Leeuw v Macedonia Tobacco Company (C.A. 17/1931.) [1931] EACA 6 (1 January 1931)

## COURT OF APPEAL FOR EASTERN AFRICA.

Before SIR J. W. BARTH, C. J. (Kenya), PICKERING, C. J. (Zanzibar), and THOMAS, J. (Kenya).

## $M. G.$ VANDER LEEUW JR. AND OTHERS (Appellants) (Original Plaintiffs)

## MACEDONIA TOBACCO COMPANY (Respondents) (Original Defendants). C. A. $17/1931$ .

Appropriation of a general adjectival name by company, firm or individual, as a trade mark or trade name.

$Held$ (4-7-31): -Following Cocks v. Chandler, L. R. 11 Equity, p. 446, that the use of the words "Tumbako Asli" by the respondents does not in any way infringe the rights of the appellants, and, by implication, that the use name or descriptive term.

Atkinson for Appellants.

Master for Respondents.

The appellants filed a plaint on 17th December, 1930, inthe High Court of Tanganyika at Dar es Salaam seeking an injunction against respondents restraining them and their agents. from selling or offering for sale as Tumbako Asli tobacco not imported by the plaintiffs, and as Kali Sana tobacco not imported by the plaintiffs, without clearly and sufficiently distinguishing the same from the tobacco imported by the plaintiffs, and claiming damages Sh. 2,000, or alternatively an account. of profits and payment of the amount due to the plaintiffs on taking an account, costs and such further relief as the nature of the case might require.

In the plaint it was alleged on behalf of the plaintiffs. (the present appellants) that they had for more than forty years. been the manufacturers and the sole importers into Tanganyika Territory and elsewhere in East Africa, for sale chiefly to natives, of a strong shag tobacco known as Rising Hope tobacco, that they were the original importers of this type of tobaccoand which tobacco as manufactured and sold by them was the true and only original strong shag tobacco in the East African The plaintiffs further alleged that their first quality $\mathbf{market.}$ shag had acquired among native consumers and Indian traders the name "Tumbako Asli" which expression they alleged to mean the original tobacco, and that that name was used in contradistinction to "Tumbako Nukli," which expression is applied by native consumers and Indian traders to imitations or substitutes for the plaintiffs' tobacco, and also to an inferior

grade manufactured by the plaintiffs themselves. The plaintiffs further alleged that their first quality shag had been extensively advertised and is generally described as "Tumbako Asli" and " Kali Sana."

In their defence the defendants (the present respondents) denied selling or passing off any tobacco to the public with the intention to mislead, and stated that the words "Tumbako Asli " and " Kali Sana " printed on their labels were merely used for the purpose of designating the quality thereof.

The trial Judge held that the case of Cocks v. Chandler, L. R. XI. Equity 446, cited by counsel for the plaintiffs in the lower Court, did not support any argument in favour of the plaintiffs' (appellants') case. The principle laid down was that the original inventor of a new manufacture and his successors were alone entitled to designate such manufacture as "the original," and on the grounds stated more fully in his judgment he dismissed the plaintiff's case with costs.

Atkinson submitted that an appeal to the eye was not important, that in this case the question was one of verbal appeal to the mind of the ordinary purchasers of Tumbako Asli. The meaning of these words is not all-important. The words are identified in the minds of the purchasers with the appellants' Rising Hope tobacco, these words having been used by the appellants since they first imported this particular type of tobacco for native use. By virtue of long usage and close<br>association of the phrases "Rising Hope" and "Tumbako Asli " the use by the respondents of the latter phrase indicated an intention to deceive. "Asli," he contended, which means " original" or " genuine", connotates the tobacco of the appellants' company. There was clear identification in the minds of buyers with Rising Hope. Quoted authorities as follows:--

> 47 T. L. R. 226—F. Reddaway & Co., Ltd., v. Hartley. 28 Pat. Cases 603-Ash v. Inveta Manufacturing Co. 1896 A. C. 199-Reddaway v. Banham. 65 L. J. KB.381-Reddaway v. Banham.

Master for Respondents.—There is no evidence that any one has been deceived. Tumbako Asli is not registered as a trade name in terms of the Tanganyika Laws, nor was there any deception. The secondary meaning of Tumbako Asli was not proved, nor can it be acquired as a distinctive trade name descriptive of appellants' goods. It is a phrase which describes any genuine tobacco no matter whosoever may be the manufacturer, grower or seller. Quoted:-

28 Patent Cases 597.

II Tanganyika Laws at 879, s.45.

35 Ch. D. 8—Goodfellow v. Prince at p. 19.

s. 77 Trade Marks Act, 1883.

Kerly on Trade Marks, p. 606.

16 Patent Cases 3—Lever Bros., Ltd., v. Bedingfield.

- 36 Patent Cases 296—Fichatts' Ltd. v. Loubet and Co., Ltd. and In the matter of Registered Trade Marks Nos. 251, 767, and 254, 897. - Ch. D. 395—Singer Manufacturing Co. v. Loog, $^{18}$ $p. 412.$ - 26 Patent Cases 693 at 701 and 704, Burberrys v. J. C. Cording & Co., Ltd. - 1898 A. C. 239—Parsons and Others v. Gillespie and Others. - 1881 A. C.7 at 219—R. Johnstone and Co. v. A. O. Ewing and Co.

Atkinson in reply.—The appellants must only satisfy the Court that there is a probability of deception. Quoted: —

> Kerly 707, s. 45 and relied on Reddaway v. Banham (ibid).

SIR J. W. BARTH, C. J.—This is an appeal from a judgment of the High Court of Tanganyika in an action by the appellants against the respondents for $(1)$ " an injunction restraining the defendants from selling or offering for sale as "Tumbako Asli" tobacco not imported by the plaintiffs, without clearly and sufficiently distinguishing the same from tobacco imported by the plaintiffs", and (2) "Sh. 2,000 damages, or in the alternative an account of profits and payments of the amount due to the plaintiffs on taking such account."

The facts are that the appellants had for many years imported into East Africa a dark shag tobacco packed in packets and labelled " ' The Rising Hope', Rotterdam," with a facsimile signature of the firm's name underneath.

The packing consists of very dark blue paper, so dark as to merit it being called black, with a lighter blue label. Nowhere on the label appear the words "Tumbako Asli". There is also printed in red or black, depending on the quality of the tobacco, a device with the name of the tobacco in Dutch.

The respondents manufacture in Tanganyïka a dark shag tobacco which is packed in light blue packets to each of which is attached a packet of cigarette papers. On this is printed "The largest cigarette and Tobacco Factory, Tanganyika Tumbako Asli. This delightful shag has a flavour and charm which is all its own, manufactured by Macedonia Tobacco Co., Dar es Salaam."

On one end of the packet is printed "Tumbako Asli" and on the other "Kali-Sana."

The appellants do not complain of the get up of the packet. which is in no sense an imitation of their packets. The foundation of their case is that their tobacco has, it is alleged for many years, been known as "Tumbako Asli" by the natives of East Africa, and that they have a right against the rest of the world to those words as descriptive of their goods. In support of their case various advertisements were put in wherein "Rising Hope" is described as "Tumbako Asli." But Mr. Atkinson does not rely mainly on the use of the words "Tumbako Asli" in such advertisements in support of his claim. They are words which. cannot be read by the majority of the purchasers of "Rising" Hope."

There was some evidence as to what asli meant. Mr. Johnson, a Swahili expert, said that the nearest English equivalent. to "Tumbako Asli" is "the original tobacco" or "the first tobacco." Later on in his evidence he said that asli as an. adjective means true, unadulterated, original, genuine, first, and that the phrase "Tanganyika Tumbako Asli" would be taken by him to mean having its origin in Tanganyika, but he did not appear to think that it would be a usual phrase.

Mr. Hutchieson, a representative of the British American-Tobacco Company, called by the appellants, gave evidence thatthe appellants' goods were asked for by up-country natives as tobacco asli, but he also said that his firm's "Honeydew." cigarettes were referred to by natives as tembo asli. It is notvery clear what the evidence relating to these tembo cigarettes means, but apparently the "Honeydew" cigarettes were theoriginal "Elephant" brand.

There is evidence that the appellants' tobacco is also known as "Tumbako Asli" and "Chapa Neusi" or "Rising Hope-Chapa Neusi," the last two words referring to the nearly black. packing of the tobacco.

$Mr.$ Winkelman for the appellants in his evidence suggests: that asli or asili are words exclusively applied to "Rising Hope," and that that all other similar tobaccos are called nakli, whichmeans, I believe, a copy. This witness also objected to the words kali sana being used on the respondents' packets. These words mean "very strong" and it has not been argued that the appellants have any proprietary right in such a description of tobacco.

In my opinion asli is an adjective used in the sense that the substance to which it refers is genuine or real, and I cannot think that the use of the word by the respondents can be construed as a representation that his goods are the goods of theappellants.

The learned trial Judge has in my view correctly applied to the facts of the case the principles laid down by James L. J. in the Singer Manufacturing Co. v. Loog, 18 Ch. D. 412, and cited with approval by Lord Macnaughten in Reddaway v. Banham $(1896)$ A. C. 199.

There is no evidence that the use of the word asli by the respondents did in fact deceive and on the evidence I am of opinion that it is not calculated to deceive. The respondents' packets are entirely different in get-up from the appellants', and in made-up cigarettes the price is the determining factor, those made from the appellants' tobacco being twice as dear as those made from the respondents' tobacco.

In my judgment the appeal should be dismissed with costs.

PICKERING, C. J.—The appellants are the proprietors of a brand of tobacco sold under the name of "Rising Hope" and for some forty years as the proprietors of this brand of cigarette and pipe imported tobacco they have virtually enjoyed a monopoly in Eastern Africa. The local natives buy it for the most part made up into cigarettes by the local shop-keepers who buy the tobacco in the well-known dark paper packets which are generally known as chappa neusi. The natives have been aware that these packets are imported, but are certainly ignorant as to the name or place of business of the manufacturers. The tobacco is obviously superior to the mild locally-grown tobaccos and soon after its introduction was popularly known as tumbako alsi. It has been suggested that asli so used means "locally grown" but in my opinion it is manifest that the word could not have originally been applied to the appellants' tobacco in that sense, because the tobacco was known to be imported and was called *asli* to distinguish it from the locally grown leaf. Although the original meaning of asli is "radix" or "root" the word has acquired the secondary meaning of "genuine," "true to type" and "pure". The appellants' tobacco was hailed by the native cigarette smoker as real tobacco, " the real stuff," and it became recognized that you got a cigarette made of the real stuff if you bought a cigarette made of tobacco which had come out of a chappa neusi.

For upwards of thirty years the phrase tumbako asli was used by the natives to describe the type of tobacco which the appellants alone supplied. A few years ago the appellants recognized that the phrase was commendatory and added it to other lettering upon their advertisements. It has not been adopted by them in any other way as a trade description.

The respondents are now selling in Tanganvika a locallygrown tobacco comparable to "Rising Hope", and they have put upon the packets in which their tobacco is made up for sale the words tumbako asli. The respondents' packet could not be

mistaken for a packet of "Rising Hope," tobacco, but the appellants complain that by putting the words "Tumbako Asli" on the packet the respondents are inviting the small shop-keeper to represent to cigarette buyers that the cigarettes are made of tumbako asli and that the purchasers will believe themselves to be buying "Rising Hope" tobacco. Now in my opinion the words tumbako asli were used by the natives to describe tobacco of a certain quality and type, and naturally so long as the appellants alone supplied tobacco of that quality and type the words were used only to describe the appellants' tobacco. Other imported tobaccos the natives dubbed nakli or "copies" because they did not recognize the tobacco as being as desirable as "Rising Hope." The position is similar to that which was disclosed in the case of the Cellular Clothing Company v. Maxton and Murray (1889), A. C. 326, where it was held that although the word "Cellular" had for some time been applied only to goods manufactured by the appellants, the term had not been proved to have acquired a secondary or special meaning so as to denote only the appellants' goods. After a consideration of the evidence in this case I find myself in agreement with the conclusion reached by the learned trial Judge. I am satisfied that if a petty shop-keeper rolls and displays cigarettes for sale and describes them as asli to a customer, the customer would understand him to be asserting that the tobacco was of the same quality and type as "Rising Hope" tobacco; and not that the customer would believe the eigarettes to be made of "Rising Hope" tobacco and that they were therefore of the quality and type known as asli. For this reason I am of opinion that this appeal fails and should be dismissed with costs.

THOMAS, J.—The appellants were the plaintiffs in an action tried before Mr. Justice Muir McKenzie, in which it was held that they were not entitled to relief as against the defendants (the present respondents) in respect of the user of the word asli in connexion with tobacco.

At the trial it was sought to give some meaning to the word asli such as "original" or "local." At the hearing of the appeal, counsel for the appellants urged that it was a matter of indifference as to what meaning were given to the word and that the word itself, as four letter conjoined, had come to denote the appellants' goods in such a way that the Court should give protection against the user of the word by any other tobacco If the meaning alone were to be relied upon it is dealers. clear that the appellants' goods are not locally grown and therefore the meaning of " local" would not be true; if the meaning be "original" then it is equally clear that the appellants' goods are not original tobacco; and without some further limitation such as "original Tanganyika tobacco," the expression would be too wide to entitle them to a monopoly of the word.

The word asli is not a fabricated word but a word of the Swahili language, and whatever its meaning may be is applied to goods by the natives themselves as indicating an article which complies with their requirements.

The user of the word did not originate with the appellants but with the natives themselves, and it was from such user by the natives that the appellants placed the word on their advertisements but not on their packets of tobacco.

The respondents have used the word on their packets of tobacco and in one place the word appears in inverted commas. There is no attempt by the respondents to imitate the appellants labels or the get-up of their packets.

It has been contended that the user by the respondents comes within the decision of Reddaway v. Banham, 1896 Appeal Cases. In that case the fraudulent intention was obvious even apart from the fraud actually expressed in a letter. Belting made from a hair the origin of which was not fully appreciated had been sold for many years by a variety of firms under the designation of various animals some of which obviously had no hair at all. Reddaway had adopted the word "Camel" and sold his belting as camel-hair belting. It was only years later that it was discovered by chance that the hair employed was actually that of the camel. The words camel-hair were thus not originally used to describe the material of which the belting was made but as a name distinguishing it from other makes of belting.

It was clear that the defendant was more anxious to obtain a portion of the plaintiff's business than to make known that his goods were also made of camel-hair. The Court held that the defendant was not justified but did not altogether refuse to allow the words camel-hair to be used as showing that belting was actually made of camel-hair; they did, however, require that it should be made perfectly clear that such belting was not the product of the Reddaway firm.

Now the word asli would seem to be only a word of commendation. It is not a description of the make of the tobacco and it is not the name given by the appellants to their tobacco. The name is "Rising Hope." The word would seem to mean something in the nature of perfection.

Now that very word was discussed in Crosfield and Sons, Ltd.'s application, 1910, 1. Chancery 118, a trade mark case. In the course of his judgment the Master of the Rolls said: " But an ordinary laudatory epithet ought to be open to all the world and is not, in my opinion, capable of being registered. It may be that within a particular area the applicant might succeed in a passing-off action against a trader who used the epithet without sufficiently distinguishing his goods from the goods of the applicant." With that statement I am in entireagreement. There is no question of registration in this case. The tobacco supplied by the respondents is very similar to that supplied by the appellants, but the packets in which it is supplied in no wise could be mistaken for those of the appellants. Under such circumstances I see no objection to the respondents. using the word of commendation.

The appeal is dismissed with costs.