Dunlop Pneumatic Tyre Company v Dunlop Motor Company

JurisdictionScotland
Judgment Date20 July 1906
Date20 July 1906
Docket NumberNo. 172.
CourtCourt of Session
Court of Session
2d Division

Lord Dundas, Lord Kyllachy, Lord Stormonth-Darling, Lord Low, Lord Justice-Clerk.

No. 172.
Dunlop Pneumatic Tyre Co., Limited,
and
Dunlop Motor Co., Limited.

Trade NameInfringementPersonal Name.

In 1904 two brothers, Robert and John Fisher Dunlop, who had been since 1898 in partnership in a cycle and motor repairing business in Kilmarnock under the name of R. & J. F. Dunlop, transferred the motor branch of their business to the Dunlop Motor Company, Limited, a company which had been incorporated under the Companies Acts, with a capital of 500, held by the two Dunlops and some of their friends. By the memorandum of association the Dunlop Motor Company had power, inter alia, to deal in and make motor cars and motoring accessories.

In 1905 the Dunlop Pneumatic Tyre Company, Limited, a company registered in England, who were the makers of a well known tyre for cycles and motors called the Dunlop tyre, the patent for which had recently expired, and who also manufactured cycling and motoring accessories, presented a note of suspension and interdict against the Dunlop Motor Company, Limited, to have the respondents interdicted from carrying on their business under any name containing the name Dunlop. The Dunlop Pneumatic Tyre Company, Limited, like the Dunlop Motor Company, Limited, had power to make motor cars, but neither Company had ever in fact made any motor cars.

The Court (rev. judgment of Lord Dundas), on consideration of a proof, refused to grant interdict, holding that the respondents had not adopted the name Dunlop Motor Company, Limited, for the purpose of passing off their goods as the goods of the complainers, and that the name Dunlop Motor Company, Limited, was not calculated to deceive the public into purchasing the goods of the respondents in the belief that such goods were goods of the complainers' manufacture.

In February 1905 the Dunlop Pneumatic Tyre Company, Limited, having their registered office at 14 Regent Street, London, presented a note of suspension and interdict against the Dunlop Motor Company, Limited, having their registered office at 39 John Finnie Street, Kilmarnock, praying the Court to interdict the respondents (1) from carrying on business under the style or title of The Dunlop Motor Company, Limited, or under any other or similar style or title comprising the word Dunlop, or any style or title calculated to deceive or mislead the public into the belief that the respondents' company is the same company as the complainers' company, or is in connection therewith, or that the business of the respondents' company is the same or in any way connected with the business of the complainers' company; and (2) from passing off or attempting to pass off the respondents' company's goods as and for the goods of the complainers' company, and also from issuing or publishing any catalogues, labels, circulars, showcards, advertisements, or billheads, or from using any trade name comprising the word Dunlop in connection with any goods not being goods manufactured or sold by the complainers' company.

The note was passed, and a record made up.

The complainers averred;(Stat. 1) The complainers are a limited company, incorporated on 6th May 1896. The objects for which the said Company was established are, inter alia, as follows:(a) To acquire and take over as a going concern the undertaking of the Pneumatic Tyre Company, Limited (incorporated in 1894), and all or any of the assets and liabilities of that Company, and also certain patents, and with a view thereto to enter into and carry into effect, with or without modification, the three several agreements in the terms of the drafts referred to in clause 3 of the articles of association of this Company.(b) To carry on the business of manufacturers of and dealers in and letters to hire of pneumatic and all other tyres and wheels of cycles, bicycles, velocipedes, and carriages and vehicles of all kinds, and all machinery, implements, utensils, appliances, apparatus, and things capable of being used therewith, or in the manufacture, maintenance, and working thereof respectively, or in the construction of any track or surface adapted for the use of any such tyres and wheels.(c) To carry on the business of manufacturers of, dealers in, and letters to hire of cycles, bicycles, tricycles, velocipedes, perambulators, bath-chairs, horse-carriages, motor or horseless carriages, and carriages and vehicles of every description, and all component parts thereof respectively, and also all apparatus and implements and things for use in sports or games.

(Stat. 2) The patents known as the Dunlop patents, which were owned and worked by the complainers and their predecessors, caused an unprecedented development in the cycle, motor, and carriage industry, in which the complainers and their predecessors have taken a leading part. The complainers do a large business in every part of the United Kingdom. (Stat. 3) In 1888 the word Dunlop was first used by the predecessors in title of the complainers' Company to designate the goods manufactured by them. Since that time the word has been in continuous commercial use as designating generally the goods manufactured by them. The complainers do a large business not only in the manufacture and sale of tyres, but also in the manufacture of all accessories used in relation to motor cars and bicycles, and in numerous other goods, rubber and otherwise, used in and about motoring and cycling. These include tyres of all kinds, wheels for motor cars, valves, pumps or inflators for motors, repairing outfits for motor car tyres, indiarubber matting, waterproof clothing, and indiarubber goods of all kinds. All these goods are associated with the name Dunlop. The word Dunlop is stamped on all or most of them. In the case of tyres there is also impressed a bust of the inventor, J. B. Dunlop, which forms the trade-mark. The name is associated by the public, and in the cycle and motor industry, with the complainers' Company and their goods. It is of great value to the complainers, many prizes have been awarded for Dunlop motor tyres, and they have repeatedly restrained its use by other companies and firms in the cycle and motor trade.

(Stat. 4) The respondents are a limited company, incorporated on 1st July 1904. Their purposes, as defined by their memorandum of association, are, inter alia, as follows:(1) To acquire the motor branch of the business of R. & J. F. Dunlop, cycle and motor merchants and manufacturers, Kilmarnock, and with that object to execute and carry into effect a minute of agreement between R. & J. F. Dunlop, cycle and motor merchants and manufacturers, Kilmarnock, and Robert Dunlop and John Fisher Dunlop, the individual partners of the firm, of the first part, and this Company, of the second part, a draft whereof has been approved by the subscribers hereto.(2) To carry on the business of motor manufacturers, agents, and dealers, and all or any other trades or businesses of any kind which can be conveniently carried on by the Company in connection with such business or any part thereof, or the carrying on of which may, in the opinion of the directors, be likely to be beneficial to the Company.(3) To manufacture, buy, sell, repair, convert, let on hire, or otherwise deal in motors, cycles, cars, carriages, carts, waggons, vans, and vehicles, and their component parts and accessories, and fittings and conveniences of all kinds which can be conveniently dealt in by the Company, and to carry on any other businesses, whether manufacturing or otherwise, which can be conveniently carried on in connection with any of the Company's objects. The respondents carry on business in terms of these purposes, and deal, inter alia, in tyres, pumps, inflators, wheels, rugs, and other parts and accessories of cycles and motors. They are registered and carry on business under the style and title of the Dunlop Motor Company, Limited.

(Stat. 5) The adoption by the respondents of the style or title Dunlop Motor Company is calculated to deceive the public into purchasing the goods of the respondents in the belief that such goods are the goods of the complainers' manufacture, or that the respondents and their goods are associated with the complainers' Company.

(Stat. 6) The complainers believe and aver that the respondents have adopted said style and title for the purpose of passing off their goods as and for the goods of the complainers, and for the purpose of taking advantage of the reputation which the goods manufactured and sold by the complainers have acquired, and for the purpose of associating their business with the business of the complainers, and that they are so passing off their goods as goods of the complainers' manufacture. In these circumstances the present note of suspension and interdict has been rendered necessary.

The respondents, in a statement of facts, averred;(Stat. 2) Of the seven shareholders who form the respondents' Company, four of them are Mr Robert Dunlop, Mr John Fisher Dunlop, Mr Alexander Dunlop, and Mr David Dunlop. These four gentlemen are all engaged in the business of the respondents' Company, and they hold among them four-fifths of the shares of the respondents' Company. (Stat. 3) The name Dunlop has been used by the respondents' predecessors (Messrs R. & J. F. Dunlop) for eight years in connection with the cycle and motor business carried on by them. That firm commenced business in 1897 in premises situated in Bank Place, Kilmarnock, and removed to their present premises at 39 John Finnie Street in November 1898, where the firm still continues to carry on the business, so far as not acquired by the respondent's Company. The respondents' predecessors have been engaged in the motor business (that is, in the dealing in complete motors, cycles, tricycles, and cars, and the repairing of these things) for seven years, and have during that time peaceably enjoyed the free use of the name...

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