Nestle of a picture or drawing A of a milkmaid during the years 1891 to 1902 for condensed milk, by the Danish Dairy .OOmj1any of pictures or drawings B, B! and B2 of n milkmaid during by guest on March 22, 2016 the years 1900 to 1902 for butter, by Coopmasi and Young of a picture or 30 drawing C of a milkmaid during the years 1893 to 1902 for margarine mixture, by the Dairy Supply Company of a picture and drawing D, D! shown in their catalogue of a milkmaid statuette for dairy produce shown in the 1900• 1901 catalogue, but the Defendants had no knowledge how long the same had been in use, by the Welsh Dairy, Birmingham, of the picture E of a milkmaid 35 tor dairy produce displayed on a mirror forming the side of the passage entrance to the dairy shop, displayed during the year 1902, the Defendants having no knowledg-e for how long before it had been used, by the Maypole Dairy Company of pictures or posters of a milkmaid F for dairy produce used with trifling variations during the years 1891 to 1902. The Particulars further 40 alleged as to figures, posters, and handbills, the use by Henry Nestle of posters G during the years 1891 to 1902, by the Dan/ish Duiry COlnpa.l~y of handbills B, B! and B2 during the years 1900 to 1902, by the Dairy ~'upply Oompany of a figure D shown in the current catalogue for 1900 to 1902, by Coopman and Younq of a figure 0 used from lSg3 to the time of the Particulars. Particulars 45 were also given as to acquiescence and Iaches, Further particulars of common use were subsequently delivered. On the 3rd of February 1903 the Defendants gave notice of motion for an Order to rectify the Register.of Trade Marks by. remo,:in~ ~~Iierefro~t~Trade ;0 Marks Nos. 15,920 and 238,790, o~~~~~E~~t,i~r~l~T,?:r~l.ls~~~~~~~~!l:i~E~~~~~'~~F3!,~ing u no!~ ... lim~,ting'.!he claim in res pe~l?f .. ~~~?~ ...~-~E~~~,"~.2.:~~i!J='~~~~l;?;,9.~~, ..2~~~~\~Il~n-~~t~er. TIi-e'ToTI owing""'·~-partmt1iarB"""'6f"~h~ee·~gfO unas' -' tor rectification .were u'elrverect":- "(1) Both the said marks are registered for substances used as food or as " Ingredients in food. Such substances include milk, butter, , and dairy ,,- produce generally. Both the said marks are common marks in general use in 55-- " the dairy trade in connection with butter, cream, milk, and dairy produce 266 REPORTS OF PATENT, DESIGN, [May 11, 1904.

Anglo-Swiss Condensed Milk Company v, Pearks, Gunston, and Tee,Ld. In the 1Jt.fatter of the Trade ...Marks Nos. 15,920 and 238,790 of the Anglo-Swiss Condensed Milk Company.

"generally. The Applicants intend to allege particularly that figures, handbills, " and posters, in which there are pictures, statuettes, and drawings of a milkmaid, ., are in use by the proprietors of-(a) Nestle's Swiss Milk and their customers; " (b) the Danish Dairy Company at their branches throughout the realm; (c) "the. Dairy Supply Company and their customers throughout the trade ; (d) 5 "Uoopmasi and Young, of John Street, London, and their customers throughout 'c the trade. (2) The Applicants intend to allege further that the Respondents " have not used their said marks or either of the same upon butter, milk, cream, " or dairy produce generally, and to ask for an Order for the rectification ofthe " Register relating to both the said marks in accordance with the facts alleged 10 " in paragraphs 1 and 2 hereof." [The Particulars delivered in the action were also referred to.] Downloaded from A representation of the Defendants' poster complained of by the Plaintiffs will be foundon the opposite page; .In the poster' as.used the ground was blue. The .milkmaid''s gown .was pink. The stool and pail were coloured brown. "I'he 15 words UPearks " and" Butter" were in yellowand "Milk Blended" in white. It was stated that a well-known lady had given a sitting for the original picture,

which was produced at the trial. The use made by the Defendants of the http://rpc.oxfordjournals.org/ poster .was to hang it framed in their shops above the butter on the counter; below the poster and above the butter there was usually hung a notice 20 descriptive of the way in which the Defendants' butter was made. There was also a-smaller poster or handbill similar to the one above described except in respect of size, . but it wasstated that the issue of these was in 1901 and that they. had been used up. The Plaintiffsalso put in evidence an advertisement by the Defendants in the "Brighton and Hove Times." 25 It appeared from the evidence that the Plaintiffs'reputation was principally in' connection with condensed milk, and their ,,, Milkmaid" Trade Marks and "Milkmaid Brand" were very extensively known in connection with that by guest on March 22, 2016 trade, but that, although they had traded abroad in butter, they first formed the intention of trading in butter in the United Kingdom about 1897, and they 30 actually commencedto trade in it in May 1901, on the completion of their factory at Kensal Road, but such trade was retail and principally in that locality and was of comparatively small amount; the Plaintiffs had not used their Trade MarkNo. 15,920 in connection. with butter, but had so used their 'I'rade-Mark ·No·. 238;790 onrwrapperabill-heads, and other documents, the 35 butter itself: havingf.he'figure of the milkmaid stamped on it; but without the words ".Milkmaid Brand." The Plaintiffs' called evidence to show a close connection between .fhe milk and butter trades. It was shown that the Defendants had 200 shops in this country, and their annual sale of butter was about 400,000l. a year; their "Milk-Blended Butter " was butter im- 40 ported from the colonies in a refrigerated state and afterwards re-churned with milk. " . 'I'he following witnesses gave evidence for the Plaintiffs at the trial:-W. T. Bilson,their manager; A. E. J.WcKay, of Parkins and Gotto's, who proved an order from the Plaintiffs for wrappers for butter on the 12th of June 1901, 45 and the dispatch of such wrappers on the 28th of that month to 222 Kensal Road, the Plaintiffs' butter factory; E. Dowsett, buyer for the Star Tea Oom-. pany, Ld. ;F. Hills, manager of the Plaintiffs' factory at Kensal Road; E. Gada, grocer and provision dealer at Stoke Newington; H. JiStokes, grocer andprovision dealer at Wandsworth; A. S. Kinder, grocer and provision 50 merchant at Lewisham, and a director of Trickett's, Ld.; Williani Dunlop, a retired captain of the merchant service, who had purchased the Plaintiffs' butter packed in wrappers with a milkmaid on the wrapper, and spoke generally as to the reputation of the Plaintiffs' goods and marks; H. Evans, manager of the International Tea Oompany's Stores ; R. J. White, grocer and provision 55 'Vol_' XXI., No. 13.] A~DTRADE MARK CASES. 267

Anglo-Swiss Condensed Milk Oo.mpany v, Pearks, Gunston, and Tee, Ld, In the Matter of the Trade Marks Nos. 15,920 and 238,790 of the Anglo-Swiss Condensed Milk Company.

dealer at Battersea.whostated that he had asked for" Milkmaid Butter" at one of the Defendants' shops and been given the Defendants' "Milk-Blended " Butter," that the Defendants' poster was hanging over the butter, and, in cross-examination, that he saw one of their notices hanging up in the shop, and 5 that the butter had awrapper on it with words as follows :-" Choicest butter Downloaded from http://rpc.oxfordjournals.org/ by guest on March 22, 2016

," blended with pure English full-cream milk, whereby the percentage ·of water ,,'in-the butter is increased to about 24 per cent., but this limit of percentage is ". not guaranteed.Pearks' butter, milk blended," with a statement as to weight; G. Watson, assistant editor of the "Syren " newspaper; J. A. Lovelock, a clerk 10 in the Plaintiffs' employ, who stated that he was served with the Defendants' 268 REPORTS OF PATENT, DESIGN, [May 11, 1904~

Anglo-Swiss Condensed Milk Company v, Pearks, Gunston, and Tee, Ld. In the Matter of the Trade Marks Nos. 15,920 and 238,790 of the Anglo-Swiss Condensed Milk Compans].

butter at one of their shops in response to an order for" Milkmaid Butter" ; F. A. S. Gwatkin, articled clerk to the Plaintiffs' solicitors, who asked for " Milkmaid Butter" at one of the Defendants' shops, and was asked by the shopman whether he wanted milk-blended butter, and he then pointed to the butter and said that he wanted that butter, and he received the Defendants' 5 butter; that he afterwards went to another of the Defendants' shops and asked for " Milkmaid Butter" and received the Defendants'; in cross-examination he said that he knew that the Defendants generally had the notice R. J. W. 2, com• mencing, "all butter sold at this establishment is 'Pearks' Blended Butter,' " and describing the process, in their shops. 10 'I'he following witnesses gave evidence on behalf of the Defendants:- J. Gausfield, managing director of the Defendant Company, who stated that the Downloaded from Defendants had a poster for tea which had been very successful, and they decided to have a companion one for butter, and they got the same people to submit a design, who were only told that it was to have some connection with 15 butter, that the notice R. J. W. 1 was hanging in the window of all the Defendants' shops, and the notice R. J. W. 2 under the poster in every shop; W. R. Young, of Coopman and Young, provision merchants, who spoke as to http://rpc.oxfordjournals.org/ the use of a dairymaid for about 26 years on margarine ; A. Lovell, an assistant in the employ of Lovell and Ohristmae, Ld., wholesale provision merchants; 20 G. Raff, manager of the South Down Creameries, Wimbledon, who said that a milkmaid, without or with a cow, had been a common form of ornamental adver• tisement in connection 'with , and produced a specimen .. of a bag in which they bad sold butter for 16 years, the, bag having a milkmaid and a cow on it, and produced also a stamp having a milkmaid on it, which they had used for 25 the same period ; R. M. F. Robertson, director of Dobson, Molle & Oo., Ld.,

general printers, J. S. Latham, manager of the dairy department of the Dairy by guest on March 22, 2016 Supply Gompany,who stated that they had sold stamps for butter with a dairy• maid on them for 16 years ; G. Palmer, manager of the Belqrauia Dairy C01n• par/;y,·Ld., who stated that they had sold pats of butter stamped with a milk-. 30 maid since 1888, and spoke of other uses of a milkmaid by his Company, in particular 'on a billhead used in connection with butter ; A. H. Branburn, manager of the Dairy Outfit Oompany, Ld., who stated that since 1894 they had sold china figures of a milkmaid to dairy shops,the sale amounting to hundreds, and that since 1894 a milkmaid had been a common device on bill- 35 heads and bags in connection with butters, eggs, and so forth, and that they sold stamps also with the figure of a milkmaid on them for eight years; A. G. Mills. of Mill« and 81JarrOW, provision merchants, 'who stated that his firm had received butter from New Zealand in boxes marked ~, Milkmaid Brand" for 10 or 12 years. [Hughes, K.C., stated that the people in New Zealand had given an 40 undertaking to discontinue this, and subsequently put in a letter to this effect.] R. Waterhouse, secretary to the Willows Refrigerating G01npany, who orna• mented. tiled, and fitted up dairies, and said that the figure of a milkmaid was a popular ornament; O. A. Juno, colour printers' agent, who ordered the preparation of the poster,receiving instructions about the end of June 1901; A. w. 45 Branson, manager of one of the Defendants' shops, being the first one to which F. A. S. Gioatkin. went; A. Smart, trade valuer and expert; O. H. Edwards, who was employed by the Defendants at the shop to which the witness Lovelock went, and who said that he stated it was "Milk-Blended Butter" ; A. Frost, managing director of the Dairy Outjit Oompans], . 50 Mr. Justice Joyce held that the action failed as to passing off, and that the Register must be rectified so as to exclude butter from the goods for which the Trade Marks were registered, on the ground, as to the 1878 Trade Mark, that there had been' no real intention to use it for butter, and as to the 1901 Trade Mark, that at the date of its registration the device of a milkmaid was 55 Vol.XXI., No. -13.] AND TRADE MARK OASES. 269

Anglo-Swiss Condensed Milk Oompany v. Pearks, Gunston, and Tee, Ld. .In the Matter of the Trade !.lfarks Nos. 15,920 and 238,790 of the Anglo-Swiss Condensed Milk Oompany.

common to the butter trade. The action was dismissed, and an Order made for rectification in the manner mentioned." The appeal came on for hearing on the 9th of February. Neville, K.C., Hughes, K.C., and L. B. Sebastian (instructed by McKenna &; 5 00.) appeared for the Appellants ; Bousfield, K.C., A. J. Walter, and W. Frampton (instructed by W. B. Styer) appeared for the Respondents; R. J. Parker (instructed by the Solicitor to the Board of Trade) appeared for the Uomptroller-General. Neville, K.C., and Sebastian for the Appellants.-The Appellants have a 10 considerable reputation under the mark and name" Milkmaid." At the date of the registration of the mark (187~) they had a trade in Switzerland in milk and butter. They immediately commenced to trade in milk in England, and Downloaded from subsequently commenced to trade here in butter. The Respondents do not dispute that the Appellants have a reputation under the name "Milkmaid," but 15 they say it does not extend to butter. Joyce, J., on the authority of the cases cited to him, decided that the registration must be limited by the exclusion of butter. But the cases do not lay down any principle affecting the right of the Appellants to the use of their Trade Mark in connection with butter. Edward» http://rpc.oxfordjournals.org/ v. Dennis (L.R. 30 O.D. 454) turned upon the totally different nature of the 20 articles sold. If a man registers a mark for articles usually included in a particular trade-e.g., a dairyman's trade-he may subsequently extend the protection of his mark to an, article of a nature coming within the trade if no one has in the meantime begun to use the mark for that article. In Batt's Trade Mark (16 R.P.O. 411 ; L.R. 1898 2 Oh. 43 ; and 1899 App. Cas. 428) 25 the registrationwas not bond fide, and there was no intention to use the mark for the purpose of trade. The question is whether in this case the original

registration was bond fide. The articles here are generally dealt in by the by guest on March 22, 2016 same persons. The object of registering for a class is that, if the mark is registered in respect of a particular business, the owner shall be entitled to use \30 it with regard to any article fairly coming within the four corners of his business. The TradeMark Registration Acts are intended to benefit traders, and the more reasonable view is, as stated in the Act of 1875, that the rogistra .. tion should be in connection with, the business, but that you may register in respect of a whole class. A bond fide registration in respect of a particular 35 trade will protect articles which legitimately come within the scope of that trade. If this interpretation were not to be put on the Statutes traders would be embarrassed, for they would have to register a new mark for each article within the scope of the business not sold at the date of the original registration. [The evidence was referred to.] The milk and butter trades are kindred trades. 40 The inference the Court is entitled to draw from the evidence is that the public, who have known for many years of the Appellants' brand "Milkmaid" in connection with condensed milk, would connect butter sold under that brand with the Appellants' goods (Eastma1~ Photographic Material« Company, Ld. v, Griffiths' Oycle Corporation, Ld., 15 R.P.C. 105). The 1901 mark is 45 identical with that registered in 1878. The regulations in regard to foreign registration made it necessary to have one regis.tration for the whole class instead of two. In 1886 the Appellants took proceedings against one .Metcalf in respectto the use of the word "Dairymaid" as a Trade Mark, In the result Metcalf's user was limited (Anglo-Swiss UondensedMilk Oon1pany v. 50 Metcalf, 3-R.P.C.28; L.R. 31 O.D. 454). [COZENS-HARDY, L.J.-That case is very strongly against you.] Metcalf'S registration did not extend to butter. [VAUGHAN WILLIAMS, L.J.-But Metcalf was limited to "butterine and other

* 20 R.P.C. 509. REPORTS OF PATENT, DESIGN, [May.l1, 1904.

Anglo-Swiss Oondensed MilkOompany v. Pearks, Gunston, and Tee, Ld, In the Matter of the TradeMarks Nos. 15,920 and 238,790 of the Anqlo-Siois» Condensed Milk Oompany.

"fatty substances."] The Company's registration was in respect of dairy products, and butterine and fatty substances were not within it. In order to make the registration of 1901 irregular and improper, so as to cause it to be expunged on the Respondents' application, it must be shown that there was beforeregistra• tion a real user by someone else of the design of a milkmaid as a Trade Mark. 5 This has not been shown (Verity's Trade Mark, 19 R.P.C. 58). The Appellants are entitled to succeed. Counsel for the Respondents were not called upon. VAUGHAN WILLIAMS, L.J.-We think that the judgment of Mr. Justice Joyce ought to be affirmed. 10 I will first say one word as to the passing off action. I entirely agree with MrvJustice Joyce that there is no shadow of foundation for it. I have nothing Downloaded from more to say about that. With regard to the Trade 'Mark matter, the evidence that in lS7§. the date of the registration, those registering had Il

were perfectly content that the Defendants in that case should use a dairy... by guest on March 22, 2016 maid Trade Mark in respect of butterine and other fatty substances used as food, a course which they really could not have adopted if they at that time had any notion of applying their Trade Mark to butter. 30 That being so, the only other thing that has to be dealt with is the Trade Markwhich was registered on the12th ofJuJl_elJlQJ. Withregard to that, no doubt it is a registration which is of a, date subsequent to the time when the Anglo• Swiss Compans) began to deal in butter, and manufacture butter, at Kensal Road. The question now is whether at that date they ought to have been 35 allowed to get that. TradeMark registered in respect of butter. I need not trouble myself as to the other substances within the class other than the milk products or the milk combinations. Mr. Justice Joyce ·has arrived at the conclusion that th~a~almHkmaid,:mas iI.l~2H,~se i~c~~,h~,.~.."t!:i:lJl~._~ttll~~

Anglo-Swiss Oondensed MilkOompany v, Pearks, 'Gunston, and Tee, Ld. In the Matter of the Trade Ma1~ks Nos. 15,920 and 238,790 of the Anglo-Swiss Uondensed Milk Uompanst,

Lord. I should only like to make this remark with regard to the question which has been principally urged upon us in the course of the argument, namely, as to the validity of the registration in 1878 of this Trade Mark. The question which we have to consider is that which was stated by Lord Lindley, ~ then Master of the Rolls, in Re Batt's Trade Mark, in' this form: "Can a man " properly register a 'I'rade Mark for goods in which he does not deal, or intend " to deal-meaning by 'intending to deal' having at the time of registration " some definite and present intention to deal in certain goods, or .descriptions " of goods, and not a mere general intention of extending his business at some 10 "future time to anything which he may think desirable"? That question he answered in the negative, and that is the question which has to be answered in Downloaded from the present case with reference to the materials before lIS. N ow we have it that as far back as 1~76 the Plaintiff Company, being then manufacturers of condensed. milk and also of butter in Switzerland-for they are a Swiss 15 Company-registered in England a Trade Mark in Class 42 in respect of certain specified articles, namely, condensed milk, coffee and milk, cocoa and milk, chocolate and milk, and essence of coffee. That being the case, they proceeded in 1818to !"eO"i~t.er the same mark with a slight addition, namely, the words http://rpc.oxfordjournals.org/ " MIIKmalCI ~rana" in Class 42, except in respect of the substances for which 20 the main portion of the Trade Mark had been already' registered. Now:Class 42 is an extremely wide class of .. , substances used as food, or ingredients in food," and there are a large number of examples which the learned Judge referred to. That being the state of things, what happened as reg-ards butter, as to which 25 ~~rg~~S;~~~r~~i~;t;~l'~~ ~it~~ exam.pre-ortlieaiiterence'WliiC1i is referred to by Lord Lindley, nam-ely, a case

~~y~~!~~J~1frtrJt~~~~~~yl1:t:'f~t!~~is~~~l~:~~ten~~ by guest on March 22, 2016 what he calls a definite and present intention of dealing in butter. I entirely 30 agree thatthe appeals ought to be dismissed. COZENS-HARDY, L.J.-I am of the same opinion. I so entirely agree with what 1ell from Mr. Justice Joyce in his judgment, and what has been said by my Lord and Lord Justice STIRLING, that I think it would only be a waste of time to addanything. 35 VAUGHAN WILLIAMS, L.J.-I made it that common