El Modelo Cigar Mfg. Co. v. Gato

• Citation: 7 So. 23,25 Fla. 886
• Court: United States State Supreme Court of Florida
• Decision Date: 07 January 1890
• Parties: EL MODELO CIGAR MANUF'G CO. v. GATO.[*]

7 So. 23

25 Fla. 886

EL MODELO CIGAR MANUF'G CO. v. GATO.^[*]

Florida Supreme Court

January 7, 1890

This case comes here upon appeal and cross-appeal from the circuit court of Duval county.

Syllabus by the Court

SYLLABUS

1. A general demurrer to a bill as for want of equity, will be overruled if there is any equitable ground of relief stated in the bill, even if there are any number of grounds of special demurrer.

2. Every manufacturer has the unquestionable right to distinguish the goods that he manufactures and sells by a peculiar label, symbol, or trade-mark, and no other person has a right to adopt his label or trade-mark, or one so like his as to lead the public to suppose the article to which it is affixed is the manufacturer's.

3. A man may acquire the right of a trade-mark in his own name or the name of any person, but he cannot acquire the right of a trade-mark in the use of his own name to the exclusion of the right of another person by the same name, and whose place of business is in the same place.

4. When a man manufactures his goods at a particular place, he may use the name of that place, in combination with other words as a trade-mark to distinguish the origin or ownership of his goods, and no other person will be permitted to use the name of the same place upon goods manufactured by him at another and different place.

5. A party whose trade-mark has been violated is entitled to recover all profits realized by the wrong-doer from sales of the spurious articles, and also all damages resulting from such violation.

COUNSEL

Randall, Walkers & Foster, for appellant.

G. B. Patterson and H. Bisbee, for appellee. The bill was filed August 6, 1885, and alleges among other things:

That the complainant engaged in and commenced the manufacture and selling of cigars at Key West, Fla., in 1875. That complainant used exclusively Havana tobacco at his factory, and that he established among purchasers, dealers etc., a high reputation for his cigars, and that his cigars still maintain said high reputation. That the climate at Key West is more favorable to the manufacture of Havana cigars than points north of that place. That to identify his cigars among consumers, etc., years ago complainant adopted and used, and still uses upon the boxes in which his cigars are packed, certain marks, names, labels, and pictures, by which his cigars became known to the trade and public. That the quality, etc., of his cigars, in the estimation of consumers, etc., depend upon the locality of manufacture, as well as the quality of tobacco used in making.

That the complainant caused to be stamped or branded on his cigar-boxes the words 'Key West,' and the words 'Key West' printed upon the labels, pictures, and paper, both upon the inside and outside of such boxes, and caused to be stamped or branded upon such boxes, and printed upon the labels, pictures, and paper complainant's name, 'E. H. Gato,' or 'Eduardo H. Gato.'

That by reason of having the words 'Key West,' and complainant's name, 'E. H. Gato,' and 'Eduardo H. Gato,' upon such labels, etc., and upon said boxes, his cigars became readily known among dealers, etc. That in addition to the words, pictures, etc., upon complainant's cigar boxes, complainant, upon certain brands of his cigars, in the manufacture of which he has made a specialty, and on the labels and pictures thereon, has caused to be branded and printed the word 'Bouquet,' both separate from, and in connection with, the words 'E. H. Gato,' 'Eduardo H. Gato,' and 'Key West,' and that the cigars put up, etc., as aforesaid, have for many years and are now known to the trade, etc., as 'Gato's Bouquet Cigars of Key West,' 'Gato's Key West Cigars,' and 'Cigars Bouquest de E. H. Gato, Key West.' That on certain other cigars manufactured by complainant he has caused to be branded and printed on the labels, etc., of the boxes, the words 'La Estrella,' both separate and in connection with the words 'Key West,' 'E. H. Gato,' and 'Eduardo H. Gato,' and that this brand of cigars has become widely known to the market, etc., as 'Gato's Estrella Cigars of Key West,' or as 'Gato's Key West Estrella Cigars,' and that both the Bouquet and Estrella brands of cigars made by complainant at his said factory have become favorites in the market among buyers, etc., and are known as cigars of very superior quality, and that said cigars are made of the best Havana tobacco, etc.

That complainant made use of the distinctive words 'Bouquet,' 'La Estrella,' and the words 'Key West' and 'E. H. Gato' and 'Eduardo H. Gato,' upon the boxes of his cigars and labels, etc., as trade-marks, and to distinguish his cigars in the market, etc., from cigars made and put upon the market by other manufacturers, long before the defendants made use of the said distinctive words upon boxes of cigars, labeled and printed thereon as hereinafter stated and complained of.

That the defendants, or one or more of them, about the year 1882, commenced to manufacture cigars at Jacksonville, Fla., under the name and style of the firm of 'El Modelo Cigar Manufacturing Co.' or 'Company,' and that they from that time have and are still manufacturing cigars on an extensive scale. That defendants use seed tobacco in their business, and make their cigars of seed tobacco, at their factory, which is a much inferior quality of tobacco to the Havana tobacco, in the estimation of dealers, etc., and is in point of fact a greatly inferior tobacco to the Havana tobacco, and well known to all manufacturers, etc.

That the defendants, well knowing the superior qualities of complainant's cigars, and the large and extensive trade therein, and sales thereof which complainant has built up and established in the markets of the country, and among consumers, etc., by his skill, etc., by making his cigars at Key West, where they were represented to be made, and of Havana tobacco, as they were likewise represented to be made, and that complainant had thereby acquired and secured a profitable business in the making and selling of his cigars, and confederating and contriving to injure complainant in his business, etc., in the year 1883, commenced, by the use of divers and sundry contrivances, labels, pictures, names, and words identical with or similar to the aforesaid labels, etc., used and employed by complainant, in such manner and with such combination upon some of the boxes of cigars made by them, to deceive and palm off upon and sell to purchasers, etc., the inferior cigars of the defendants' manufacture, and as for the cigars manufactured by complainant at Key West. That defendants ever since about the year 1883 have deceived, palmed off, and sold continuously to such traders, etc., the product of their factory, at Jacksonville, as and for the cigars made by complainant at his factory at Key West, to the great damage and injury of complainant.

That the defendants' brand and stamp upon the boxes containing their cigars manufactured at Jacksonville, and print upon the labels, pictures, and paper upon said boxes, the words 'Key West' and 'G. H. Gato,' in conspicuous places upon said boxes, and in form and size of letters identical with or similar to the form and size of letters employed and used by complainant upon his boxes of cigars and labels and pictures thereon, and that the defendants stamp, brand, and print upon the boxes of their cigars, pictures and labels thereon the words 'G. H. Gato' and 'Key West,' both separately and in combination with each other, and in such manner, form, style, and general appearance to the eye as to readily deceive traders, purchasers, and consumers, and by such means do cause them to take, purchase, sell, and consume the cigars of defendants as and for the cigars of complainant, and with the intent and design so to do. That the defendants used and employed, upon their boxes of cigars the letters and words 'G. H. Gato' prior to the time when the person known by that name became a member of said firm, and the defendants so stamped and printed upon the boxes of cigars, and upon the labels and pictures thereon, the said initial letter 'G,' as to make it appear to the eye, and cause it to be readily read and taken by dealers, etc., for the letter 'E,' the initial letter of complainant's name; and the defendants have offered and sold, and continue to offer and sell, their said cigars, stamped, branded, and printed as aforesaid, and for Gato's Key West cigars, at a price much less than complainant has sold or can sell his cigars without loss, and thereby have deprived, and do continue to deprive, complainant of his reasonable and lawful profits in his said business.

That the defendants have also used and employed, for two years and upwards, and do now use and employ, brand, and print upon their boxes of cigars, made by them at their factory at Jacksonville, the words 'Bouquet' and 'La Estella,' both separately and in combination with the words 'G. H. Gato' and 'Key West,' so as to appear like and resemble the same words upon the boxes of complainant's cigars, and by such means, and by representing and advertising in newspapers, and by their agents and otherwise, which defendants have done, and now do the said cigars as 'Gato's Key West Cigars,' and as 'Gato's Bouquet Cigars' and as 'Gato's Estella Cigars of Key West,' do, and for a long time, to-wit, for two years and upwards, have palmed off and sold to the trade, and to dealers, and their agents and purchasers from defendants have palmed off, and sold to the trade, etc., defendants' said cigars in large quantities, as and for the complainant's 'Bouquet' and 'Estrella' cigars, and 'Gato's Key West' cigars, and that by the fraudulent practices and means before stated defendants have made...