Hygeia Distilled Water Co. v. Hygeia Ice Co.

• Decision Date: 01 June 1898
• Citation: 40 A. 534,70 Conn. 516
• Parties: HYGEIA DISTILLED WATER CO. v. HYGEIA ICE CO.
• Court: Connecticut Supreme Court

40 A. 534

70 Conn. 516

HYGEIA DISTILLED WATER CO.

v. HYGEIA ICE CO.

Supreme Court of Errors of Connecticut.

June 1, 1898.

Appeal from superior court, New Haven county; Alberto T. Roraback, Judge.

Suit by the Hygeia Distilled Water Company against the Hygeia Ice Company to restrain infringement of plaintiff's trade mark. Judgment for plaintiff. Defendant appeals. Reversed.

The complaint consists of three counts, in each of which it is alleged, in substance, that the plaintiff is the owner of a trademark or name consisting of the word "Hygeia," and has the sole and exclusive right to use the same in connection with the business of making and selling distilled water, and products mad§ therefrom; and in each of them it is also alleged, in substance, that the defendant has wrongfully used and is wrongfully using said word in connection with its business of making and selling distilled water and the products thereof. The first count relates to the wrongful use by the defendant of the word "Hygeia" in its corporate name; the second, to the wrongful use by the defendant of said word as a trademark, or name to designate its products; and the third charges, in substance, that the defendant adopted and used said word in its corporate name, and in its business, fraudulently, to the great damage of the plaintiff. The first defense to each count is, in substance, a general denial of the material facts alleged. The second defense to all the counts alleged, in substance, a prior and concurrent use of the word "Hygeia" by others, and that the defendant had so marked its goods as to prevent confusion. The second paragraph of the second defense reads as follows: "(2) The word 'Hygeia' has been in use for a great many years by different corporations and partnerships in connection with their business,—both ice and water companies—and was in use long before the plaintiff claims to, or did in fact, use the same in connection with its business, especially by the Waukesha Hygeia Mineral Springs Company, of Chicago, III., and Waukesha, Wis., who on the 14th day of March, 1893, registered their trade-mark in the patent office of the United States, a copy of which is hereunto annexed, and marked 'Ex. A.'" In Exhibit A, referred to in this second defense, the Waukesha Mineral Springs Company, an Illinois corporation, claims for its trade-mark, in the business of dealing in natural mineral water and beverages made therefrom, the word symbol "Hygeia"; alleging that the same had been so used by it and its predecessors in the ownership of a certain mineral spring since 1872. The issues upon the first and third counts were found for the defendant. Upon the second count the issues were found for the plaintiff, with this exception: "That the acts of the defendant in making and selling ice as in said count alleged are not an infringement of the plaintiff's rights, and are not a damage to the plaintiff."

The court below made the following findings:

"(1) The plaintiff company is a corporation organized under the general laws of the state of New York on October 29, 1885, for the purpose of carrying on the business of making and selling distilled water, carbonated water, vlchy and seltzer waters, ginger ale, and other beverages, under the name of 'The Hygeia Sparkling Distilled Water Company.' Subsequently it procured its name to be changed to 'The Hygeia Distilled Water Company,' under which name it continues to exist and transact business in the city of New York.

"(2) The defendant is a corporation organized under the general laws of the state of Connecticut in October, 1892. The purposes of its incorporation, as expressed in its articles of association, are to manufacture ice by artificial processes; to buy, sell, store, and deal in ice and refrigerating substances; to buy, hold, and sell personal and real estate and patents and patent rights convenient for the conduct of said business; and generally to do all things incidental and proper to the same. Said corporation is located in the town of New Haven.

"(3) The name 'Hygeia' was adopted and used by said defendant company at the suggestion and request of the De La Vergne Company, of New York City, manufacturers of artificial ice machines, the chief characteristic of which was the distillation and filtration of water, and the freezing of the same, producing a clear and absolutely pure ice from the waters thus purified.

"(4) As descriptive of the quality of the ice, and to show that the same, as produced by these machines, was first-class, the De La Vergne Company came to term the product of their machines as 'Hygeia,' correlative to the term 'healthful,' and such term 'Hygeia' was used daily in the transaction of its business.

"(5) In order to differentiate between the companies using its machines and those using machines of other companies, which froze the water in its crude state, the De La Vergne Company induced a large number of ice companies engaged in the manufacture of artificial ice to adopt the name 'Hygeia'; the defendant company being among the number.

"(G) At the time this case was brought there were no less than seven ice companies, other than the defendant, using the name 'Hygeia' as a part of their corporate names in their business of manufacturing artificial Ice; some of them having used that name since 1890. There was no evidence that the plaintiff company ever acquiesced in such use of the name 'Hygeia' by the De La Vergne Company, or by any of said ice companies, nor that said De La Vergne Company ever sold water or ice. None of said ice companies, other than defendant, is engaged in the business of selling distilled water or beverages.

"(7) For several years prior to the incorporation of the plaintiff company, a co-partnership in the city of New York had been transacting and carrying on the business of manufacturing distilled water, and using the same in the preparation and manufacture of artificial mineral waters, and the other beverages hereinafter named, under the name of 'The Hygeia Sparkling Distilled Water Company.'

"(8) Said co-partnership was the first to coin, adopt, and appropriate the word or title 'Hygeia' In connection with the manufacture and sale of such products.

"(0) The incorporation of the plaintiff company was procured by the members of said co-partnership, and immediately after its incorporation the plaintiff acquired by assignment from said co-partnership the business, good will, trade-marks, and patent rights of said co-partnership.

"(10) The plaintiff company immediately engaged in, and has since continued, the business of manufacturing and selling distilled water, vichy, carbonic, seltzer, vichy with lithia, kissingen, club soda, ginger ale, sarsaparilla, lemon soda, and lithia water; using said distilled water as a base for the other products named. The plaintiff company, as well as its predecessor, said copartnership, has continuously used the name 'Hygeia' as its trade-mark, to indicate to the trade and consumers that said several products were of its manufacture, and said products have been called by the plaintiff company by the following names: 'Hygeia Distilled Water' (or 'Hygeia Water'), 'Hygeia Sparkling Distilled Water,' 'Hygeia Vichy,' 'Hygeia Carbonic,' 'Hygeia Seltzer,' 'Hygeia Vichy with Lithia,' 'Hygeia Kissingen,' 'Hygeia Club Soda,' 'Hygeia Ginger Ale,' 'Hygeia Sarsaparilla,' 'Hygeia Lemon Soda,' 'Hygeia Lithia,' and 'Hygeia Sparkling Lithia.' The labels on a few of these products were changed from time to time in wording, but always retaining the word 'Hygeia' as its trade-mark. February 24, 1896, the plaintiff company secured legal permission to change its name to 'The Hygeia Distilled Water Company,' and since that time it has used the word 'Sparkling' as a part of its corporate name upon some packages containing its products.

"(11) Said products have been extensively advertised under these names, and at the time of the defendant company's incorporation were extensively dealt in, used, and known to the trade and to the consuming public by these names.

"(12) As used in said applications, the name 'Hygeia' means and indicates in the trade, and among the consuming public, that each of the said products to which such word is applied is the product of the plaintiff company; and such has always been its meaning when so used.

"(13) The words in said designations, other than the word 'Hygeia,' are words which describe the nature, qualities, or ingredients of the several articles so named. The word 'Sparkling' is used in connection with other products than those of the plaintiff company, and indicates that the product to which it is applied is effervescent.

"(14) The plaintiff company has spent a very large sum in advertising its product under said name and trade-mark, and has built up a large and valuable business in said articles of commerce; and the name or word 'Hygeia' has become, and now is, the conspicuous feature of the plaintiff's business, and of great value to it, not only as a trade-mark, but also as the conspicuous and distinguishing feature of its corporate name.

"(15) The plaintiff company was at the time of the defendant's incorporation, and now is, entitled to the sole and exclusive use of the word 'Hygeia' in connection with the business of manufacturing and selling the distilled and artificial mineral waters, and other beverages made therefrom.

"(16) At the time of defendant's incorporation the plaintiff company had for a long time been, and was then, selling and shipping to many individuals and dealers within the state of Connecticut its various products. Among those by whom plaintiff's products were kept for sale during the year 1892 were Sisson & Co. and Heublein Bros., in Hartford, Heublein Bros., N. W. Harris & Co., E. E. Hall & Son, and Gilbert & Thompson, in New Haven. One or more of said products had been conspicuously advertised in the newspapers in Hartford, and had been printed in the...