Scottish Court of Session Decisions

The Merchandise Marks Act 1887 provides, section 2, sub-section 2—“Every person who sells … any goods or things to which any forged trade-mark or false trade description is applied, or to which any trade-mark or mark so nearly resembling a trade-mark as to be calculated to deceive is falsely applied, as the case may be, shall, unless he proves …( c) That otherwise he has acted innocently, be guilty of an offence against this Act.”

By section 3, sub-section 3, it is provided—“The provisions of this Act respecting the application of a false trade description to goods, or respecting goods to which a false trade description is applied, shall extend to the application to goods of any false name or initials of a person,” and for the purpose of this enactment the expression false name or initials means, as applied to any goods, any name or initials of a person which ( b) are identical with, or a colourable imitation of, the name or initials of a person carrying on business in connection with goods of the same description, and not having authorised the use of such name or initials.”

By section 5, sub-section 2, it is provided, inter alia—“A trade-mark or mark or trade description shall be deemed to be applied whether it is woven, impressed, or otherwise worked into, or annexed, or affixed to the goods, or to any covering, label, reel, or other thing.”

Robert Jenkinson and William Inglis, carrying on business under the name of W. & J. Jenkinson, aerated water manufacturers, 80 St Andrew Street, Leith, were charged, at the instance of Neilson Brothers, aerated Water manufacturers, West Calder, and successors to A. Woodrow, aerated water manufacturer, with the consent and concurrence of the procurator-fiscal, with a complaint setting forth the following charge—“( First) That on or about 31st March 1899, in the shop at Main Street, West Calder, occupied by George Hogg junior, ice-cream saloon keeper there, they did sell to the said George Hogg junior one patent stopper bottle of potass water, to which patent stopper bottle of potass water a false trade description, namely, ‘A. Woodrow, West Calder,’ to which trade description the complainers have sole right, was then applied as regards the contents of said bottle, which were not of the manufacture of the said Neilson Brothers, or of the said A. Woodrow, all contrary to the Merchandise Marks Act 1887 (50 and 51 Vict. cap. 28), section 2, sub-section (2), section 3, sub-section (3), and section 5, subsection (2). ( Second) That on or about 13th April 1899, in the shop at Main Street, West Calder, occupied by Thomas Meldrum, wine and spirit merchant there, they did sell to the said Thomas Meldrum one patent stopper bottle of lemonade, to which patent stopper bottle of lemonade a false trade description, namely, ‘Neilson Bros., West Calder,’ being the trade name of the complainers the said Neilson Brothers, was then applied as regards the contents thereof, which were not of the manufacture of the said Neilson Brothers, all contrary to the aforesaid Act and sections foresaid. ( Third) That on or about 31st March 1899, in the shop at Main Street, Mid—Calder, occupied by Mrs Elizabeth M'Alpine or Pow, grocer there, they did sell to the said Mrs Elizabeth M'Alpine or Pow (1) two patent stopper bottles of lemonade, to each of which patent stopper bottles of lemonade a false trade description, namely, ‘Neilson Bros., West Calder,’ being the trade name of the complainers the said Neilson Brothers, was then applied as regards the contents thereof, which were not of the manufacture of the said Neilson Brothers; and (2) one patent stopper bottle of lemonade, to which patent stopper bottle of lemonade a false trade description, namely, ‘A. Woodrow, West Calder,’ to which trade description the complainers have sole right, was then applied as regards the contents thereof, which were not of the manufacture of the said A. Woodrow, or of the said Neilson Brothers, all contrary to the aforesaid Act and sections foresaid; and ( Fourth) That on or about 14th April 1899, in the shop at Raw Toll, Edinburgh Road, Mid-Calder, occupied by Mrs Janet Reid or Headridge, merchant there, they did sell to the said Mrs Janet Reid or Headridge one split patent stopper bottle of ginger beer, to which split patent stopper bottle of ginger beer a false trade description, namely, ‘Neilson Brothers, West Calder,’ being the trade name of the complainers the said Neilson Brothers, was then applied as regards the contents thereof, which were not of the manufacture of the said Neilson Brothers, all contrary to the aforesaid Act and sections foresaid; which offences were stated to be first offences, whereby the said Robert G Jenkinson and William Inglis, or one or other of them, were, in respect of each of such offences, liable on summary conviction to imprisonment for a term not

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exceeding four months, or to a fine not exceeding £20, in terms of section 2, subsection (3) II. of the aforesaid Act, and to forfeit to Her Majesty every chattel, article, instrument, or thing by means of or in relation to which the offences had been committed, in terms of section 2, subsection (3) III. of the aforesaid Act, and to pay to the complainers, as prosecutors thereof, the costs of the prosecution, in terms of section 14 of the aforesaid Act, and in default in payment of said fine and costs, to imprisonment in terms of section 6 of the Summary Jurisdiction (Scotland) Act 1881.”

The case was tried before the Sheriff-Substitute of Edinburgh ( Maconochie) on 12th June 1899. Jenkinson and Inglis pleaded not guilty, and evidence was led.

In the course of the examination of the complainer William Wood Neilson, counsel for the accused objected to the admissibility of parole evidence to prove that the complainers were the successors of A. Woodrow, aerated water manufacturer, West Calder, and had the sole right to the trade description of “A. Woodrow” libelled in the complaint, on the ground that, as the complainers admitted that they had acquired their right by a written instrument or deed, the deed itself was the only competent mode of proof. The Sheriff-Substitute repelled the objection.

In the cross—examination of the complainer the said William Wood Neilson, and of Thomas Meldrum, a witness adduced for the complainers, counsel for the accused asked these witnesses if certain bottles of aerated waters supplied by the complainers since the service of the complaint had the name of W. &. J. Jenkinson embossed thereon, and bore the label of the complainers. Counsel for the complainers objected to the question being put to these witnesses, and the Sheriff-Substitute sustained the objection.

The following facts were proved:—“(1) That the accused are manufacturers on a large scale of aerated waters of various kinds, their output amounting to between 5000 and 6000 bottles per day. (2) That the complainers are also manufacturers of aerated waters on a large scale; that they trade under the name of Neilson Brothers, and are successors to A. Woodrow, aerated water manufacturer, West Calder, whose business they bought in December 1898; and that they now have the sole right to use in their trade bottles embossed with the trade description ‘A. Woodrow, West Calder.’ (3) That for the purposes of their trade, the complainers use patent glass stopper bottles embossed, some of them with the trade description ‘A. Woodrow, West Calder,’ and some with the trade description ‘Neilson Brothers, West Calder.’ (4) That on or about March 24, 1899, the accused received the circular produced by the witness John Muir, warning them against using in their trade bottles hearing the trade description of the complainers, and that prior to the receipt of said circular they had not been warned verbally or by letter against using bottles bearing the trade descriptions above-mentioned. (5) That the complainers, when they supply their customers with aerated waters, do not sell the bottles to the customer, but lend them until they are empty, and that it is the duty of the customers to return the bottles to the complainers; that the bottles cost the complainers about 1s. 6d. per dozen, and that they sell their aerated waters at 9d. per dozen. That large numbers of bottles are lost to the complainers owing to their not being returned to them. (6) That shortly before March 24, 1899, the accused sold the bottles of aerated waters (the contents of which were manufactured by them), set forth in the first, third, and fourth charges respectively, to the persons named in said charges respectively. (7) That on or about April 13, 1899, the accused sold the bottle of aerated water (the contents of which were manufactured by them) set forth in the second charge to the person named in said charge. (8) That on each of the bottles so sold there was embossed the trade description set forth in the complaint, as having been applied to each of said bottles respectively. (9) That to each of the bottles so sold there was affixed a printed label bearing the name and address of the accused, and a certificate as to the purity of the aerated waters manufactured by them. (10) That the said trade descriptions were used by the accused without the leave of the complainers having been obtained by them. (11) That the accused knew that in using the bottles bearing the said embossed trade descriptions they were using bottles bearing trade descriptions which they had no right to use. (12) That on receipt of the circular above referred to, the accused took various precautions with a view to preventing further use in their manufactory of bottles embossed with the trade descriptions belonging to the complainers, but that notwithstanding such precautions the bottle set forth in the second charge was thereafter sold by them. (13) That loss has resulted to the complainers in consequence of the use of the said bottles bearing their trade descriptions by the accused. (14) That the accused, in selling aerated waters in bottles bearing the embossed trade descriptions above set forth, sold goods bearing false trade descriptions within the meaning of the Merchandise Marks Act 1887.”

On these facts the Sheriff held that the accused had failed to prove that in so selling the aerated waters labelled they had acted innocently, and therefore convicted them of the offences charged.

In a case stated at the instance of the accused, the Sheriff narrated the facts stated above, with the following questions of law:—“(1) Whether it was competent for me to admit and act upon the parole evidence to the admission of which the accused objected. (2) Whether I was right in refusing to allow the question proposed by the accused, above set forth, to be put to the witnesses for the complainers. (3) Whether the facts proved warranted a conviction under the Act libelled.”

Argued for the appellants—(1) the title

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of the respondents to the trade description “A. Woodrow, West Calder,” rested on their own showing on a deed. That deed should have been produced, and parole evidence of its contents was incompetent. (2) The questions disallowed were proper and competent. Their object was to prove that whatever precautions might be taken it was impossible to prevent a bottle slipping through now and then, and they were therefore relevant to the defence that the appellants had acted innocently. This Act was one under which the accused should have the widest limits in cross-examination, because under its provisions the burden of proof of innocence was laid upon him. (3) The appellants had acted innocently; no intention to defraud had been proved, and they had taken precautions to prevent the use of the respondent's bottles— Kirshenbohm v. Salmon & Gluckstein, [1898] 2 Q.B. 19; Coppen v. Moore [1898] 2 Q.B. 300 and 306.

Argued for the respondents—The title to the trade description was not in dispute, and prima facie evidence of it was sufficient. (2) The questions disallowed were incompetent as tending to introduce a trial within a trial. This was not allowed, on the principle that the guilt of another person cannot affect the guilt of the panel— Kennedy v. H.M. Advocate, Jan. 8, 1896, 2 Adam 51; Dickie v. H.M. Advocate, June 15, 1897, 2 Adam 331; Burns v. Turner, Dec. 17, 1897, 2 Adam 450. (3) The appellants had not “acted innocently” within the meaning of the sub-section. It was not enough to prove that there was no intention to defraud— Coppen v. Moore, ut supra, or that ineffectual precautions were taken— Wood v. Burgess, Nov. 26, 1889, 24 Q B.D. 163.

At advising—