Dunlop Rubber Company v Dunlop

• Jurisdiction: Ireland
• Court: House of Lords (Ireland)
• Judgment Date: 19 Mar 1920

Dunlop v. Dunlop Rubber Co.

DUNLOP

and

DUNLOP RUBBER CO.

Limited.

Injunction - Libel - Jurisdiction - Judicature Act (Ireland), 1877, sect. 28,sub-s. 8 - Practice - Service out of jurisdiction - Rules of the Supreme Court (Ireland), 1905, Order XI, r. 1, sub-s. (g), r. 2.

Motion to set aside an order for service of the writ out of the jurisdiction.

An order was made on the 16th January, 1920, giving liberty to the plaintiff to issue a writ out of the jurisdiction, and to serve it on the defendant company in London.

The plaintiff claimed an injunction to restrain the defendants from publishing or exhibiting in Ireland any advertisements or placards, books or circulars, containing pictures representing the plaintiff in absurd or unsuitable costumes, or attitudes, or caricatures, or otherwise calculated to expose him to public ridicule or contempt by misrepresenting his appearance or costume, and for damages and other relief.

The defendant company now applied to have the order of the 16th January discharged, and asked for all order setting aside the writ issued in pursuance of the order, and the service of it and all subsequent proceedings in the action, on the grounds following:—

That the defendants were not domiciled or ordinarily resident within the jurisdiction of this Court; that the acts to restrain which this action is alleged to be brought were not to be done within the jurisdiction of this Court; that there was no jurisdiction within the rules of the Supreme Court to make the order; that the application for the order was not supported by the evidence required by the rules of the Supreme Court (Ireland), Order 11, rules 2 and 4; that due regard should be had to the amount or value of the plaintiff's claim, and the comparative costs and convenience of proceedings in Ireland and in England, the place of the defendants' residence; that the said order should not have been made, and ought not to stand; that due regard being had to the nature of the action, and to the nature of, and, if granted, the consequences to flow from, the relief sought, the case is not a proper one for service out of the jurisdiction.

The affidavit grounding the motion for liberty to issue and serve the writ out of the jurisdiction was an affidavit by John Dunlop, the intended plaintiff. He deposed that he was the inventor of the pneumatic tyre, and that about the year 1891, at the request of the then Directors of the Pneumatic Tyre Co. and Booth's Cycle Agency, Ltd., of which company he was then one of the Directors, he presented that company with a portrait bust of himself, and his signature, to be used as a trade mark; that the Pneumatic Tyre Co. and Booth's Cycle Agency, Ltd., were the predecessors of the intended defendant company; that for some time past the intended defendant company had, without any permission from him, been exhibiting in Ireland and elsewhere advertisements containing pictures obviously intended to represent him, the features being adapted from the portrait bust, but that the features were placed upon the body of a very tall man, dressed in a very exaggerated foppish manner, wearing a tall white hat, white waistcoat, and carrying a cane and eyeglass, none of which it was his custom to wear or carry; he said that the gradual extension of these advertisements, and the absurd attitudes in which the figure was represented, had caused very great annoyance to him and to his relatives, almost all of whom resided in Ireland, and the belief had arisen that he had permitted the company to publish these advertisements in consideration of payments to him; that he had repeatedly complained to the company of the above matters, and had recently instructed his solicitor to write to them requiring them to discontinue these acts, and that he was informed and believed that no satisfactory reply could be obtained; that the defendant company was registered in England, and was a British company, and had a large and important branch in Dublin, at Dunlop House, Lower Abbey Street; he said that owing to his advanced age—being seventy-nine years old—and to the fact that his health was delicate, it would be highly inconvenient for him to appear as a witness in England, and that he believed that the intended action could be more cheaply and expeditiously tried in Dublin than elsewhere; that all the witnesses for him were resident in Ireland, and that the company had a large branch in Dublin, the officials of which could conveniently attend the trial if required; he said that he was advised and believed that he had a good cause of action against the intended defendants in respect of the matters alleged, and submitted that liberty should be given to him to issue the writ in the intended action, and to serve the same on the intended defendants out of the jurisdiction of the Court; and he said that the principal office of the defendant company was in London.

In support of the present motion, an affidavit was filed on the 12th February, 1920, made by Mr. Arthur Cunningham, the Secretary of the defendant company. In that affidavit the deponent says that the company was registered in England under the Companies Acts, and that their registered office is at No. 1 Albany Street, London, and not at 152 Clerkenwell Road. He says that in the year 1889 the Pneumatic Tyre Co. and Booth's Cycle Agency, Ltd., was formed, and that the company acquired the plaintiff's invention No. 1607, and subsequently changed its name to the Pneumatic Tyre Co., Ltd., and had acquired the two main inventions for attaching and detaching the outer covers of tyres from their rims; that the plaintiff was a director of the Pneumatic Tyre Co. before its change of name, and afterwards down to the year 1895; that prior to his resignation from the Board of Directors, namely, in the year 1893, the Pneumatic Tyre Co., Ltd., registered trade marks of the head, bust, and signature of the plaintiff in respect of goods made and sold by them; that the successors in business and title of the Pneumatic Tyre Co. were the Dunlop Pneumatic Tyre Co., Ltd., registered in the year 1896, whose business patents and trade marks are now vested in the defendant company, the Dunlop Rubber Co., Ltd., who also are the registered proprietors of the registered trade mark obtained in the year 1901, consisting of the head and bust of the plaintiff, and of a registered trade mark consisting of the word"Dunlop," and that they had also acquired rights to the name Dunlop in connexion with tyres and other goods, and that no person, firm, or company, save the defendant company, possessed the right to use the name Dunlop in connexion with tyres and accessories, and that these trade marks and name are used by the defendant company in connexion with their goods; he says that the defendant company and its predecessors in title have for many years spent annually large sums of money in advertising their goods in trade papers and the daily and weekly press, many of which are published in England and circulate throughout the United Kingdom; that since October, 1915, the defendant company has used in its advertisements the symbolic figure now complained of, and these advertisements have been continually published and circulated throughout the United Kingdom; that their publication has been widespread for over four years, and must have been so used to the plaintiff's knowledge, and he refers to certain letters written by the plaintiff. He says that in 1919 the defendant company compiled a handsome volume called "The Dunlop Book," at a cost exceeding £10,000, and he exhibits the volume; that a presentation copy, as a personal compliment, was sent by the defendants to the plaintiff, and that the plaintiff in acknowledging same on the 18th September, 1919, wrote to the managing director of the defendants a letter which he exhibits, and he says it is the the figure therein referred to which forms the ground of the present action for alleged libel. He says that the defendant company denies that any libel on the plaintiff had been committed, or that he has any claim against them whatever, or that he was entitled to any relief by way of injunction or otherwise. He says that if the trial of the action were to take place in Dublin, it would be necessary for the defendant company to call a large body of witnesses on their behalf, including their artists, all of whom reside in England, and that the expense to the company of a trial in Ireland would be very great, and he says that if the plaintiff were to issue a writ in the Chancery Division in England for such relief as is claimed in this action, the state of the list there is such, he is informed by his company's London solicitor, and believes that the plaintiff would be able to get a trial before next Easter, and he says that it would be oppressive and unjust, and, as he submits, contrary to law and fact to implead their firm in Ireland. He says that an injunction here, while apparently limited to one of the three Kingdoms, must have prejudicial effect in all, as newspapers published in England containing the defendants' emblematic advertisements circulate largely in Ireland, and newsagents in Ireland might constantly be put in peril were a local injunction to prevail in respect of English and Scottish newspapers, and he submits that this is therefore pre-eminently a case to be tried in the English Courts, and that there is no true precedent on which the issue of the writ out of the jurisdiction in this case can be founded.

The plaintiff made an affidavit, filed on the 20th February, 1920, in reply to the affidavit of Mr. Cunningham, in which he said that none of the letters patent, registered trade marks, or rights referred to in the affidavit include the right to do any of the acts or matters complained of in the action; that it appears from the correspondence referred to in Mr. Cunningham's affidavit, and is the fact that he complained to the defendant...