Solis Cigar Co. v. Pozo

• Decision Date: 13 April 1891
• Citation: 16 Colo. 388,26 P. 556
• Parties: SOLIS CIGAR CO. v. POZO et al.
• Court: Colorado Supreme Court

26 P. 556

16 Colo. 388

SOLIS CIGAR CO. v. POZO et al.

Supreme Court of Colorado

April 13, 1891

Commissioners' decision. Appeal from superior court of Denver.

In January, 1887, the Solis Cigar Company filed their bill against Pozo & Suarez, seeking to restrain them from interfering with a trade-mark which the company claimed to own, and to recover damages. It appears that several years prior to the alleged infringement R. Solis had been a manufacturer of cigars in Denver, and had adopted the brand to which the company claim title. The corporation was organized after the adoption of the brand. Mr. Solis became a large stockholder in it, turned over to the corporation his whole business, good-will, and trade, and became the manager of it. It sufficiently appeared that the company succeeded to whatever rights Solis had, and, while he made no formal transfer of his trade-marks, he turned over to the company all his rights of that description. The two brands, so far as they can be described without pictures, are as follows: The Solis brand was a picture of a tobacco plant, with a foreground of land, a background of water, with sky in the distance, and flowers on the stem projecting above the leaves. On the top of the label were the words, in capitals 'EL CABIO.' A little over one-third of the way down and on either side of the picture, were the words, in capitals, 'FABRICA TOBACCOS,' and below and underneath those 'DE R. SOLIS.' Resting on the ground was the word, in capitals, 'HABANA,' and below that in smaller type, the word 'Copyrighted.' At the bottom of the label were the words 'R. Solis Manufacturer, Denver.' The type in which this label was printed was clear cut, with fancy lines and terminals to various of the letters, as in E. L, and C. etc.; the cross, for instance, on the middle stem of the E was an upright line, terminating in a scroll at either end. These were the characteristics of the type used on that label. The other label was a picture of a tobacco plant, topped with three flowers, instead of seven, which were on the first brand, but without a visible stem. The plant rested on the ground, with some growing plants underneath, but there was no water in the background, nor any sky. It was simply the plant on a blue background, which was the prevailing color of the El Cavio brand. On either side of the flowers were the words 'EL CAVIO,' and on either side of the plant, arranged as in the other brand, were the words 'FABRICO TOBACCOS,' and beneath them 'DE POZO & SUAREZ.' Below the plant was the word 'HABANA,' in capitals; and at the bottom of the entire label were the words 'Pozo & Suarez, Manufacturers, Denver, Colo.' The type of the two brands was totally dissimilar, that of the EL Cavio brand being fanciful, and the other plain and unornamental.

It appeared in evidence that the plaintiff had made large sales of cigars in boxes with its brand on. Proof was offered of some sales of cigars under the brand complained of as an infringement; but there was no proof of any sales of the one for the other, nor that any purchaser was deceived by the resemblance in the labels. The case was equally silent as to any interference with the plaintiff's trade growing out of the use of the label by the defendants. The intention of the defendants to pirate the plaintiff's brand was shown, but upon the question of the difference in the quality of the two brands of cigars there was a conflict of testimony. The cigars which were sold under the plaintiff's brand, according to his own testimony, were made of what is known to the trade as 'Havana filler, seed binder, and Sumatra wrapper.' The only portion of the cigar which was made of the Havana tobacco was the filler. The binder was of domestic production, and the wrapper was of tobacco imported from the island of Sumatra. This seems to have been a matter well understood by the trade, for the cigars were not sold to the wholesale dealers as cigars made wholly of Havana tobacco, but were sold as seed Havana cigars. According to the evidence, the trade never labels domestic cigars, or cigars made partially of domestic tobacco, as seed Havana, but labels all cigars, both those made of Havana filler, seed binder, and Sumatra wrapper, and those made entirely of Havana tobacco--filler, binder, and wrapper--as Havana cigars, preserving the distinction in their deallings with each other by calling the first 'Seed Havana,' and the last 'Clear Havana.' From the labels the public cannot determine whether the cigar is made wholly of Havana tobacco, grown on the island of Cuba, or is a mixture of imported and domestic tobacco; nor do the labels signify to what extent Cuban tobacco is used in the manufacture. The words 'Fabrica Tobaccos' and 'De R. Solis,' are simply the application of the use of the Spanish language in the brand, and mean the manufactured tobacco of R. Solis. The words 'El Cabio' have a direct significance, and mean either a small door, or a little window in a door. The words 'El Cavio' have no recognized significance, although there was some testimony which indicated that they meant a sort of a little apple tree growing in the Asturias. On this point, however, the testimony was not satisfactory. Upon the conclusion of the testimony the bill was dismissed, and a decree entered accordingly. This is assigned as error, and the plaintiff appeals.

W. S. Decker and A. B. McKinley, for appellant.

BISSELL C., ( after stating the facts as above.)

The right which a manufacturer has in a trade-mark is every where recognized as property. The mark may consist of a name, or a device, or a peculiar arrangement of words, or such words with some device of greater or less novelty, which have been applied to a manufacture to designate the goods as made by a particular person. When a manufacturer has thus distinguished the goods he makes by a peculiar device, so that they may be known in the market as his, he thereby acquires the right to whatever profits may result from his superior skill knowledge, or honesty of process; and this right may not be impaired by any piratical use of the devices which serve to mark them, and lead the public to think that they are his. The legal right to the use of the trade-mark springs from its usefulness to point out the original ownership of the article to which it is affixed, or to give notice to the public who is the producer. From this right the power of legal protection is derived. The first difficulty which arises here is to determine the question of infringement. Exact similarity is not necessary. To insist on that would be to permit most wrong-doers to evade responsibility. Colorable imitations are as much the subject of legal redress as the more exact and perfect similitudes. What is necessary in all cases is a similarity which will operate to convey a false impression to the ordinary purchaser, and serve to deceive and mislead him. The rule is grounded as much on the notion that the public is to be protected as on the theory that the inventor may have the exclusive benefit of the reputation acquired by the thing which he has produced. For this reason it is always essential to show that the imitation is of a character to escape the ordinary care and caution used in the purchase of the articles protected. The case made is not brought within the limits of this rule. It is difficult to declare the legal extent of the plaintiff's right. The words 'Fabrica Tobaccos' are words of common use in the tobacco trade, and have been, for many years, in...