35 Cal. 52, Falkinburg v. Lucy

Citation:35 Cal. 52
Opinion Judge:SANDERSON, Judge
Attorney:Campbell, Fox & Campbell, for Appellants. T. B. Reardon, for Respondents.
Judge Panel:JUDGES: Sanderson, J. Mr. Chief Justice Sawyer delivered the dissenting opinion, in which Mr. Justice Spragueconcurred. SAWYER
Case Date:April 01, 1868
Court:Supreme Court of California

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35 Cal. 52




Supreme Court of California

April, 1868

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Appeal from the District Court, Twelfth Judicial District, City and County of San Francisco.


Campbell, Fox & Campbell, for Appellants.

" Washing powder" is a name denoting quality, and can no more be a trade-mark than superfine flour or sewed boots. (Williams v. Johnson, 2 Bosw. 1; Stakes v. Landgraff, 17 Barb. 608; Amoskeag M. Co. v. Spear, 2 Sandf. 599.) Washing powder designates name and quality, without this aid of user. (2 Douglas, 393; 3 Veas. & Beav. 210; 3 Mylne & Craig, 338; 8 Simmonds, 479; 13 How. Pr. 342, 385; 18 How. Pr. 64.) Defendants must be trying to sell their goods as those of plaintiffs', or no redress. Here defendants sell as made by themselves. (Connor v. Daly, 7 Bosw. 222; see, also, Upton's Trade-marks, 110-118, 200; 18 How. Pr. 421; 28 How. Pr. 206.) The trade-mark Statute of California has made no change in the law governing this case. (Derringer v. Plate, 29 Cal. 292.) All the equities of the complaint are denied by the answer, and the injunction should be dissolved. (9 Cal. 553; 13 Id. 156; 15 Id. 263; 22 Id. 479; 23 Id. 82.)

The affidavits on the part of plaintiffsto contradict the answer were inadmissible. In New York affidavits only are the grounds for granting or dissolving injunctions. (Hoffman's Pro. Rem. 350.) Though pleadings are used, they are treated as affidavits. Practice Act, sections one hundred and thirteen to one hundred and eighteen, allows injunctions to be granted on complaint, and dissolved on answer; treating them, as we claim, as pleadings, and not as affidavits, and draws the distinction between pleadings and affidavits.

T. B. Reardon, for Respondents.

If the statute on trade-marks is, as the counsel for appellants asserts, on the strength of a single phrase in Derringer v. Plate, 29 Cal. 292, merely declaratory of the common law, then the defendants have been guilty of an indisputable infringement on plaintiffs' trade-mark. The Statute, sec. 5, says:

" Every alteration or imitation of any trade-mark or name which has been filed in accordance with section two of this Act, which shall be made, applied, or used, or which shall cause any trade-mark or name with such alteration or imitation to resemble any genuine trade-mark or name, so as to be calculated or likely to deceive, shall be deemed to be acounterfeit trade-mark or name, within the meaning of this Act."

The resemblance need not be such as would not be detected by persons of ordinary intelligence. The character and condition of those usually purchasers of the merchandise has much to do with the consideration of the question of deception. (Upton on Trade-marks, 214, 216, 227; Rolle Rep. 28.)

The substitution of defendants' name and place of business is merely a colorable change from the original trade-mark. Name and place of business are unimportant, and merely colorable variations of the original label. (Clark v. Clark, 25 Barb. 76; Walton v. Crowley, 3 Blatchf. 440.)

The proposition advanced by defendants' counsel, that any one adopting a trade-mark has no right " to either words or symbols which, having no relation to origin or ownership, only designate the name or quality," is directly met by the statute (Sec. 1), which says: " When any person who has complied with the provisions of section 2 of this Act, uses any peculiar name, letters, marks, device, figures, or other trade-mark or name, cut, stamped, cast, or engraved upon, or in any manner attached to or connected with any article, orthe covering or wrapping thereof, manufactured or sold by him, to designate it as an article of a peculiar kind, character, or quality, or as an article manufactured or sold by him," etc.

Had the Legislature intended trade-mark protection only to that portion of a label which indicated origin or ownership, the words " to designate it as an article of a peculiar kind, character, or quality," would hardly have been used, implying that designations of quality, as well as of ownership, were proper subjects for trade-mark appropriation.

The doctrine that a name must indicate origin and ownership to be a subject for the protection of equity, is a leading point in the defense. In broaching this point of the law, I feel that I am approaching the border ground of conflicting decisions. In some, such a narrow principle is totally disregarded (Coffeen v. Brunton, 4 McLean, 519, and Davis v. Kendall, 2 Rhode Island, 566); in others it is maintained with an arbitrary tenacity that would lead one to suspect that it was the exponent of some plain suggestion of reason. I respectfully submit that in the present case it is of no consequence what may be the correct ruling.

Leavingout of view the explicit wording of the statute which puts any peculiar name or any indication of the quality of the article within the province of trade-mark rights, the whole spirit of the decision is, that anything in the label indicating a desire on the part of the imitator to lead the public into the belief that the article manufactured by him is that of another, is an infringement of the rights of the prior manufacturer.

A name may indicate origin and ownership and yet not be a trade-mark. (Thomson v. Winchester, 19 Pick. 214.) A manufacturer may use his own name in such a way as to be guilty of fraud upon a rival. (Sykes v. Sykes, 3 B. & C. 541; see, also, the case of Rodgers v. Nowill, 5 Man. Gr. & Scott, 109.)

It appears that at common law, when the question whether an imitation name is an infringement or not is the subject of discussion, origin and ownership may or may not be elements therein. They form no experimentum crucis by which to analyze the issue. The real question is, whether the imitation would lead an unwary purchaser to purchase a compound so introduced instead of the original.

The courts will not point out exactly what portionsof a trade-mark can be imitated with impunity. (Williams v. Johnson, 2 Bos. S.Ct. 7-9.) The injunction should coincide in extent with the deception worked. (Clark v. Clark, 25 Barb. 76, 80; Coats v. Holbrook, 2 Sandf. Ch. 594; Williams v. Johnson, 2 Bos. S.Ct. 7-9; 4 Abb. Pr. 156; Comstock v. Moore, 18 How. Pr. 42; Coffeen v. Brunton, 4 McLean, 516, 519.)

From the foregoing settled points of the common law of trade-marks, and from the plain and distinct wording of the statute, I deduce the following:

1. That the plaintiffs' trade-mark, consisting as it does of a name: " Standard Soap Company's Concentrated Erasive Washing Powder," of a pictured device, of a peculiar arrangement of type, of " directions," etc., is entitled to protection in every particular, as filed in the office of the Secretary of State.

a. The name " Standard Soap Company" indicates origin and ownership, and puts the entire compound under the rule.

b. Were there no name indicating origin and ownership, but merely the portion " Concentrated Erasive Washing Powder," or " Washing Powder" alone, still the statute clearly gives a trade-mark right to the proprietor toany name which he chooses to adopt, indicating the quality or the character of the compound manufactured.

c. The acts of the defendants in taking wrappers of the same color, type of a similar size and appearance, in using the " directions," and giving to their labels a general similarity, apart from the colorable variation--Excelsior Washing Powder--of the plaintiffs' designation--Concentrated Erasive Washing Powder--are fraudulent, making it probable, as well as possible, that the consumers of the article may mistake the defendants' compound for that of the plaintiffs.

2. The defendants have infringed, by their label, upon every portion of the plaintiffs' trade-mark.

a. They have shown an intention to palm off upon the public their article as and for that of the plaintiffs, by adopting the same name with plaintiffs--" Washing Powder," by making use of colorable variations on that name, using adjectives liable to be confounded by the consumers with those employed by the plaintiffs, and by taking the whole of plaintiffs' label as an entirety for the compound.

JUDGES: Sanderson, J. Mr. Chief Justice Sawyer delivered the dissenting opinion, in which Mr. Justice Spragueconcurred.


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This is an action to recover damages for an alleged invasion of the plaintiffs' right of property in a certain trade-mark, and to restrain the defendants by injunction from further use or imitation. Upon the filing of the complaint an injunction was issued and served, and thereupon the defendants filed their answer and moved to dissolve the injunction upon the complaint and the answer, with the exhibits thereto respectively attached.

At the hearing the plaintiffs offered to read an affidavit made by one of them in contradiction of certain matters contained in the answer. To this the defendants objected upon the ground that the plaintiffs could not use affidavits in opposition to the motion, unless the defendants first used them in support of the motion, which, as was claimed, had not been done. This objection was overruled, the affidavit heard, and the motion to dissolve finally denied. The appeal is from the order refusing to dissolve the injunction. The grounds of alleged error are two:

First. Admitting and considering the plaintiffs' affidavit, as above stated.

Second. Refusing to dissolve the injunction.

1. In view of the conclusion which we have...

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