Computing Cheese Cutter Co. v. Dunn

• Decision Date: 30 April 1909
• Docket Number: No. 6,291.,6,291.
• Citation: 88 N.E. 93,45 Ind.App. 20
• Parties: COMPUTING CHEESE CUTTER CO. v. DUNN et al.
• Court: Indiana Appellate Court

45 Ind.App. 20

88 N.E. 93

COMPUTING CHEESE CUTTER CO.

v.DUNN et al.

No. 6,291.¹

Appellate Court of Indiana.

April 30, 1909.

Appeal from Circuit Court, Madison County; John F. McClure, Judge.

Action by the Computing Cheese Cutter Company against Frank P. Dunn and others for an injunction. From a judgment for defendants, plaintiff appeals. Reversed.Bagot & Bagot, for appellant. Kittinger & Diven, for appellees.

ROBY, J.

This appeal is taken from a judgment, rendered against appellant upon its refusal to plead further after a demurrer for want of facts has been sustained to its complaint. The averments of that pleading show that the appellant was incorporated under the law of this state, on May 7, 1903, its name and address being “Computing Cheese Cutter Company,” Anderson, Ind. That it took over and succeeded to the property and good will of a partnership which was conducted under the same name, its business being the manufacture and sale of a machine or device known as a “cheese cutter.” That it has at large expense advertised said machine throughout the United States and Canada, and has an extensive and profitable trade throughout said territory, a large part of which consists of orders forwarded through the mail. That on account of its location and name mail is addressed to it by other than its exact name, as “The Anderson Cheese Cutter Company,” “The Anderson Cheese Cutter,” “The Anderson Computing Cheese Cutter,” “The Anderson Computing Cheese Cutter Company,” “The Cheese Cutter Company of Anderson,” “Cheese Cutter Company,” “The Cheese Cutter Company of Anderson,” as well as by its true and exact name, “Computing Cheese Cutter Company,” and the plaintiff was, on the 18th day of March, 1904, and prior thereto, and ever since said time, often addressed by its customers and the public generally throughout the United States mails, in all and each of said names, and, the orders were during all of said time sent to said plaintiff by each and all of said names, and divers and many and various sums of money were remitted to the plaintiff by each and all of said names by the medium of the United States mails. That its business was and is of great value on account of the advertisement, manufacture, and sale of a machine which gives satisfaction to the purchasers, and is popular with the trade. That the defendants, in March, 1904, conspired together for the purpose of pirating plaintiff's business, and wrongfully depriving it of trade which would come to it by reason of its reputation and trade-name. That they incorporated a company under the name of the “Anderson Cheese Cutter Company,” and then and there engaged in the manufacture and sale of a cheese cutter resembling plaintiff's machine in style and appearance, and by the means of such resemblance, the similarity of names, and the identity of location are deceiving the public and plaintiff's customers, thereby securing orders and profits intended for the plaintiff. The defendants have demanded, and are now demanding and receiving, all mail which comes to the Anderson post office addressed other than by plaintiff's true and exact name, and have thereby wrongfully obtained a large amount of business intended for plaintiff. That they are filling orders intended for plaintiff and answering its mail, whereby plaintiff has lost, and is losing, a large portion of its business and the profits thereof. Many other averments are made which need not be here noticed. The prayer is for an injunction and damages.

The law of trade-marks, trade-names, and unfair competition has of late years been the subject of much judicial consideration. It would be useless to cite or review the many cases involving infringement of trademarks. The sufficiency of the pleading under consideration depends upon whether or not its averments bring the case within the principle that “Nobody has any right to represent his goods as the goods of somebody else.” Sexio v. Provedende (1866) L. R. 1 Ch. App. 192; Reddaway v. Banham (1896) A. C. 199; Saxlehner v. Appolinaris Co. (1897) 1 Ch. 893, 899; Pillsbury-Washburn Flour Mills Co. v. Eagle, 86 Fed. 608, 30 C. C. A. 386, 41 L. R. A. 162, 166. “When a person or business corporation has assumed the name of some other firm or corporation in the same line of business, or has adopted a name which so closely resembles that of a business rival, previously established, that the business of the latter is liable to be diverted and the public deceived on account of it, it has always been recognized as within the power or jurisdiction of a court of equity to restrain such person or new company from conducting business under the name assumed, to the detriment of the older company.” Plant Seed Co. v. Michel Plant & Seed Co., 37 Mo. App. 313. The question of the right to relief against the infringement of a trade-name in a given case depends upon the circumstances surrounding the adoption and advertisement of the name complained of, as much as upon its similarity to that of the complainant. The question in every case is whether the defendant is in fact attempting to sell his goods as the goods of some one else. When this fact is found, a basis for relief is established. The fact is to be found, as other facts, from the evidence, including therein all the relevant circumstances and conditions. Identity of name may not in itself be sufficient. A lack of identity in name will not always suffice to prevent relief being extended to one whose trade is being stolen. “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 sufficient.” Atlas Assurance Co. v. Atlas Insurance Co. (Iowa) 112 N. W. 232, 15 L. R. A. (N. S.) 625;McLean v. Fleming, 96 U. S. 251, 24 L. Ed. 830;Schmidt v. Brieg, 100 Cal. 672, 35 Pac. 623, 22 L. R. A. 790;California Fig Syrup Co. v. Improved Fig Syrup Co. (C. C.) 51 Fed. 296;Wirtz v. Eagle Bottling Co., 50 N. J. Eq. 164, 24 Atl. 658. The use of a similar name, under such circumstances as to show an intention to deceive the public, and thereby deprive the appellant of its property, is in fraud of the person whose property is thus despoiled. The fertility of man's invention in devising new schemes of fraud is so great that the courts of equity have declined the hopeless attempt of embracing in formula all varieties of form and color, reserving to themselves the liberty to deal with it under whatever form it may present itself. As new devices of fraud are invented, they will be met by new correctives. Kerr, Fraud and Mistake, p. 1. When one is called upon to meet a charge of fraud, and that is the essence of unfair competition, he cannot segregate the various items of evidence which are presented, and justify the fraud by his right to separately do them. A man has a right to trade horses, to praise his own horse, to dye the white foot black, to file teeth and administer remedies for heaves, but it is necessary to exercise these undoubted “rights” with much circumspection, for otherwise under certain circumstances they justify, and indeed require, the inference of fraud.

Ordinarily the use of such a name as the one chosen by appellee, “The Anderson Cheese Cutter Company,” could not be restrained. A word indicating the locality of manufacture (as Anderson) may be used by any one who can truthfully do so (Del. & H. Canal Co. v. Clark, 80 U. S. 311, 20 L. Ed. 581; Elgin Butter Co. v. Elgin Creamery Co., 155 Ill. 127, 40 N. E. 616;Telephone Mfg. Co. v. Telephone Mfg. Co., 63 S. C. 313, 41 S. E. 322), unless by long-continued use by another such word has gained a secondary meaning (Am. Waltham Watch Co. v. U. S. Watch Co., 173 Mass. 85, 53 N. E. 141, 43 L. R. A. 826, 73 Am. St. Rep. 263;Pillsbury-Washburn Flour Mills Co. v. Eagle, 86 Fed. 608, 30 C. C. A. 386, 41 L. R. A. 162;Elgin Nat. Watch Co. v. Ill. Watch Co., 179 U. S. 665, 21 Sup. Ct. 270, 45 L. Ed. 365); and one company cannot gain the right to the exclusive use of words such as “cheese cutter,” which are merely descriptive of the goods to which they are applied (28 Am. & Eng. Encyc. L. 369), but an exclusive or proprietary right in words is not necessary to obtain an injunction against unfair competition in trade by the deceptive use of such words (Pillsbury-Washburn Flour Mills Co. v. Eagle, supra). In the case last cited it is said, quoting from Kinney v. Basch (N. Y.) 16 Am. Law Reg. (N. S.) 596: “It has been urged, upon the part of defendants, that geographical names cannot be the subject of a trade-mark; neither can numerals which only serve to indicate the nature, kind, or quality of an article. It is true that the cases cited by defendants sustain these propositions; but the later cases have proceeded upon different and more equitable principles in defining the grounds upon which courts of equity interfere in cases of this description. This interference, instead of being founded upon the theory of protection to the owners of trade-marks, is now supported mainly to prevent fraud upon the public. If the use of any words, numerals, or symbols is adopted for the purpose of defrauding the public, the courts will interfere to protect the public from such fraudulent intent, even though the person asking the intervention of the court may not have the exclusive right to the use of these words, numerals, or symbols. This doctrine is fully supported by the latest English cases.” A review of cases in which similar contention to that of appellee was made is contained in Pillsbury-Washburn Flour Mills Co. v. Eagle, supra, and...