Avenarius v. Kornely

• Decision Date: 20 May 1909
• Citation: 139 Wis. 247,121 N.W. 336
• Parties: AVENARIUS v. KORNELY.
• Court: Wisconsin Supreme Court

139 Wis. 247

121 N.W. 336

AVENARIUS

v.KORNELY.

Supreme Court of Wisconsin.

May 11, 1909.

Concurring Opinion May 20, 1909.

Appeal from Circuit Court, Milwaukee County; Warren D. Tarrant, Judge.

Action by Richard Avenarius against Jacob Kornely. From a judgment for plaintiff, defendant appeals. Affirmed.

Timlin, Dodge, and Barnes, JJ., dissenting.

This action was brought to restrain the alleged unlawful use of the plaintiff's trade-mark or trade-name “Carbolineum.” The court below sustained the plaintiff's claim and rendered an interlocutory judgment enjoining the defendant from selling his goods under the plaintiff's trade-mark or trade-name “Carbolineum” or any word in imitation thereof. The appeal in this action is from such interlocutory judgment. The court below found as follows:

(1) That said plaintiff is now, and was at all the times hereinafter mentioned, a resident and citizen of the German Empire.

(2) That on December 11, 1871, a treaty was concluded between the United States and the German Empire (17 Stat. 921), which treaty has been at all times hereinafter mentioned, and is now, in force between said countries, and which said treaty provides: “Art. 17. With regard to the marks or labels of goods, or of their packages, and also with regard to patterns and marks of manufacture and trade, the citizens of Germany shall enjoy in the United States of America, and American citizens shall enjoy in Germany, the same protection as native citizens.”

(3) That said plaintiff is engaged, and since the year 1876 has been continuously engaged, in the manufacture and sale of wood preserving paint and liquids, to wit, a high distillate of coal tar, under the firm name and style of Gerbrueder Avenarios, or Avenarius Bros.

(4) That during all said time said plaintiff has continuously called his said product by the name of “Carbolineum,” and has continuously affixed said name, either alone or in connection with other words and indicia, to the cans, barrels, and receptacles containing the same, and still continues so to do, and during all said times has sold and marketed his said product under said name, and so marked with said name in large quantities in Germany and in other European countries.

(5) That said word “Carbolineum” was coined and originated by said plaintiff in analogy to the two Latin words “carbo,” meaning coal, and “oleum,” meaning oil.

(6) That at the time said plaintiff so first used said word “Carbolineum” the same had not been used by any other person for any purpose, and was wholly unknown.

(7) That in the year 1886 said plaintiff first shipped his said product under said name and so marked with said name to the United States, and has ever since said year sold and marketed the same under said name and so marked with said name in large quantities in said United States.

(8) That said plaintiff has widely advertised his said product by said name and designation of “Carbolineum” since the year 1876 in Europe and since the year 1886 in the United States, and that his said product has become widely and favorably known during said time in all said countries under said name and designation as a valuable and useful article of merchandise, and that said reputation and sale of his said product under said name and designation has been of great benefit and advantage to said plaintiff.

(9) That during all said time of plaintiff's said use of said work, both in said European countries and in the United States, said plaintiff has claimed and intended said word as his trade-mark, and as a specific name and designation for his said product, to indicate that the article to which the same was so applied and affixed was the manufacture of said plaintiff, and that said plaintiff has relied upon said name and designation to distinguish his said product with the public, and to indicate its origin, and that his said product is so distinguished with the trade by said name and designation as thus indicating its origin.

(10) That, in accompanying said word “Carbolineum” with said other words and indicia upon the cans, barrels, and receptacles containing his said product, said plaintiff did not intend to abandon or surrender, and did not abandon or surrender, any of his claims or any of his rights to said word “Carbolineum” alone as his trade-mark or his intended trade-mark upon his said product.

(11) That on October 13, 1886, said plaintiff duly applied to the Patent Office of the United States for the registration of said word “Carbolineum,” and that the same was pursuant to said application duly registered in said office on the 8th day of February, 1887, as his trade-mark for preservative liquids, as No. 14,048 of trade-marks. That on April 19, 1889, said plaintiff applied to the Patent Office of the United States for the registration of the words “Carbolineum Avenarius,” and that the same were, pursuant to said application, duly registered in said office on the 9th day of July, 1889, as his trade-mark for preserving paint as No. 16,788 of trade-marks.

(12) That the word “Carbolineum” was first used in Germany, and under the then existing laws of that country it was not and could not become a trade-mark, and the plaintiff could not prevent competitors from using said word as a designation for their similar products.

(13) That the plaintiff procured a patent from the German Empire for a part of the process of manufacturing his said product.

(14) That since the year 1893 the defendant has been and continues to be engaged in the sale of wood preserving paint and liquids, to wit, a high distillate of coal tar.

(15) That plaintiff has abandoned his contention that defendant's said product is inferior to that of plaintiff, but the court finds that said two products differ materially from each other.

(16) That the defendant has bought all of said wood preserving paint and liquid which he has sold from his uncle, George Presser of Gau-Algesheim, who manufactured and sold the same to said defendant, and who in his correspondence with said defendant called the same “Carbolineum Presser,” but who did not affix said word “Carbolineum” to the receptacles in which he sold the same to said defendant. That said defendant first called said preparation “Presser Preservatine,” and continued until the year 1903 to use said name on part of the receptacles in which he sold the same. That said Presserrequested said defendant to use the name “Carbolineum” for said preparation, and informed him that he had a right thus to use said word. That in 1900 or 1901 said defendant began to use the words “Original Carbolineum” with reference to said preparation on his stationery. That in 1902 said defendant called his said preparation “Preservatine, the Original Carbolineum,” in a newspaper advertisement appearing in the Milwaukee Sentinel, and upon some advertising calendars, and began to use labels bearing said name upon pint and quart cans in which he sold said preparation, but continued to label the larger receptacles in which he sold the same with the words “Presser Peservatine.” That in the latter part of 1903 said defendant began to use labels, stationery, and advertising pamphlets in which he called said preparation “Carbolineum Preservatine,” and on said stationery announced that his said preparation was the “oldest on the market.” That late in 1903 or early in 1904 said defendant began extensively to advertise said preparation under said name of “Carbolineum Preservatine” in agricultural papers, poultry papers, and tanners' trade papers having large circulation, and in said advertisement announced that his said preparation was “30 years on the market,” and that defendant has continued to use said last-mentioned labels and stationery up to the time of trial in this action, and has continued up to said time extensively so to advertise his said preparation. That all said various uses of said word “Carbolineum” by said defendant have been without said plaintiff's consent. That there is no evidence that plaintiff or any one representing him knew before the year 1903 of said defendant's use of said word “Carbolineum.”

(17) That a trade-mark for the aforesaid product of said George Presser was officially registered in the proper department of the German Empire on the 5th day of June, A. D. 1895, of which the following is a fac simile:

IMAGE

That said trade-mark ever since has been and still is in full force and effect.

(18) That the acts of said defendant in thus using said word “Carbolineum” have been and are calculated to deceive, and do deceive, the users of wood preserving paints and liquids into purchasing the product of said defendant as and for the product of said plaintiff in the belief that the same is the product of said plaintiff, and that said acts of said defendant were done with the intent and purpose of so deceiving said users of such products, and of thus obtaining the benefit of plaintiff's said advertising, and of the reputation of his said product and the good will of his said business.

(19) That said defendant's said use of said word “Carbolineum” has been repeated and continuous, and has damaged said plaintiff.

And, as conclusions of law, the court found:

(1) That said word “Carbolineum” denotes origin and constitutes the trade-mark of said plaintiff.

(2) That said use of said word “Carbolineum” by said defendant constitutes an infringement of plaintiff's said trade-mark, and upon his rights under said trade-mark.

(3) That plaintiff has sustained damages as a result of said infringement by said defendant.

(4) That plaintiff is entitled to the relief demanded in his complaint.

(5) That all patents obtained by said plaintiff in respect to his said product have expired.

The defendant excepted to the findings and to the refusal to find as requested.

C. M. Scanlan and L. C. Wheeler, for appellant.

Otto Dorner (Theodore Kronshage, of counsel), for respondent.

KERWIN, J. (after stating the facts as above).

The findings of...