«BBAV.». PERRY V.

TRUEFITT 749

[66] PERKY V. TRUEFITT. Dec. 8, 9, 1842.

[See The Leather Cloth Company v. The American Leather Cloth Company, 1865, 11 H.
L. C. 523; 11 E. R. 1435 (with note); Morgan v. M'Adam, 1866,36 L. J. Ch. 229;
Ford v. Foster, 1872, L. R. 7 Ch. 625; Singer Manufacturing Company v. Wilson,
1876, 2 Ch. D. 461; Johnston v. Orr-Ewing, 1882, 7 App. Cas. 229; Reddaway v.
Banham [1896], A. C. 209. As to Gout v. Jleploglu, 6 Beav. 69, n. See In re
Botha-ham's Trade Mark, 1879-80, 11 Ch. D. 253; 14 Ch. D. 587.]
The ground on which the Court protects trade marks is, that it will not permit a
party to sell his own goods as the goods of another; a party will not, therefore,
be allowed to use names, marks, letters, or other indicia by which he may pass off
his own goods to purchasers as the manufacture of another person.
If a Plaintiff coming for an injunction in such a case appears to have been guilty of
misrepresentations to the public the Court will not interfere in the first instance.
This was a motion for a special injunction to restrain the Defendant from selling
a greasy composition for the hair, under the name of " Medicated Mexican Balm,
or under similar designations.
It appeared that, in 1836, a Mr. Leathart invented a grease or mixture for the
hair, the secret and recipe for making which he sold to the Plaintiff, a hairdresser and
perfumer residing in Burlington Arcade.
[67] The Plaintiff gave to the composition in question, the name of " Medicated
750 PERRY V. TRUEFITT 6BBAV.68.,

Mexican Balm," and sold it as "Perry's Medicated Mexican Balm." It having

acquired an: extensive sale and repute, the Defendant Truefitt (a rival hairdresser
and perfumer living in the same place), had lately commenced selling a greasy com-
position, somewhat similar to that of the Plaintiff, in bottles, and with labels closely
resembling those used by him. He designated and sold it as " Truefitt's Medicated
Mexican Balm."
The Plaintiff thereupon filed this bill, alleging that the name or designation of
Medicated Mexican Balm had become of great value to him as a trade mark: that its-
adoption by the Defendant was apt to deceive persons desirous of purchasing the
Plaintiff's composition, and was very injurious to him The bill prayed an account of
the profits made by the Defendant, and for an injunction.
Though Mr. Leathart was the inventor, yet the Plaintiff, according to his own
statement, used a printed shew card, in which he represented the article in question
in the following terms:—"By special appointment—MEDICATED MEXICAN BALM, for
restoring, nourishing, strengthening, and beautifying the hair, Perry, 12 and 13
Burlington Arcade, London. It is a highly concentrated extract from vegetable
balsamic productions, of that interesting but little known country, Mexico, and
possesses mild astringent properties, which 'give tone to weak and impoverished hair,,
and impart a glossy appearance to the naturally dull and harsh. Where there is a*
tendency to fall off, the Mexican Balm exerts its astringent qualities, and gradually,
but infallibly, braces the pores of the cuticle, and arrests the deterioration of that
most beautiful ornament of the [68] human frame, a fine head of hair. This admirable
composition is made from an original recipe of (he learned J. F. Von BlumenbacJi, and
recently presented to the proprietor by a very near relation of that illustrious physiologist."
The application was supported and resisted by affidavits, in one of which, filed on
the part of the Plaintiff, it was stated, that the Defendant's mixture being submitted
to chemical analysis, was found to be "composed of lard and olive oil, perfumed with
essential oils;" but that that of the Plaintiff "did not contain lard or any other
animal fat."
It appeared also from an affidavit, that the Plaintiff had iu many instances adopted
the fanciful names invented for similar articles by the Defendant and other persons,
he merely prefixing his own name thereto, as in the present case.
Mr. Pemberton and Mr. Trotter, in support of the motion. The Plaintiff has
acquired the sole right of using the name invented by him, and of which he has had
the uninterrupted enjoyment for six years. It has become a trade mark which the
Defendant has no right to assume, and which this Court will protect. In Millington
v. Fox (3 M. & Cr. 338), it was held that the Court " will grant a perpetual injunc-
tion against the use, by one tradesman, of the trade marks of another, although such
marks have been so used in ignorance of their being any person's property, and under
the belief that they were merely technical terms."
So in the "Watch case" (1 Chitty's General Prac. 721), "the Vice-Chancellor
granted an injunction to restrain the Defendant from [69] sending to Constantinople
certain watches with the word ' Pesendede,' in Turkish characters (meaning
' warranted'), in imitation of the watches of the Plaintiff, by which they had for
very many years been distinguished, and by which he had obtained great credit in
the Turkish trade."(l)

(1) Gout v. Aleploglu. V.-C. April 15, 1833.

Injunction to restrain a party from making and sending to Turkey watches having
the Plaintiff's name or the word " warranted" engraved thereon in Turkish
characters in imitation of the Plaintiff's watches.
This case seems to have been as follows :—The Plaintiff Gout had been accustomed
to manufacture watches for the Turkish market, in which country they had acquired
great repute, and were known by the marks engraved thereon, as after stated. The-
Plaintiff had been accustomed to engrave upon the inside of his watches, and in
Turkish characters, his name, and the word " Pessendede," which signifies "warranted
8BEAV.70. PERRY V. TRUEFITT 751

[70] We admit that when a party makes a new invention, and does not obtain
the protection of a patent, any other person who can discover the process of the
invention, may both make and sell the article; but what is complained of here is,
that the Defendant not having discovered the ingredients of the Plaintiffs invention,
sells a spurious article quite different from that manufactured by the Plaintiff under
the name appropriated by the Plaintiff to his invention. He sells a composition of
lard and olive oil, as the composition of the Plaintiff, which contains no animal fat.
He sells' an inferior article, and the trade and reputation of the Plaintiff is thereby
injured. There is also evidence that the Defendant has represented the two articles
as being the same, and that his own is the original. It could not be by accident that
the Defendant adopted the peculiar name, his object could only have been to obtain
to himself the benefit of the character and celebrity of the article invented by the
Plaintiff. The prefixing his own name does not remove the objection. The Defendant
is committing a fraud on the Plaintiff, and an imposition on the public. This Court
ought to restrain him from fraudulently using the words, adopted by the Plaintiff to
distinguish his manufacture, for the purpose of attracting custom, which, but for such
improper conduct on the part of the Defendant, would have gone to the Plaintiff;
Knott v. Morgan (2 Keen, 213; and see Day v. Benning, 1 C. P. Cooper, 489).
[71] Mr. G. Turner and Mr. James Parker, contra. A party cannot acquire an
exclusive property in a name; Blanchard v. Hill (2 Atk. 484), Canham v. Jones (2 Ves.
& B. 218); if there be any right, it is a legal right, which ought to be ascertained by
proceedings at law, before this Court interferes by injunction. If the Plaintiff could
establish such a right as that which he contends for, he woiild be in a better situation
than a patentee after the expiration of his patent, who cannot prevent other persons
availing themselves of his invention, or from selling the article by the same name.
There appears also to be a usage amongst the trade to adopt any fanciful name
invented by another party, if he merely prefixes his own name; and the Plaintiff, as
appears from the affidavits, has adopted that practice in several instances, to the
prejudice of the Defendant.
The Defendant has never pretended to sell his own manufacture as that of the
Plaintiff, but a similar article merely; this he had a right to do. In every instance
he carefully prefixed his own name to the article he sold, and sold it as " Truefitt's
Medicated Mexican Balm," and not as " Perry's Medicated Mexican Balm." This is
not like the cases of S>/kes v. Sykes (3 B. & Cr. 541), Blofeld v. Payne (4 Barn. & Ad.
410), where the Defendants had used the marks on the 3hot belts and the wrappers
on the hones in order to pass off their own manufacture as the Plaintiffs; so in
Millington v. Fox, the mark used was the name of the Plaintiffs, and naturally
designated them as the manufacturers of the steel made by the Defendant.
The false statements made by the Plaintiff to the public as to the invention, is
or approved." There was also R.G. and a crescent put in relief, and a sprig and
crescent.
In 1831 the Defendant applied to the Plaintiff to undertake an order for the
manufacture of watches to be consigned to Constantinople, but conceiving he might
injure his agent there, the Plaintiff refused to execute such order.
The Defendant afterwards got Messrs. Parkinson to manufacture watches for him,
on which there were engraved, in Turkish characters, the words " Ealph Gout" and
" Pessendede " on the same part of the watch as those of the Plaintiff, and which the
Defendant Aleploglu consigned to Constantinople, and sold there to the prejudice of
the Plaintiffs trade.
Mr. Knight and Mr. Koe moved for an injunction.
Mr. Spence, contra.
The Vice-Chancellor granted an injunction in the terms of the notice of motion,
restraining Aleploglu from sending or permitting to go to Constantinople and Turkey,
or to any other place, and from selling and disposing of any watches with the name
of the Plaintiff thereon in Turkish characters, or the word "Pessendede" thereon in
Turkish characters, or any watches in imitation of the Plaintiffs watches; and also
restraining Aleploglu and Messrs. Parkinson from manufacturing or vending such
watches. Reg. Lib. 1832, A. 1247.
752 PERRY V. TRUEFITT iBBAV.n.

fatal to his application for [72] an injunction. Though the invention is stated and
proved to have been made by Leathart, the Plaintiff has represented to the public
that " this admirable composition is made from an original recipe of the learned J. F.
Von Blumenbach, and recently presented to the proprietor by a very near relation of
that illustrious physiologist. It is also represented to be "a concentrated extract
from vegetable balsamic productions of Mexico;" but that does not in any way appear
to be the case. Now, in Pidding v. How (8 Sim. 477), the injunction was refused
on the ground of the public misrepresentations of the Plaintiff as to the composition
of a tea called "Howqua's Mixture." The Vice-Chancellor there says, "it is a clear
rule laid down by Courts of Equity not to extend their protection to persons whose
case is not founded in truth. And as the Plaintiff in this case has thought fit to mix
up that which may be true with that which is false, in introducing the tea to the
public, my opinion is, that unless he establish his title at law, the Court cannot
interfere on his behalf."
Motley v. Dovmman (3 Myl. & Cr. 1. And see Singleton v. Bollon, 3 Doug. 293),
and Morison v. Salmon (2 Man. & G. 385) were also cited.
Mr. Pemberton, in reply.
THE MASTER OF THE ROLLS [Lord Langdale]. The question in cases of this kind
is, whether the Court should grant an injunction in the first instance, or should
withhold its interference until the matter has been tried in a Court of law, to which
jurisdiction the determination of the legal right properly belongs.
[731 I think that the principle on which both the Courts of law and of Equity
proceed, in granting relief and protection in cases of this sort, is very well understood.
A man is not to sell his own goods under the pretence that they are the goods of
another man; he cannot be permitted to practise such a deception, nor to use the
means which contribute to that end. He cannot therefore be allowed to use names,
marks, letters, or other indicia, by which he may induce purchasers to believe, that
the goods which he is selling are the manufacture of another person. I own it does
not seem to me that a man can acquire a property merely in a name or mark; but
whether he has or not a property in the name or the mark, I have no doubt that
another person has not a right to use that name or mark for the purposes of deception,
and in order to attract to himself that course of trade, or that custom, which, without
that improper act, would have flowed to the person who first used, or was alone in
the habit of using the particular name or mark.
The case of Millington v. Fox (3 M. & Cr. 338) seems to have gone this length, that
the deception need not be intentional, and that a man, though not intending any
injury to another, shall not be allowed to adopt the marks by which the goods of
another are designated, if the effect of adopting them would be to prejudice the trade
of such other person. I am not aware that any previous case carried the principal
to that extent.
In the present case the material facts do not appear to me to be in dispute. Some
years ago the Plaintiff, Mr. Perry, became possessed of a recipe which he calls the secret
for making a certain composition to encourage the growth of hair. To that composition
he has given the name of "Perry's Medicated Mexican Balm." He says [74] that the
term " Medicated Mexican Balm," to which he has prefixed his name, has acquired a
character and reputation in commerce, by which his particular composition is dis-
tinguished, and that whenever the particular name of " Medicated Mexican Balm"
has been used, it has been understood to mean the Medicated Mexican Balm of Mr.
Perry, of which he has the sole secret. He says also, that nobody could well suppose
there was any such composition other than that to which his name was attached. It
certainly is not very easy to see how that could be so, because all the words that are
used in the phrase " Medicated Mexican Balm," are perfectly capable of being applied
to a very different composition. It may be a balm, but not his balm; it may be
medicated, but not medicated in his way; it may be Mexican, and yet not Mexican of
the same sort or material as that which he uses. It is therefore difficult to suppose
there could not be any other " Medicated Mexican Balm " than that to which the
Plaintiff has given the name of " Perry's Medicated Mexican Balm." However, there
is evidence, and evidence of considerable strength and importance to that effect, which
is not denied.
«BBAV.75. PERRY V. TRUEFITT 753

The Plaintiff having sold this composition for several years, and derived consider-
able profit therefrom, the Defendant, Mr. Truefitt, a very few months ago, set up as
a manufacturer of " Medicated Mexican Balm." He is not, however, and does not
pretend to be, the manufacturer or vendor of Perry's Medicated Mexican Balm, but
the article which he makes and sells is by him designated as " Truefitt's Medicated
Mexican Balm."
It is in no way denied that he has adopted the term " Medicated Mexican Balm "
from the Plaintiff, or that he intended to derive some benefit from adopting the name,
which, to the extent I have referred to, belonged [76] to the Plaintiff; but he says,
there is, in the trade of perfumers to which he belongs, a general custom, that if any
man invents a fanciful name for any article which he manufactures and sells for the
toilette, he never thinks, nor do the trade think that he has a property in that name,
and that any other manufacturer has a right to adopt the same name, provided he only
prefixes his own name to it as the manufacturer of the article so named. I should be
very much surprised if it could be established that there was a custom of trade by
which one man's property or rights could be transferred from him to another. In
such a case as this, if Mr. Perry alone had the peculiar right to this name, I should
be surprised to find any custom of trade by which his right could be infringed upon :
that however is the ground on which Mr. Truefitt says he acted; he says, " I have sold
this in my own name."
There is, however, an imputation, that Mr. Truefitt sold his composition, alleging
it to be the manufacture of Mr. Perry. I believe, from the evidence, he intended
cautiously to guard against this: he seems to have thought that by prefixing the
name of Truefitt to every article he sold, he prevented any imputation on him that,
he was selling Perry's article, and the care taken in that respect is remarkable. Even
in the cases where the bottles of Perry were taken to be filled or refilled, as the
witnesses state, Mr. Truefitt never allowed the bottles to go out of the shop with the name
•of "Perry" on them, or otherwise than with his own nameof "Truefitt" attached to them.
The question is, whether in a case where there has not been, on the part of the
Defendant, an intention to sell the article as the article manufactured by the Plaintiff,
there is enough to induce the Court to grant the injunction 1 I think it is as the
Plaintiffs [76] counsel stated, Truefitt is not accused of having sold the article
which Perry manufactured, but of selling another article of a different kind, as and
for the article of Mr. Perry, distinguishing it by the name of " Truefitt's Medicated
Mexican Balm " and without attaching the name of Perry to it, and that seems to be
the point on which this case turns. Now it is a legal question to be determined at
law, whether Mr. Truefitt had a right to do so or not; and I think, if the case rested
on the merits alone, I should say that this motion ought to stand over, in order that
an action might be brought to try the right; but when we see the representations
made by Mr. Perry, I think they are conclusive against him on this application.
I entirely agree with the observation made by the Vice-Chancellor of England, in
the case of Pidding v. How (8 Sim. 477) relative to Howqua's mixture of tea; I do
not think it is a favourable case for the interposition of this Court, to say the least
of it, when a party, having bought a secret invented by a Mr. Leathart, represents to
his customers and the world, that his "admirable composition is made from an
original recipe of the learned Von Blumenbach, and was recently presented to the
proprietor by a very near relation of that illustrious physiologist."
The Plaintiff states also a circumstance, not in the least degree supported by
evidence, that the composition is formed of vegetable balsamic production from
Mexico. There are other things, which I do not think it necessary to observe upon,
which make me think this is not a favourable case for a person to come in the first
instance and claim the assistance of a Court of Equity, in aid of a legal right, which
however I do not deny he may have.
[77] I think this case must stand over with liberty to Mr. Perry to bring an
action, and either party must have liberty to apply.
NOTE.—The Plaintiff having taken no steps to try the action, the Defendant, on
the 5th day of July 1843, applied for the costs of the motion, which were granted.
The bill was then (with the consent of the Plaintiff) dismissed with costs.