Giant Mart Corp. v. Giant Discount Foods, Inc., 37285

• Decision Date: 07 July 1981
• Docket Number: No. 37285,37285
• Citation: 247 Ga. 775,279 S.E.2d 683
• Parties: , 217 U.S.P.Q. 189 GIANT MART CORP. v. GIANT DISCOUNT FOODS, INC.
• Court: Georgia Supreme Court

Page 683

279 S.E.2d 683

247 Ga. 775, 217 U.S.P.Q. 189

GIANT MART CORP. v. GIANT DISCOUNT FOODS, INC.

No. 37285.

Supreme Court of Georgia.

July 7, 1981.

Lawrence C. Walker, Jr., Michael G. Gray, Walker, Clarke, McConnell, Richardson & Hulbert, Perry, for Giant Mart Corp.

Edwin S. Varner, Jr., Warner Robins, for Giant Discount Foods, Inc.

CLARKE, Justice.

Giant Discount Foods, Inc., appellee here, sued to enjoin the use of the names "Giant" and "Discount Foods" by appellant in the operation of its business in Warner Robins, Georgia. The evidence authorized a finding that appellee operated a store in Warner Robins bearing the name and generally recognized in the community as Giant Discount Foods. The name was registered as a trade name with the Clerk of the Superior Court of Houston County. Several years later, appellant which operated food stores in several Georgia locations under the name Giant Mart, opened a store in Warner Robins using this name. In its advertising and on its on-premises signs, appellant tied to its official name the phrase "Discount Foods." The effect of this act was to adopt the name "Giant Mart Discount Foods."

The result of this act was to create confusion among the members of the public and suppliers to the two businesses. The trial court found that because of this confusion, substantial and meaningful inconvenience and difficulty was inflicted upon appellee in that numerous man-hours have been consumed by appellee's employees in attempting to correct errors made by confused customers and suppliers. The trial court concluded that while the word "giant" is a descriptive word which would otherwise be incapable of exclusive appropriation, it has nonetheless acquired a particular meaning in the mind of the trading public in Warner Robins as designating a particular trader. The extensive advertising by appellee using both the name Giant Discount and the logo of a giant has contributed to the creation of a secondary meaning to the word. Therefore, the trial court permanently enjoined appellant's use within the immediate trade area of Warner Robins, Georgia, of the trade names "Giant Mart", "Giant Mart Discount Foods", or any confusingly similar combination of said words which include the word "Giant."

In its appeal, appellant assigns error to the court's ruling that the word "Giant" has acquired a secondary meaning and has been exclusively appropriated by appellee. Appellant further contends the court erred in holding that the trade names "Giant Mart" and "Giant Discount Foods" were confusingly similar and, therefore, the proper subject of injunctive relief.

Trade names are protected by statute in Georgia as well as by common law. Code Ann. § 106-101, et seq., deals with protection of trademarks, service marks, labels and advertising through registration with the Secretary of State. Injunctive relief and damages are available pursuant to §§ 106-111, 112, as protection against copying, counterfeiting or imitating registered trade names. The provisions of Code Ann. § 106-101, et seq., concerning registration are permissive rather than mandatory. Registration will not operate to deprive another of a previously acquired trade name. Womble v. Parker, 208 Ga. 378, 67 S.E.2d 133 (1951).

Under Code Ann. § 106-115 any entity using a registered or unregistered trade name may seek to have subsequent use by another of the same or similar trade name enjoined "... if there exists a likelihood of injury to business reputation or of dilution of the distinctive quality of the ... trade name ..., notwithstanding the absence of competition between the parties or of confusion as to the source of goods or services ...." To obtain an injunction under Code Ann. § 106-115, plaintiff must show, first, that the trade name sought to be protected is "... one of such originality as to be capable of exclusive appropriation, or one not capable of exclusive appropriation but which has acquired secondary meaning ...." Dolphin Homes Corp. v. Tocome Development Corp., 223 Ga. 455, 458, 156 S.E.2d 45 (1967). A secondary meaning may attach to generic and geographical names and names composed of merely descriptive words which "... by long use in connection with the business or trade, come to be understood by the public as designating the goods, services, or business of a particular trader ...." Saunders System Atlanta Co. v. Drive It Yourself Co. of Georgia, 158 Ga. 1, 2, 123 S.E. 132 (1924).

A second requirement for relief pursuant to Code Ann. § 106-115 is that plaintiff show injury to business reputation by dilution of the distinctive value of the trademark, trade name, label or form of advertisement by a subsequent user.

Code Ann. § 37-712, which stems from the law of unfair competition, provides equitable relief from the attempt to encroach upon the business or trade of another by use of similar trademarks, names or devices with the intention of deceiving and misleading the public. Relief under § 37-712 depends upon a showing of intent to deceive. However, this intent may be presumed if encroachment is done with knowledge of the prior right. Womble v. Parker, 208 Ga. 378, 67 S.E.2d 133 (1951); Thompson v. Alpine Motor Lodge, Inc., 296 F.2d 497 (5th Cir. 1961).

In 1968, the General Assembly added yet another source of relief for the victim of trademark or trade name infringement, the Uniform Deceptive Trade Practices Act, Code Ann. § 106-701, et seq. (Ga.L.1968, p. 337). Section 106-702(a) describes the trade practices which are subject to injunction. These include passing off goods or services as those of another, (§ 106-702(a) (1)), causing likelihood of confusion or misunderstanding as to the source, sponsorship, approval or certification of goods and services, (§ 106-702(a) (2)), causing a likelihood of confusion or misunderstanding as to affiliation, connection, association with, or certification by...