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torts:tradename

Passing Off: Tradename

A tradename may be either the name of the manufacturer of goods or some name by which the manufactured goods have become generally known. There is a kind of property in such a name, and interference with it will be restrained by the Court if there is a prospect of injury to the owner of it.1) A trader is not entitled to pass off his goods as the goods of another trader by selling them under a name which is likely to deceive purchasers (whether immediate or ultimate) into the belief that they are buying the goods of that other trader, although in its primary meaning the name is merely a true description of the goods.2) The wrong consists in any other person selling goods of his own in such a way as to lead the public to suppose that they are purchasing some one else's goods.

The question whether a name applied to a patented or other article constitutes a tradename, indicating the manufacturer, or has come to be regarded as the proper designation of the article itself, and therefore open to the whole world is a question of evidence in each particular case.3)

The principle that nobody has any right to represent his goods as the goods of somebody else4) has no limit as regards name, origin, honesty of manufacture or sale, or otherwise. Thus, a trader whose goods have acquired a reputation under a particular name can restrain the user of that name in any way whatever by a rival trader in connection with the latter's own goods, even though that reputation has been acquired by the exertions or enterprise of the rival trader as an importer and vendor on behalf of the plaintiff.5)

A man whose goods have acquired a reputation, in connection with the distinctive tradename attached to them, has a right to protect himself from the fraudulent appropriation of that tradename by another trader in the same or similar class of goods.6) The defendant adopting the tradename and imitating the get up of the plaintiff's goods, may be liable on the ground of fraud, though the plaintiff has no exclusive right to the name.7) Mere similarity of name is not sufficient ground for an injunction, unless damages to the plaintiff be clearly proved, or the name is so closely similar as to be a colourable imitation of the plaintiff's.8) The Court will not restrain a man from trading in his own name except where he uses his name in such a way as to pass off his goods as the goods of another.9) But where a tradename is merely descriptive of the article, whether originally a descriptive name or not, and does not designate manufacture by any particular firm, it cannot any longer be exclusively retained by the original maker, but may be adopted by any other trader.10)

Name of goods

The plaintiff had for some years made belting and sold it as “ Camel Hair Belting,” a name which had come to mean in the trade the plaintiff's belting and nothing else. The defendants began to sell belting made of the yarn of camel's hair, and stamped it “ Camel Hair Belting ” so as to be likely to mislead purchasers into the belief that it was the plaintiff's belting, endeavouring thus to pass off his goods as the plaintiff's. Held, that the plaintiff was entitled to an injunction restraining the defendant from using the words “ camel hair ” as descriptive of or in connection with belting made or sold or offered for sale by him and not manufactured by the plaintiff without clearly distinguishing such belting from the plaintiff's belting.11)

The plaintiff was held entitled to restrain the defendants from passing off by the use of the term “ Yorkshire Relish ” sauce not of the manufacture of the plaintiff as or for the goods of the plaintiff.12)

The plaintiffs were selling timber which they were importing from their estate in Western Australia, under the name of “Jarrahdale jarrah,” and the timber had acquired that name in the market. The defendants began to sell under the same name. In an action, an injunction was granted restraining the defendant from selling any timber not imported from the plaintiff's estate as “Jarrahdale jarrah” timber.13) Even a geographical name, e.g., “ Stone” ale, used for ale manufactured by the plaintiff at Stone, will be protected from a similar name, adopted by the defendant a new brewer at the same place.14)

A particular starch, which was first made in a, village called Glenfield, was given the name of Glenfield Double Refined Powdered Starch, and acquired a great reputation as Glenfield Starch. Its manufacture was then removed to another place, but the name was preserved, Another manufacturer, named Currie, then set up in Glenfield, and on his labels he described the article, as Double Refined Powdered Starch, Currie and Co., starch and corn manufacturers, Glenfield. The latter word was put at the bottom of the label instead of at the top, as in the plaintiff's label, and there were other minor differences. It was held by the House of Lords that the difference was merely colourable, the object being to induce the public to purchase the defendant's starch as being the original Glenfield starch.15)

When a favourite yarn shipped to India had obtained the name of “Be-hathie” yarn, from two elephants which were prominent on the labels, and a rival manufacturer used a label similar in colour and shape, and also bearing upon it two elephants, the Court prohibited its use as fraudulent imitation, though the labels when put side by side were really distinguishable.16)

The plaintiff had introduced into market a superior white soft soap, which they sold under the name of “The Excelsior white soft soap.” It was admitted that white soft soap, as a chemical product, had been known for a long time; but it was asserted and proved that there was little or no demand for it in the market until after the plaintiffs had introduced it; and that, for commercial purposes, it was thus a substantially new article. The defendants subsequently began to manufacture, and sold soap under the name of “Bustard and Co's Excelsior white soft soap.” In an action, an injunction was granted to restrain the defendants from selling, advertising, or exposing for sale, any soap under the name of “Excelsior white soap” or any words so contrived as to represent or lead to the belief that the articles sold by the defendants were the plaintiffs' article or manufacture. “ If the defendants had not desired to obtain an unfair advantage of the reputation of the plaintiffs' goods, they should have called their soap” Victoria white soft soap,“ or ” Royal white soft soap, or by some similar name.17) The use by the defendant of a similar title to a newspaper or almanac to that sold by the plaintiff with a view to mislead the public18); the use of a similar name for a hotel for a like purpose19); the use of a similar name or style for a shop or firm of merchants carrying on the same business20) may be restrained by injunction, and damages may be awarded for any loss occasioned by the wrong.

Descriptive name

Plaintiff claimed to have put upon the market a fabric suitable for shirtings and underwear, woven in a particular manner, called “cellular cloth.” Defendants began to sell cotton and woollen goods described a “cellular.” Held, that the word “cellular” was an ordinary English word which appropriately and conveniently described the cloth of which the goods sold by the defendants were manufactured, and that the term had not been proved to have acquired a secondary meaning so as to denote only the goods of the plaintiffs.21)

Name of firm

A blacking manufactory had long been carried on under the firm of Day and Martin. The executors of the survivor continued the business under the same name. A person of the name Day having obtained the authority of one Martin to use his name, set up the same trade and sold blacking as of the manufacture of Day and Martin, in bottles and with labels having a general resemblance to those of the original firm. He was restrained by injunction.22) The plaintiff, as executor, carried on the business of one J. Thorley, who had for a long time manufactured by a secret process a material which he sold as Thorley's Food for Cattle; and on his death a rival company was started in which J.W. Thorley, a brother of J. Thorley and possessed of his secret, was a small shareholder and manager. This company sold packages made to resemble those of the plaintiff's, which they labelled “ Thorley's Food for Cattle.” It was considered in the first place that the plaintiff had a right good against the world in general to the use of the term in question, and that although this right did not extend so far as to enable him to prevent J. W. Thorley from selling the same food under his own name, yet the latter must not do so fraudulently, in such a manner as to make the public think when purchasing his food that they were getting the manufacture of the plaintiff.23) The defendants started a firm for selling pianos under the name of “Thomas Edward Brinsmead and Son Ltd.,” in competition with the plaintiff's old firm “ John Brinsmead and Sons ” who were dealing in pianos. In an action, the Court granted an injunction restraining the defendants from using the name of Brinsmead, in connection with the manufacture, sale, or hire of pianos, without adding thereto an express statement that the defendant company are distinct from and hare no connection with the plaintiff's firm. The question in such a, case was not whether those who were in the secrets of the trade would be deceived, but whether the ultimate purchasers of pianos would be deceived.24) The “Manchester Brewery Co.” had carried on business under that name for years. The defendants bought an old business called “ The North Cheshire Brewery Co.” and then (without intending to deceive) got themselves registered as “The North Cheshire and Manchester Brewery Co.” Held, that this name was calculated to deceive and the defendants should be restrained by injunction.25)

A company was incorporated in Canada under the title of the Sun Life Assurance Co. of Canada. Held, that in the absence of fraud and dishonesty the company were entitled to carry on business under their corporate name in England, notwithstanding the existence of the Sun Life Assurance Co..26) “Jamieson's Whiskey” is a trade name Jamieson v. Dublin Distillers Co. The London General Omnibus company prayed for an injunction to restrain the defendant from running omnibus having painted thereon words, panels, or devices in colourable imitation of those on the plaintiff's omnibuses, or so painted, lettered and contrived as to represent or lead to the belief that the defendant's omnibuses were the plaintiff's omnibuses and an injunction was granted.27)

Indian case: Where the partners at the time of dissolving the partnership make no stipulation about good-will, every one of the partners has a right to carry on the trade in the identical name under which the firm had traded prior to the dissolution ; because the good-will of the business is an asset of the partnership, to which one member of the firm has no higher right than the other.28)

Trademark and Tradename

There is a distinction between a trademark and a tradename. A name may be so appropriated by use, as to come to mean the goods of the plaintiffs, though it is not, and never was, impressed on the goods, or on the packages in which they are contained, so as to be a trademark properly so-called, or within the written statutes. Where it is established that such a tradename bears that meaning, I think, the use of that name, or one so nearly resembling it, as to be likely to deceive, as applicable to goods not the plaintiffs', may be the means of passing off those goods as and for the plaintiffs, just as much as the use of a trademark; and I think the law, so far as not altered by legislation, is the same.29)

One main difference between trademarks and tradenames is that a trader has a right of property in the former if registered, but not in the latter, except where used as a trademark.

1)
Borthwick v. Evening Post
2) , 4) , 11)
Reddaway v. Benham
3)
Singer v. Wilson
5)
Saxlehner v, Appollinaris Co.
6)
Good fellow v. Prince
7)
Lever v. Goodwin
8)
Borthwick v The Evening Post
9)
Jamieson v. Jamieson
10)
Native Guano Co. v. Sewage Manure Co.
12)
Powell v. The Birmingham Vinegar Brewery Co.
13)
The R.R. Co. v. J. Timber Co.
14)
Joules v. Montgomery
15)
Wotherspoon v. Currie
16)
Johnston v. Orr Ewing
17)
Braham v. Bustard
18)
Spottiswoode v. Clerk
19)
Howard v. Henrigues
20)
Lewis v. Langdon
21)
Cellular Cloth Co. v. Maxton
22)
Croft v. Day
23)
Massam v. Thorley's Cattle Food Co.
24)
Brinsmead v. Brinsmead
25)
North Chesire and Manchester Brewery Co. v. Manchester Brewery Co.
26)
Saunders v. Sun Life Assu. Co. of Canada
27)
The London G. O. Co. v. Felton
28)
Muncherji v. Framji
29)
Singer Manufac. Co. v. Loog


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