The defendants sold Eau de Cologne labels which infringed the plaintiff’s trade marks. However they made it clear to the purchasing retailers that they were produced by them and not by the plaintiff, and had made no misrepresentation to the retailers; they were not deceived.
Held: An injunction was granted. The court explained the relationship between the law relating to trade marks and that of passing off. ‘But if it be stated that the Defendant is manufacturing that which is known to be the trade mark which the Plaintiff alone has the right to use, and the use of which on the goods of a third party would be a fraud upon the Plaintiff; and that the Defendant is selling such labels to anyone who asks for them, and is thus scattering over the world the means of enabling parties to commit frauds upon the Plaintiff, and that such frauds have been committed; that is, I think, a sufficient averment to entitle the Plaintiff to an injunction. The ground of the jurisdiction being fraud, if the Defendant be committing fraud, either by selling goods under the Plaintiff’s trade mark, or enabling others to do so by distributing the means of doing so, it cannot be said that this Court has no power to interfere by injunction to arrest the evil at its source, without compelling the Plaintiff to wait until the whole fraud is brought to a completion by the sale of the goods.’ The jurisdiction was based on fraud and an injunction would be granted to inter alia prevent the defendant from enabling passing-off.
Judges:
Sir William Page Wood VC
Citations:
(1855) 1 K and J 509
Jurisdiction:
England and Wales
Cited by:
Cited – British Telecommunications Plc; Virgin Enterprises Ltd; J Sainsbury Plc; Marks and Spencer Plc and Ladbroke Group Plc v One In a Million Ltd and others CA 23-Jul-1998
Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 05 December 2022; Ref: scu.239047
