Supplem.t.]
Aug. 28, 1912] THE ILLUSTRATED OFFICIAL JOURNAL (PATENTS). 557
n»PORTS OF rATENT, dESIGN AND TRADE MARK CASES
[Vol. XX:IX].
Facsimile Letter Printing Company Ld. v. Facsimile Type'writing
Company.
IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.
Before
MR. JUSTICE SWINFEN EADY.
June 28th, 1912.
:b'ACSIMILE LETTER PRINTING COMPANY LD. V. ~'ACSIMILE TYPEWRITING
5
COMPANY.
Trade name-s-Tradiru) style adopted by the Defendants having the same
leading word as the Plaintiff Company's name.-Motion jor interlocutory
injunction.~Injunction granted.
The Facsimile Letter Printing Company Ld. had been incorporated for some
10 years, and had carried on an extensive business in facsimile letters and circulars
and otherdocumenieprinted or written in facsimile. They brought an action
against F. and the Facsimile Typewriting Company to restrain the Defendants
from carrying on business under that name. In 1911 F. commenced to
carryon business 'under the name complained of; that business was of a
15 similar nature to that of the Plaintiff Company and was intended to be a
competing business. The Plaintiffs moved for an interlocutory injunction.
Held, that confusion and mistakes had arisen owing to similarity of
name, and communications intended for the Defendants had been made to the
Plaintiffs and vice versa, and that the Defendants, having taken the first and
20 leading word in the Plaintiffs' name; the Plaintiffs had made out a sufficient
case to entitle them to an injunctior; until the trial. An interlocutory injunction
was granted, liberty being given to either lJarty to apply to advance the trial.
On the 10th of June 1912 the Facsimile Letter Printing Oompany Ld.
commenced an action against Wilfrid Thorman Fry and the Facsimile
25 Typewriting Oompany for au injunction to restrain the Defendants from
carrying on the business of facsimile letter printing or printing or typewriting
under the style or title of the Facsimile 7
(Jompany, or under any
style or title so as to represent or indnee the belief that the business of the
Defendants, or either of them, was the business of the Plaintiffs, and for other
30 relief.
The Plaintiffs gave notice of motion for an interlocutory injunction in the
terms of the writ.
1ypeu'ritirrg
SUfJpZemMt.]
558 THE ILLUSTRATED OFFICIAL JOURNAL (PATENTS).
REPORTS OF PATENT, DESIGN AND TRADE MARJ: CASES
[Aug. 28, 1912
[Vol. XXIX].
Facsimile Letter Printing Oompany Ld, v. Facsimile Typewriting
Company.
TheRon. Frank Russell K.C. and T. L. Wilkinson (instructed by Richard
Davies &; Son) appeared for the Plaintiffs; and Kingsbury (instructed by
F ...J. Berryman) appeared for the Defendants.
A number of affidavits hacl been filed on each side. The facts and arguments
sufficiently appear in the judgment of the learned Judge.
The motion came on for hearing before Mr. Justice SWINFEN EADY on the
28th of June 1912.
SWINFEN EADY J.-The question which I have to decide is whether the
Plaintiffs are entitled to an injunction until judgment or further Order restraining Mr. Wilfred Thorman Fry from carrying on a new business recently
started under thername of the Facsimile TYJJeuJriling Oompans], as being a name
so closely resembling the name of the Plaintiff Company as to be calculated to
deceive. It appears that the Plaintiff Company have been established for some
years) and they carryon an extensive business in, amongst other things, facsimile
letters and circulars and other documents printed or written in facsimile. The
Plaintiff Company was incorporated SOIne six years ago, so they are a well'established Company and they are doing apparently a large and extensive
business. The Defendant, Wilfred Thorman Fry, is the secretary of a Company
called the Income Tax Reclamation Association Ld., and it appears that the
Plaintiffs have done work for that Company; they have made facsimile letters
and circulars, and in that way the Defendant Fry has acquired some knowledge
of what the Plaintiffs were doing. He says that in the year 1910 he decided to
print some facsimile letters that had previously been printed by the Plaintiffs.
He says, "I decided to print them myself." It is not very clear from his
affidavit what that means, because he was the secretary of a Company, but I am
told it means that his Company, the 11~CO)ne Tax Reclamation. Association
"Ld., determined to print them themselves. At the end of 1910 they were
printing their own circulars; no one complains of that. He then says :." Towards the end of the year 1911 I decided to extend the facsi.mile letter
'~printing beyond that of the Income Tax Reclamation Association, and
" accordingly I inserted an ad vertisement in the September issue of ' System' "
..:-.-that is a journal called" System "-" a print of which is now shown to me
,~ and marked' A.'" His affidavit does not explain it at all, but it is said that
what really was taking place was that the Income Tax Reclamation Association
was making over to Fry, its secretary, in order that he might start in business
on his own account apparently, any nucleus that they had or were forming
of a facsimile printing business. He exhibits a copy of "System" called
"September No., 1911," which contains an advertisement "Facsimile Type"writing Company." This journal has since declined to insert any more of the
Defendants' advertisements under that name. That is the evidence as it stands,
and there is no contradictionwhatever on that point. Accordingly, towards the
end of the year 1911 the Defendant Fry apparently commenced to carryon this
business as the Facsimile TY]Je1vriting Comparu; on his own account. Remonstrances were made to him. The confusion that the similarity of names would
'give rise to was pointed out, and it was suggested, amongst other things, that if
he was to describe his business as "Fry's Facsimile Typewriting Company," ~o
objection would be taken to that; but the essential grievance of which the
Plaintiffs complained was that a person named Fry, not trading in his own
name but adopting a trading style, deliberately chose the first and distinctive
.word of the Plaintiffs' name to carryon a business with regard to which he
does not deny he intended deliberately to compete with them, cutting rates so
as to ensure trade. That is the class of case I have to deal with. A person
.starting a neW-business against an old established business, not trading in
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SupplelMAt.]
Aug. 28,1912]
THE ILLUSTRA1'ED OFFICIAL JOURNAL (PA'l'ENTS).559
REPORTS OF PATENT., DESIGN AND TRADE MARK CASES
[Vol. XXIX].
Facsimile Letter Printing Oompany Ld. v, Facsimile Typewriting
.
Oompany.
his own name, but adopting another name for the purpose of trade : intending to carryon a business similar to and competing with another old-established
business, and then deliberately adopting-and, when this is pointed out,re:
fusing to make any change-a trading style of which the leading word shall
5 be identical with his trading competitors, and registering a Oompany-e-that is
the sort of case I have to deal with.
In my opinion the law which has to be applied to the case is beyond dispute.
It is not necessary that the Defendant should be acting dishonestly. Fraud or
dishonesty on the part of the Defendant is not a necessary ingredient to the
10 Plaintiffs succeeding. In the case in the House of Lords of the North Oh(),shire
and Manchester Brewery Company v, Manchester Brewery Company (L.R:
(IRg9) A.C. 83 at page 88) the law is thus stated by Lord Shand :-" I
" further agree that it is not necessary, in a case of this kind, that an improper
" motive or a fraudulent intention should be made out. Here the simple
15 "question to be decided is, assuming bond fides on the part of the appellants,
" whether or not the use of this particular name is calculated to injure another
" firm which had been using that same name, I believe for a period of about
" eight years." In the present case it is six years. "\Vhether the question
" arises under the statute "-that would be the Companies Act-" or under the
20 'It common law, the issue which the Oourt or this House has to decide appears
" to me to be the same. Was the taking of the name of the' Manchester
" , Brewery Oompany 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 sums up the whole law,
25 and that is the issue which I have to decide.
It is not disputed that in this case, not only has confusion arisen, but communications intended for the Defendants have been made to the Plaintiffs,
and vice uers/i , an order in terms made out to the Plaintiffs, accompanied by
a postal order, has been accepted and executed by the Defendants, and the
ao Defendants' version of the circumstances under which that was done is not
only denied by the Plaintiffs, but is disproved, because the Plaintiffs produce
their book containing the receipt for the postal order and for the paper sent
together. Again, it is proved that a person intending to go to the Plaintiff
Company has gone to the Defendants by a mistake arising from the leading
35 word in the title of each of their two styles being the same, having looked
them up in the directory. Other instances of mistakes and confusion which
have, in fact, arisen have been proved by the affidavits, although the period
.since the Defendants have started is so recent. Then it was suggested that
cases like Aerators Ld. v, Toliit" and British VaCtlU1n Cleaner Company Ld. v.
40 New Vacuum Cleaner Company Ld.; stood in the way of the Plaintiffs succeeding in this action. As I pointed out to Mr. Kingsbury during the argument, in those cases the first or leading style or title was not taken. That is
the essence of the Plaintiffs' complaint here. For instance, in Aerators Ld. v.
Tollit the defendants introduced another word in front of their name; the
45 word "Automatic" was introduced before "Aerators." So, again, in the
"Vacuum" case it was" British Vacuum" against" New Vacuum.' I asked
whether there was any other trading style or Company or firm that had, as its
first name, " Facsimile" in the same way the Plaintiffs ha ve it. At first I W~B
told that there was one, but it was pointed out that" Perfect" was used as the
50 leading word in that case, and so it would appear under a different letter in the
* 19 R.P.C. 418 j L.R. (1902) 2 Ch. 819.
t
24 R.P.C. 641; L.R. (1901) 2 oi, 312.
Aq,~Pl'~f1WJ·t. ]
'560 THE ILLUSTRATED OFFICIAL JOURNA.L (PATENTS). [Aug. 28,1912
REPORTS OF l-ATENT, DESIGN AND TRADE MARK CASES
[Vol. XXIX].
Facsimile Letter Priniinq Oompany Ld. v: Facsimile TypeuJritinu
Oompany.
Directory because its first or catchword would be different. In each of the
two cases to which reference was made, there was a different first word. Here,
not only have the Defendants laken the first word "Facsimile," but they have
deliberately refused to alter it and cling tenaciously to the exact style. It was
pointed out in one instance, which had arisen, that if the style had been, say,
"Fry's Facsimile Typewriting Company," the mistake in question would not
have arisen; it arose by reason of the two first words being identical. Under
those circumstances, the question that I have to consider now is, whether the
Plaintiffs have made out a sufficient case to entitle them to an injunction until
the trial.
considering the comparative convenience or inconvenience of granting
this injunction, I bear in mind this, that the Defendants are not a limited
Company, so that it cannot be said that, if they are restrained until the trial, they
cannot carryon business until they change their name; there is no resolution of
shareholders or anything of that sort necessary. Again, it is quite a new undertaking, and it has only j nst started, so the inconvenience of restraining the Defendants from carrying on business under the particular style would not prevent them
from carrying on their business. 'I'hey have only to change their style, which
they can do at any moment they please without any legal formalities, to enable
them to carryon their business. Again, it has not been carried on sufficiently
long for them to have acquired a goodwill of their own. In my opinion the
imminent danger of their securing orders intended for the Plaintiffs and of
obtaining business intended for the Plaintiffs and of leading to the deception
that their business is the Plaintiffs', or some part of it, are the considerations
which ought to lead me to interfere at the present stage. I therefore grant an
injunction, as asked by the notice of motion, restraining the Defendants from
carrying on the business under the style of the "Facsimile Typewriting
"Company" until judgment or further Order. I quite appreciate that, although
that is the way the matter ought to be kept until the trial, it is a case that in the
interests of both sides ought to be determined speedily, and, therefore, I will
give liberty to apply to advance the trial and direct the Pleadings to be
delivered quickly in order that, if possible, the matter may be determined
before the end of the Sittings.
In
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