Shaver v. Shaver

• Decision Date: 21 June 1880
• Citation: 6 N.W. 188,54 Iowa 208
• Parties: SHAVER v. SHAVER AND ANOTHER.
• Court: Iowa Supreme Court

54 Iowa 208

6 N.W. 188

SHAVER

v.SHAVER AND ANOTHER.

Supreme Court of Iowa.

Filed June 21, 1880.

Appeal from Hardin circuit court.

Action in chancery to enjoin defendants from the use of a trade-mark. Upon the final hearing a decree was entered granting the relief sought in plaintiff's petition. Defendants appeal. The facts of the case appear in the opinion.E. W. Eastman, W. V. Allen and Brown & Binford, for appellants.

Porter & Moir and Huff & Reed, for appellee.

BECK, J.

1. Counsel for defendants maintain that the right to the exclusive use of a trade-mark by the person first adopting it is not recognized by the common law, and that, in the absence of statutes, the courts will not afford relief to the person injured by awarding damages for the unauthorized use of the trade-mark, or restrain by injunction such use. This position finds no support in the books. For 300 years the common law has recognized the right of the proprietor of a trade-mark to its exclusive use, and has awarded damages for the deprivation of such use. Southern v. How, Popham, (King's Bench,) 143-4. The right has been, without interruption, recognized and protected by the courts of England and the United States from that day to the present, in the absence of statutes declaring the existence of such right, or providing regulations for its exercise and remedies for its deprivation. Many cases involving the subject have been decided by the courts. They are two numerous to be cited here. For a collection thereof, see American Trade-Mark Cases, by Rowland Cox.

The jurisdiction of chancery to restrain the use of a trade-mark, without the consent of the proprietor, was first recognized at a later day. In 1742 Lord Hardwicke denied it, ( Blanchard v. Hill, 2 Atkyns, 484,) but within the last 50 years it has been repeatedly exercised in England and in this country. I have not found an American case denying it.

It has been expressly held that the right to the exclusive use of a trade-mark, where statutes exist regulating and protecting it, does not depend upon such statutes. Derranger v. Plate, 29 Cal. 292;Tilley v. Tassett, 44 Mo. 173. Using the language of Ames, Chief Justice, in Barrons v. Knight, 6 R. I. 434, we conclude that “it never could have been a question that a designed imitation by the defendant of the trade-mark of the plaintiff, whereby the former fraudulently passed off his goods in the market as goods manufactured by the latter, and to his injury, would support an action.” We may express with equal positiveness the conviction that the rule is firmly settled that chancery will, in a proper case, by injunction, protect the proprietor of a trade-mark in its exclusive use.

2. Chancery affords protection to the exclusive use of a trade-mark upon the ground of the injury sustained by the proprietor when it is appropriated by another, and of the fraud and deception practiced upon the public. The law will never fail to protect a citizen in the enjoyment of the fruits of his industry and enterprise. When, through these, he has acquired a reputation which brings him trade and patronage, he is entitled to its benefits as fully as to the enjoyment of property acquired in the same manner. The means and instruments he adopts to indicate to the public his place of business, and the goods he manufactures and sells, whereby trade is acquired, cannot be appropriated by another. The people who have bought his goods, and given him patronage, or who have knowledge of the reputation he has acquired in his business, and therefore desire to purchase the article he manufactures or sells, ought not to be deceived and induced by fraud to trade with another. Chancery will restrain the injury to the trader and public by such fraudulent acts.

3. We will briefly state certain principles and rules pertaining to the subject of trade-marks which, in our opinion, are applicable to the case before us. A trade-mark is a name, sign, symbol, mark, brand, or device of any kind, used to designate the goods manufactured or sold, or the place of business of the manufacturer or dealer in such goods. The exclusive right in a trade-mark is acquired by its use, which the law does not require shall be continued for any prescribed time.

4. The trade-mark is often intended to indicate the quality of the goods, and it is unlawful to appropriate it to indicate goods of a quality equal to those manufactured or sold by its proprietor. Taylor v. Carpenter, 11 Paige, 292;Coats v. Holbrook, 2 Sandf. Ch. R. 586.

5. The use of a trade-mark, ignorantly or innocently, with no intention to defraud or deceive the proprietor or the public, will be restrained by chancery. Millington v. Fox, 3 Mylne & Craig, 338; Cartier v. Carlisle, 31 Beavan, 292.

6. In order to authorize the interference of chancery it is not necessary that the trade-mark should be copied with the fullest accuracy. An imitation which varies from the original in some respects will be restrained. The rule is that if the imitation is calculated to deceive, and may be taken for the original, its use will be restrained. Filley v. Fassett, 44 Mo. 173;Boardman v. The Meriden Britannia Co. 35 Conn. 402;Falkenburg v. Lacy, 35 Cal. 52;Woodward v. Lazer, 21 Cal. 448;Sexc v. Proevzende, L. R. 1 Ch. App. 192; Wotherspoon v. Currie, L. R. 5 Eng. & Ir. App. 508; Bradley v. Norton, 33 Conn. 157;Davis v. Kendall, 2 R. I. 566. In support of the doctrines we have above stated see the cases cited in the notes in 2 Hilliard on Torts, 62, et seq.; 2 Story's Equity Jurisprudence, (11th Ed.) § 951; High on Injunctions, e. 16;...