Turner's Motor Manufacturing Company Ld. v. Miesse Petrol Car
Syndicate Ld.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

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Before MR. JUSTICE WARRINGTON.

May 10th, 1907.

TURNER'S MOTOR MANUFACTURING COMPANY LD. v. MIESSE PETROL CAR SYNDICATE LD.

Passing-off-Motion for interlocutory injunction.-Difference in the nature of the goods.-Injunction refused.

The Plaintiffs, who were manufacturers of steam motor cars, and who alleged that their cars had become known as "Miesse Cars," brought an action 10 against the Miesse Petrol Car Syndicate Ld. to restrain them from using the name "Miesse" in connection with cars sold by them. The Defendants were the agents in this country of a Mr. Miesse, and were selling motor cars as "Miesse Petrol Cars." The Plaintiffs moved for an interlocutory injunction. Held, that having regard to the difference in the goods, no passing-off had 15 been established, and the Motion was refused with costs.

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The Turner Motor Manufacturing Company Ld. commenced an action against the Miesse Petrol Car Syndicate Ld. claiming an injunction to restrain the Defendants, their servants and agents, from passing off motor cars, which were not of the Plaintiffs' manufacture, as and for motor cars of the Plaintiffs' 20 manufacture, and to restrain the Defendants, their servants and agents, from using in connection with motor cars sold or offered for sale by them the word "Miesse." The Plaintiffs gave notice of motion for an interlocutory injunction. The facts were shortly stated by WARRINGTON J. in his judgment as follows:"The Plaintiffs, under arrangement with a Belgian gentleman named Miesse, 25 are, and have for some time been, manufacturers and vendors of steam cars "which are called either' Miesse Steam Cars,' or 'Turner-Miesse Steam Cars.' They have been largely advertised under the name of Turner-Miesse' or "Miesse Steam Cars.' The Plaintiffs sell nothing but steam cars; that is to say they sell no petrol cars. It is said that these cars have become known as "Miesse Cars.' At the trial that may or may not be proved; I will assume "for the moment that the Plaintiffs may be able to establish that case. "Defendants are the agents in this country of Mr. Miesse, the Belgian manu"facturer. Mr. Miesse, besides having patented certain portions of mechanism The Defendants "connected with steam cars, is a manufacturer of petrol cars. 35" are selling as his agents in London, under agreement with him, Miesse Petrol "Cars,' and advertising them as 'Miesse Petrol Cars.'"

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The

Turner's Motor Manufacturing Company Ld. v. Miesse Petrol Car

Syndicate Ld.

Affidavits in support of the Motion were made by James Burns Dumbell, the managing director of the Plaintiff Company, and by certain persons acquainted with the trade, who stated that they had always associated the name "Miesse with the Plaintiff Company, and by Albert Watson. An affidavit in opposition to the Motion was made by Samuel Richard Bailey, the managing director of 5 the Defendant Company, and an affidavit in reply was made by J. B. Dumbell. The Motion came on for hearing before Mr. Justice WARRINGTON on the 10th of May 1907.

Disturnal (instructed by Sharpe, Parker, Pritchards, Barham, and Lawford, agents for Hunt and Skidmore, of Wolverhampton) appeared for the Plaintiffs; 10 Le Riche (instructed by Sims and Syms) appeared for the Defendants.

WARRINGTON J.-This is an interlocutory application for an injunction restraining the Defendants until trial or further Order from passing off motor cars which are not of the Plaintiffs' manufacture, as and for motor cars of the Plaintiffs' manufacture, and from using in connection with motor cars sold, or 15 offered for sale, by them the word "Miesse." [After stating the facts as above the learned Judge continued.]-Bearing in mind that the Plaintiffs are manufacturers of steam cars only, how can it be said that a man who is selling a petrol car under the name of "Miesse" is passing that petrol car off as a car made by the Plaintiffs who make only steam cars; and how can I possibly 20 prevent the agents of Mr. Miesse of Belgium from using the word "Miesse,' which is a proper description of the cars which he manufactures, and which the agents sell here in London ? It seems to me that the Motion fails and I must refuse it; the costs to be the Defendants in any event.

Fine Cotton Spinners and Doublers' Association Ld. and John Cash & Sons Ld. v. Harwood Cash & Co. Ld.

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IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE JOYCE.

August 3rd, 1906, and May 10th, 11th, and 13th, 1907.

FINE COTTON SPINNERS AND DOUBLERS' ASSOCIATION LD. AND JOHN CASH & SONS LD. v. HARWOOD CASH & Co. LD.

Trade name.-Company-Similarity of names.-Right of individual to use own name.-Transfer of name by individual to Company.-No antecedent business transferred.—No goodwill transferred.-Possibility of confusion.-No fraud.-Injunction.

A business of John Cash & Sons was in 1898 sold to a Limited Company, and thenceforth carried on under the style of John Cash & Sons Ld. John Harwood Cash, the manager of the business before 1898, remained manager of John Cash & Sons Ld. until April 1906, when he left the employment of the Company. In June 1906 John Harwood Cash joined with other persons in promoting and 15 became an original director of a Company having the same objects as John Cash & Sons Ld., and carrying on business in the same neighbourhood, which was registered under the name of Harwood Cash & Co. Ld. In an action to restrain the use of this name by the new Company, it was held on Motion for an interlocutory injunction that the Court was not then in a position to try the 20 questions raised, and, there being no great urgency in the matter, the Motion was refused.

The action came on for trial with witnesses.

Held, that an injunction should be granted to restrain the use of its corporate name by the new Company on the ground that its use would probably lead. 25 customers of the old Company into confusion between the Companies, and mislead them into going to the new Company when they intended to go to the old.

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A new Company with a title of which the name “A” forms part has none of the natural rights that an individual born with the name A" would have. An individual named " A," not transferring to a Company a business and goodwill, cannot confer upon the Company a title to use his name as against persons who would be damaged thereby.

Tussaud v. Tussaud (L.R. 44 C.D. 678) followed.

Fine Cotton Spinners and Doublers' Association Ld. and John Cash & Sons Ld. v. Harwood Cash & Co. Ld.

This was an action by the Fine Cotton Spinners and Doublers' Association Ld. and John Cash & Sons Ld. against Harwood Cash & Co. Ld., claiming an injunction to restrain the Defendants from carrying on any business carried on by, or similar to that carried on by, the Plaintiffs under the name or style of Harwood Cash & Co. Ld., or any other name or style so nearly resembling the 5 name or style of the Plaintiff Company, John Cash & Sons Ld., as to be calculated to mislead or deceive the public into the belief that the Defendant Company was the same as the Plaintiff Company, John Cash & Sons Ld., and to restrain the Defendant Company from carrying on business under any name of which the word "Cash" formed part without clearly distinguishing their 10 business and goods from those of the Plaintiffs, John Cash & Sons Ld. The Fine Cotton Spinners and Doublers' Association Ld. were a Company formed in 1898 for the purpose of amalgamating and taking over a number of companies and firms engaged in spinning fine cotton or in doubling yarns. Among these was the business of John Harrison Cash, trading as John Cash & Sons, 15 who had for some 40 years carried on the business of cotton doublers and spinners of fine yarn at Mansfield, in the county of Nottingham, and had acquired a large connection and high reputation in business, both at home and abroad, more particularly in the Calais market. For the purpose of preserving the name and goodwill of the firm of John Cash & Sons the Plaintiffs caused a 20 subsidiary Company of John Cash & Sons Ld. to be formed on the 2nd of November 1898. By deed, dated the 23rd of December 1898, to which John Harrison Cash and the Plaintiffs, both the parent and the subsidiary Company, were parties, John Harrison Cash, by the direction of the parent Company, assigned and conveyed to the subsidiary Company all the goodwill and Trade 25 Marks of the business carried on by him under the style of John Cash & Sons. John Harrison Cash also agreed that he would not, for a period of 21 years, engage in, or permit or suffer his name to be used in connection with, any competing business. The business of John Cash & Sons was, from 1898, carried on by the subsidiary Company for the benefit and under the control of the parent 30 Company. At that time John Harwood Cash, the only son of John Harrison Cash, was the manager of John Cash & Sons, and was retained as manager by the Plaintiffs on taking over that business at Mansfield, and subsequently became manager of another branch of the parent Company as well. On the 30th of April 1906, John Harwood Cash gave notice to the Plaintiffs of his 35 resignation of his position as manager. His contract of employment contained no restrictions as to carrying on business in his own or any other name upon leaving the employment of the Plaintiffs. Shortly after leaving the employment of the Plaintiffs, John Harwood Cash, in conjunction with Ernest Jardine, lace machine manufacturer, and J. K. Fletcher, a large buyer of fine 40 yarns, formed, and on the 6th of June 1906 registered, the Defendant Company, Harwood Cash & Co. Ld., with a capital of 20,000l., the wording of the clause declaring the objects of the Company being almost identical with the corresponding clauses in the Memorandum of Association of the two Plaintiff Companies. John Harwood Cash and Ernest Jardine were registered as the two 45 first directors of the Defendant Company.

The action came on, upon Motion for interlocutory injunction, before Mr. Justice JOYCE on the 3rd of August 1906, when affidavits were filed on behalf of the Plaintiffs by A. H. Dixon and F. Whitworth, the chairman and secretary of the Plaintiffs; Henry Stubbs, the Calais agent of the Plaintiffs; W. Butler, 50 R. Smith, C. E. Young, E. J. Ozanne, W. Topham, and L. J. Seligmann, lace manufacturers of Calais; and, on behalf of the Defendants, by John Harwood Cash, and by E. Wallis and R. W. Fletcher, lace manufacturers.

The Plaintiffs' evidence was chiefly to the effect that the goods of John Cash & Sons Ld. were known as "Cash's Yarns" by the custom of the trade, 55 just as those of Hector, Christie & Co. Ld, and of Shaw, Jardine & Co. Ld.

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Fine Cotton Spinners and Doublers' Association Ld. and John Cash
& Sons Ld. v. Harwood Cash & Co. Ld.

This

were known as 66 Christie's Yarns" and "Jardine's Yarns" "respectively. evidence was especially strong as regards the Calais market. For the Defendants it was asserted that this state of things, if it existed, was due merely to the fact that there had only been one firm using the name Cash. JOYCE J. gave judgment on the Motion as follows:-Many of the cases in which injunctions have been granted to restrain the use by the defendant of a name similar to that used by the plaintiff have gone very far, farther, I think, than I personally should be disposed to go if I were not bound by authorities, so far as authority has anything to do with the case, because each case must 10 depend upon its own particular facts. Of course in dealing with this case I ought to consider it, and must consider it, as if the Plaintiffs were merely John Cash & Sons or John Cash & Sons Ld. So much I say in favour of the Plaintiffs. Now, in considering only the names, and comparing the names of the two firms or companies, John Cash & Sons and Harwood Cash & Co., as at 15 present advised my primâ facie impression is that there is no ground for saying that there ought to be any confusion between those two names. I am disposed to think at present that they are sufficiently distinguished, and in particular having regard to the trade in which one of the two firms is engaged and the other proposes to engage and the kind of persons with whom they will deal. 20 John Harwood Cash is the proper name of the Cash who is one of the persons concerned in the formation of the Defendant Company, and the business which is proposed to be carried on appears to me to be a proper business-that is to say, the business in which he would be naturally expected to engage. It appears to me that he might take to himself partners and carry on that business, 25 subject to what I am going to say later, as Harwood Cash & Co. It is very important to observe that, as the case at present stands, no fraudulent intent is imputed to John Harwood Cash, and really the question comes to the possible indirect and ultimate effect of the Defendants carrying on business in the name they have chosen, and incidentally whether the Plaintiffs are entitled to a 30 monopoly of the name of Cash in connection with yarns. What is apprehended is not that there will be direct deception in the first instance, but it is apprehended that the ultimate result will be that the yarns sold by Harwood Cash & Co. may be called "Cash's yarns," or that the yarns they may sell may be confused with "Cash's yarns," and in that way there may be a loss to the 35 Plaintiffs. It is not suggested-at least I do not think it is suggested and I do not believe it-that there will be any confusion between the names of the two firms. Upon this nice question about the monopoly of the name of Cash and what the ultimate result will be, which is not the result at present and will not be for months yet to come, the case appears to me not to be of any urgency. Upon 40 those questions there is a conflict of evidence, and I have no doubt than when this case comes to be tried there will still be a conflict of evidence. The questions in this case are not such as I feel, as at present advised, I am now in a position to try. It may be that at the trial the Court may hold that the Plaintiffs are entitled to that which they ask. But I do not feel myself at 45 liberty to grant an interlocutory injunction, particularly as I do not think there is any great urgency in the matter. It appears to me that the Plaintiffs may very well defend themselves, by means well known, against any possible loss or damage from what is proposed to be done, and I must refuse the Motion. The costs to be costs in the action.

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The action came on for trial before Mr. Justice JOYCE on the 10th of May 1907.

Astbury K.C., Hughes K.C., and Martelli (instructed by G. Trenam, agent for Addleshaw, Sons & Co., of Manchester) appeared for the Plaintiffs; Upjohn K.C., George Lawrence, and H. A. Hind (instructed by Hind and Robinson, 55 agents for Wells and Hind, of Nottingham) appeared for the Defendants.