CADER SAIBO & CO. v. MOWLANA

105-NLR-NLR-V-39-CADER-SAIBO-&-CO.-v.-MOWLANA.pdf


370
Cader Saibo & Co. v. Mowlana.
1937Present: Abrahams C.J.
CADER SAIRO & CO. v. MOWLANA.
665—P. C. Colombo, 4!,083.
Trade mark—Registering of trade mark, in respect of fabrics and paper bags—Trademark consisting of the word Mowlana—Use of similar bags by dealer ofthe name of Mowlana to wrap goods sold at his shop—No infringementof trade mark—Ordinance -No. 13 of 1889, s. 3 (I) (b and d) and s. 6 (I)
(c and d).
The complainants, a firm of merchants, dealing in fabric, registeredin respect of it a trade mark consisting of the word “ Moulana ” in blockcapitals. At the same time they obtained registration in respect ofgoods of another class consisting of paper bags, wrappers, and containers,the trade mark “ Moulana ” written obliquely across the bag in cursivewriting terminating with a flourish.
The accused who was a dealer in drapery and oilmanstores and whosename was “ Moulana ” used the word on paper bags, printed in the samestyle as the word figuring in the complainant’s bags, in order to indicatethat the goods which were enclosed in them were purchased at the shop-at which he traded.
Held, that the use of the paper bags for the purpose indicated, did notamount to an infringement of the complainant’s trade mark.
T
HE accused was charged under section 3 (3) of the MerchandiseMarks Ordinance, No. 13 of 1888, with the following offences : —
that he did falsely apply to goods a mark (consisting of the word.“ Mowlana ” printed obliquely across the face of paper bags orcontainers for packing or parcelling goods or as a covering orwrapper..for goods), which mark so nearly resembled the com-plainant’s trade mark as to be calculated to deceive ;
did cause the aforesaid mark to be falsely applied to goods ;
did have in his possession for the purpose of his trade, paper bagsor containers to which the aforesaid mark has been falselyapplied.
He was convicted on the second and third charges and fined Rs. 100on each count.
H. V. Perera, K.C. (with him M. Maharoof), for accused, appellant.—A trade mark must be registered in respect of “ goods ”. The Ordinance-defines “ goods ” as anything that is the subject of trade, manufacture, ormechandise. Complainant’s mark is registered in respect of goodsenumerated in class 38, i-.e., stationery, such as paper bags; envelopes.Wrappers, &c. Complainant, therefore, had exclusive right to deal instationery under his registered mark.
It is'no offence for anyone to apply the same mark to other goods.
The accused never sold stationery and therefore it cannot be said'that he has infringed complainant’s rights. Before accused could beconvicted it must be shown that he used the mark fn. question qua trade-mark. (Abdul Azeez v. Seyed Mohamed Buhary ’)..
> 9 C. L. W. 88 and 39 N. L. B. 384.
ABRAHAMS C.J.—Coder Saibo & Co. v. Mowlana.371
The mere use of one’s own name in connection with one’s trade is notuser as a trade mark.
Accused’s use of the mark on the paper bags did not indicate that hewas a dealer in or manufacturer of the paper bags, (fn re Powell’s TradeMark'.)
F. A. Hayley, K.C. (with him N. K. Choksy), for complainant,respondent.—By registering the mark in respect of goods in class 38,which included paper bags the complainant obtained the right to preventother persons using the same mark upon paper bags.
The accused had not obtained the consent of the complainant andtherefore he had used the mark “ falsely ” within the meaning of theterm as used in the Ordinance.
User of one’s own name in certain circumstances may amount toinfrigement of another’s rights.
It is no defence to state that the accused never sold stationery.—Hemight do so at any time.
Counsel cited Teofani Cigarettes case", Valentine Meat Juice case”,Brinsmead Piano case '.
Ctir. adv. vult.
November 12, 1937. Abrahams C.J.—
The appellant was charged with the following offences, that he—
did falsely apply to goods a mark (consisting of the word
“ Mowlana ” printed obliquely across the face of paper bags orcontainers used for packing, placing in them, or parcelling goodsof the accused or used as a covering or wrapper for goods of theaccused), which mark so. nearly resembles Registered TradeMark No. 6,073, consisting of the word “ Moulana ”, as to becalculated to deceive, and that the accused did so in breach ofsection 3 (1) (b) read with section 6 (1) (c) of Ordinance No. 13of 1888 and did thereby commit an offence punishable undersection 3 (3) of the said Ordinance | or alternatively
did cause the aforesaid mark (to wit, the word “ Mowlana ” printed
obliquely across the face of- the paper bags or containers usedfor packing, placing in them, or parcelling goods of the accusedin them or used as a covering or wrapper for goods of theaccused), which said mark so nearly resembles Registered TradeMark No. 6,073 as to be calculated to deceive, to be falselyapplied to goods within the meaning of section 3 (1) (f) readwith section 6 (1) (c) and did thereby commit an offence punish-able under section 3 (3) of Ordinance No. 13 of 1889 ;
<3) did have in his possession for the purposes of his trade, things,to wit, paper bags or containers used for packing, parcelling, orplacing in them goods of the accused or used as covering orwrapper for the goods of the accused, to which a markconsisting of the word “Mowlana” printed obliquely acrossthe face of the said paper bags, used as aforesaid, has been 1
1 (1893) 2 Ch. D. 388, atp. 403.3 17 R. P. C. 1. ; 673.
* 30 R. P. C. 76 ; 446.4 30 R. P. C. 137.
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ABRAHAMS C.J.—Coder Saibo & Co. v. Mowlana.
falsely applied and which mark so nearly resembles RegisteredTrade Mark No. 6,073, as to be calculated t<5 deceive and thatthe accused did so in violation of the provisions of section 3 (2)of.the said Ordinance punishable under section 3 (3) thereof ;
did apply a false trade description to goods within the meaning ofsection 3 (1) (d) read with sections 4 (2) and 6 (1) (c) of the saidOrdinance or alternatively did cause the same to be appliedwithin sections 3 (1) (d) and (f) read with sections 4 (2) and6 (1) (c) of the said Ordinance, in that he did place or enclose orcause to be so done goods of his which have been sold, in acovering or wrapper, to which the said false trade description,consisting of the word or mark “ Mowlana ” printed obliquelyacross the face of such covering or wrapper, had been falselyapplied, and which said word or mark is reasonably calculatedto lead persons to believe that the goods of the accused are thegoods or merchandise of the owners of the said RegisteredTrade Mark No. 6,073, and that the accused did thereby commitan offence punishable under section 3 (3) of Ordinance 13 of1889.
He was convicted on the second and third charges and fined Rs. 100on each. The facts of the case are very interesting and unusual, indeedso far as I am aware unique. The complainant firm are a firm ofmerchants who deal extensively in silk, cotton, and woollen peice goods.They claim to have a large capital and have two shops in Colombo and abranch in Kandy. They deal in particular with a fabric to which theyattach the name “ MOULANA ” and in respect of which they obtainedregistration under the Trade Marks Ordinance, No. 15 of 1925, onOctober 30, 1934. This trade mark consisted of the word MOULANA,in block capitals, enclosed within a lozenge shaped figure. At the sametime they also obtained registration in respect of “ all goods in class 38 ”,that is to say, broadly speaking, paper bags, wrappers and sationery.The trade mark in this case consisted of the word “ MOULANA ”simpliciter in large block cursive writing terminating with a flourish.This word appears printed in very large form obliquely across the bagsand wrappers in which their goods were enclosed, upon which bags andwrappers are also printed in characters considerably smaller than theword “ MOULANA ” the exact name of the firm, and their trade,addresses, and the description of the goods in which they deal. Theydo not manufacture or sell and have never manufactured or sold goodsin class 38.
The appellant in this case is actually named S. O. B. S. A. Moulana.He also deals in piece goods and has a shop in Colombo not far awayfrom a shop called Zacharias Stores with which the complainant firmclaimed to have some connection. He describes himself as a generalmerchant, dealer' in drapery and oilmanstores, &c., and as a Gents’Tailor. In December of last year it was brought to the notice of thecomplainant firm that the appellant was using paper bags and wrappersacross which the word “ MOWLANA ” was printed obliquely incharacters precisely the same style as the word “ MOULANA ” figuring
ABRAHAMS C.J.—Cader Saibo & Co. v. Mowlana.
373
on the complainant’s paper bags. The appellant’s bSg and the com-plainant’s bag were exhibited in the lower Court. There is no doubtthat the word “ MOWLANA ” very closely resembles the word“ MOULANA ”. It is printed in red instead of in bfack and theappellant’s address appears below it. But it is very difficult to resistthe conclusion that it was put upon the bag in order to create theimpression that the appellant’s store was in some way connected with thebigger firm. A trifling difference in the spelling of the two words, andthe difference in the colour in which they are printed, is an endeavour toassert a plausible sort of reason that there was no intention to imitate.
Now, it is not complained that the appellant has infringed thecomplainant’s trade mark rights in respect of the “ Moulana Fabric ”nor is it .complained, that he is endeavouring to pass' off his piece goodsas the piece goods of the complainant firm. Complainant’s point ofview has been stated in the most concise language by Mr. Hayley. Thisis what he seems to say: “ I have a trade mark * MOULANA ’ inrespect of paper bags and wrappers. It is perfectly true that I do notmake nor do I sell paper bags or wrappers, nor does the appellant, butthat does not matter. He is using for the purposes of his trade in piecegoods and other wares paper bags to which he has applied or causedto be applied my trade mark, and that is an offence ”. To this theappellant says first of all, “ it is immaterial whether I am manufacturingor selling paper bags and wrappers. It is said that I am infringinga trade mark but I am not trading in paper bags and wrappers. Further,
I am using the word ‘ MOWLANA ’ on the paper bags merely as myname to indicate that the goods which are enclosed in the paper bagsand wrappers were purchased at my shop in which I trade under my ownname of Mowlana ”.
It seems to me that the contention of the appellant must prevail. He isaccused of falsely applying or causing to be applied to goods anothertrade mark. The expression “ goods ” is defined in section 4 of therelevant Ordinance as “ anything which is the subject of trade, manu-facture, or merchandise ”. The word “ merchandise ” is, of course,a word cognate to the word “ trade ”. The question naturally suggestsitself ; the subject of trade, manufacture, or merchandise, in respect ofwhom ? In a charge of falsely applying a trade mark to goods, I thinkthe person referred to must be the person who is charged. They must behis goods and therefore he must be trading with them and manufacturingthem or in some other way treating them as merchandise, that is to say —dealing with them as a merchant. It cannot be said that merely becausethese articles are adjuncts and are ancillary in some way to the appellant’strade as .a piece goods merchant or tailor that he is trading with them ordealing with them commercially. Looking at the matter in an ordinarycommon sense way we should not expect a confectioner to speak of thesilver paper in which he wraps up his chocolates as his goods, or thegreen-grocer to speak of the baskets in which his cabbages or turnipsare sent round to his customers as his goods.
It further appears to me that the second contention of the appellantis also perfectly sound. To be convicted of falsely applying a trademark to goods, the trade mark must be applied qua trade mark. In the-
374
ABRAHAMS C.J.—Coder Saibo * Co. v. Mowlana.
case of Abdul Azeez v. Seyed Mohamed Buhary1 it was said, “Now,section 3 (1) (b) of the Merchandise Marks Ordinance penalises any personWho'falsely applies to goods, any trade mark, or any mark so nearlyresembling a trade mark, as to be calculated to deceive, and it seems tome, on analysis, to mean this, that a person applies to goods the trademark of another person or some mark which appears to be the trademark of another person in such a way as to lead the public to believe thatthat mark has been applied to the goods qua trade mark, that is to say,to indicate that the goods on which the mark appears are the goods of:some particular person Now the word “ MOWLANA ” has certainlynot been applied by the appellant to his paper bags in such a way as toindicate to the public that the paper bags have been manufactured orsold by any particular person ; that is not the impression that a memberof the public would get. The word has clearly been applied to indicatethat the goods enclosed in the bags were purchased at a shop owned by aproprietor whose actual name was Mowlana or who traded under thename of MOWLANA, and whether that proprietor was represented inany way as being connected with another firm is, I am satisfied, certainlynot to the purpose.
I cannot help thinking that a reference to the purposes for whichtrade marks exist would not be out of place. I should like, with respect,to cite a passage from the judgment of' Bowen L.J. in thecase of In fe Powell’s Trade Mark3; “ The function of a trademark is to give an indication to the purchaser or possible purchaseras to the manufacture or quality of the goods—to give an indicationto his eye of the trade source from which the goods come, or the tradehands through which they pass on their way to the market. It tells the •■person who is about to buy, or considering whether he shall buy, thatwhat is presented to him is either vwhat he has known before under the•similar name, as coming from a source with which he is acquainted,or that it is what he has heard of before as coming from that similar■source ”. Trade Marks which are registered for one particular purposemay not be used for some other purpose. The complainant must betaken to have intended to protect his paper bags and stationery from theunfair competition of people desiring to represent their paper bags andstationery as his, and he is restricted to actions against such unfair•competition.
As regards the third charge,, it seems obvious that the key words are11 for any purpose of trade or merchandise ”, and I think that that mustmean trading in these goods or things, and not trading in goods in whichthese things are a necessary or useful adjunct. I quash the convictions.and acquit the g$|>ellant. .
Convictions quashed'.
■* 9 C.L. W. SS and 2 C. L.J. Ul.
(1893) 2 Ch. D. 388 at p. 403.