1. The plaint states that plaintiff had since some time in 187S: sold shirting impressed with. a trade-mark, and that a particular distinguishing portion of the mark was a collection of figures of talwars,. or swords, which, on one class of his goods, amounted to five in number; that his goods acquired in the Madras market the name of 'Talwar shirtings' from the figures of talwars printed on them; and that defendant recently procured shirting imported by him to be impressed with the mark of five talwars, which mark, plaintiff alleges, would cause defendants' goods to bear, the same name in the market as the plaintiff's, and that defendants' mark Was calculated to deceive. Defendant denies that plaintiff's goods were known in the market as 'Talwar shirtings,' and denies that plaintiff has acquired any exclusive right to the use of the talwar device.
2. The issue was, whether defendants had infringed plaintiff's trade-mark.. The general principles on which the Court gives relief in cases of trade-mark are to be found in Perry v. Truefitt 6 Beav. 66 Croft v. Day 7 Beav. 84 Leather Cloth Company v. American Leather Cloth Company 11 H.L. 538. These principles are applied to different classes of cases--first, 'to those of imitation of the entire trade-marks, about which no question could exist: secondly,, to imitation so nearly resembling the entire original as to be colourable, though not fraudulently so [Millington v. Fox 3 M. & C. 338 of which Croft v. Day 7 Beav. 84 is an example]; thirdly, to a class of cases where the entire original was not very closely copied, as discussed in Leather Cloth Company v. American Leather Cloth Company 11 H.L. 538. In this case the question is not whether the entire trade-mark of the plaintiff was colorably imitated. If such was the question, the case would require much discussion and consideration, which the facts of this case, and the law flowing out of the principle above mentioned, do not require.
3. It seems to me that the case is governed by the subordinate principle enunciated by Lord Cranworth in Seixo v. Provezende L.R. 1 Ch. App. 196 referred to by the plaintiff's Counsel, viz.:
I do not consider the actual physical resemblance of the two marks to be the sole question for consideration. If the goods of a manufacturer '(an importer I hold to be the same)' have, from the mark or device he has used, become: known in the market by a particular name, I think that the adoption by a rival trader of any mark which will cause his goods to bear the same name in' the market may be as much a violation of the rights of that rival as the actual copy of his device.
4. This principle is recognized in Ralli v. Fleming I.L.R. 3 Cal. 417 Orr Ewing & Co. v. Johnston & Co. L.R. 13 Ch. D. 434 subsequently confirmed on appeal L.R. 7 App. Ca. 219--in which case the facts are very similar to those in the present case-Ford v. Foote L.R. 7 Ch. App. 611 Edelsten v. Edelsten 1 J. & S. 185 Kinahan v. Bolton 15 Ir. 75. Braham v. Bustard 1 H. & M. 447 Wotherspoon v. Currie L.R. 5 H.L. 508. In Cope v. Evans L.R. 18 Eq. 138 where the question was. as to the use by defendant of the word 'Prairie' on cigar boxes, which word' plaintiff had used in conjunction with other words, none of the principles-above referred to were disputed, but were admitted by Sir Charles Hall, V. C. On the evidence he held that the use of the word 'Prairie' was not calculated to cause defendant's tobacco to bear the same name as the* plaintiff's tobacco, or to cause defendant's tobacco to be passed off as plaintiff's. This was his view of the facts, a view not important in this case, but which, in argument at least, has been denied to be sound.
5. This being the law, how does it apply to the facts as established on the evidence? It is clearly proved by the plaintiff's witnesses that since some time in 1876 to the present the plaintiff has imported shirtings of different qualities marked with the device of talwars (along with the rest of the trade-mark), and that one quality has been marked with the figures of five talwars: that such goods have acquired in the Madras market the name of Talwar shirtings, from the use of the device of talwars, and that there were no other goods in the market known as Talwar shirtings except the plaintiff's. The witnesses say that if Talwar shirtings were called for or written for, such goods could only be supplied by sending plaintiff's goods. They proved that they never saw in use in the market shirtings, such as the defendant's goods marked with the device complained of until within a month or so before action and looking at defendant's device, they or some of them said that shirting so marked would be called Talwar shirting from the device of the talwars. One witness stated that the number of bales sold by plaintiff in 1881 was 3,500, or about five times the amount of the first year's sale. On cross-examination defendant wished to show that other firms in Madras used the device of a talwar, and some exhibits were produced so marked, but there was used with such device of a talwar another distinguishing device, viz., a fish or a lion. But plaintiff's witnesses stated that none of the goods were, known as Talwar shirtings. Moreover, the distinguishing characteristic marks of a fish and lion, etc., made all the difference. It did not appear when these devices were first used. One of the defendants stated that he began to import the shirtings marked with five talwars about one or two months ago; that before he received these goods, if he had received an order to supply Talwar shirtings, he would have supplied plaintiff's goods if he had them, but that he did not deal in them. He stated he had no object in ordering that device to be used along with the rest of his device of the lion and unicorn and clock and crown; that he only did so in order to know his own goods. He also said that his goods were sold to customers, not by any mark, but on the customers examining the goods. If the latter view is right, why did he order the device of five talwars, the device used by plaintiff? He could know his own goods by the name of his correspondent, the manufacturer, printed on them. After much fencing he admitted that plaintiff's goods had a good reputation in the market, but he maintained that they were known as 'Taylor House Katti or Talwar goods.' Was, then, his adoption of the device an accident, or was it in order that, if applied to for Talwar shirtings, he might sell his own? His goods certainly were inferior to plaintiff's five talwars, and his price was less than plaintiff's. Would not the device used by Taylor & Co., whose goods were of good character, be of use to the defendants to produce to a customer if he doubted the quality? If defendant had wanted so to do, could he not produce the five talwar mark to pass off his goods as being Talwar shirtings? Any one taking up the defendant's device and looking at the device of the five talwars on it, would, as it seems to me (recollecting that the name Talwar shirting is known in the market), at once call defendant's goods Talwar shirtings. Suppose an order sent from up country to the defendant for Talwar shirting, giving the width and length; would not defendant send his own goods, and would not the customers, seeing the mark, receive them as such? If this is so--and, I believe it must be so--then the defendants, whether they intended to do so or not, have infringed the plaintiff's rights. They have used a device or mark which will cause their goods to bear the same name in the market as the plaintiff's. It is said that the position or grouping of the talwars on the defendant's goods is not the same as plaintiff's, and this is so; but this is not important: Orr Ewing & Co., v. Johnston & Co. L.R. 13 Ch. D. 439. The defendants' witnesses did not give any evidence useful to them; one of them admitted that he had, within a couple of years, used a device of a talwar on his shirtings along with the figure of a man or some animal, and, though very reluctant to do so, he was obliged, after a deal of questioning, to admit that he adopted the sword, partly because he knew that Taylor's goods had the mark of a sword and that Taylor's business in such goods was prosperous and his shirtings known to be of good quality.
6. The last question is whether the defendant did not make use of the device of the five talwars with the intention of using it to show that his own inferior goods, lower in price, were what was known in the market as Talwar shirting. If he did so, then his act was fraudulent and deceptive both as regards plaintiff and his rights and the public. I cannot think that the selection of the five talwars and the placing of them in a different position from that of plaintiff was accidental, nor can I think the selection of the lion and unicorn and the alteration from a shield and globe in plaintiff's trade-mark to a clock and crown in the defendant's mark--were accidental. Both changes seem to me to be studied, and to evidence an intention to give the defendant's mark a general resemblance to that of plaintiffs without being exactly the same, but to give an unmistakeable prominence to the distinguishing characteristic of the five talwars with a view to have their goods to pass under the name of Talwar shirting. I can only infer that defendants acted designedly. A perpetual injunction must issue.