Francis W. Maclean, C.J.
1. This is a suit claiming damages against the defendants Messrs. Shaw, Wallace & Co. and the action is virtually for slander of title of certain piece-goods belonging to the plaintiff. Mr. Justice Sale has dismissed the suit with costs, and the plaintiff has appealed.
2. The plaintiff's cause of action is stated in the fourth paragraph of his plaint which runs as follows:--'The plaintiff is informed and believes that the defendants on or about the said 25th April 1904 with intent to injure the plaintiff falsely alleged to the Collector of Customs, Calcutta, that the marks on the said grey shirtings were an imitation of Messrs. G. and R. Dewhurst's 5X mark, commonly known as the 'rupee combination,' and applied to him to order the said grey shirtings to be detained pending such legal proceedings as they might take in the matter, and they induced the said Collector upon giving him their bond of indemnity to make such an order without giving any notice to the plaintiff, or giving him an opportunity of showing cause against such order being made.' In paragraph 17 the plaintiff alleges special damage. Malice is not very clearly pleaded, but having regard to the allegations in paragraphs 4 and 7 of the plaint, we are asked to hold that malice is sufficiently pleaded. In the view we take of the case, it becomes unnecessary to go into that question in any detail.
3. The defence is virtually stated in the first paragraph of the written statement, which runs as follows:--'The defendants admit that they complained to the Officiating Collector of Customs Calcutta that grey shirting of the class in the plaint mentioned with marks thereon which were a colourable imitation of the trade-marks used by the firm of Messrs G. and R. Dewhurst of Manchester on their grey shirtings were being imported into Calcutta by the plaintiff. They state that their said complaint was made bond fide, without malice, and on reasonable and probable grounds, and they believed and now believe such statements and complaint to be true. The Officiating Collector of Customs after enquiry found such statements to be true and passed orders thereon. The defendants are advised and submit that under the circumstances aforesaid the plaint herein disclosed no cause of action against them, and that this suit was not maintainable.'
4. The history of the case may be thus shortly stated. The plaintiff, as also the defendants, are merchants and importers of Manchester piece-goods. Messrs. Dewhurst & Co., Ld. of Manchester are manufacturers of such goods (grey shirtings) and are undoubtedly the registered proprietors of a trade mark or combination in connection with such goods. The defendants import and sell a large quantity of such grey shirtings manufactured by and bearing the mark of Dewhurst & Co., which mark they have used and enjoyed for upwards of thirty years, and which is well known in the trade and market. The plaintiff apparently had for some two or three years before action been importing and selling grey shirtings with a mark upon them which the defendants allege is a colourable imitation of Dewhurst & Co.'s mark, but it was not until the month of March 1904, that the defendants first came to know of such importations, and as soon as they did, they at once took steps to put a stop to them. It appears that on the 25th of April 1904, the plaintiff had imported 10 bales of grey shirtings bearing, as the defendants allege, a mark which is a mere colourable imitation of Dewhurst & Co.'s mark, and, on the 22nd of April 1904, in consequence of information which the defendants had received from Messrs. Dewhurst & Co., they wrote and sent to the Collector of Customs, Calcutta, the following letter:--'Sir, with reference to our Mr. Caw's interview with you to-day we have now to inform you that we are advised that the grey shirtings imported by Messrs. Johurmull Sugan Chand are a colourable imitation of the goods of Messrs. G. and R. Dewhurst, generally known in the market as rupee 5X grey shirtings. We have, therefore, the honour to apply that all such grey shirtings which are a colourable imitation of the goods of Messrs. G. and R. Dewhurst and which are being imported by Messrs. Johurmull Sugan Chand may be detained so as to afford us an opportunity of instituting legal proceedings against Messrs. Johurmull Sugan Chand. We undertake to hold you and the Secretary of State harmless and indemnified against all loss, claim or demand which may result to be made by reason of your acceding to our request. We may add, that we are advised that it is within your power to determine whether the importations of which we complain are in fact a fraud on the rights of Messrs. G. and R. Dewhurst, and we shall be glad to know if you hold an enquiry for that purpose.'
5. On the 25th of April Mr. Morshead, Officiating Collector of Customs, Calcutta, wrote and sent to the plaintiff the following letter:--'Gentlemen, With reference to your importation of grey shirtings, I have the honor to inform you that as the marks on these goods are alleged by Messrs. Shaw, Wallace & Co. to be an imitation of Messrs. G. and R. Dewhurst's 5X, I have ordered the goods to be detained pending such legal proceeding as they may take in the matter.' Thus, in consequence of the action of Messrs. Shaw, Wallace & Co., the goods in question were undoubtedly detained and are still detained by the Customs authorities. It appears from a letter of Dewhurst & Co., dated the 14th of April 1904, to Messrs. Shaw, Wallace & Co., that Dewhurst Company considered that the plaintiff, by adopting the mark he had, had seriously infringed what the former conceived to bo their rights in the matter: and, in consequence of a telegram which the defendants had received from Dewhurst & Co., on the 19th of April 1904, Mr. Caw, a member of the defendants' firm, went to the plaintiff's shop at Burrabazar, saw one of his principal employees, and remonstrated with him upon the plaintiff's conduct. Mr. Caw received a promise that the plaintiff would communicate with the defendants by letter, but he never did so. Mr. Caw then saw the Collector and asked him to stop the importations of the goods, and in consequence the goods were detained. There is no doubt, that at the interview in the plaintiff's shop the right of the plaintiff to use these marks was distinctly challenged. On the 28th of April, the Collector of Customs passed an order calling upon the plaintiff to show cause why the goods in question should not be confiscated and a penalty imposed upon him, under the provisions of the Sea Custom Act, VIII of 1878: and in the meantime directed that the goods should be detained in the Custom House. On the 22nd of April 1904, the defendants' attorneys wrote to the plaintiff the letter which is set out at page 18 of the paper-book in which they alleged that 'there can be no question that the result of your (the plaintiff's) action is calculated to deceive buyers into the belief that they were purchasing goods, the property of our client,' and stated that unless some satisfactory assurance were given that their demand would be complied with, their clients would institute such civil and criminal proceedings against the plaintiff as they might be advised.
6. On the 28th of April the defendants wrote to Dewhurst & Co. the letter of that date which is set out at page 25 of the paper-book in which they informed Dewhurst & Co. of what was going on. On the 4th May 1904, Messrs. Leslie and Hinds, the plaintiff's solicitors, wrote and sent the letter which is set out at page 55, and received in reply the letter of Mr. Foley, the then Collector of Customs, which is set out at page 34 of the paper-book. The matter subsequently came before the Collector of Customs on the 9th of May when both sides were heard by him, and on the 10th of May he passed the order which is set out at page 124 of the paper-book. He refused to release the goods and ordered their re-shipment.
7. The present suit was instituted on the 16th of May. There can be no doubt that Dewhurst & Co. have been using their mark since 1866, and that their trade-mark registered in 1879, and for which they hold a certificate, is for the whole combination of tickets, stamps and headings. It also appears that when Dewhurst & Co. had been informed by the defendants that the plaintiff was importing into this country piece-goods with marks upon them which were a colourable imitation of Dewhurst & Co's marks, the latter at once took steps to discover the manufacturer of these goods, and ascertained that the manufacturers and shippers were a firm of S. and C. Nordlinger of Manchester, and that they had commenced to ship these piece-goods with the alleged infringing mark in July 1902, and that since that date they had been shipping large quantises to the plaintiff. It. is common ground that when Messrs. Nordlinger were challenged by Dewhurst & Co. as to the infringement of the latter's trademark, the former did not contest Dewhurst & Co.'s claim, but acceded to Dewhurst & Co.'s demand in the matter.
8. In these circumstances the plaintiff brings the present action and in order to enable him to succeed, he must substantiate, first, that the statement in the defendant's letter to the Collector of Customs on the 22nd of April that the marks on the plaintiff's goods were a colourable imitation of those on the goods manufactured by Dewhurst & Co. is untrue in fact; secondly, that the statement was made maliciously, that is to say, without just cause or excuse; and, thirdly, that the plaintiff had suffered: special damage thereby.
9. The first, therefore, and most important issue in the case is whether the marks on the plaintiff's piece-goods are a colourable imitation of the marks of Dewhurst & Co. There can be no doubt that Dewhurst & Co.'s goods have borne their marks for nearly forty years, and that they have acquired a considerable reputation in the market.
10. It is a striking feature in the case that neither the plaintiff nor any of his servants or employees have been called to prove how they came to have these special marks placed upon their pieoe-goods,--marks which at any rate bear a very striking resemblance to those on the goods of Dewhurst & Co., and it is an equally important feature that the plaintiff does not produce any correspondence between themselves and Nordlingers, showing what instructions they had given for the goods, or how the goods happened to be imported into this country with these special marks upon them. It is suggested that the manufacturers, Nordlingers, may have sent them out to this country with these marks upon them, so curiously similar to Dewhurst & Co.'s marks, by way of sample and of speculation, without any previous communication with the plaintiff. We are quite unable to accept this suggestion. It is idle to suppose that Nordlinger could have sent out the goods to the plaintiff with the green label and with the black label (with the silver design upon it) with the name of the plaintiff upon the goods with his initials stamped upon them, with the dots within those initials, with the number of yards stamped on in letters practically similar to the letters on Dewhurst & Co.'s goods, and with the beading substantially similar, by accident and by way merely of sample. It would be too great a strain upon our credulity to ask us to believe that all this was done by accident, and not by design. Why did not the plaintiff or some of his employees go into the box and explain how these goods came to have these marks, and why is it that the instructions to Nordlinger and correspondence,--for it is impossible to suppose that there were no instructions or correspondence,--have not been disclosed. The importance of such disclosure was strongly manifested in Reddaway's case I.L.R. 32 Calc. 401.
11. In dealing with the present case it is important to observe that the plaintiff's goods are not sold to dealers in Calcutta, but are sold up-country, and not improbably the purchasers are persons not well acquainted with the English language either for the purpose of reading or writing, who do not see the two classes of goods placed side by side, who make purchases at somewhat long intervals of time and who are likely to be impressed by the general resemblance between the two classes of goods. No doubt if the two pieces of cloth are placed side by side and carefully examined, certain differences are obvious. There is a difference in the design both on the green and on the black labels; there is a difference in the names: it is noticeable that the name of the manufacturer is not given on the plaintiff's labels as it is on Dewhurst's and also that Dewhurst's goods have their trade-mark 5X, while the plaintiff's initials J.S. are on his goods. But the general resemblance is very marked--the practical identity of heading, the green and the black and silver labels, and the number of yards marked almost identially as on Dewhurst's goods, with the little dots within the figures. Why has it not been explained how we find the same heading, the combination of the green and the black and silver labels, and the same way of imprinting the number of yards? The headings, the green and the black and silver labels and the printing are the features which first attract the eye. The up-country purchaser does not see the two classes of goods side by side. Following the view expressed In re Christiansen' Trade-mark (1), in order to arrive at a conclusion as to whether or not one mark is calculated to deceive purchasers into the belief that they are buying the goods of one manufacturer when they are not his goods, we may look at the two marks in question with our own powers of forming an opinion, accompanied by the evidence which is given in the case. If these two pieces of cloth are looked at in the ordinary way by an ordinary up-country purchaser, is there likely to be a mistake? There is no evidence in this case that anybody has been deceived, but the question is not whether a purchaser has been deceived, but whether he is likely to be deceived. Using our own eyes there can be very little doubt that there is a marked resemblance between the marks on these two pieces of cloth. If the two were placed side by side and carefully examined, a purchaser of ordinary intelligence would be able to discover certain differences. But then in practice this is not done, We are not dealing with sales to astute dealers in Calcutta; the plaintiff's goods are at once despatched up-country. Looking at the decisions of the House of Lords in the cases of Johnston v. Orr Ewing (1882) L.R. 7 A.C. 219 and The Singer Manufacturing Company v. Loog(1882) L.R. 8 A.C. 15, we must consider whether these marks are calculated to deceive the incautious, ignorant or the unwary up-country purchasers. Can it he said that by adopting the marks he has, the plaintiff has obviated any reasonable possibility of misunderstanding or deception? I think not. The resemblances in this case are pointed out by Mr. Roe, an Assistant in the Bombay Company, Limited, who is familiar with goods of this class, in his evidence at pages 130 and 131 of the paper-book. He points out--and we think very fairly--the resemblances between the two pieces of cloth and the distinguishing features in each. Adopting the observations of Lord Blackburn in the case of Johnston v. Orr Ewing (1882) L.R. 7 A.C. 219, the present plaintiff's own conduct is evidence against him, and is such as to prove against him that the resemblance was calculated to deceive. Why do the plaintiff's mark come so near the defendant's mark and why does he not come forward to explain how it is that these marks bear such a strong resemblance to each other, or the circumstances under which his goods with these marks upon them came to be imported into this country? The plaintiff has a right to use any marks he pleases so long as they are not calculated to mislead the public and do not infringe anybody's trade-mark.
12. On the 3rd of August 1904, Messrs. Morgan & Co., the defendant's solicitors, wrote to Messrs. Leslie and Hinds, the plaintiff's solicitors, calling attention to the fact that the instructions given to Messrs S. and C. Nordlinger, the manufacturers in Manchester, for the plaintiff's combination of heading and marks had not been disclosed. They asked for inspection of that correspondence, and they stated--and this has not been disputed--that Nordlinger had undertaken not to use or allow to be used the combination and heading in question. That request was repeated again on the 24th of May 1906, but neither the instructions nor the correspondence were disclosed.
13. Several decisions have been cited to us dealing with cases as to the similarity of competing marks on particular goods. We do not think it is necessary to go through those authorities: each case must depend upon its own particular features. We have given the arguments of counsel and the evidence in the case our most careful consideration; and in the result we entirely agree with the finding of the Court of first instance that the marks on the plaintiff's piece-goods are a colourable imitation of those on Dewhurst & Co.'s, and consequently that there has been no slander of title by the defendants of the plaintiff's goods.
14. In this view of the case, it is unnecessary to go into the question of malice or of special damage. We think it is sufficient on the former question to say that the defendants appear to have acted with perfect bond fides and in the honest belief that the plaintiff's marks were a colourable imitation of Dewhurst & Co.'s and that what they did in applying to the Collector was done not for the purpose of injuring the plaintiff's goods, but for the purpose of protecting their own.
15. There was a good deal of discussion as to whether or not the bill of costs of Messrs. Morgan & Co. was properly admitted in evidence. It is unnecessary to decide this; we assume for the purposes of the present decision that it was properly admitted. If so, it only shows, upon the question of colourable imitation, that the legal advisers of the defendants entertained doubts on the matter.
16. As regards the question of whether the Customs authorities were justified in detaining the goods, we will deal with that in our judgment in the next case.
17. This appeal, therefore, fails and must be dismissed with costs.
18. I agree.
19. I also agree.