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Present : Hutchinson C. J. and Middleton J.
278—D. G. Colombo, 30,742.
Trade mark — Colourable imitation—44 Famora ” and “Farina** —Infringement—Evidence—Opinion of witnesses as to the possi-bility of deception inadmissible.
Plaintiffs’ toilet soap had a registered trade mark, the essentialparticulars ofwhich were the word 44 Famora ”andthe device ot
a lady witha mirror.The defendant sold atoilet soap ” called
44 Farina.”The deviceon theplaintiffs’ boxes was different to
that on the defendant’s.
Held, that defendant had infringed the plaintiffs’ trade mark,as the use of the word “ Farina ” was calculated to cause defendant*0soaps to betaken byordinary purchasers forthesoaps of the
The lawrelating toinfringementof trade marks maybe stated
in a few propositions:—
It isunlawful fora tradertopass off bis goods asthe goods
of another.
Even if this is done innocently, it will be restrained.
A fortiori if done designedly, for this is fraud.
Although,the firstpurchaser is not deceived,if the article
isso delivered. to himasto be calculated todeceive a
purchaser from him, that is illegal.
HE facts are stated as follows by the learned Acting AdditionalDistrict Judge (E. W. Jayewardene-, Esq.):—
The plaintiff company is the proprietor of a trade mark consistingof the word “ Famora ” and of the device of a female figure holding upa mirror, and duly registered on August 16, 1905. The plaintiffs do alarge trade in Ceylon in soaps and perfumes, and have for many yearsextensively used this trade mark and the word “ Famora as a trademark in respect of soap manufactured and sold by the plaintiffs, andplaintiffs’ soap has become known as ” Famora Soap.” The plaintiffs’soap is packed in packets bearing the word *’ Famora ” and the saiddevice. The packets are enclosed in white oblong cardboard boxesbearing the same device and the words “Gosnell’s Famora Toilet Soap”on the cover, and bearing on the two ends of the box labels printed inblack and red bearing the signature ” Jno. Gosnell & Co.” and certainother words in white. The boxes are packed in packets containing fourboxes. The packets are wrapped in blue paper printed with the words“GosnelTs Famora Soap Tablets” and bound with a white label bearingthe same device and the words “Gosnell’s Famora,” surrounded with ared ornamental frame showing certain coats-of-arms at the ends anda device on the back printed in black and red, similar to the labels -affixed to the end of the boxes. The defendant is selling soap bearing
%J. V. A 99413 (8/50)
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1M0. the words “ Garuda Farina Soap ” in white oblong cardboard boxesJohn OosneUbearing a device of a Hindu god and two goddesses riding on a bird.A Co., Ltd. The plaintiffs complain that the soap, packets, boxes, labels, andjnakaaam covers used by the defendant for the soap sold by him are similar tothose used by the plaintiffs, and intended and calculated to deceiveintending purchasers. The plaintiffs allege that the use of the word“ Farina ’’ is an infringement of the plaintiffs’ trade mark, and theemployment of the boxes, labels, packets, and covers by the defendantis an unlawful imitation of the get-up of the plaintiffs’ goods.
The learned District Judge held that the use of the word “ Farina ”was sin infringement of the plaintiffs’ trade mark, and enteredjudgment for plaintiffs as prayed for-
The defendant appealed.
van Langenberg (with him Morgan de Saram), for the defendant,appellant.
Elliott, for the plaintiffs, respondents.
Cur. adv. vult.
November 28, 1910. Middleton J.—
This was an appeal from a judgment in an action for infringing theplantiffs’ trade mark, and for passing off goods not of the plaintiffs’
manufacture as and for goods of the plain tiff s!~~
.It was suggested that the learned District Judge had wronglyfound that the defendant had infringed the’ plaintiffs’ trade mark,and that the evidence did not sustain his finding that the defendanthad passed off hi’s goods as the plaintiffs’.
A further point was that evidence had been wrongly admitted as tothe opinion of witnesses with regard to the possibility of deception.In Payton & Co., Ltd. v. SneUing, Lampard & Co., Ltd.,1 the Houseof Lords were clearly of opinion that such opinions were irrelevantand inadmissible, and they would certainly not be admissible underthe sections of our Evidence Ordinance, which apply to opinions, i.e.,sections 45 to 51.
So far as they have been admitted in the present case, it will be.our duty to overlook them, but I think that the evidence withoutthem justifies the findings of the learned Judge, i.e., on the first fiveissues settled. The question, then, is whether there has been aninfringement of the plaintiffs’ trade mark.
In my opinion the evidence in the record goes to show that theplaintiffs’ soap was known as “ Famora ” toilet soap, a distinctivename, which would identify it with the plaintiffs’ firm. ’’ Famora ”and the device of the lady with the mirror form the essentialparticulars of the trade mark of- the plaintiffs.. The device on theplaintiffs’ boxes is utterly different to that on the defendant’s, butthe question is whether the use of the word “ Farina ” is calculatedto cause defendant’s goods to be taken By ordinary purchasers for thei (1901) L. R. A. C. 308.
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goods of tiie plaintiffs, whether there is not a strong probability ofits causing deception. If so, this is an .infringement by colourableimitation. It is not sufficient to justify imitation to show that theinscription is ambiguous and capable of being understood in different
ays, or that a person who carefully examined and studied it might
ot be misled (Keiiy 400 and 401).
Comparing the boxes, packets, labels, wrappings, and stamping<«f the two soaps, I think that it is clear that the learned Judge wasright in holding that the word “ Farina ” was put in as a colourableimitation of the word “ Femora,” a part of plaintiffs* trade mark,which would be calculated to deceive the native -customer in Ceylon,and so would be an infringement of his trade mark.
I am not impressed with the reasons for the judgment with regardto golf balls in the case of St. Mungo Manufacturing Company v.Viper and Recovering Company.1 2
The general get up of the defendant’s goods in comparison with theplaintiffs* leads me to the conclusion that there has been imitationwith colourable differences which would be calculated, to deceive.This woidd entitle the plaintiffs to maintain then* action forpassing off.
Lord Justice Kay in Powell v. Birmingham Vinegar BreweryCompany2 said the law relating to this subject may be stated in afew propositions:—…
It is unlawful for a trader to pass off bis goods as the goods
of another.
Even if this is done innocently, it will be restrained.
. Millington v. Fox.*
A fortiori if done designedly, for that is a fraud.
Although the first purchaser is not deceived, if the article
is so delivered to him as to be calculated to deceive apurchaser from him, that is illegal. Sykes v. Sykes andanother*
I think, therefore, that the learned. Judge was right in his findingsand judgment, and would dismiss the appeal with costs.
Hutchinson C.J.—I agree.
Appeal dismissed.
1 27 Cutlet*8 Patent Cases 421*3 3 Mylne 4 Craig 338.
2 (1896) 2 Ch. Die. 79.* 3 B.. 4 C.. 541.
John Cornelldo Co., Ltd.v. Siva-prakaeam