Bermuda trademark litigation in 1969: Imperial Leather, blind smell-tests, and confused morons?

I have recently been reading the judgment of Mr. Justice Sedgwick of the Supreme Court of Bermuda in the case of MEM Company Incorporated v Cussons (International) Limited [1974] RPC 7.

The case is particularly noteworthy for the fact that, despite being a judgment of the Bermuda Court, it was reported in the specialist English law report series, being the Reports of Patent, Design, and Trademark cases.

The case involved a trademark and passing-off dispute, relating to the marketing and sale in Bermuda of an American brand known as “English Leather“, and a British brand known as “Imperial Leather“.

The case was argued at a trial that took place between June and August 1969 by Donald Smith and Anthony Palmer (for English Leather), and by Anthony Walton and Richard Pearman (for Imperial Leather).

For those readers who can’t bear the thought of reading 28 pages of judicial prose before finding out the result, Mr. Justice Sedgwick ultimately found in favour of Imperial Leather (within the confines of the Bermuda action), concluding that, in Bermuda at least, the ‘English Leather’ brand infringed the ‘Imperial Leather’ brand.

To some extent the case was a mixed result for the parties, since Imperial Leather’s own trademark registration had suffered from some technical errors (which the Judge described as ‘irrelevant’ to the outcome), and while English Leather was restrained from any further trade mark infringement and passing off in Bermuda, Imperial Leather abandoned its claim for damages and an account of profits, and the Judge also accepted that English Leather’s owner had done “nothing dishonourable” in choosing its brand name and choosing to market the product in Bermuda.

The case is worth a read not only for the legal analysis, but also for its description of some of the evidence adduced by the parties at trial.

The expert witnesses, for example, appear to have devoted an enormous amount of energy to a discussion of the historical use and meaning of the word “Leather” in the cosmetics industry. Their evidence was tested in cross-examination by Anthony Walton (later Anthony Walton QC of 8 New Square), by asking the experts to do some blind smell-tests of different bars of soap, while in the witness box. In assessing their evidence, the Judge noted that “both gentlemen protested that conditions were unsatisfactory for determining if the blocks smelt of “leather” or not, but I myself thought they emerged with credit“.

One of the lay witnesses in the case was a “Northern Irishman with experience in the police forces of Northern Ireland and England, who came to Bermuda eight years ago“. He was the only witness in the case who claimed that the words ‘English Leather’ conjured up a confusing association with the ‘Imperial Leather’ brand, and while the Judge accepted his evidence as far as it went, he noted that he “would have been more happy if his evidence on this matter had been corroborated by a native born Bermudian“, rather than an “expatriate“.

The Judge’s own instincts appear to have been that “even a confused moron” would not have been confused by the two brands, given their differences: but given the direct evidence of a Northern Irish policeman’s actual confusion, he felt obliged to give weight to that evidence “in preference to my own speculations as to whether I would be confused or not“.

By strange coincidence of timing, Mr. Justice Sedgwick’s judgment was published in the 1974 volume of the law reports. This was only a year after Sir Edwin (Ted) Leather had been appointed as the Governor of Bermuda, in 1973, after the assassination of Governor Sir Richard Sharples and his aide-de-camp.

As Governor of Bermuda, Sir Ted Leather’s nickname was “Imperial Leather“, an obvious pun on his surname, position and the famous brand of soap.

I can’t help thinking that the only reason that Mr. Justice Sedgwick’s judgment found its way into the RPC law reports was as part of some elaborate joke instigated by, or at the expense of, Sir Ted, the newly appointed Governor.

Sir Edwin Leather’s tenure as Governor of Bermuda may be worth a blogpost in its own right, but for present purposes, the following extract from his obituary in the Daily Telegraph is worth repeating:

Leather’s extrovert ways ruffled feathers the moment he arrived in Bermuda as Governor in 1973. The chief of police asked him not to ride a biycle, so he had to be driven around in a limousine. But he thought nothing of pulling a rickshaw through the streets of the capital, Hamilton, for a charity-raising fund, or taking over from the orchestra’s drummer at official parties. Local society was not always impressed, calling him “Hell for Leather” or “Imperial Leather”, and his wife Sheila “Lady Vinyl”.”








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