066-NLR-NLR-V-20-KAPADIYA-v.-MOHAMAD.pdf
( 314 )
1818.
Present ; Ennis J. and Shaw J.
KAPADIYA v. MOHAMAD.120—D. C. Colombo, 47,953.
Trade mark—" Passing off " action—Mark not registered—Action byimporter to restrain another importer from selling goods with asimilar mark.
The plaintiff imported flour fromJumnamills in bags which
were Boarked with two green crossed keys. This devise was notregistered in Ceylon as a trade mark.The defendant imported
flour from another mill marked with one green key. The plaintiffalleged that the defendanthadbeen “ passingoff ” his flouras
plaintiff's andprayedfor an injunctionrestraining him from
selling bags of flour marked with a green key.
Held, that although “ passing off ”actions are not specifically
reserved in our Trade MarksOrdinance, suchanaction canbe
maintained under our law. In such an action it is not necessaryto prove actual fraud; allthatis necessary istoshow thatthe
defendant has represented his goods to be the goods of the plaintiff.
Shaw J.—“ The Courts of thisColony are Courts of equity
as well as of law, and I see no reason why our law should notbe sufficientlyelastictoexpand withthe times, and restrain
a wrong committed by one trader against another, such as theEnglish Courts of equity found necessary to restrain. "
Held further,that asthemark was notplaintiffs mark, but tbat
of the Jumna Flour Mill Company, plaintiff cannot maintain thisaction. An importer hasnoright to the trademark ofthe
manufacturers, nor canherestrain personsfromusing it,or
register the mark as his own.
rJ1HE facts are set out in the judgment.
A. St. V. ,1 ayawardene (with him Bartholorrieusz and Tyagarajah).for appellant.
Bawa, K. C. (with him F. M. de Saram), for respondent.
Cur. adv. vult.
( 315 )
July 26, 1918. Ennis J.—
This was a "passing o8" action. The plaintiff claimed aninjunction against the defendant restraining him from selling bag6of flour marked with a device of a green key, and damages. Itappears that the plaintiff imports flour from the Jumna mills inIndia. The bags are marked with the name of the mills and twocrossed keys in green. The defendant imported flour in bags fromanother mill marked with the name of that mill and one key ingreen. The plaintiff contended that the flour imported by him hasbecome known as the " green key " flour of his importation, andthat the defendants have been selling their goods as his. Thelearned Judge found in favour of the plaintiff, and the defendantappeals. It was argued for the appellant: —
That the plaintiff cannot maintain this action without proofof fraud.
That he is barred by section 20 of the Ordinance No. 14 of1888.
(8) That as an importer only he cannot maintain the action onthe marks of the millers without an assignment from themof their rights or authority to act for them.
The Ordinance No. 14 of 1888 is based on the English Act of 1888,and section 20 of the Ordinance is identical in terms with section 77of the Act. It is to be observed that the English Act of 1883 and the.Ceylon Ordinance make no mention of " passing off " actions, but thelater English Aet of 1905 expressly saves them. The earlier EnglishActs, 1875 to 1877, also make no reference to " passing off ” actions,although they contain provision similar to that in section 20 of theCeylon Ordinance. In a series of English cases it has been held thatthe English Acts, 1875 to 1883, did not affect the jurisdiction of theCourts of equity in "passing off M actions, notwithstanding theprohibition, apparently because that jurisdiction was based on thefundamental rule that no person was at liberty to represent hisgoods (pass them off) as the goods of another, e.g.% Mitchell v.Henry 1 and Reddaway v. Banbury.2
The Courts of Ceylon are Courts of equity, and the Englishdecisions would apply to the construction of the Ceylon Ordinance.Following those decisions, the argument for the appellant on thefirst two points fails. Those decisions show that, not only can theaction be maintained, but that it is not essential to prove actualfraud; all that is necessary is to show that the defendant hasrepresented his goods to be the goods of the plaintiff.
On the third ground, however, I am of opinion . that theappellant is entitled to succeed. The green keys are not theplaintiff's mark, but the m&rk of the Jumna mills, and he
1918.
Kapadiyav. Mohamad
1{2880) 25 Ch. Dk 282
'{2896) App. Cases 299.
.( 316 )
1918.
Ennis, J.
Kapadiya
Mohamad
Shaw J.—
This is an action to restrain the defendant from passing off hisgoods as the goods of the plaintiff, and for damages. The plaintiffhas since the year 1910 been importing into this Island a brand offlour manufactured by the Jumna Flour Mills of India, bearing adevice or trade mark of "two green keys crossed. The plaintiffstates that he is sole agent here for this flour, but no agreementbetween himself and the manufacturers has been put in evidence,and we do not know the terms of the contract, or for how long ithas been in force, or how long it is to continue. The evidencecalled on behalf of the plaintiff is to the effect that this flour hasacquired a .considerable reputation in Ceylon, and has got to beknown as “ green key flour, " and the plaintiff's name has got tobe identified with it as the importer.
For the last six or seven months the defendants have been import-ing a brand of flour manufactured by the Monarch Flour Mills ofCalcutta, bearing a device of one green key, which the plaintiffclaims is an infringement of the mark on the flour imported by them,and which has become associated with his name, and amounts to a“ passing off " of the flour imported by the defendant as the flourimported by the plaintiff. The District Judge has found in favourof the plaintiff, and has granted the injunction sought, and aninquiry as to damages. The defendant appeals.
The right to a trade name or trade mark, and its protectionagainst other traders, does not appear to have been considered bythe writers on Roman-Dutch law, probably because the necessityfor such consideration had in those days not arisen. Neither doesit appear to have been considered in England until comparativelyrecent times, and it is not until the commencement of the . nine-teenth century that we find the English Courts of equity interferingat the suit of one trader against another to prevent a person from“ passing off " his goods as the goods of another.
cannot attach their marks and say they are his business marks(The Dental Manufacturing Co., Ltd., v. De Trey & Company1. Inother words, the plaintiff cannot contend that the defendantis passing off the goods as the plaintiff's goods, because thelatter are not the plaintiff's, but the goods of the Jumna mills,which those mills sell in the Island, through the plaintiff, with theirown mark, and not the plaintiff's mark. There is no evidence thatthe flour is known by any mark of the plaintiff as his flour, or put/up by him or selected by him, and there is no evidence that heis authorized by the millers in India to bring the action. In theabsence of such evidence his action fails. The appellant is entitledto succeed. I would allow the appeal, with costs.
1 29 Rep. of Patent Cases 617.
( 317 )
The Courts of this Colouy are Courts of equity as well as of law,and 1 see no reason why our law should not be sufficiently elastic toexpand with the times, and restrain a wrong, committed by onetrader against another, such as the English Courts of equity foundnecessary to restrain. I therefore think that a “ passing off ”action is applicable here as it is in England. It was suggested thatan action for “ passing off ” does not lie here, because a right tobring such an action is not specifically, reserved in our Trade MarksOrdinance as it is in the English Statute of 1905. It was, however,not so reserved in the earlier English Trade Marks Acts of 1875 and1883. Yet we find numerous instances where such actions weresuccessfully maintained in England between the years 1875 and 1883,so the contention appears to have.no substance.
The device of two green keys crossed is not registered as a trademark in Ceylon, and in view of the opinion to which I have come onanother point, I need not consider whether the device on the floursold by the defendant is so like that on the flour sold by the plaintiffas to be calculated to deceive; nor need I consider whether it hasacquired a sufficient notoriety to entitle it to protection at the suitof the proprietor of the mark, or, indeed, whether it was even adistinctive mark of the Jumna Flour Mills Company used exclu-sively by them to distinguish a particular brand of their flour. Asto all these points there appears to me to be considerable doubton the evidence. One point, however, seems to be absolutely fatalto the plaintiff’s case, namely, that the mark is not his mark, butthat of the Jumna Flour Mills Company.
It is well-established law that an importer, even an importer witha contract from the manufacturers for the sole rights of importation,has no right to the trade mark of the manufacturers, nor can herestrain persons from using it, or register the mark as his own(Hirsh v. Jones, 1 Appollinaris Company's Trade Mark, 2 EuropeanBlair Camera Company’s Trade Mark, 3 Dental ManufacturingCo., Ltd., v. De Tray & Company '*). The cases show that if theget-up of the article is that of the importer, or if the mark is putupon it to signify that the article has been selected or imported bythe importer, then he can prevent any other person from imitatingthe get-up or mark so as to induce purchasers to believe that thegoods are those selected and imported by him. If, however, itis merely the get-up or the mark of the manufacturer, then theimporter acquires no rights to it from the fact of his importation,neither can he register the mark as his own.
There is no suggestion in the present case that the two greencrossed keys are anything but an ordinary mark of the Jumna FlourMills, and in reality signifies anything more than that the flour is
* (1816) 3 Ch. D. 504.* (1896) 13 R..P. C. 600.
25* (1891) 2 Ch. 226.« (1912) 29 R. P. C. 617.
1918.
Shaw, J
'.apadiya v.Mohamad
( 318 )
1918.
Shaw J.
Kapadiya v,Mohamad
manufactured by that Company. It was, however, suggested onbehalf of the plaintiff that notwithstanding this, the mark has,amongst buyers of flour here, become associated with the plaintiff,and was looked upon as indicating that the flour is his, or speciallyimported by him, and that he has consequently acquired a right tothe mark as his own. The evidence does not appear to me tosufficiently support such contention in fact, but even if it did,any such mistaken belief could not, in my opinion, enable theplaintiff to obtain the exclusive right to some one else's mark. Inmy opinion the appeal must succeed, and the plaintiff’s action mustbe dismissed, with costs.
Appeal allowed.