Cases of company trade names. Injunctions granted. be accepted as sufficient to make out the plaintiff's case (d). If it were it would give the first user a monopoly in the term. "If a company which does colonial business cannot call itself colonial, it is obvious that, under a species of assertion that the word colonial is symbolical, the plaintiffs might prevent every other person using it as descriptive of his trade" (e). In The Guardian Fire and Life Assurance Co. v. The Guardian and General Insurance Co. (f), the plaintiff company were a very old-established institution, and were commonly known as The Guardian or The Guardian Assurance Co., and the defendant company had been lately formed by the re-construction of the Guardian Horse and Vehicle Insurance Association. They had assumed powers to carry on general insurance business, and their offices were near those of the plaintiffs, in Lombard Street. It was shown that there were two other companies doing some insurance business in other parts of London, under names comprising the word guardian; but notwithstanding this, Jessel, M.R., held, that the defendants' new name was calculated and intended to deceive, and he would have granted an injunction, had they not undertaken to call themselves the "Guardian Horse, Vehicle, and General Insurance Company." Injunctions were granted also in Hoby v. The Grosvenor Library Co., Ld. (g), where the plaintiff's library was called the Grosvenor Library, and in The Accident Insurance Co., Ld. v. The Accident, Disease, and General Insurance Co., (d) Cf. the rule against descrip- (e) Per Lord Romilly, in The 741 (1864); see also India and China Tea Co. v. Teide, W. N. (1871) 241, Jessel, M.R.; and The Australian Mortgage, Land, and Finance Co. v. The Australian and New Zealand Mortgage Co., W. N. (1880) 6, C. A., cited p. 399. (f) 50 L. J. Ch. 253 (1880), Jessel, M.R. (g) 28 W. R. 386. Ld. (h), where the plaintiff company was popularly known as The Accident Company or The Accident. refused. In the following cases injunctions were refused: London Injunctions and Provincial Law Assurance Society v. London and Provincial Joint Stock Life Assurance Co. (i), although there was evidence that the former company were usually called the London and Provincial Insurance Co.; London Assurance v. London and Westminster Assurance Corporation (k); Colonial Life Assurance Co. v. Home and Colonial Assurance Co., Ld. (1); London and County Banking Co. v. Capital and Counties Bank (cited in the next case); Merchant Banking Co. of London v. Merchants Joint Stock Bank (m); The Army and Navy Co-operative Society, Ld. v. The Junior Army and Navy Stores, Ld. (n); Australian Mortgage Land and Finance Co. v. Australian and New Zealand Mortgage Co. (o). In Bamstead v. The General Reversionary Co., Ld., an interlocutory injunction was refused, because, although the defendant company had adopted a name resembling that of the company of which the plaintiff was secretary, the General Reversionary and Investment Co., yet there was no probability of deception because the former was a small Liverpool concern, and the latter a very large London one (p). In the recent case of Tussaud v. Tussaud (q), an unsuc- Tussaud v. (A) 54 L. J. Ch. 104 (1884), Pearson, J.; see also Wolmershausen v. G. S. Wolmershausen & Co., Ld., W. N. (1892) 87, Chitty, J.; and Saunders v. The Sun Life Assurance Co. of Canada (1894) 1 Ch. 537; 10 Times L. R. 183, Stirling, J. (i) 17 L. J. Ch. 37 (1848), Shadwell, V.-C. (k) 32 L. J. Ch. 664 (1863), Stuart, V.-C. () 33 Beav. 548; 33 L. J. Ch. 741 (1864), Romilly, M.R. (m) 9 C. D. 560 (1878), Jessel, M.R. (n) Seb. Dig. p. 393 (1879), Jessel, M.R. (0) W. N. (1880) 6, C. A., James, L.J., said: "The difficulty in these cases was, that while the business name of another could not be appropriated, a man could not, on the other hand, give himself any monopoly in a name which, as in this case, merely described the nature of the business or the locality of its operations"; see above, p. 397. (p) 4 Times L. R. 621 (1888), Stirling, J. (2) 44 C. D. 678 (1890), Stirling, J. Rendle v. Rendle, 63 L. T. 94 (1890), Kay, J., is a somewhat similar case. Tussaud. The judgment of Stirling, J. cessful attempt was made by the defendant to shelter himself under the general exception to the principle stated at the head of this chapter, that anyone may honestly trade under his own name, which is discussed more fully below (»). In that case the plaintiffs, Madame Tussaud and Sons, Limited, were the owners of a waxwork exhibition originally founded by a Madame Tussaud, and subsequently carried on by the father and uncles of the defendant. Their business, according to the evidence, was often referred to as Madame Tussaud's, and, not infrequently, as Tussaud's only. The defendant, who was a wax modeller by trade, was promoting a company to be called Louis Tussaud, Ld., to open and carry on a waxwork exhibition under that name in Shaftesbury Avenue, the plaintiffs' exhibition being situated in the Marylebone Road. He was to be engaged as manager of the exhibition, and modeller of the exhibited figures. He had never carried on, and did not possess the goodwill of, any business in any such exhibition. It follows, Stirling, J., said, in his judgment in this case, "from the decisions in Burgess v. Burgess (s) and Turton v. Turton (t), that the defendant is at perfect liberty to open on his own account, and to carry on in his own name an exhibition of waxworks. Further, he might take partners into his business, and carry it on under the name Louis Tussaud & Co. That seems to me to have been expressly decided in Turton v. Turton. 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 defendant. Again, the (r) Page 420. (s) 3 D. M. & G. 896; 22 L. J. Ch. 675 (1853), Knight-Bruce and Turner, L.JJ., cited p. 423. (t) 42 C. D. 128 (1889), C. A., reversing North, J., cited p. 421. "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 present to say that that company might not be registered under the same name as had previously been used in connection with the business" (u). name cannot But the defendant could not, the learned judge held, Right to use a sell the right to use his name in connection with a business be sold. which he had never carried on, and in which he had no interest whatever, or in which he stood simply in the position of a paid servant (r). And the proper inference to be drawn from the facts of the case primâ facie was, he concluded, 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 that of the Plaintiff company or a branch of it, notwithstanding that the prospectus issued by the defendant plainly stated on the face of it that the new exhibition had no connection with the plaintiff company. An interim injunction in the terms of that in Hendriks v. Montagu (y), set out above, was accordingly granted. business, A trader has the same rights in respect of the name of the Name of house, shop (z), or factory (a), where he carries on his trade or house, or business, as he has in respect of his trade-name. He can, factory. (u) 44 C. D. p. 687. (x) Cf. The Birmingham Vinegar Brewery Co. v. The Liverpool Vinegar Co., supra, p. 394; and Warner v. Warner, 5 Times L. R. 327, 359 (1889), Stirling, J., and C. A., (Warner's Cure); and see below, p.425. (y) Ante, p. 396. (2) Hudson v. Osborne, 39 L. J. Ch. 79 (1869), James, V.-C., (Osborne House); Boulnois v. Peake, 13 C. D. 512 n. (1868), Giffard, V.-C., (The Carriage Bazaar); Bodega Co. v. Owens, 6 R. P. C. 236; 7 ib. 31; 23 L. R. Ir. 371 (1889), K. Chatterton, V.-C., (Bodega Wine (a) Braham v. Beachim, 7 C. D. Ꭰ Ꭰ therefore, support an action for passing off, and obtain an injunction by showing that the name of the house, &c., has a reputed connection with his trade or business or goods, and that the defendant, without having any independent right to do so (a), is using for business purposes a name which is calculated to cause his trade, business, or goods to be taken for, or to be confounded with, the plaintiff's (b). There is no right to the exclusive use of the name of a mere private house (c), and no cause of action arises where, although the defendant has adopted, for business purposes, an address likely to be confused with that of the plaintiff, yet the businesses of the parties are so different that no damage can result to the plaintiff's trade (d). B. The Trade-name of the Plaintiff's Goods. A name which is applied or attached to a trader's goods when they are offered for sale, so as to distinguish them from similar goods, and to identify them with him, or with his successors as the owners of a particular business, as being made, worked upon, imported, selected, certified, or sold by him or them, is a trade-mark (e). And if it is within any of the classes enumerated in sect. 64 it may be registered as a trade-mark. But whether the name is applied or attached to the goods, so as to conform to the definition just stated, or is registered as a trade-mark or not, if it is in fact known in the market as the distinctive name of the goods of a particular trader, it is an actionable interference with his rights to sell or deal in goods of the kind for which the name has acquired such significance, not being his goods, under the name in question, if such (a) As in Mason v. Queen, 23 Scot. Law Rep. 641, where the defendant, as tenant of a railway company, who had bought the plaintiff's hotel, re-opened it as the "Old Waverley," the plaintiff, on the sale, having moved his business to another building. (b) See note () on preceding page. (c) Day v. Brownrigg, 10 C. D. 294 (1878), C. A. (d) Street v. Union Bank of Spain and England, 30 C. D. 156 (1885), Pearson, J.; the plaintiffs were advertising agents, (telegraphic cypher). (e) Chap. II., p. 25. |