Atlas Assur. Co. v. Atlas Ins. Co.

• Decision Date: 10 June 1907
• Citation: 138 Iowa 228,112 N.W. 232
• Parties: ATLAS ASSUR. CO. v. ATLAS INS. CO.
• Court: Iowa Supreme Court

138 Iowa 228

112 N.W. 232

ATLAS ASSUR. CO.

v.ATLAS INS. CO.

Supreme Court of Iowa.

June 10, 1907.

Appeal from District Court, Polk County; Hugh Brennan, Judge.

Suit in equity, brought by the Atlas Assurance Company against the Atlas Insurance Company; both being corporations doing a fire insurance business in the state of Iowa, wherein the plaintiff seeks to restrain the defendant from in any manner using the trade-mark, symbol, or device of the plaintiff. There was a decree in the plaintiff's favor, from which the defendant appeals. Affirmed.Berryhill & Henry, for appellant.

A. H. McVey, for appellee.

SHERWIN, J.

The plaintiff was organized as an insurance company in 1808, under the laws of Great Brittain, and under name of the “Atlas Assurance Company.” In 1842, the word “Limited” was added, so that the name of the plaintiff since that time has been the “Atlas Assurance Company, Limited.” It was authorized to do fire insurance business in the state of Iowa in 1892, and has continued to receive each year from the state a permit to do business herein, and has paid the state the taxes required by law for such purpose. In addition to the name “Atlas,” it uses upon its policies of insurance, letter heads, advertising matter, etc., the well-known device of Atlas supporting the world upon his shoulders, which device the plaintiff has used constantly since its organization in 1808. In 1892, a mutual insurance company was organized in Des Moines under the name “Iowa Business Men's Mutual Fire Insurance Company.” In January, 1897, this name was changed to the Atlas Mutual Fire Insurance Company. In March, 1905, a company was organized in Des Moines to do a fire insurance business and incorporated under the laws of this state under the name of the “Atlas Insurance Company.” It is a stock company, with a capital stock of $100,000, and in August, 1905, it reinsured all outstanding risks of the Atlas Mutual Fire Insurance Company, and it has continued from the date of its organization to the present time, and is now using the device of Atlas supporting the world upon his shoulders; the device being identical in all respects with the same device used by the plaintiff. The defendant has also used the name “Atlas” in its business and on its policies, letter heads, cards, etc., and is now so using it under the name Atlas Insurance Company. It uses letter heads as follows: “Atlas Insurance Co.” in bold-faced type at the head of the sheet, and below that for a date line the words “Des Moines, Iowa,” without any other designation than the name “Atlas Insurance Co.” to indicate that it is an Iowa insurance company. On such letter heads the device Atlas is also used. It issues cards as follows. “Atlas Insurance Company, Des Moines, Iowa.” The policies issued by it, however, so far as the record shows, bear upon their face these words, in addition to the name of the company, “of Des Moines, Iowa.” This suit was brought by the plaintiff to enjoin the defendant from using the word “Atlas,” and from using the device of Atlas, as hereinbefore stated. After hearing the testimony in the case, the trial court entered a decree finding the issues in favor of the plaintiff, and enjoining the defendant from using either the word or the device “in its present form.”

The appellant contends that, because the plaintiff is a foreign corporation doing business in this state only by comity, it cannot maintain an action of this kind against an Iowa corporation; but there is nothing in this contention. As a general rule, the courts of the United States and those of the several states recognize the right of the owners of trade-marks or of trade-names to protect such trade-marks and trade-names against piracy, no matter where such owners reside. State v. Gibbs, 56 Mo. 133;Peck Bros. v. Peck, 113 Fed. 300, 51 C. C. A. 251, 62 L. R. A. 81; Taylor v. Carpenter, 3 Story, 458, Fed. Cas. No. 13,784. In the latter case, Mr. Justice Story said: “It is suggested that the plaintiffs are aliens. Be it so. But in the courts of the United States, under the Constitution and laws, they are entitled, being alien friends, to the same protection of their rights as citizens. There is no pretense to say that, if a similar false imitation and use of the labels of a citizen put upon his own manufactured articles had been designedly and fraudulently perpetrated and acted upon, it would not have been an invasion of his rights, for which our law would have granted ample redress. There is no difference between the case of a citizen and that of an alien friend, where his rights are openly violated.” See also, Brown on Trade-Marks, 143; Hopkins on Trade-Marks, § 13; Baker v. Baker, 53 C. C. A. 157, 115 Fed. 297.

The appellant further says that the plaintiff never had, and cannot have, any rights in the use of the figure of Atlas as a trade-mark, symbol, or device, because of the character of its business. It says that an examination of the adjudicated cases will show that, wherever a trade-mark or trade-name has been protected by a court of equity, it will be found to have been used in connection with some manufactured article. But no matter what the adjudicated cases may show in this respect, it probably arises from the fact that a precisely similar case has not heretofore been passed upon. To hold that a trade-name or a trade-mark shall receive the protection of the court only when used in connection with the manufacture of some article of commerce would be adopting an extremely narrow view of the matter, and leave large financial interests engaged in other lines of business wholly without the protection of the court, so far as a trade-mark or trade-name is concerned, and open to general piracy. We are not willing to sanction any such rule, and see no reason why the rule should be so limited.

The appellant further contends that there is such a difference in the names of these two companies that the plaintiff is not entitled to the relief sought. What degree of resemblance between the names or devices is sufficient to warrant the interference of a court in cases of this kind is not capable of exact definition. It is, and must be, from the very nature of the case, mainly a question of fact, to be determined by the circumstances appearing in each particular case. In general, it may be said that, if the resemblance is such as to mislead purchasers or those doing business with the person or corporation using the name, who are acting with ordinary caution, this is...