H. C. DIXON & SON LTD. V. GEORGE RICHARDSON & CO. LTD.

365REPORTS OF PATENT, DESIGN. AND TRADE MARK CASES . DECEMBER 6TH, 1933 Vol.'L.] IN THE OHANCERY OF THE Before The [No. 12 OOUNTY PALATINE OF LANCASTER. VICE-OHANCELLOR SIR COURTHOPE WILSON, K.C. July 11th, 12th, 13th 'and 14th, 1933. H'..jO. DIXON & SON LTD. v. GEORGE RICHARDSON & 00. Lrn, ;) Trade 1.11arks-Action for infringelnent and passing off and breach. of agreement-s-Alleqed. infringing labels, tickets and wrappers ap-plied. to woollen goods" exported to Cfh~1ta-E8sential features not calculated to· deceive:Sufficient distinction thought intention to sail as close to the urind. as possibleAction dismiseed but urithout. costs. 10 The Plaintiffs, ship-pers and merchants and exporters of knitting wool yarns to the China Market, «oere the registered proprietors 0/ certain Trade Biark» registered in Class 33 in respect of yarns of wool or worsted, all of w'hich were registered on the 30th of January, 19311. They had in the year 1928 devised a new combination marking or lay-out of marks which were printed on the IS urrap pers 0/ the bundles of knitting wool yarn exported by them to C'hina surrounding a coloured ticket com,prising in the top part· the representation of a Mosque or Three Candlesticks or other objects and in the bottom part of the ticket Chinese Characters. BaTly in 1928 they began to ship such goods to China under such new lay-out, and had since eontinued to ship considerable 20 quantitiee a/knitting wool yarns 80 marked. In the year 1931 the Plaint1>lfs discovered that the Defendants, 'who urere also shippers of knitting wool yarns to the China markets, were 1.~sing a combination lnarking which the Plaintiffg; alleged to be a colourable imitation of their combination marking or lay-out of marks, As the result of correspondence between the parties the Defendants !5 agreed to alter the general lay-out of their bundle paper " in sucb a way as to' "prevent the possipility of any confusion arising in the minde of the Chinese "buyers." In April, 1932, the Plaintiffs ha1J'ing discovered that the Defendants were using a combination marking or lay-out, which they alleged to be a close imitation of the Plaintiffs' said lay-out, and tun infringement ofthe Plaintiffsr ~O registered. Trade Marks commenced. an action. against the Defendants cla,iming injunctions, damages and other ueual relief, 2 K 366 No. 12.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CAS~S [Vol. L. H. G..Dixon & Son Ltd. v. George Richardson & Co. Ltd._ Held, that on a coniparison of a bundle marked with the Plaintiffs' combination with a bundle marked with the Defendants' combination t-he conspicuous feature was the coloured ticket in the centre of each)' and these tickets being totally different in size and shape, the Plaintiffs having one ticket and the Defendants two tickets and the build'ing depicted being in one case a Mosque 5 and in the other a Mill, and the Plaint~~ffs' ticket havi1'tg an ant bear depicted in each C01'ne1' in addition to the Mosque ·in the centre, I£t was not poseible to :say that anyone would be deceived and there was not such a likelihood of deception as to entitle the Plaintiffs to succeed on the pass'ing-off part of the case. Held also, that the effect of the ag1'eement 01' undertalcinc by the 10 Defendants was no more than an undertaking to avoid anything urliich. could give rise to a passing-off action, and consequently the Plaintiffs could make no claim on that undertaking. The Defendomts' lay-out uias held to be prepared by their Agents in Shanghai with the intent-ion. of keeping as close as possible to the Plaintiffs' label and still keep w'ithin the law-in other words not giving 15 the Plal£ntiffs a 1~ight of com.plaitit I£n a Cour t of Justice)' but that the Defendants had succeeded in making a sufficient distinction between. the two M arks to prevent one being taken for the other; that to cO.py a successful Trade illark or successful get-up as closely as possible without being liable to an action is not honest competition, and in the circumstances (follo-urinq Lever 20 Bros.' Ltd. v. Bedingfield, (1899) 16 R.P.G. 3) the action was dismissed, but without costs. On the 27th of April, 19'32, H. C'.Dixon& Son. Ltd. commenced an action against Geo, Richardson &00. Ltd, for injunctions to restrain the Defendants, their servants and' agents from manufactur-ing, selling, offering for sale or 25 exporting woollen yarns not of. the Plaintiffs' manufacture or merchandise made up in wrappers (1) having printed thereon or affixed thereto printing or labels or tickets so contrived or expres-sed as by colourable imitation or -otherwise to he an infringement of the Plaintiffs' registered Trade Marks Nos. 519,-931, 519,932, 519,93,3 and 519,934 in Olass 33, and (2) so contrived or '30 "expressed as by similarity in appearance, design and get-up to .or by colourable imitation of the Plaintiffs' wrappers to represent or lead to the belief that the woollen yarns manufactured, sold, offered for sale or exported by the 'Defendants were the goods or manufacture of the Plaintiffs' or to lead to -eonfusion between the Plaintiffs' and the Defendants'goods, or. to enable the 35 .Defendants to trade upon the reputation of the Plaintiffs or of the Plaintiffs' woollen yarns, or 'from otherwise passing-off or endeavour-ing to pass-off or enable others to pass-off woollen yarns not of the PlaIntiffs' manufacture or merchandise as and for goods manufactured or Bold by the Plaintiffs; and for delivery up of infringing .articles, damages, etc. 40 On the 10th of June, 1932, the Writ was amended. by adding a claim for an injunction to restrain the Defendants, etc. from selling or exporting to China woollen yarns wrapped in paper bundles other than paper bundles so got up that the general lay-out of the bundle paper was such as to prevent the possibility of :3&7 Vol. L.] REPORTS OF PATENT, DESIGN, AND TRADE :MARK -CASES [No. 12. H; C. Diaon. & J~on Ltd. v. George RichaT'dson & Co. Ltd. any confusion arising in the minds of the Chinese Buyers, between the paper bundles of the Plaintiffs and the paper bundles of the Defendants in breach of the agreement by the Defendants with the Plaintiffs to that effect made in the early part of the year 1931. 5 'I'he Plaintiffs by their Statement of Olaim alleged (inter alia) that (para. 2) in the year 1927 the Plaintiff Oompany commenced to export to the Ohina market knitting wool yarn made up in paper wrappers having on the top side of the parcel or bundle printed words both in English and Chinese in black lettering surrounding a coloured ticket, which ticket comprised in the top part an object 10 as for instance a Mosque or the representation of Three Candlesticks and in the bottom part of the ticket Chinese characters. The Plaintiff Company had made use of a series of such wrappers using variations in the obj ect depicted' in the top part of the coloured ticket which were known as Mosque Tickets, Three Candlestick Tickets (and (...truncated)