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SUPREME COURT—CIVIL SITTINGS., Issue 10475, 19 November 1897
SUPREME COURT—CIVIL SITTINGS.
■Wednesday, Novembeb 17. (Before His Honor Mr Justice Williams.) Loasby’s Wahoo Manufacturing Company Limited v. Peter Dutton, of South Dunedm druggist. An injunction to restrain the defendant from_ using tho word “ Wahoo”as dcscrintive of or in connection with any medicinal preparation manufactured by him. * The Hon. J. MacGregor appeared on behalf of the plaintiff company, and Mr Sira for defendanfe.
Mr MacGregor m opening the case for plaintiffs, said that the action was not for an infringement of a trade mark but for an infringeu!?*. 7 hat is oaIle(1 b T the judges the plaintiffs common law trade mark.” Mr A U. Loasby in August, 1696, sold to tho plaintiff company his right, title, and interest in bis preparation, which was a remedy for indigestion and other disorders, and to which the name Jahoo was applied. The defendant manufactored and sold a certain medicinal preparation as a remedy for indigestion and other disorders, made in imitation of but different from the medicine manufactured by the plaintiff company, and, in order to derive the benefit from plaintiffs advertising and to pass off his it the company, had adopted as its title the name and word “Wahoo ” In the statement of defence that had been filed defendant admitted that he had manufactured and sold and still sold and still manufactured a certain medicinal preparation as a remedy for indigestion and other disorders, and that he w. ed «^- ord " T a u°S ” a , s P art^of tb e name of his medicine, and had advertised and sold it by such name. An important ingredient in the medicinal preparation manufactured by tho defendant was the liquid extract of the bark of oT»?l an a , k “° wn a ? ffhoo, and the defendant claimed to be entitled to use the word “ Wahoo ” as part of the name of the said preparation to describe the same. Defendant had taken proper precautions to prevent purchasers of his preparation from believing that they were purchasing the manufactures of plaintiffs, and defendant had no desire ;nor intention to sell his medicine as medicine manufactured by the plaintiffs. Plaintiffs [had never, prior to commencing the action, complained to defendant of the use he was making of the word “Wahoo,” or sueto him that by reason of the way in which he was using the word purchasers of his medicine were induced to believe that they were buying medicine of the plantiffs’ manufacture hmee the commencement of the action nnoi.'kii'i. take r n P recautions to prevent the possibility of mistakes in purchasing by i h ® , Dame ,° f the manufacturer printed plainly on the label on the bottle. Defendant denied that the plaintiffs, or any other “WaW? a n ® xcl , usi y e . right to use the word Wahoo. Defendant further said that plainiwpSn7e+rif °i. in connection with the ?bp ilkm %° r ;\u W^? o b y resenting on i • f-~ e > 8 that the said word was part of*the plaintiffs registered trade mark, whereas, in fact, the word was not part of the trade mark and had been refused by the registrar of trade marks. His Honor would see that the rflT' Jf? 6d upo “ the common law right. The claim was for an iniunction to prevent defendant using the word Wahoo” so that there shonld not be danger or risk of thn purchasers being deceived. The cases would show that the mere use of the word " Wafcpo ” *
if what was proposed to he established was established, would be sufficient to entitle the plaintiffs to relief. It would be shown that plaintiffs were first in this market to use ‘Wahoo” as the name of a preparation, and the word had become known as the r ame of the particular manufacture of the plaintiffi. If that was established it followed, on the authority of very recent cases, that plaintiffs were entitled to an injunction. Counsel then quoted authorities to uphold his contention that even where the name used was descriptive of an ingredient of the preparation, if that name had been in previous use as the title of another preparation by a different person of which preparation it might or might not be descriptive, the preparation of the later date had ho right to be called by the name already in common use, and an injunction was obtainable. As a matter of fact, application had been made to have the name “Wahoo” registered by plaintiffs, but it was refused on the grounds that the word was not an inventive word or a word having any reference to the article for which it was intended. That, however, did not affect plaintiffs’ title to the use of the word, because before attempting to have the word registered he had manufactured and sold the preparation, and that was a common law trade mark, and gave him the right to the use of the name. He maintained that defendant had attempted to imitate the color and approximate in taste plaintiffs’ preparation, and had also used the same style-pf bottles* all of which was calculated to deceive the purchaser when both preparations were called “ Wahoo.” He then proceeded to call evidence. Andrew M'Artney I oasby, druggist, deposed that he sold a preparation called “Wahoo.” It was made from a secret recipe of his own. First began to advertise and sell it about March, 1893. It was advertised in almost every town in New Zealand. Wahoo was a tree, the root hark of which was used to obtain a resin from which a well-known medicine called euonjmin was manufactured. It was not to be found in the British Pharinacopoe’a, hut was mentioned in ‘ Squires.’ There was no wahoo in his preparation, and the word was only used to catch the eye and ear. In December, 1894, he applied to have the name of his preparation registered, but the registration was refused on the ground that the word was not descriptive and had no reference to the article for which it was intended. A trade mark had since been registered. Witness and the company had spent large sums of money in advertising the preparation. In the market ‘ ‘ Wahoo ” was regarded as witness’s preparation. He sold out to a company in 1896, and since then had been manager of the company and manufacturing the medicine. Before Mr Dutton started he knew of no one else who sold a preparation under the name of “ Wahoo.” Sometimes defendant’s bottles were different from those used by the plaintiff company, and at other times they were identical. Defendant called his preparation “Wahoo Curative Syrup”; witnesss was called “Wahoo. or Digestive Syrup.” He never remembered having heard anyone ask for the preparation as “ Digestive Syrup,” but always as “ Wahoo.” He certainly thought that defendant’s preparation was intended to be passed of as that of pla'ntiffs’. First heard that Mr Dutton was selling a preparation under the name of “ "Wahoo ” when he (witness) was in Western Australia, in June last. The mere putting of Mr Dutton’s name on the label would not be sufficient to prevent deception. By Mr Sira : There were a number of preparations from wahoo bark which were called “fluidextracts from wahoo.” In the catalogue of Frederick Stearns, of Detroit, these preparations, under the heading of “fluid extracts,” were called “Wahoo.” It was also referred to by name in other parts of the catalogue. In Fletcher, Fletcher, and Stevenson’s 1893 catalogue, issued as a supplement to the ‘ Chemist and Druggist,’ wahoo was referred to as the popular name for the botanical name. He did not know of anyone having sold a fluid extract of wahoa as “ Wahoo,” but he had known it to he sold as cuonymin. He could not say where he got the word “Wahoo” from. He did not think he got it in a catalogue. Ho had never known that Mr Neil had sold liquid extract of wahoo as “Wahoo ” in Dunedin. Leslie Robert Wilson, merchant, said that about twelve months ago Mr Dutton came to him to try and do business with his “Wahoo.” Up till that time he did not know of any other “Wahoo” but that manufactured by Loasby. He understood that “Wahoo” meant Mr Loasby’s preparation. The preparation was known in the trade as “Wahoo,” and when orders were received for it it was called “Wahoo.” A. T, Price, chemist, gave evidence that the preparation was known in the trade as Loasby’s “Wahoo.” He knew of no other proprietary medicine being sold as “Wahoo.” When a person came to his shop and asked for “Wahoo” he either sold Loasby’s “Wahoo” or asked the purchaser what sort vns wanted. Lustace Charles Woodward, chemist and druggist, deposed that Dutton’s “Waboo” was very liable to being passed off instead of Mr Loasby’s. Ttomas Johnstone, chemist, deposed that he sold Mr Loasby’s preparation as “ AYahoo.” Previously cuonymin was known as “Wahoo” in the text hooks. When “ Wahoo ” was asked for he always understood that it was Loasby’s proprietary medicine that was intended. Evidence was also givrn by Alexander Balfour Mercer, Marion Macaulay (who had purchased “Wahoo ” believing it was Loasbv’s, but foundon opening tho wrapper that Peter'Dutton’s name was on it), and William Charles (who gave, similar evidence to that of the previous witness). This closed plaintiffs’ case. Mr Sim, in opening the case, said that Mr Loasby, in appropriating tho name of “ Wahoo,” had diverted that wont from its proper use and applied it to something olao. His use was an abuse of tho word, being applied to a preparation that contained no wahoo at all. Defendant used wahoo first of all, and then used tho word as part of the title of his mixture. So long as defendant took steps to render mistakes unlikely to occur —he was not bound to guarantee that no person could be mistaken-counsel contended that it was monstrous to say that the defendant should be prehibited from the legitimate use of the word. Loasby’s application of the word to a compound which contained ro wahoo amounted in the meaning of the cases to carrying on a dishonest trade, and if a person was guilty of a fraudulent misrepresentation of his trade mark, as was the case with Mr Loasby, he was not entitled to relief. Peter Dutton, defendant, deposed that for the last twenty years ho had known of wahoo as a plant which was very plentiful in the Northwestern States of America. He had never imported wahoo, but had purchased here a fluid extract of wahoo. Before making his preparation called “Wahoo” he had never been asked for wahoo by the public, but he had, on his own advice, sold some of the liquid extract. ■ He commenced to make his preparation about seven months ago. The reason why he did so was that he had a lot of the extract on hand, and had to push it to prevent being left behind. He was careful that there could be no possibility of his preparation being mistaken for that of Loasby’s. Plaintiffs made no complaint about his using the word “ Wahoo” until they served him with a writ. If they had objected he would have desisted. By Mr MacGregor : There were ingredients in his preparation other than wahoo. It was not uncommon to send out preparations without his name on them, but they were more often sent out with the name on. The reason why the name was omitted in the first instance was that he was not making the stuff up on his own account, but on account of his son. It was on Mr Sim’s advice that he had inserted his name m the labels. He had not sold a great deal of the preparation.
James Neil, chemist and druggist, deposed that he very often imported wahoo from America. He also imported it in the form of crude bark of the root put up and compressed. When ordering he always put it down as wahoo, and it was invoiced to him as wahoo. He did not import the liquid extract, but made it himself from the bark. It was about twenty years ago that he got the first samples. He sold it in a crude state to the public and to the trade. He always sold it as wahoo. If they asked for euonymin he would know what they meant. In the herbal trade the popular names were preferred. This closed the case for the defence. His Honor reserved his decision.
SUPREME COURT—CIVIL SITTINGS., Issue 10475, 19 November 1897
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