Daimler Motor Company (1904) Ld. v. London Daimler Company Ld. as both companies are motor companies the presence of that word is of no importance. I arrive at this conclusion from a mere comparison of the names; but if evidence on this point is proper to be received there is ample evidence, and I may say almost uncontradicted evidence, that confusion and deception 5 will result. It is not necessary for the purpose of this appeal to say that the name was chosen for the purpose of reaping the benefit of the Plaintiffs' reputation, though Mr. Edge's evidence certainly lends some colour to that suggestion. I cannot avoid for myself expressing regret that this simple case has been 10 overlaid with a vast amount of evidence which, if not irrelevant, was at least unnecessary. The attention of the learned Judge was, as it seems to me, diverted from the direct road into narrow and difficult by-paths from which it was not easy to escape. With the utmost respect for the learned Judge, and agreeing as I do with a great part of his judgment, I think he was wrong 15 in dismissing the action with costs. I think that the Plaintiffs are entitled to an injunction to restrain the Defendants from carrying on business as makers or sellers of motors under the name, style, or title of the London Daimler Company Ld., or under any other style or name in which the word "Daimler" is used, in such a manner as to 20 be calculated to induce the belief that the business carried on by the Defendants is the same as the business carried on by the Plaintiffs. Beyond this I am not prepared to go. I do not assent to the claim put forward by the Plaintiffs that they have a monopoly in the use of the word "Daimler." I am by no means prepared to say that the Defendants, if they properly change their name, may 25 not apply the word "Daimler" to motors manufactured by them, care being taken to use it with such prefix or suffix or in such a combination as to adequately distinguish their goods from the goods of the Plaintiffs; but it is premature to consider this question. 66 66 66 That being so, it only remains to deal with the question of costs. I am aware 30 that Mr. Astbury says that in the present case they have not much hope of getting. costs from the Defendant Company, but I think it is right that we should indicate what in our view is the proper order as to costs. Of course the costs which the Plaintiffs have been ordered to pay, if they have been paid, must be refunded. I think that the Plaintiffs are entitled to the general costs of the action 35 and to the costs of the appeal, but I think they are not entitled to all the costs of the evidence in the Court below. I feel bound to refer to two passages in the proceedings before the learned Judge. One is where Mr. Justice Buckley said with perfect truth :-"The real question in this case is whether by using the name London Daimler Company they will be deceiving the public and stealing 40 your trade. Mr. Buckmaster.-No doubt that is the real question. Mr. Justice Buckley.-The evidence that I have been listening to here for two and a half "days does not go anywhere near it"; and, when the learned Judge was threatened with fourteen more witnesses, he almost begged Counsel to curtail them, and to some extent the number was reduced. Having regard to the way in 45 which this case was overlaid with evidence, which as I have said before was found irrelevant and unnecessary, and having regard to the fact that the Plaintiffs in this action obviously claimed far more than, in the judgment of this Court, they are entitled to, I think all we can possibly give them will be one half the costs of the evidence in the Court below. I have not forgotten 50 what Mr. Astbury said about the letters and the writ, but the plain meaning of the writ is this :-"We contend that you are not entitled to have the word "Daimler' in any part of your name, and you are not entitled to use the "word Daimler' on any of your goods." In my view both these contentions are wrong, and the utmost we can give the Plaintiffs is the relief that I have 55 indicated. · Daimler Motor Company (1904) Ld. v. London Daimler Company Ld. The PRESIDENT OF THE PROBATE &c. DIVISION.-I agree with the judgment that has been pronounced by the Master of the Rolls, and, if this Court were not interfering with the judgment of the learned Judge in the Court below, I might simply express myself by saying that I agree in the judgment of the 5 Master of the Rolls; but, as we are differing from the learned Judge, I desire to state very shortly why I have also come to the conclusion that the Plaintiffs are entitled to the relief that has been indicated by the Master of the Rolls. The question we have to determine in this case appears to me to be a very clear one. It is substantially the same kind of question as that which arose in the North 10 Cheshire and Manchester Brewery Company Ld. v. Manchester Brewery Company Ld. (L.R. (1899) A.C. 83), and the question in that case is thus stated by Lord Halsbury. He said :-" But the truth is, that when one comes to see what the "real question is, it is in a single sentence. Is this name so nearly resembling "the name of another firm as to be likely to deceive?" And Lord Shand stated 15 (which is really the same question in another form) the matter in this way: "Was the taking of the name of the Manchester Brewery Company Ld.' "calculated to induce the belief amongst the public or the trade that the business "which was carried on by the respondents is now the business carried on by "the new firm"? That is the statement in that case of the question which had 20 to be considered there, and it is a very similar question it appears to me which has to be considered in this case. The Master of the Rolls has stated the position occupied by the Plaintiffs and the position occupied by the Defendants. They are more elaborately and fully set forth in the judgment of Mr. Justice Buckley, now Lord Justice Buckley. 25 The facts are reasonably clear with regard to the relative position of the Plaintiffs and of the Defendants. There was in 1901 a case, which has been referred to in the course of this appeal, heard by Mr. Justice Buckley, as he then was, in which the facts at that time were very different from the facts which appear at the present date,* and one is not surprised, when one knows— 30 it is a matter of notoriety, and it is a matter also which is demonstrated by the evidence in this case-that there have been enormous strides and enormous changes in the modern business of the motor car manufacturer, to find that facts which existed in the year 1900 or 1901 have been changed by time to a state of facts, which does not in the least, at the present day, resemble what 35 occurred at that time. Between that time and the time when this writ was issued the Plaintiffs, who have succeeded, as I believe I am correct in stating, to the plaintiffs in the action of 1901, have undoubtedly acquired a very high reputation for the manufacture of motor cars, and the evidence which has been given on their behalf is very strong in connection with the point which has 40 been so fully presented in this case. I take one passage from the evidence given by Mr. William Worby Beaumont as illustrating the class of evidence which has been relied upon by the Plaintiffs. This question was put to him, perhaps in rather a leading form, but still apparently without any objection. "(Q.) Whether the book is right or 45 "wrong, never mind the particular expressions in it, at the present day, in this "country, amongst people who are talking about cars, have you any doubt at "all what Daimler' means--when you are talking of modern motor cars?— "(A.) Absolutely none. During the last three years, since the Daimler "Company has grown from a very small business, through changes of design 50" that they have made, and by changes in the mode of construction, they have "made cars which have been extremely successful. There is no other Company "and no other maker in this country making anything which has the name "Daimler' attached to it. Their name, or the name of the Company, is * Daimler Motor Car Company L. v. British Motor Traction Company Ld. (18 R.P.C. 465), Daimler Motor Company (1904) Ld. v. London Daimler Company Ld. "Daimler,' and anyone here speaking of a car, intending to purchase it, or of "the car having made a certain performance, saying it was a 'Daimler' car, means a car made by the Daimler Company of Coventry." There is a considerable body of evidence saying substantially the same thing but in a different form of expression no doubt, according as the witness stated the 5 matter; and it does not seem to me on a careful examination of the evidence given by the Defendants that they were substantially able to dispute that position. I will take two or three passages only to illustrate this point. Mr. S. F. Edge, answering a question put by Mr. Astbury, gave the answer which will appear if I read the question and answer. "(Q.) I suppose neither you 10 "nor anybody else, who knows anything about these shows and reads newspapers and so on, would dream of denying for a moment that our cars are "commonly spoken of as 'Daimlers ?-(A.) Certainly that is a common term." The following questions were also put, which I think certainly show that position, to the same witness :-"(Q.) Is it your suggestion that if the Defen- 15 "dant Company start making cars and call them 'London Daimlers,' they will "be 'Daimlers'?-(A.) If they have the right from the Company who owns "the rights in this country, they certainly will be 'London Daimlers.' (Q.) "Although the Plaintiffs' cars are known as 'Daimlers'?-(A.) Certainly; "they must call them Coventry' or any other prefix they like to identify 20 "them. (Q.) Your view is the Plaintiffs, who have built up this large trade, "must now change their name to suit this new Company, who are going to "call their cars Daimlers'?-(A.) Certainly. (Q.) That is your sugges• "tion ?—(A.) Most decidedly." Of course the object of this action is to restrain the Defendants from using a name by which that object can be 25 carried out. Another witness, Mr. Stocks, said this:-' "(Q.) Then am I right “in saying that, except as applied to a 'bus, there is no car over here that "is sold or dealt in under the name of 'Daimler' except the car made by the "Plaintiff Company?-(A.) Not the word Daimler only. (Q.) And that "word Daimler' associated with a pleasure car over here would lead 30 "everybody to think that it was made by the Plaintiff Company?-(A.) It all depends in what connection it is used. (Q.) I said in connection with a "pleasure car?-(A.) Yes, I should say so as a rule." Another witness, Mr. Hart, said this :-" (Q.) And in England, you do not dispute, do you, that the phrase 'Daimler Car,' without any qualification, one way or the other, would 35 "mean a car made by the Plaintiff Company?-(A.) No, but you frequently see them called 'Coventry Daimlers.' So that it is fairly obvious from the evidence given by the Defendants, that the body of evidence given by the Plaintiffs was not really capable of serious contradiction. Then the position taken up by the two parties is indicated by the letters of the 9th of May and 40 the 10th of May. The letter of the 9th of May is as follows:-" We are "instructed by the Daimler Motor Company (1904) Ld. to apply to the High "Court for an injunction restraining your Company from using the name the "London Daimler Company Ld. or any other name so nearly resembling it as "to be calculated to induce the belief that the business to be carried on by it is 45 "the same or is in any way connected with our clients. Be so good as to let us have the name of the solicitor who will accept service on behalf of your "Company." To that there is a reply of the 10th of May, acknowledging the "letter, and saying this :-" We are taking over the Motor Traction Company "and their license, which was issued in the same way and from the same people 50 as your clients' license, entitling them to use the name 'Daimler.' (2) The "Motor Traction Company paid 50,000l. in cash for this license and right. (3) In case there should be any confusion between your Company and ours we have prefixed the word 'London' and our cars will be known as the "London Daimlers' whereas yours are of Coventry." After that there is 55 some further correspondence, and the writ was issued. 66 66 66 Daimler Motor Company (1904) Ld. v. London Daimler Company Ld. In the course of the trial Mr. Terrell stated that the Defendants were ready to give an undertaking not to call any cars they might make "London Daimlers." He said :-"We have no intention of doing this. We may call them 'Eureka "Daimlers.' Counsel for the Plaintiffs were not satisfied with that. They 5 preferred to take the evidence as it stood. In consequence the case proceeded, and the injunction now sought was continued to be asked for. That leaves us to settle the question which I stated at the commencement, and it is a material element, I think. in considering that question, that it is of importance to the Plaintiffs, if their position is right that they have in fact built up the business 10 in the way they contend they have. When one deals with these two names as a mere matter of comparison, as was done in the case of the Manchester Brewery Company, and with regard to the facts which have been pointed out by the Master of the Rolls, that the Plaintiffs, although they have their works at Coventry, have a large show room in London, and I think 15 I am correct in saying, according to the evidence, 35 per cent. or 37 per cent. of their sales are effected in London, and when knows this, that nearly everybody-certainly a large number of people-who wish to have a car, and are probably in London from time to time, or near it, will undoubtedly see, or have opportunities of seeing show rooms such as that, and may very likely 20 regard a Company, although its works are at Coventry, as having one of its principal places of business in London, and when one approaches the case from that point of view and from the point of view of a trade which is of a large character, one asks oneself the simple question-Is the fact of another Company starting in London with the name London Daimler Company Ld. likely to 25 deceive? It seems to me that question can only have one answer. I should have thought it was a reasonably obvious answer to give at once: that confusion must undoubtedly arise, or may, because it is not necessary to go so far as must, and if that required any real fortification I think those answers which I have read from Mr. Edge's evidence, where he deals with the suggestion that, if 30 there is to be any confusion, the Plaintiffs had better change their name and call themselves Coventry Daimler Company, make it reasonably plain. That being so, I agree with the Master of the Rolls in saying that it is not necessary to go into the question of inner motives. When the persons who are responsible for founding the Company of the Defendants with this name, are not called, 35 and when evidence is given, such as is given by Mr. Edge, there is a possibility of drawing an adverse inference; but as it is only necessary to find as I have done on the first point, I do not desire to go into that, or to express any opinion about it. I do not wish to pass from the case without noticing that there is evidence from which it might be possible to draw an inference such as is 40 suggested by the Plaintiffs ought to be drawn. 45 Broadly speaking, I agree with the judgment which has been pronounced by the Master of the Rolls, and think that the name of the Defendants is one that is likely, and not only likely, but very likely, to mislead, having regard to the circumstances of this case. KENNEDY L.J.-I am of the same opinion, and I should certainly, after the two judgments that have been pronounced, say little or nothing but that we are differing from the judgment given after a long trial by my brother Buckley, and I may add by a Judge who, as we know, has had a very special acquaintance with the law relating to Companies. In the few words which I wish to say I put 50 my grounds, as far as I can, upon principle. I think it is clear that, without pretending to give an exhaustive statement of the various points of law that have been decided upon particular circumstances in a very large number of cases of this class, three things do seem to emerge as recognised by the Courts; first, that where, as here, complaint is made by one trader of another trader trading under 55 a name which is so near to his as may not unreasonably cause injury to the complainant's business, if the name of the trader complained of is his own Daimler Motor Company (1904) Ld. v. London Daimler Company Ld. name, there is prima facie no ground of complaint which could be maintained in law-if it is his own name, either in the case of an individual or in the case of an association of persons, whether a partnership or a company. The case of Turton v. Turton* was a case of persons trading in their own names; and there, in judgments which have been in some portion referred to, as they formed 5 part of the judgment of Mr. Justice Stirling in the case to which Mr. Buckmaster so lucidly and so usefully referred-in the judgments particularly of Lord Justice Cotton and Lord Justice Fry-the grounds of that principle are clearly stated. And so in the case of the name, if it can be called its own name, of a company. That is the case to which Mr. Buckmaster referred us and dealt 10 with-Saunders v. Sun Life Assurance Company of Canada. It is upon that ground that, as Mr. Justice Stirling points out, the decision proceeds. There was a company which was objected to on account of its likeness to an earlier existing British Company, the only difference practically being the addition of the words "of Canada" to the name of the Company that was objected to; but 15 that Company was carrying on business, or began to seek to carry on business, not as a new firm in a fancy name, but in the name which it had acquired at its birth by the very law which incorporated it. And so upon the same principle which was applied to the individual in Turton v. Turton, it was held not sufficient in itself to show that there might be, and probably would 20 be, a confusion between the two, which might operate to the detriment of the complaining person. But on the other hand, even where the name may be an own name or a name of that class, there may be circumstances in which it is clear that that which the law will not allow is being done by the parties complained of, that they are dishonestly seeking by reason of their similarity 25 of name to obtain the trade of another or to pass off the products of their manufactory as the products of the other manufactory, whose business they are impairing. Such a case is the Day and Martin case.† There you had names, which were the very names of the persons setting up the business, but under such circumstances and with such surroundings as made it plain 30 that that was going to be done which neither law nor morality could sanction, namely, a trick by the use of the name to obtain advantages from another by passing off their goods and their business as if it were the business and the goods of another trader already existing. Then you come to the case in which the name cannot be said, whether of the company or the individual, 35 to be the true name-the case which is that of what one may call a fancy name. Such was the case, as I understand it, of Hendriks v. Montagu (L.R. 17 C.D. 638), and such one may say was the case in the North Cheshire and Manchester Brewery Company's case, where there were already existing Companies with certain titles, themselves fancy in their origin, not representing anything that 40 could be called names or representing a title which had existed; from the first there had been trade carried on under the names; and then a Company comes and takes practically the same fancy name and seeks to do business. In that class of case the question of fact arises-Is the similarity such that there is good ground of complaint? Because there will be, either in relation to the business 45 a possible taking away of business from the first Company through a mistake, or a passing off of products as the products of the one Company when they are really the products of the other. In that kind of case the Court has to draw an inference from the facts, and it may be that there is a difficulty sometimes in saying exactly what evidence is relevant or what evidence is admissible to prove 50 that that which is quite sufficient to give a good cause of action in such a case has in fact taken place. There is one other principle which seemed at one time to have been invoked by the Defendants in this case, and that is the principle |