Dunlop Pneumatic Tyre Company Ld. v. Dunlop Motor Company Ld.

Tyre Company preceded by the name " Dunlop," and their case seems to be that, having done so, they shut out persons named " Dunlop" from employing that name in connection with a company at all similar in object to the tyre company. I agree that the objects of the two companies need not be absolutely identical in 5 order to entitle the Complainers to relief, but there must be great similarity. In this case I do not think that the measure of similarity established is sufficient, either in the name employed, or in the objects of the trade sought to be carried on.

The Complainers say they are a pneumatic tyre company. The Respondents 10 represent themselves to be a motor company. Then, as I have said, the tyre company does not sell motors. The motor company appears to do so. If in respect of some minor articles there might be a common production, yet the main object of the two businesses are different. As to these minor articles, I agree with the view expressed by Lord Kyllachy, that the Complainers have 15 not proved that they have any exclusive right, in connection with the sale of those articles, to the use of the name "Dunlop," nor have they proved that the name in question has any special reputation or value in connection with such minor articles.

Then, secondly, who will be deceived by the name used by the Respondents ? 20 It appears to be admitted that an ordinary business person would not be misled, but it is alleged that the unwary would. Well, of course, there are unwary people in this world, but I think that a man who employs his own name in carrying on his business has the right to regard the people whom he may attract as being capable of exercising and being in the habit of 25 exercising thought; and I cannot differ from the judgment of Lord Low, in which he says:-" Any one who took the trouble to think upon the subject "would see that the Respondents' Company was a motor company and the "Complainers' a tyre company. I do not think that the Respon"dents are liable to have their business practically stopped (unless they 30"change their name) simply because a thoughtless person might unwarrantably jump to the conclusion that they were connected with the Complainers.' Under the circumstances of the case before your Lordships I do not think that the average citizen of Kilmarnock would be deceived, and I cannot specu-late upon the degree of unwariness that would induce the confusion necessary 35 to support the Appellants' claim.

It is not without full consideration of the very lucid judgment of the Lord Ordinary that I have come to the conclusion that the decision appealed from is correct, and that therefore this appeal should be dismissed.

Lord ROBERTSON and Lord COLLINS concurred.

In the Matter of Hudson's Application for a Trade Mark.

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE JOYCE.

May 30th and 31st, 1907.

IN THE MATTER OF HUDSON'S APPLICATION FOR A TRADE MARK.

Application for registration of Trade Mark.-Rival claims for registration 5 of same mark.-Reference to Court to decide rights.-Mark common to the trade. -Costs.-Trade Marks Act, 1905, Section 20.

J. H., who had used the words "The Thunderer" upon a certain type of whistles, of his own manufacture, for a considerable number of years, applied to register these words as a Trade Mark. A. De C., who had also used these words upon 10 similar goods, applied shortly after for registration of the same to be granted to him. Upon reference to the Court under Section 20 of the Trade Marks Act, 1905, it was

Held, that the mark was publici juris, and that neither party had any right in connection with it, and that each party should pay its own costs; J. H., 15 the applicant in the Motion, paying the costs of the Registrar.

Joseph Hudson, carrying on business as J. Hudson & Co., at Nos. 11 and 13 Barr Street, Birmingham, as a whistle manufacturer, applied on the 12th of April 1906 for registration of the words "The Thunderer as a Trade Mark in Class 9 in respect of whistles. After such application had been made, Alfred 20 De Courcy, trading as De Courcy & Co., of Frankfort Street, Birmingham, whistle maker, applied for the registration of the same mark in respect of whistles. The Registrar thereupon intimated that it would be necessary for the rights of the respective Applicants to be determined by the Court in accordance with Section 20 of the Trade Marks Act, 1905. Notice of Motion was accordingly 25 given, for the 9th of August 1906, by Joseph Hudson asking that the Registrar might be directed to proceed with the Applicant's application notwithstanding the application by De Courcy, and affidavits were filed in support of and in answer to the Motion. The Motion was, on the 14th of December 1906, ordered to be set down in the witness list, and leave was given to both sides to cross- 30 examine the deponents upon their affidavits, and that the parties might supplement the affidavits filed by further oral evidence. Particulars of the use of the word "Thunderer" and affidavits of documents were also ordered.

The Motion came on for hearing on the 30th of May before Mr. Justice Joyce,

In the Matter of Hudson's Application for a Trade Mark.

Walter K.C. and L. B. Sebastian (instructed by Ward, Bowie & Co., agents for T. W. Walthall and Pritchard, of Birmingham) appeared for the Applicant; Younger K.C. and Owen Thompson (instructed by Helder, Roberts & Co., agents for Tunbridge & Co., of Birmingham) appeared for the Respondent; 5 Hartree (instructed by the Solicitor to the Board of Trade) appeared on behalf of the Registrar.

Walter K.C. opened the Applicant's case and read the affidavits filed in the

case.

The following witnesses were then examined on behalf of the Applicant:— 10 Joseph Hudson, the Applicant; J. C. Hudson, a son of the Applicant; R. A. Walton, a workman in the employ of the Applicant; G. Thomas, retailer's manager; G. E. Wyllie, retailer's manager and buyer; H. Usher, retailer's manager and salesman; G. Williams, retail ironmonger; A. J. Markham, wholesale hardware dealer; A. E. Lamberton, fancy goods dealer's manager; 15 and T. Keane and H. S. Nazer, retail dealers. Of these witnesses Joseph Hudson, T. Keane, and H. S. Nazer had made affidavits.

The evidence on behalf of the Applicant went to prove that the Applicant had used the title "The Thunderer" on a whistle of his make since about 1884, at a date when the Respondent was in his employ, and had used this name from 20 1892 on a whistle the manufacture of which was protected by a Patent, though the form was substantially that of the original "Thunderer" whistle. Sales of this whistle had been large for tramway and railway purposes, some 339,000 in all having been sold. The Applicant and his witnesses had never heard of any whistle manufactured by any other maker upon the market under the name 25"Thunderer." He admitted, however, that it was his custom to make whistles to order for customers, placing the words "The Thunderer," with or without "Hudson's Patent," upon the whistles in conjunction with the name of the customer. The persons conversant with the retail trade called on behalf of the Applicant stated that any whistle seen by them bearing the words "The 30"Thunderer," with or without the name of any maker upon it, would be taken by them to have been made by the Applicant for some customer. It was alleged that there were no open sales of "Thunderers" by any person other than the Applicant or buyers from him. In the course of the evidence it appeared that the Applicant had lately described the words "The Thunderer" 35 as a registered mark, which he explained by saying that when this was done he anticipated that he would be able to obtain registration on applying for it.

JOYCE J.-This being an application under Section 20 of the Trade Marks Act, 1905, where two persons claim the same thing, I have merely to decide between the claimants, leaving the unsuccessful claimant to oppose when the 40 mark has been advertised. I shall not lay down a general rule that the procedure adopted in this case is right, but I shall decide this case if neither party raises any objection.

45

L. B. Sebastian.-This is the first case of the kind since 1887. Section 20 of the Act of 1905 supersedes Section 71 of the Act of 1883.

The following witnesses were called on behalf of the Respondent:-W. J. Webber, confidential clerk to the managing director of Crowden and Garrod Ld., wholesale dealers; C. E. Reeve, wholesale dealer's manager, and A. Ward, whistle maker. Affidavits were put in which were filed by the Respondent, and by F. C. Barrall, ironmonger, W. McPherson, cutler and hardware merchant, 50 and W. F. Currie, hardware manufacturer's agent, who were tendered as witnesses for cross-examination.

The affidavits filed on behalf of the Respondent set up a case of prior, or at least independent contemporary user, by the Respondent of the words "The "Thunderer as a Trade Mark on whistles. The case set up at the hearing, 55 however, was that neither the Applicant nor the Respondent were entitled to the exclusive use of the words in question, but that "The Thunderer" was a

In the Matter of Hudson's Application for a Trade Mark.

term in common use by the trade, and described a particular shape or species of whistle, just as the words "Midget," "Owl," "Hound," "Officer," "Express," and other names, admittedly common to the trade, were used to describe other shapes of whistle.

Evidence was given that the words "The Thunderer," as applied to whistles 5 not manufactured by the Applicant, appeared in catalogues issued by Crowden and Garrod Ld. in 1895 and 1898, by F. Dyke & Co. in 1900 and 1905, and by the Respondent, and that there had been sales of "Thunderer" whistles, not of the Applicant's manufacture, under that name since 1889 by four or five different firms, together with occasional advertisements in trade papers of 10 "Thunderer" whistles admitted by the Applicant not to be whistles of his manufacture.

In the course of the cross-examination of Ward, one of the Respondent's witnesses, Counsel for the Applicant intimated that after the evidence which had been given he should not claim an exclusive right in the word for the 15 Applicant, and he did not intend to contest the case further.

Younger K.C. asked that the Applicant should pay the Respondent's costs. The issue to be tried was clearly defined by the affidavits which were before the Court on the 14th of December. The affidavit of the Applicant stated that he was the only person to make "Thunderers," and upon that issue was joined. 20 On that issue the Respondent has succeeded and has displaced the case of the Applicant for an Order on the Motion; the onus being upon the Applicant and he having failed the Respondent ought to have his costs.

JOYCE J. asked whether the Respondent intended to proceed with his application to register.

Younger K.C.-He will not further proceed with it.

Walter K.C.-The whole of the proceedings have been caused by the Respondent applying for the registration of a Trade Mark as to which he is absolutely wrong.

25

JOYCE J.-I think you must each pay your own costs. This is not a case of 30 opposition to a claim which might have raised what is said to be the real issue. This has arisen through an application being made by the Respondent himself in circumstances in which he is not entitled to succeed, and the proceedings have been stopped under the 20th Section of the Act of 1905 by reason of the Registrar declining to proceed until the rights of these parties were determined. 35 It turns out that the Applicant is not entitled as against the Respondent to the use of this mark, and it turns out equally that the Respondent is not entitled to the use of this mark. The result of this is really that the mark is publici juris, and that neither of the parties has any right whatever in connection with it. For these reasons each party must pay its own costs.

Hartree asked for the costs of the Registrar.

JOYCE J. held that they must be paid by the Applicant.

40

In the Matter of the Application of the Compagnie Industrielle des Petroles to Register a Trade Mark.

IN THE HIGH Court of JUSTICE.-CHANCERY DIVISION,

Before MR. JUSTICE WARRINGTON.

July 3rd and 4th, 1907.

5

IN THE MATTER OF THE APPLICATION of the COMPAGNIE INDUSTRIELLE DES PETROLES TO REGISTER A Trade Mark.

10

Trade Mark.-Registration.-" Motricine."-Resemblance to Trade Mark "Motorine" previously registered.-Calculated to deceive.-Direct reference to character of goods.-Onus of proof.-Trade Marks Act, 1905, Sections 9 (4), 11, 19, and 21.

In 1901 the P. P. C. Company registered" Motorine" in Class 47 as a Trade Mark for lubricating oils, and sold large quantities of lubricating oil under that name, which became identified with their goods. In 1907 a French Company, which had dealt largely in petrol spirit under the name "Motricine" on the Continent and had registered that name as a Trade Mark for petrol spirit in 15 various European countries, applied in this country for the registration of "Motricine" as a Trade Mark for spirit for motive power purposes in Classes 47 and 50. This was opposed by the P. P. C. Company. The products of the Applicants and the Opponents were both manufactured from petroleum, but the former was a thin, odorous and highly explosive 20 fluid, the latter thick, viscous, non-odorous and non-explosive. Both were sold in cans and in the ordinary course of trade in the same shops and to the same class of customers. The Opponents opposed the registration of " Motricine" as being calculated to deceive within Section 11 of the Trade Marks Act, 1905, and as being likely to cause danger to the public 25 and injury to the Opponents' trade by an explosive fluid being used as a nonexplosive fluid. The Registrar refused to register "Motricine," whereupon the Applicants appealed, and also moved the Court to expunge the Opponents' Trade Mark" Motorine" from the Register,