Raggett v Findlater Revisited

Raggett v Findlater

[1871 R. 146.]

(1873-74) L.R. 17 Eq. 29 

Although the judge in Raggett v Findlater stated the case involved "considerations of very considerable public importance" it is not a well known case.  But the November 1873 judgment marked a turning point in the way the English courts dealt with protection for trade marks that were made up of descriptive terms.  Following a series of cases in which the courts were prepared to protect property rights in marks that were merely descriptive terms or used terms that were common in the trade, the Court of Chancery questioned, for the first time, whether such marks should be protected.

The Facts

In 1855 the plaintiff acquired the brewing and distribution business of Blockley.  The plaintiff argued that by 1860 its product was known to the public as "Nourishing Stout".  In 1860 it began using  a round label with "Nourishing London Stout" around the circumference and the words "Raggett , late Blockey. Analyzed and reported on by Dr. Hassall." in the centre.  In 1872 the defendants, Findlater, Mackie, & Co., began selling beer labelled as "Nourishing Stout, bottled by Findlater, Mackie, & Co., 16, Prince Albert Street Brighton".  The plaintiff sought an injunction preventing the defendant from selling is beer using "Nourishing Stout".

The court spent considerable time investigating the nourishing properties of both beers and "several medical gentlemen" were among the witnesses.

The plaintiffs argued that Findlater's label were designed to deceive the public into believing they were purchasing Ragget's beer.  The defendants pointed out that their label was oval rather than circular and was merely a variation of the labels they had been using for a long time for other beers.

Precedents

Prior to this case it was settled law that any word could become the property of the first proprietor to use it as a trade mark, even if it were descriptive or commonly used in the trade.  A number of earlier cases were cited by Raggett in support of his case.  These cases outline the state of the law up to that point.  They are not identical, however, and some are more complex than they first appear.   Modern trade mark lawyers would recognise many of their elements, but would perhaps cast them in a very different light now.

In 1864 in M'Andrew v Bassett [46 E.R. 965] the court was happy to prevent the use of "Anatolia" for liquorice by anyone other than the plaintiffs notwithstanding that the word "is in fact a geographical designation of a whole tract of country, where the raw material is grown whence a manufactured article is produced".  The court noted that "property in the word, as applied by way of stamp upon a particular vendible article, does exist the moment the article goes into the market so stamped, and there obtains acceptance and reputation, whereby the stamp gets currency as an indication of superior quality or of some other circumstance which renders the article so stamped acceptable to the public."  As the first liquorice vendor to use the word as a trade mark the plaintiff had gained a property right in it.

A similar case, Wotherspoon v Currie [(1871-72) L.R. 5 H.L. 508] addressed the issue of whether a starch manufacturer in the Scottish town of Glenfield was entitled to use "Glenfield" for his starch even though the appellant had been using it for his starch for some time.  The court found for the appellant.  The court seemed to be persuaded that Currie acquired some property in Glenfield fo the sole purpose of being able to describe his product with that name.  Interestingly, his addition of "Royal Palace" to his label suggested a deliberate imitation of Wotherspoon's "Exclusively Used in the Royal Laundry".


In Seixo v Provezende [(1865-66) L.R. 1 Ch. App. 192 ], "Seixo" was variously argued to be a descriptive term for a type of wine (stoney) and a geographical location.  The defendant argued that his wine was of that type and from that region.  But the court was not impressed and found that the plaintiff alone had the right to use it to sell wine.

In 1872 in Broadhurst v Barlow the trade mark at issue was the words "Exactly twelve yards" written on cloth in Turkish, Armenian, and modern Greek, in a particular order.  The court was prepared to protect this as a trade mark.

The plaintiff in Raggett v Findlater also cited the 1856 case of Lawson v Bank of London [139 E.R. 1296] in support of his case, but noted that it had failed on a technicality.  The technicality was that Lawson didn't actually conduct any business as a banker.  There was not evidence of a single customer.  As such, this was a passing-off case in which the plaintiff failed to establish that he had any reputation.   But by citing the case, the suggestion was that the lack of distinctive character of Bank of London was itself no impediment.

Knott v Morgan [48 E.R. 610] was also a dispute over the right to use descriptive terms.  In 1836, the court found that the plaintiffs "have no right to appropriate to themselves the title of “London Conveyance Company;” still less can they claim a monopoly in the use of the words “Conveyance Company”.  In this respect the court appeared to presage the future development of the law.  However, a closer reading of this case reveals it to be a classic case of passing-off.  The court noted that "it is scarcely attempted to be denied that the Defendant has pirated the title, liveries and decorations of the Plaintiffs; and the variation which the Defendant made in some of these particulars, after the notice with which he was served, strengthens instead of altering the case of fraud which is made by the Plaintiffs."  This case hung not so much on the words used by the defendants but rather the get-up of their omnibuses.

Around 1849 Richard Ford began selling a new style of shirt which he called "The Eureka".  He marked the inside of his shirts with "R. Ford's Eureka Shirt, London".  Ford sought to prevent   Foster from selling shirts described as "Foster, Porter, & Company's Improved Eureka".  Ford v Foster [(1871-72) L.R. 7 Ch. App. 611] eventually came before the Court of Appeal in Chancery in 1872.  Evidence was introduced that the term "Eureka" had become widely used in the trade to describe a particular style of shirt.  The defendants argued that the term "was originally a fancy name applied to a particular shape of shirt, not shirts made or sold by a particular trader; and as such it has become publici juris, and is used both by the trade and the public to designate that shape without distinction of the seller. Every one, therefore, has a right to use it".  In his judgment James LJ stated that it was "utterly impossible to distinguish this case" from straightforward cases of infringement.  He was unimpressed by the argument that the use of the term had become widespread within the trade.  He stated that "It has been said that one murder makes a villain and millions a hero; but I think it would hardly do to act on that principle in such matters as this, and to say that the extent of a man's piratical invasions of his neighbour's rights is to convert his piracy into a lawful trade. That ground of defence, therefore, in my judgment, fails."

This is a case of what modern trade mark lawyers might call "genericide".  It is clear that as a "fanciful" term "Eureka" was capable of functioning as a source of origin when it was first applied to the shirts.  It is not entirely clear from the evidence presented to the court whether the term was used in this way however.  But even if it were used as a badge of origin, it is clear that by the time the issue came before the courts the term had become customary in the trade.  Such a mark would be unregistrable today and any such mark that was registered would risk being cancelled.  "Signs ... which have become customary in the current language or in the bona fide and established practices of the trade" [TMD Art 61)(d)] may not be registered.


In Cocks v Chandler [(1870-71) L.R. 11 Eq. 446] it was common ground that Reading Sauce had become a widely term in the trade for describing the type of sauce that was first produced by a business to which the plaintiff was the successor.  It was also accepted that "the labels thereon being in all other respects distinguishable from the Plaintiff's, and those used on the bottles being entirely unobjectionable."  However, the plaintiff argued that he alone had the right to use the words "The Original".  The court noted that by this time the original inventor had died 50 years hence.  He had not sought to protect Reading Sauce as a trademark.  "If he had thought fit to interfere when persons sold Reading sauce, he might probably hare obtained an injunction from this Court to prevent them from selling Reading sauce; but, when he has acquiesced in that for a considerable length of time" protection for "Reading" was no longer available.  The court found that the word "original" did have meaning and dismissed the defendant's argument that it "could and would deceive nobody".

Rommoly M.R. stated that:
If I, wishing to have the Reading sauce, which has acquired a great reputation in the market, went into a shop and asked for Reading sauce, and was told that there were several Reading sauces, I should say: “Which is the Original Reading Sauce?” or if there was a bottle given to me with the word “original” upon it, I should assume that to be correct, and I should not assume it to be made by anybody but the original inventor. I do not think I should be inclined to purchase a bottle with the word “original” upon it if I did not believe that the person putting that word on the label was the original inventor.   ...  But the importance of it is, when from the reputation obtained by the sauce in the market an abundance of manufacturers spring up, then the person who has become the owner of the original recipe is entitled to say he is the original inventor.

He granted an injunction preventing the use of "original" by all except by Cocks.  However, he was at pains to point out that:
I do not treat this as a case of imitation. I treat it simply as a device to induce the public to believe that the person who sells this sauce has the recipe from which, originally, this peculiar sauce for fish and culinary purposes was made, and which was sold originally under the name of Reading sauce, and has acquired such great reputation.

In this respect the case is not so much about trade mark infringement as it is consumer deception.

Judgment & Commentary

Prior to Raggett v Findlater the law was quite clear based on the many precedents were cited.  Mallins VC found these precedents unhelpful:
Now, it is ... think most reasonably settled, by the rules of this Court, that a man ... is at liberty to adopt a trade-mark which shall distinguish it from the articles of all other people, which will become a mark of his own; and if it be sufficient to distinguish it, then he has a right to restrain all other persons from using that mark.  The case has been very carefully and elaborately argued; and although I have only heard one side, it has occupied two days and a half.  There is a great mass of evidence, which has been all gone into, although the great bulk of it is utterly useless.  The cases which have been referred to go to this: If a man adopts a particular mark, he has a right to restrain all other persons from using that mark.

Mallins distinguished for the first time between descriptive and non-descriptive words and questioned whether descriptive terms were eligible for protection.
If I am right in saying that the particular quality of the stout is this nourishing quality, must not every man be at liberty to describe his stout, whether brewed by himself or brewed by another and sold by him, as being a nourishing beverage?  Why are not Messrs. Findlater & Co. at liberty to say theirs is a nourishing stout as well as the Plaintiff's. Upon principle it appears to me there must be something to go beyond a mere English adjective describing the quality of the material. If you use a foreign word, or a word in a dead language not known to people in general, that word itself, because it is not understood, may very reasonably become a trade-mark.


Here Mallins VC presaged developments in the law that eventually precluded descriptive terms from being registered as trade marks.  Interestingly, however, he also identified consumer perceptions as the benchmark by which such terms are measured, rather than any kind of absolute test.  This allowed him to distinguish this case from M'Andrew v Bassett because "Anatolia" was "so utterly unknown to the great bulk of the community that it was not unreasonable to say that those who first used the word ... made it a trade-mark thereby acquired the exclusive right to use it."  He rejected the logic of Lord Westbrury's judgment in M'Andrew v Bassett that stated "property in that word, as applied by way of stamp upon a particular vendible article ... does exist the moment the article goes into the market so stamped, and there obtains acceptance and reputation whereby the stamp gets currency as an indication of superior quality, or of some other circumstance which renders the article so stamped acceptable to the public."   He stated "I find nothing in his judgment in that case, or in what has fallen from him, or any other Judge in any other case, that would warrant the principle that a mere description of the quality of the article by an English word can become a trade-mark."

Mallins VC disguished this case from the other precedents in turn.  He again identified the public perception of the mark as the relevant test and noted that in Wotherspoon v Currie "Glenfield" "might have been a name, or anything else, but whether it was the one or the other, it was utterly unknown to the public."

Registration of any sign that indicates the geographical origin of goods might be challenged today since "signs ... which ... serve ... to designate the ... geographical origin" [TMD Art 6(1)(c)] of goods may not be registered as trade marks. However, Mallins correctly identified that this objection is dependent on the perceptions of the public and it is a reasonable objection only if the public understand the word to be a place name.  This is the approach used today.  In 2019 the "Kerry" in "Kerry Gold" was held to be distinctive because few people in the EU actually understand Kerry to be a place. [EUIPO Board of Appeal R 2473/2013-5]

Mallins distinguished his case from Broadhurst v Barlow by clarifying that  "The trade-mark there consisted of the particular order in which those foreign words were used. ... If the Plaintiffs had used the words “Exactly twelve yards” in the English language, nobody would have said that any other manufacturer could not have done the same ...  It would be trade-mark running mad to say that such a thing as that could be.  Therefore the fact of its being put in three languages, all foreign languages, constituted the trade-mark in that case."

Distinguishing the case from Seixo v Provezende he noted that although "Seixo" was a region of Portugal it was also the name of the Baron who derived his title from there.  He also found that the defendants had a clear intention to deceive in that case.

Similarly, he found that the defendants claim in Cocks v Chandler to be the "Original" Reading sauce was not true.

Ford v Foster did not apply because "Eureka" was a fanciful term.


Malians compared Findlater's labels to Raggett's and concluded that there was no attempt to deceive.  He stated "I have never seen a case in which there was so singular a failure in imitation, or in which I should have more readily come to the conclusion that it could not have been their intention to imitate or deceive."

Malins VC was sceptical of Raggett's claim to a trade mark.  In the opening line of his judgment he referred to "that which he calls his trade-mark" and later asked "if he has a trade-mark at all?"  He rejected the plaintiff's claim that "Nourishing".

I have pressed the learned counsel with the difficulties that weighed on my mind as to whether it is possible for a person using an English adjective describing the quality of the material he sells, to make that a trade-mark.  In this case it is the word “Nourishing,” which is in common use and thoroughly understood by all Her Majesty's subjects—“Nourishing Stout.”  Upon principle, ought this to be a trade-mark?  What is the quality of stout?  I suppose, if any one was called upon to describe the most distinguishing quality stout possesses in the opinion of the world, it would be that it is a nourishing beverage. 

The judge noted that proprietors can choose distinctive marks in preference to descriptive ones.  "If the Plaintiff was desirous of possessing the advantage of his trade-mark he had the matter completely in his own hands, because in order to distinguish it from all others he might have associated his name with it, or the name of his predecessor, or something which would distinguish it from merely nourishing stout".

He ruled that descriptive terms should be kept free for all to use, a principle that is now codified in trade mark legislation.  He stated that "for the protection of the public, it is necessary a trade-mark should be something beyond a mere English word denoting quality".  In this case specifically he ruled that "The word “Nourishing” therefore of itself will not do....  If he has only rested his case on the word “Nourishing,” I am clearly of opinion that is no trade-mark, and on that ground I think his case wholly fails."

Notwithstanding the Victorian language, the decision in Raggett v Findlater was very modern and presaged many welcome developments in trade mark law.  Malins VC identified the tension that lies at the heart of trade mark law.  He acknowledged the  trade off between the property right in signs and free trade stating that "it is of the highest importance that, on the one hand, every protection should be given to trade-marks when fairly and properly used, and when used within just limits, and, on the other hand, it is of equal importance that, by the use of a particular word or anything which may be called a trade-mark, the right should not be unduly extended so as to infringe on the right of traders to call their articles by a quality they possess, or to give an undue protection to any man who happens to use a particular word."  Such a statement would not look out of place in a judgement, text book, or manual of practice written today.  Jacob LJ noted in 2010 that "trade mark law does not prevent owners from making honest statements about their products". [L’Oréal SA & others v Bellure NV & others, [2010] EWVA Civ 535, para 8].

Thus Raggett v Findlater marked a departure from the law's clear position that any word could become a valid trade mark, to one where descriptive terms were required to be kept free for use by all.   Mallins' approach eventually became codified in law.  The Trade Mark Registration Act of 1875 referred to "Any special and distinctive word or words" [Sec. 10].  The 1938 Trade Marks Act specified "a word or words having no direct reference to the character or quality of the goods".

A close reading of the decision M'Andrew v Bassett reveals hints of other developments that were to come, and also that Lord Westbrury and Mallins were not so far apart.  Although Westbury argued that the property right in any word "applied by way of stamp upon a particular vendible article" existed "the moment the article goes into the market" this is further qualified by the presumption that it "there obtains acceptance and reputation".  Modern trade mark lawyers might see in this the beginnings of distinctiveness acquired through use.  Westbury appeared to argue that any word could be a trade mark provided that it is accepted as trade mark by the public.  This approach differs from modern trade mark law only in the presumption that the acceptance and reputation occurs at first use.  Applicants seeking to register a descriptive term as a trade mark nowadays must demonstrate that the relevant public does indeed perceive that sign as a badge of origin.  This necessarily cannot occur at the time of first use, but may well be possible later.