Bulmers Ltd v Showerings Ltd

• Jurisdiction: Ireland
• Judgment Date: 02 June 1962
• Date: 02 June 1962
• Docket Number: (1959/343 P.)
• Court: High Court

Bulmers Ltd. v. Showerings Ltd.

In the Matter of the Industrial and Commercial Property (Protection) Act, 1927, BULMERS LIMITED

Plaintiffs

and

SHOWERINGS LIMITED

Defendants.

(1959/343 P.)

Trade mark - Registration - Motion to rectify register - Champagne perry -"Babycham" - Invented word - Industrial and Commercial Property (Protection) Act, 1927 (No. 16 of 1927), s. 82, sub-s. 1 (c).

The defendants were an English company manufacturing cider and perry and, in particular, champagne perry which they sold in "baby" bottles. They had registered the name, "Babycham," for the latter product in England in 1950, and in Ireland in 1955. The plaintiffs were an Irish company manufacturing similar products. They commenced to manufacture and sell champagne perry in baby bottles in 1957 which were labelled "Godwin Champagne Perry."

In an action brought by the plaintiffs to remove the word, "Babycham,"from the register it was

Held by Haugh J. that the word, "Babycham," was an invented word and capable of registration under s. 82, sub-s. (1) (c), of the Industrial and Commercial Property (Protection) Act, 1927.

Semble that even had it not been so registrable, the word would have been registrable under s. 82, sub-s. (1) (d), of the Act as a word having no direct reference to the character or quality of the goods.

Plenary Summons.

The plaintiffs, Bulmers Ltd., brought an action in the Hight Court under s. 129 of the Industrial and Commercial Property (Protection) Act, 1927, for, inter alia, an order that the register of trade marks might be amended by the removal of the mark, "Babycham," which mark the defendants, Showerings Ltd., had caused to be entered in the said register.

The relevant facts have been summarised in the headnote and are more fully stated in the judgment of Haugh J., post.

Cur. adv. vult.

Haugh J. :—

This case turns firstly on the answer to a question arising under s. 82, sub-s. 1 (c), of the Industrial and Commercial Property (Protection) Act, 1927; namely, is the name"Babycham", an invented word, within the meaning of this sub-section?

If the answer is "Yes," the defendants must succeed; if"No," I have then to consider para. (d) of the same subsection and ask has "Babycham" (a word now found not to be an invented one) a direct reference to the character or quality of the goods it names. That is, does the term,"Babycham," a non-invented word, directly refer to the drink known to the trade as champagne perry and sold in small bottles. If the answer is "Yes," the plaintiffs must succeed.

The leading case on this subject is the House of Lords decision in Eastman Photographic Materials Co. v. Comptroller-General of Patents, Designs, and Trade Marks(8), wherein the decision of the Comptroller-General, the High Court and the Court of Appeal were reversed. Up to then it was considered that a word must not alone be invented, but, in addition, it must have no direct reference to the character or quality of the goods. This case has established that if"Babycham" is an invented word, then it matters naught if it has any direct reference to the beverage known as champagne perry. This case is of importance—an importance I can best explain by quoting from a passage in Kerly on Trade Marks (7th ed., 1951) at p. 121:—"Before the decision"in the 'Solio' case, the registration of a word as an invented word was difficult to obtain, but it afterwards, under the Act of 1888, became the practice at the Patent Office to accept for registration, as invented words, words which

had very little invention indeed, but were merely ordinary English words, having a slight variation in or a slight addition to them." He then refers to an article, "Words as Trade Marks," in the Solicitors' Journal, 1900, Vol. XLIV, p. 548, in which the following examples of invented words were given:—Perfumette for perfume; Enameline for blacking, etc.; Glazo for creams for polising leather; and Fireproofine for a fireproofing liquid.

This to me seems to be another way of saying what Lord Herchell said in the Solio Case(1) at p. 581:—"In considering the case of an application to register a trade mark, the only question which, in my opinion, has to be determined is whether the word sought to be registered is an invented word. In one of the cases on this subject Kay L.J. said, 'There is extremely little invention in this matter.' It may be that the word Satinine which was there in question, was objectionable on other grounds; but if the word be an invented one, I do not think that the quantum of invention is at all material. An invented word is allowed to be registered as a trade mark not as a reward of merit, but because its registration deprives no member of the community of the rights which he possesses to use the existing vocabulary as he pleases."

It is simple for me to state the proposition I have had to face, as such; but, in view of the many decisions, some of which seem to conflict, it is not as easy to answer. This was recognised by Lord Herschell in the Solio Case(1) where, at p. 581, he said:—"It may, no doubt, sometimes be difficult to determine whether a word is an invented word or not." For myself I have found it difficult to decide whether "Babycham" is an invented word or not according to the section. There was much to be said for both sides, and it required time, care and attention on my part before I could come to a decision.

For the purpose of this judgment I will refer only to such parts of the evidence as seem to me to be in some way relevant to the question I have to answer.

The plaintiffs are an Irish company who manufacture and sell cider, perry, champagne cider, champagne perry and other drinks, at Clonmel, Co. Tipperary. Mr. Thomas Jackson, Solicitor, a director of the Company, was closely questioned by Mr. Costello as regards the dominant factor in the Company, the share allocation, and the interest of one Mr. Bulmer of England in the control of the Company. I am now satisfied that these matters are of no real materiality in the issues before me and I pass from them.

I am concerned with one drink only—produced by both the plaintiffs and the defendants—namely, champagne perry. Perry is a drink manufactured from fermented pear juice. Champagne perry is the very same drink with one additional but important difference. It has a sparkle in it, which, in general, is produced by the introduction of carbon monoxide gas into the perry, or by a process claimed to be known only to the defendants, i.e. the retention of the natural fruit sparkle as is done in the manufacture of ordinary champagne. Thus champagne perry is a drink that resembles champagne in both taste and appearance. Needless to add, neither the plaintiffs nor the defendants pass this drink off as champagne, and no ordinary-minded member of the public has any reason to believe he is drinking champagne when consuming the plaintiffs' "Godwin" or the defendants'"Babycham."

The plaintiffs market their champagne perry in small bottles, which are capped with a golden coloured paper top, and bear a label, part of which is golden coloured and the rest white. On the first part is written "Godwin Champagne Perry, made and bottled by Bulmer Ltd. Clonmel." This label contains a picture of a lady sitting on a large wine glass with a tumbler held in her outstretched right hand. On the white portion of the label is written the one word, "Godwin,"in black letters. This trade mark has not been registered as such, but the whole label clearly demonstrates that the content of the bottle is champagne perry, sold under the name, "Godwin," and manufactured by the plaintiff Company. The plaintiffs began this side of their business in a small way, by the importation of a small amount of champagne perry from Bulmers, England, in January, 1957, gradually increasing the amount imported up to March of that year, when the manufacture of the product was commenced at the Company's factory in Clonmel. This was first sold to the public in July of that year. Their sales increased each year, but I do not have to go into figures.

The detailed history of the defendant Company can be gleaned by reading the judgment of Mr. Justice Upjohn in [1956] R. P. C. 307, as the evidence before him was in substance similar to that before me. The defendants' business is a family one, which has been in the Showering family for many generations, and which has been engaged in the production of beer, cider and perry. The business is now...