714 REPORTS OF PATENT, DESIGN, [Dec. 12, 1906.

Dunlop Pneumatic Tyre Company Ld. v, Dunlop Motor Oompany ta.

the question of mala fides. Now, having carefully considered the 'whole
evidence and circumstances, I have come to the conclusion that it is not proved
that the Messrs. Dunlop introduced the name" Dunlop" into the title of their
Company for the purpose of passing off their goods as the Complainers' goods,
or of trading upon the Complainers' reputation. It may be that the knowledge .)
that the name" Dunlop" was well known in connection with the manufacture
of tyres may have suggested to the Messrs. Dunlop the introduction of their
own patronymic in the title of the Motor Company which they were forming,
but I see no sufficient reason to infer that it occurred to them that by so doing
they would attract custom intended for the Complainers, much less that it was 10
their intention and purpose so to do.
I am therefore of opinion that the interlocutor of the Lord Ordinary should
be recalled and interdict refused.
THE LORD J"USTICE CLERK.·-I had an opportunity of reading .LORD
KYLLACHY'S Opinion" in which I entirely concur. 15
The only difficulty I felt in coming to the conclusion that the Complainers
were not entitled to succeed was caused by the very strong views expressed by
the Lord Ordinary. I think he was misled by the very decided opinion he
formed as to the question of the purposes and aims of the Messrs. Dunlop in
Kilmarnock in forming the limited company which they did. I do not share 20
his views on that matter, but, holding these views, I think he has been led to
grant an interdict in this case on grounds which do not appear to me to justify
his having done so. My views have been so clearly expressed by LORD
KYLLACHY that I do not think it necessary to add anything to what has been
so fully and carefully expressed. 25

IN THE HIGH COURT OF JUSTICE.-CHANCERY DIVISION.

Before MR. JUSTICE PARKER.

November :9th, 1906.

iN THE MATTER OF AN ApPLICATION BY THE PIANOTIST COMPANY LD.

FOR THE REGISTRATION OF A TRADE MARK. 30

Trade Mark.-Applicat'ion for registration.-Opposition.-" Neola" not too

near" Pianola."-Appeal from the decision of the Oomptrotier dismissed.-
Patents &c. Act, 1888, Section 72.
An application was made for the registration as a TradeMark of the word
"Neola" for" a piano player, being a musical instrument included in Class 9." :15

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 Vol. XXIII., No. 32.J AND TRADE MARK CASES. 775

In the Matter of an Application by the' Pianotist Oompany Ld. for the

Registration of a Trade Mark.

The registered proprietors of a Trade llJ.ark " Pianola" registered for all goods
in Class 9 opposed the registration. The Comptroller decided against the
Opponents and ordered the registration to proceed. The Opponents appealed.
The appeal ioas referred to the Court,
;) Held, that hav1:ng regard to the kind of customers for such goods and a
difference in the articles actually sold under the names, there was not likely to
be any confusion. The appeal was dismissed with costs.

On the 2nd of October 1905 the Pianotist Comoanu Ld. applied for registra-
tion of the word" Neola" as a Trade Mark in Class 9 in respect of ,,, a piano
10 "player, being a musical instrument included in Class 9." The application was
numbered 276,115. On the 30th of November 1905 the Orchestrelle Oompany
gave notice of opposition to the application, the ground of opposition being that
the Trade Mark applied for bore such a near resemblance to their registered
Trade Mark" Pianola" (No. 226,382) that it was likely to lead to confusion.
15 The Opponents' Trade' Mark was registered on the 10th of October 1899 in
respect of musical instruments of all kinds included in Olass 9; in their
application it was stated that no claim was made to the exclusive use of the
word "piano." The Applicants delivered a counter-statement denying the
alleg-ed resemblance.
20 The Registrar, acting for the Comptroller, gave his decision on the 13th of
March 1906, and allowed the registration to proceed. In his reasons he stated
that the word "Neola" did imitate the word "Pianola" by adopting the
termination" ola," but that he could not judicially, having regard to existing
decisions, come to the conclusion that the word " Neola" was actively calculated
25 to deceive, and he referred to the fact of the goods not being cheap ones nor
such as were likely to be bought by ignorant people. The Orchestrelle Oompany
appealed from this decision, and the appeal was referred by the Board of Trade
to the Court, Notice of Motion was given by the Appellants accordingly.
The Motion was set down in the witness list, and came on for hearing on
30 the 9th of November 1906 before Mr. Justice PARKER.
Buckmaster K.C. and E~ F. Lever (instructed by Maples, Teesdale & Co.)
appeared for the Appellants; J. F. Waggett (instructed by Oampbelland
Baird) appeared for the Respondents.
Buckmaster K.C. for the Appellants.-This is an appeal by the Orchestrelle
35 Comparut asking that the application of the Pianotist OOlnpany for registration
of "Neola" in connection with musical instruments should not be allowed.
The Appellants are registered for "Pianola" in connection with the same
goods. The Orchestrelle Oompany has carried on an extensive business in
mechanical musical instruments, of which the "Pianola" is the chief. The
40 Orchestrelle Company themselves created the word "Pianola" out of Piano /
and ..tEolian, the first form being "Pianolian." 'I'he word "Pianola" was
registered on the 10th of October 1899, and has been extensively used since.
and means a mechanical piano made by the Orchestrelle Oompany. The
, Pianotist Oompctny also make mechanical instruments and are rivals in trade.
45 Since the Appellants invented and registered the word" Pianola" there have
been several attempts to register words ending in "ola" for similar instru-
ments-e.g., "Phonola" has been refused. The question here is really a
comparison of words: Are the Appellants likely to be interfered with? There
is some difference in appearance, bu.t there is sufficient similarity in sound to
50 cause confusion. Why should the Respondents take this word? [The decision
of the Registrar was read.] The reference of the Registrar is not to reported
decisions, but to decisions of the Office and the Board of Trade. "Humanola "
has been passed by the Board of Trade. Decisions on similar questions of fact

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 776 REPORr.I;S OF PATENT, DESIGN, [Dec. 12, 1906.

In the Matter of an Application by the Piamotist Oompany Ld, for the

Registration of a Trade Mark.

do not much help, but" Savoline" was held to be an infringement of "Savonol"

(Field Ld, v, Wagel Syndicate 17 R.P.C. 266). This is an opposition to a
registration, and is an easier case therefore to support. There is no comparison
here of goods on the market, but of the words. [PARKER J.-Is not the nature
of the goods important ?J No doubt, and. these goods are at present costly; 5
but it does not follow that persons wishing to buy them would be extremely
careful to distinguish the names. The final sounds of the words are identical,
ani there is a tendency to clip or cut off the beginnings of words. I submit
that the reasonable "possibility of confusion" ought to be prevented by the
refusal of the "~T eola." 10
For the Appellants, Messrs. J. A. S. Mackie, their assistant manager, and
0/ W. Lake, of Heseltine, Lake &: 00., Patent and Trade Mark Agents, were
called as witnesses.
For the Respondents, E. H. Klaber, their managing director; J. Pullman,
managing director of Metzler &: Co. Ld., manufacturers of and dealers in 15
musical instruments, and the owners of the "Humanola" ; H. S. Loeffler, in
the employ of Messrs. Cramer &: Co.. ; W. Alloway, trading as Berkhardt &;
Sons, dealers in pianofortes and organs; and G. W. Eshelby, in the employ of
Steinway &; Sons, gave evidence.
The witnesses for the Respondents gave evidence contraverting the suggestion 20
of probability of confusion having regard to the class of customers for such
instruments. They also pointed out that the instrument sold as a "Neola"
was a combined instrument, whereas the" Pianola" was an outside attachment
for a piano. It appeared that the Appellants called their combined instrument
a "Pianola Piano." Mr. Klaber stated that he was connected with a business 25
which used the word "Neostyle" for other goods, and the Respondents first
used that word for their piano player, but changed it to "Neola," "la" being
associated with music. It appeared that the word "Phonola" had been
refused registration, but that the application for the registration of "Humanola "
for a similar instrument had been ordered by the Board of Trade to proceed on 30
appeal from the Comptroller, and that "Triumphola" had been registered.
Evidence was also given of the use of "Claviola" in this country. Other
words ending in " ola " or "la " had been registered in the same class for other
kinds of musical instruments.
Waggett for the Respondents.-N 0 evidence has been given as to confusion, or 35
that the instruments are bought by the spoken name as opposed to the written
one. The Comptroller, having exercised his discretion, the case now turns only
on Section 72.. The Registrar having passed the mark in his discretion, the Court
does not generally go behind the exercise of his discretion. The Appellants are
bound to show that the Trade Mark if honestly used is reasonably calculated to 40
deceive (Kutnow's Trade Mark 10 R.P.C. 401). There is no suggestion here
that the mark will be dishonestly used (Lyndon's Trade Mark 3 R.P.C. 102;
L.R. 32 C.D. 109). One cannot leave out any part of the Appellants' Trade Mark
in comparing the marks (Re Farrow's Trade Mark 7 R.P.C. 260). Regard
must be had to the class of goods and the class of customers. In dealing with 45
some goods sound is of importance, but in a case of this kind it is of little
importance.
Buckmaster K. C. in reply.-There is no evidence that any word ending in "ola "
was used here for such instruments as these before the Appellants registered
"Pianola." There is some evidence of "~riola" in America. Mr. Pullman 50
said he made up "Humanola" because "ola" was associated with musical
instruments. I suggest that it is associated with mechanical instruments;
and that the "ola" in "Neola" was taken for this reason. [PARKER J.-
People often choose a trade mark, not with a vi.ew to identify the goods
as theirs, but with a view to its becoming as soon as possible the trade 5!)
name of the goods themselves.] But if "Pianola" has got to have a

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 Vol. XXIII., No. :32.J AND TRADE lVIARI{ OASES~ 777

Iri the Matter 0}1 an Application by the Pianotisi Comparu) Ld. for the
Registration of a Trade 1J!Iark.

general reference to the class, there is the more likelihood of "Neola"

being deceptive. The probability of confusion is increased by the fact that,
owing to the large sale of our instrument, the terrnination "ola" has got
associated with instruments of the class. The characteristic part is the termi-
5 nation" ola." It is not necessary, for this case at all events, to claim a monopoly
of words in "ola." "Neola'~ is very much nearer than "rrriumphola." 'I'he
Registrar only passed the mark reluctantly. There is no evidence of any other
instruments ending in "ola" being extensively sold. I submit that there is
probability of confusion between the two words,
10 PARKER J.-rrhis is just one of those cases where it is perfectly possible that
another mind, if brought to bear on the subject, might take another view. It
always is so in cases of this sort where you cannot really test whether a confusion
has arisen, but only have to judge from the general appearance or sound of the
t\VO words whether confusion is likely to arise. With regard to the laxv upon the
15 point, it seems to me qnite settled and quite clear. In this case the Cornptroller
has passed the mark for registration and there is opposition. 'I'hat opposition goes
by way of appeal first to the Board of Trade, and the Board of Trade refers it to
the Court, and the Court then gets seisin of the matter, and has to determine, in
the words of the Act, whether the registration is to proceed, and, if so, under what
20 coriditions, if any. 'I'he only point at issue here is whether the limitation put on
the power of the Comptroller by Section 72 of the Act of 1883 is applicable.
That limitation is, reading it shortly and generally, that he is not allowed to
register any goods ha ving such resemblance to a Trade Mark already on the
Register as to be calculated to deceive. That Section has been the su bj ect
25 of judicial decision on many occasions, and I think, without going into the
details of the cases, it may be taken that the law is as follo\vs:-You must
take the two words. You rnnst j udge of them, both by their look and by
their sound. You must consider the goods to which they are to be applied.
You must consider the nature and kind of customer who would be likely to
30 buy those goods. In fact, you must consider all the surrounding circum-
stances; and you must further consider what is likely to happen if each of those
trade marks is used in a normal way as a trade mark for the goods of the
respective ownersof the marks. If, considering all those circumstances, }'OU come
to the conclusion that there will be a confusion -that is to say, not necessarily
35 that one man wi ll be injured and the other will gain illicit benefit, but that there
wi ll be a confusion in the mind of the public which will lead to confusion in
the goods-then you may refuse the registration, or rather you must refuse the
registration in that case. In this particular case we have thls state of circum-
stances, that the Opponents have on the Register the word "Pianola." 'I'he
40 word "Pianola" was undoubtedly invented by them and has been registered,
and is a perfectly good Trade Mark. There is SOllie sort of evidence that it has
become associated in the mind of the pubJic with the Instrument, and not with the
maker of. the instrument -that is to say, that it has lost its primary signification
of denoting an instrument made by a particular manufacturer, and has come to
45 mean a particular class of instrument. That may be so, or may not be so.
There is not any clear evidence on the subject, but some suggestion has been
made with regard to it. Now the rnark which is proposed to be registered,
and which the Registrar has passed, is "N801a," and the argument before me
has taken two lines. In the first place, it is suggested that the importance of
50 the Trade Mark" Pianola" lies in its termination, and that anybody who takes
a word with a similar termination may cause confusion in the mind of
the public. The second way it is put to me is, that the sounds of the
words, although the look of the words may be different, are likely to be so
similar that a person asking for a "Pianola" might have a "Neola" passed off
55 on him, or vice versa. Of course, one knows that the persons who buy these
articles are generally persons of some education, (it is not quite the same as some-
3 S

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 778 REPORTS OF PATENT, DESIGN, [Dec. 12, 1906.

In the Matter of an Application by the Pianotisi ComlJany Ld. for the

Registration of a Trade . ZJ,lark.

body going and asking for washing soap in a grocer's shop) and some considera-
tion is likely to attend the purchase of any instrument of the cost of either of
these instruments, whether it be a "Pianola" or a "Neola." Now, my opinion is
that having regard to the nature of the customer, the article in question, and the
price at which it is Iikely to be sold, and all the surrounding circumstances, 5
no man of ordinary intelligence is likely to be deceived. If he wants a
" Pianola" he will ask for a "Pianola," and I cannot imagine that anybody
hearing the word "Pianola," if pronounced in the ordinary way in the shop,
and knowing the instruments as all shopmen do would be likely to be led to
pass off upon that customer a " Neola" instead of a " Pianola." ] ()
There is another point in the matter-though I do not know that it is very
material-that is, that according to the evidence the "Pianola" is, practically
speaking, an outside attachment, to be attached to the piano. The" Neola," on
the other hand, is a thing where there is no outside attachment at all, but the
mechanical part of the machine is inside the case of the piano, so that anybody 15
who really wanted a " Pianola" and knew what the ,,' Pianola" was would not
be likely to mistake the actual article, even if the "Neola" was tendered
to him, for that which he desired to buy. There is no evidence at all that the
word" Pianola" is applied in any way to the instrument which is sold by the
Orchesirelle Compans] as a " Pianola Piano "-that is to say, a combined instru- 20
ment where there is no attachment, but the mechanical part is inside. Taking
these circumstances into consideration, I do not think that there is likely to be
any confusion, and I think the Registrar was right. A good deal was made of
what the Registrar said in his decision to the effect that he wished people would
choose words as to whioh there could be no possible confusion, and there may 25
be a good deal to be said for that point of view, but I do not think he meant to
suggest that this word was wilfully chosen in order to be, as it were, on the
border line of what was irnproper, and what was not improper.
In my opinion, the evidence points to the fact that this word was chosen for
good reasons and on quito different grounds, and though no doubt a lot of 30
these musical instruments which are in the market have the particular termi-
nation " ola " or " la," the termination in question was adopted quite honestly,
1 think, and without any notion that it could deceive, and I do not think it
could deceive. Therefore, in my opinion, the Motion fails, and the usual
consequences will follow, and the application for registration wi ll proceed in 35
the usual way.

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