The plaintiff had an established retail business in Scotland and Northern England. It traded under the name Buttercup Dairy Company and was known as Buttercup Dairy or simply Buttercup. The Defendant was a new company called the Buttercup Margarine Company, the name having been chosen without knowledge of the plaintiff. Its directors intended to make and deal in margarine, though its objects were wider. There was no intention to use Buttercup for the margarine. Passing off had been established before Astbury J.
Held: There had been a passing-off. The case was ‘well over the line.’
Lord Cozens-Hardy MR said: ‘[The defendants] assert their right to do what is complained of, and they file a great mass of affidavits, and they appear here in Court to assert their right to do what they have threatened and continue to do. They seek to justify it on the ground that the arm of the Court is not long enough to reach a defendant who takes a name or a word, which, in the view of the Court, who are judges of the fact, is calculated to deceive, unless it can also be shown that it is calculated to deceive in this sense’ that a person who would be a customer of the Plaintiff is induced to become a customer of the Defendants; and they say that this doctrine has no operation here, because they are wholesale people and the Plaintiff’s business is a retail one: and that it is true that they have fullest possible power under the Memorandum and Articles of Association to carry on a retail business, but at the present moment they have no such intention. I should be very sorry indeed that we were so to limit the jurisdiction of the Court. No doubt mere confusion, due to some acts of the defendants, would not be a cause of action. The case of Day v Brownrigg is a good illustration of that – but I know of no power, and I can see no principle for holding that a trader may not be injured, and seriously injured, in his business as a trader by a confusion which will lead people to conclude that the defendants are really connected with the plaintiffs or a branch of the plaintiffs’ business or in some way mixed up with them.’
Warrington LJ said: ”I am of the same opinion. The plaintiff carries on a large retail general provision business under the title of the Buttercup Dairy Company. The defendants were incorporated in November, 1916, and they have a cash capital of 12l. 10s. – 250 preference shares of 1s. each – and have adopted as their registered name the title of the Buttercup Margarine Company, Limited. Looking at those two names, it seems to me obvious that a trader or a customer who has been in the habit of dealing with the plaintiff might well think that the plaintiff had adopted the name of Buttercup Margarine Company, Limited, as his own name for the purposes of the margarine branch of his business, or for the purposes, if you will, of doing what it is said the defendants are going to do, namely, to make their own margarine instead of buying it in the market. If that be so, it seems to me that the Plaintiff has proved enough. He has proved that the Defendants have adopted such a name as may lead people, who have dealings with the Plaintiff, to believe that the Defendant’s business is a branch of, or associated with the Plaintiff’s business. To induce the belief that my business is a branch of another man’s business may do that other man damage in all kinds of ways. The quality of the goods I sell; the kind of business I do; the credit or otherwise which I might enjoy all those things may immensely injure the other man, who is assumed wrongly to be associated with me. It is just that kind of injury which what the defendants have done here is likely to occasion, and I think the learned judge is perfectly right.’
Lord Cozens-Hardy MR, Warrington LJ
[1917] 34 RPC 232, [1917] 2 Ch 1
England and Wales
Cited by:
Cited – Associated Newspapers Limited, Daily Mail and General Trust Plc v Express Newspapers (an Unlimited Company, Incorrectly Sued As Express Newspapers Limited) ChD 11-Jun-2003
The claimants sought to prevent the respondents from starting an evening newspaper entitled ‘THE MAIL’ as an infringement of their registered mark, and as passing off. In turn the defendant challenged the validity of the mark.
Held: The word . .
Lists of cited by and citing cases may be incomplete.
Updated: 25 September 2021; Ref: scu.183857