This case concerned an allegation of passing off by the defendant of the claimant’s trademark “Florsheim”. Florsheim, a registered trademark in the United States of America (USA), started trading in Trinidad and Tobago in 1931 but went into liquidation in 1935.
By April 1934, the defendant applied for and obtained registration for the Florsheim trademark. The claimant attempted to sell their shoes with a local company, but the company refused the sale citing the registration of a trademark with the same name.
In coming to its decision, the court relied on the case of Reddaway v Banham [1896] A.C 199 and its articulation of the principle of passing off: “…the mere proof by the plaintiff that the defendant was using a name, word, or device which he had adopted to distinguish his goods would not entitle him to any relief. He could only obtain it by proving further that the defendant was using it under such circumstances or in such manner as to put off his goods as the goods of the plaintiff.”
While the defense pleaded that the claimant could have registered the mark under the Ordinance, the court was of the view that it was not necessary for the claimant to register. The question was raised as to whether the claimant abandoned their right to the claim due to the liquidation and there being no sales for a period of time. However, the court held that liquidation did not cause the claimant to abandon the trade name and design in Trinidad and Tobago with regards to the shoes, and no evidence shows that they had any intention to do so.
The claimant requested an order that the Registrar General rectify the register and remedy the alleged fraud of the defendant by expunging the entry. On the question of fraud, the court was very clear that there was “fraud, deception and dishonesty of the defendant” (para 22), as they knew the reputation the shoes had on the market and their actions were mean to exploit the company’s trade names and design. The court further held that the defendant registered the mark with full knowledge that it was ‘calculated to deceive’ within the meaning of s. 41 of the Ordinance. As such, the mark was not legally registrable under the Ordinance.
The court accepted the defendant’s argument that it had no statutory power to grant such an order, but as a court of equity, it was of the view that it cannot allow a statute to be an instrument of fraud and therefore ordered the defendant to be removed the entry from the Register of Trade Marks.
The court made the following order:
Declaration that the registration of the trademark by the defendant was calculated to deceive, is fraudulent and should be set aside
Defendant to cancel the registration of the trademark
Defendant, servants, and agents be perpetually restrained from selling or offering for sale or advertising for sale the trade name of “Florsheim”
Defendant to deliver all footwear, boxes, wrappers, advertisements etc., bearing the name “Florsheim” to the claimant’s agents.
Inquiry into the profits made by the defendants, with the defendants to pay such profits to the claimant
Cases referred to: Reddaway v Banham [1896] A.C. 199, Angus v Angus, 25 E.R. 800, McCormic v Grogan, 4 E & I Appeals 82, McAndrew v Bassett O1864), 10 L.T. 442 (H.L.), Orr-Ewing & Co. v Johnson & Co., 13 Ch. D. 434 (C.A) and 7 App. Cas. 219 (H.L.)