Scottish Court of Session Decisions

This was a note of suspension and interdict at the instance of Toni Tyres, Limited, incorporated under the Companies Acts 1862 to 1900, and having its registered office at 212 Shaftesbury Avenue, London, with consent and concurrence of Francesco Toni, 56 Berners Street, London, and the said Francesco Toni, against the Palmer Tyre, Limited, having its registered office at 15 Martineau Street, Birmingham, designed as carrying on business in London, and at 8 Buchanan Street, Glasgow.

The complainers craved the Court to interdict the respondents from manufacturing, selling, disposing, or using within Scotland any pneumatic tyres with wheel rims and means of attaching pneumatic tyres to wheel rims, made in accordance with the invention described in the specification filed relative to certain letters-patent, dated 13th August 1903, granted to the complainer Toni, and from infringing the patent rights of the complainers within Scotland.

(The interdict originally craved in the prayer of the note extended to Great Britain and Ireland, but by an amendment made in the Procedure Roll it was limited to Scotland.)

The complainers, after setting forth the nature of the invention for which they held the patent, averred that the respondents “were at the date of the presentation of the note exhibiting and offering for sale tyres with wheel rims and flanges of a similar description at a motor and cycle show being held in the Waverley Market, Edinburgh. They had a stall at that show with a large signboard bearing the respondents' name. They had there a large supply of tyres and tyre attachments and other goods, and they solicited and took orders there for the sale thereof. They also distributed their catalogues at the show and throughout Scotland, and they offered for sale tyres and rims made according to the said flange attachment to many persons at the show and also throughout Scotland, by correspondence and otherwise.”

The complainers further averred as follows:—“The respondents carry on business at 8 Buchanan Street, Glasgow. Their name is on a brass plate at the side of the entrance door. They keep a stock of Palmer tyres and other goods there for sale. Orders sent to them there are executed by them, and invoices are sent out to the purchasers, in name of the respondents. They announce in their trade catalogues that they have a branch depot there, and also a registered telegraphic address, viz., ‘Silvergray, Glasgow,’ and that they are on the telephone in Glasgow at that address. They are entered in the Glasgow Post Office Directory, with their sanction, as having a warehouse there. In point of fact, they are on the telephone in Glasgow, and have a postal, telegraphic, and telephonic address at 8 Buchanan Street there. The note of suspension and interdict was served on the respondents there, and also at the registered office of the company, and a copy sent to their known agents.”

In their answers the respondents admitted that they had adopted a flange attachment of tyres which they had exhibited in Edinburgh. They denied, however, that they had in any way infringed the rights of the complainers under their alleged letters-patent.

They further averred as follows:—The respondents have no office or place of business in Scotland, and are not subject to the jurisdiction of the courts of Scotland. In prticular, they have no office or place of business at 8 Buchanan Street, Glasgow, where the pretended intimation or service of the present note of suspension and interdict was made. In any event the courts of Scotland are not a convenient forum for adjudicating upon the subject-matter of the present action. The complainers and respondents are both English companies, and are both subject to the jurisdiction of the English courts, in which the respondents are ready and willing to answer any writ or action which the complainers may bring against them with reference to the subject-matter of the present process. Further, all or nearly all the necessary witnesses, and the whole documents, plans, models, &c., relative to the case, are in England, the courts of which country accordingly afford the most convenient forum for the adjudication of all questions arising under the present action.”

The complainers pleaded, inter alia—“(1) The respondents are subject to the jurisdiction of the Court, in respect that—(1st) At the date of presentation of the note they were carrying on business in Scotland, and had a warehouse, branch depot, postal, telegraphic and telephonic address at 8 Buchanan Street, Glasgow. (2nd) At said date they were offering for sale at a stall in the exhibition in Edinburgh tyres and attachments made in contravention of the complainers' patent, and by the circulation of their trade catalogues and by correspondence they were offering such for sale in Scotland generally. (3rd) The Court in Scotland is the proper Court to grant interdict within Scotland against the continuance of the wrongdoing complained of.”

The respondents (in addition to their pleas on the merits) pleaded—“(1) No jurisdiction; and (2) Forum non conveniens.”

On 15th November 1904 the Lord Ordinary ( Stormonth Darling) repelled the first and second pleas-in-law for the respondents,

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and allowed the parties a proof of their averments.

Opinion.—“The averment that the respondents are subject to the jurisdiction of this Court in respect of their having a place of business in Scotland is certainly rather bare. At the same time in a proceeding of this kind it is probably sufficient, for I read it as meaning that the respondents have a right to the possession of heritage in Scotland. If that had been the only ground of jurisdiction averred I should at present have limited the proof to the question of jurisdiction. As it is I am not prepared to restrict the proof in that way if the complainers are ready to amend their prayer so as to limit the scope of the interdict craved to Scotland. The remedy sought is purely preventive. It is not petitory or declaratory. It is directed purely to prevent the respondents repeating a delict or quasi-delict which the complainers say the respondents have in the past committed in Scotland. In an action ratione delicti for the purpose of preventing the repetition of a delict I cannot doubt that the courts of the territory have jurisdiction over a foreigner though he is not found within the territory. It is necessary he should be so found when the ground of the action is founded on contract, but not when the ground is a delict or quasi-delict and the remedy asked is purely preventive. Way-good's case is authority for that, and it is not inconsistent with the other judgments cited, such as Kermick v. Watson, where the quasi delict was a slander, and where the jurisdiction of the Sheriff would not have been sustained if the defender had not been served within the county, for the jurisdiction of the Sheriff over foreigners on this ground never extends to the case where the foreigner is not cited within the sheriffdom. The cases are therefore not inconsistent, and the principles of international law are in favour of allowing jurisdiction though there has been no personal service within the country.”

The respondents reclaimed, and argued—(1) On the Question of Jurisdiction—The respondents were an English company and were not subject to the jurisdiction of the Court. They had no place of business in Scotland. The mere fact of transacting business there was not sufficient— Laidlaw v. Provident Plate Glass Insurance Co., Limited, February 28, 1890, 17 R. 544, 27 S.L.R. 354. To constitute jurisdiction against a foreigner who had no place of business in Scotland it was essential that he be duly convened by personal service within Scotland— Sinclair v. Smith, July 17, 1860, 22 D. 1745; Longworth v. Hope, July 1, 1865, 3 Macph. 1049; Kermick v. Watson, July 7, 1871, 9 Macph. 984, 8 S.L.R. 628; Parnell v. Walter, February 5, 1889, 16 R. 917, 27 S.L.R. 1; Maxwell v. Horwood's Trustees, January 30, 1902, 4 F. 489, 39 S.L.R. 341. The case of Waygood v. Bennie, February 17, 1885, 12 R. 651, 22 S.L.R. 413, relied on by the respondents, was exceptional. In that case leave was granted by the English court to serve the writ in Scotland; it was a case of statutory service. The real question at issue here was the validity of the patent. Both parties were English, and there was no previous instance of two English parties trying the validity of a patent in Scotland. The preventive jurisdiction against wrongdoing on which the complainers founded was limited to and could only be exercised by the Bill Chamber, and if the preventive jurisdiction of the Bill Chamber were now to be extended to the Court of Session the result would be a sweeping assertion of jurisdiction by the Court. The preventive remedy granted in the Bill Chamber was summary, and was given on the spot whether the wrongdoer was domiciled in Scotland or not. It was purely an interim remedy, and the summary jurisdiction which it exercised was quite inappropriate for determining questions of right. The mere fact of “passing the note” did not confer any jurisdiction on the Court of Session to deal with the merits of the case—A.S. 24th December 1838 (Bill Chamber Proceedings). (2) As to the Plea of Forum non conveniens—The case would be more suitably tried in the English courts. Both parties were resident there; evidence of infringement was equally available there; and the remedy sought could be obtained there— Tulloch v. Williams, March 6, 1846, 8 D. 657; Williamson v. North-Eastern Railway Co., February 28, 1884, 11 R. 596, 21 S.L.R. 421; Marshall v. Marshall, L.R., 38 C.D. 330. A decree got in England as to the validity of the complainers' patent would be effectual in Scotland, for the patent was a British patent, and any remedy granted in England would be as wide as the application of the patent. The interdict now craved was limited to Scotland, and could not be enforced in England.

Argued for the respondents—(1) As to the Question of Jurisdiction—The remedy asked was purely preventive, and personal citation was unnecessary— Waygood v. Bennie, supra. In cases of wrong doing and quasi-delict like the present the rule as to personal citation being necessary was inapplicable. That rule applied to cases of contract and not to cases of delict. Service was in fact made at the registered office of the company in Glasgow (as well as at their office in Birmingham), and that was the only way in which a railway company could be cited. There could be no personal service on a company. The Court had jurisdiction to prevent wrongs being committed in Scotland by foreigners on Scottish subjects, otherwise the result would be that in the case of such offences as were wrongs by the law of Scotland, but not by the law of England, Scottish subjects would have no remedy. There was no preventive jurisdiction in the Bill Chamber as distinguished from the Court of Session. The Court of Session as matter of fact exercised its preventive jurisdiction through the Bill Chamber, but it was one and the same jurisdiction whether it was exercised by the Court of Session or by the Bill Chamber. In Waygood v. Bennie, supra, the Court of Session held that the English Court had jurisdiction to prevent wrongs being done

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in England by persons domiciled in Scotland, and this case was just the converse, e.g., the prevention of wrongs in Scotland by persons resident in England. The Court had clearly jurisdiction to prevent such wrongs being committed in Scotland. (2) As to the Plea of Forum non conveniens——It had not been shown that any injustice would result from the case being tried in Scotland, and to sustain the plea of forum non conveniens it was essential that that should be shown— Longworth v. Hope, sup. No question of English law was involved, nor was any investigation into the company's books required. The wrongs complained of were committed in Scotland, and no proceedings had been taken or were proposed to be taken by the complainers in England. An injunction granted in England would not cover acts done by the servants of the company in Scotland. Moreover, any injunction obtained from the English courts could not be enforced in Scotland without a supplementary application to the Scottish courts.