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become technical or specific trademarks may become the names of articles or of places of business, and thereby the use thereof receive 536 the protection of the law, cannot be doubted, for the cases everywhere recognize that fact. The learned judge said in Lee v. Haley, L. R. 5 Ch. App. 155: "I quite agree that they (the plaintiffs) have no property right in the name, but the principle upon which the cases on this subject proceed is not that there is property in the word, but that it is fraud on a person who has established a trade and carried it on under a given name, that some other person should assume the same name, or the same name with a slight alteration, in such a way as to induce persons to deal with him in the belief that they are dealing with the person who has given a reputation to the name.” A similar doctrine is declared in Glen etc. Mfg. Co. v. Hall, 61 N. Y. 226, 19 Am. Rep. 278, and also in the late case of Coates v. Merrick Thread Co., 149 U. S. 562. This court said in Pierce v. Guittard, 68 Cal. 71, 58 Am. Rep. 1: “We are of opinion that it is not necessary to decide whether the plaintiff's label, with the accompanying words and devices, constituted a trademark, and as such the exclusive property of the plaintiff, for the reason that it is a fraud on a person who has established a business for his goods, and carries it on under a given name or with a particular mark, for some other person to assume the same name or mark, or the same with a slight alteration, in such a way as to induce persons to deal with him in the belief that they are dealing with a person who has given a reputation to that name or mark.” The same general principle is also recognized and approved in Schmidt v. Brieg, 100 Cal. 672. While in these two cases the fact appears that the defendants were selling an inferior article, and thereby deceiving and defrauding the public, it is not apparent that such fact was a necessary element in pointing the judgment. Neither do we consider it so upon principle, and in cases without number restraining defendants from trespassing upon the goodwill of plaintiff's business such fact was an element foreign to the litigation. It may be said that the adjudged cases for relief are based solely upon the ground of loss 537 and damage to the tradesman's business, by unlawful competition. In Levy v. Walker, Cox's Trademark Cases, No. 639, the learned judge declared: “The court interferes solely for the purpose of protecting the owner of a trade or business from a fraudulent invasion of that business by somebody else. It does not interfere to prevent the world outside from being misled into anything."

While our statutes attempt to deal with trade marks, and provide for the filing thereof with the secretary of state, with accompanying affidavits, etc., yet trade names are equally protected, upon analogous principles of law. And that the words "Mechanics' Store” may be made a trade name, and the user thereof become entitled, under the law, to protection from pirates preying upon the sea of commercial trade, we have no doubt. We think the defendant should be restrained from the use of the words "Mechanical Store.” The court has declared the fact to be, and it is not challenged by defendant, that these words were used as a designation of his store for the purpose of deceive ing the public, and especially plaintiff's customers, and thereby securing the advantages and benefits of the goodwill of plaintiff's business. To say that such conduct upon the part of defendant is unfair business competition is to state the fact in the mildest terms.

In Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 Fed. Rep. 97, Justice Bradley, of the supreme court of the United States, in speaking to the question of similarity in name, said: "It was not identical with the plaintiff's name. That would be too gross an invasion of the complainant's rights. Similarity, not

. identity, is the usual recourse when one party seeks to benefit himself by the good name of another. What similarity is sufficient to effect the object has to be determined in each case by its circumstances. We may say, generally, that a similarity which would be likely to deceive or mislead an ordinary unsuspecting customer is obnoxious to the law.” In this case, the trial court determined that there 638 was a sufficient similarity in the names to deceive the public; that the defendant adopted the name for the purpose of deceiving the public and securing plaintiff's business, and that such results had followed. These things being true, the decree must go against him. The remaining branch of the case presents a novel and original

a proposition of law. In its facts we apprehend no case like it can be found, either in this country or England. The decree orders the defendant to place, both upon the outside and inside of his store, a sign, plainly legible to customers and passers-by, indicating his proprietorship. And while the power of the court to issue mandatory injunctions in many cases must be conceded, yet cases where such power has been exercised have generally involved matters of nuisance, or at least cases where courts have ordered the subject matter of the litigation to be placed in its original condition, as, for instance, the removing of obstructions to ancient lights. But let us for a moment turn our attention to the facts of this

The store of plaintiff was known as the “Mechanics' Store.”

case.

639

By various kinds of advertising, and attention, honesty, and skill in the conduct of the business, it increased the volume thereof and enhanced its goodwill, and throughout the Pacific Coast established for it a wide and honorable reputation as a fair and reliable house with which to deal. Plaintiff erected a store building of peculiar architecture, there being none like it in the city of Sacramento, and defendant thereupon erected a store building immediately adjoining that of plaintiff's, in every respect of similar architecture. It further appears that defendant erected this particular kind of building for the purpose of deceiving the public, and securing the patronage of plaintiff's customers; and for the same purpose he refrained from placing any sign in or upon the building indicating the proprietorship of the business, or designating it in any way so that it might be distinguished from the store of plaintiff. And, by reason of these acts of defendant, many of plaintiff's customers were deceived into purchasing goods in defendants store, believing that they were trading in plaintiff's store; and defendant thus diverted from the plaintiff a large part of its trade and custom, and thereby injured its business and curtailed the value of its goodwill. Upon this bald statement of facts, it cannot be gainsaid that defendant has done the plaintiff wrong, and it is said that for every wrong there is a remedy. These facts certainly indicate a case of unlawful business competition, and courts of equity have ever been ready to declare such things odious. 'Tis strange if plaintiff may be deprived of the fruits of a long course of honest and fair dealing in business by such wicked contrivances, and upon appeal to the courts for relief should be told there was no relief. This cannot be so, for the whole law of trademarks, trade names, etc., is recognized, approved, and enforced for the very purpose of protecting the honest tradesman from a like loss and damage to that which threatens this plaintiff; and the fact that the question comes to us in an entirely new guise, and that the schemer had concocted a kind of deception heretofore unheard of in legal jurisprudence, is no reason why equity is either unable or unwilling to deal with him. It has been said by some judge or law-writer that “no fixed rules can be established upon which to deal with fraud, for, were courts of equity to once declare rules prescribing the limitations of their power in dealing with it, the jurisdiction would be perpetually cramped and eluded by new schemes which the fertility of man's invention would contrive." By device defendant is defrauding plaintiff of its business. He is stealing its goodwill, a most valuable property, only secured after years of honest dealing and large expenditures of money; and equity would be impotent, indeed, if it could contrive no remedy for such a wrong.

The fundamental principle underlying this entire branch of the law is, that no man has the right to sell his goods as the goods of a rival trader. Mr. Browne, in 540 his work upon Trademarks, declares the wrong to be, "Not in imitating a symbol, device, or fancy name, for any such act may not involve the slightest turpitude. The wrong consists in unfair means to obtain from a person the fruits of his own ingenuity or industry, an injustice that is in direct transgression of the Decalogue, 'Thou shalt not covet .... anything that is thy neighbor's.' The most detestable kind of fraud underlies the filching of another's good name in connection with trafficking.” We think the principle may be broadly stated, that when one tradesman resorts to the use of any artifice or contrivance for the purpose of representing his goods or his business as the goods or business of a rival tradesman, thereby deceiving the people by causing them to trade with him when they intended to and would have otherwise traded with his rival, a fraud is committed—a fraud which a court of equity will not allow to thrive.

In Howard v. Henriques, 3 Sand. 725, the court, in speaking of the competitor in business, said: "He must not, by any deceitful or other practice, impose on the public, and he must not, by dressing himself in another man's garments, and by assuming another man's name, endeavor to deprive that man of his own individuality, and of the gains to which, by his industry and skill, he is fairly entitled.” It may well be said that the defendant, by duplicating plaintiff's building, with its peculiar architecture, and immediately adjoining, entering into the same line of business, with no mark of identification upon his store, has dressed himself in plaintiff's garments, and, having so dressed himself with a fraudulent intent, equity will exert itself to reach the fraud in some way. In the leading case of Lee v. Haley, L. R. 5 Ch. App. 155, the whole question is condensed, by the final conclusion of the court, into the principle of law "that it is a fraud on the part of a defendant to set up a business under such a designation as is calculated to lead, and does lead, other people to suppose that his business is the business of another person.” If the same evil results are accomplished 541 by the acts practiced by this defendant which would be accomplished by an adoption of plaintiff's name, why should equity smile upon the one practice and frown upon the other? Upon what principle of law can a court of equity say,

if

you cheat and defraud your competitor in business by taking his name, the court will give relief against you, but if you cheat and defraud him by assuming a disguise of a different character your acts are beyond the law? Equity will not concern itself about the means by which fraud is done. It is the results arising from the means, it is the fraud itself, with which it deals.

The foregoing principles of law do not apply alone to the protection of parties having trademarks and trade names. They reach away beyond that, and apply to all cases where fraud is practiced by one in securing the trade of a rival dealer; and these ways are as many and as various as the ingenuity of the dishonest schemer can invent. In Glenny v. Smith, reported in 11 Jurist (1865), 965, the court held: "Where a tradesman, in addition to his own name upon his shop front, placed upon his sunblind and apon his brass plate the words From Thresher & Glenny' (in whose employment he had been), the court being of opinion that this was done in such a way as to be likely to mislead, and there being evidence that persons had been actually misled, granted an injunction to restrain such a use of the name of the firm 'Thresher & Glenny.'” In Knott v. Morgan, 2 Keen, 213, the "London Conveyance Company” had its omnibuses painted green and its servants clothed in the same colors. Another adopted the same name, and likewise its vehicles were so painted and its servants so clothed. It was conceded that plaintiff could have no exclusive property right in any of these things, but the court issued its injunction, declaring that plaintiff had "a right to call upon this court to restrain the defendant from fraudulently using precisely the same words and devices which they have taken for the purpose of distinguishing their property, and thereby depriving 542 them of the fair profits of their business by attracting custom on the false representation that carriages really the defendant's belong to and are under the management of the plaintiffs.” The author, by a note, approves the doctrine here declared, saying: “There was an obvious attempt to trade upon the plaintiff's reputation, a constructive fraud, coupled with pecuniary loss, which was made the ground for the issuance of a broad injunction.” The same principle is reiterated by the same learned judge in Croft v. Day, 7 Beav. 84, in the following words: "It has been very correctly said that the principle of these cases is this, that no man has a right to sell his own goods as the goods of another. You may express the same principle in a different form, and say that no man has a right to dress himself in colors, or adopt and bear symbols to which he has no peculiar or exclusive right,

AX. ST. REP., VOL 1-5

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