W. A. Gaines & Co. v. E. Whyte Grocery, Fruit & Wine Co.

• Decision Date: 30 May 1904
• Citation: 81 S.W. 648,107 Mo.App. 507
• Parties: W. A. GAINES & COMPANY, Respondent, v. E. WHYTE GROCERY, FRUIT & WINE COMPANY, Appellant
• Court: Kansas Court of Appeals

81 S.W. 648

107 Mo.App. 507

W. A. GAINES & COMPANY, Respondent, v. E. WHYTE GROCERY, FRUIT & WINE COMPANY, Appellant

Court of Appeals of Missouri, Kansas City

May 30, 1904

Appeal from Circuit Court, Jackson County; W. B. Teasdale, Judge.

Bill by W. A. Gaines & Co. against the E. Whyte Grocery, Fruit & Wine Company to restrain the infringement of a trade-mark. From a decree for plaintiff, defendant appeals. Affirmed.

Charles R. Pence and Walter Poston for appellant.

(1) Under the facts of this case, which are undisputed in relation to the defendant's continuous use of the words "Old Crow" upon their labels for a period of twenty-three years, the statute of limitations is a complete defense to the plaintiff's action. Our statute applies to all civil actions, whether legal or equitable. Rogers v Brown, 61 Mo. 192; Hunter v. Hunter, 50 Mo 445; White v. Pendry, 25 Mo.App. 542; Gordon v Lewis, 88 Mo. 381; Reed v. Painter, 145 Mo 341. (2) The statute applies to actions for the infringement of trade-marks. Northcutt v. Turney, 101 Ky. 314; Taylor v. Carpenter, 2 Wood. and M. 1; Fullwood v. Fullwood, L. R., 9 Ch. Div. 176; Grand Lodge v. Graham, 96 Ia. 615; Blackwell v. McElwee, 100 N.C. 150. (3) In cases of this character, after the running of the statute, a prescriptive right is acquired by the defendant, and a subsequent suit can not be maintained. Cooley on Torts, p. 613 and cases cited; McGowan v. Railway, 23 Mo.App. 203; Bird v. Railway, 30 Mo.App. 379; James v. Kansas City, 83 Mo. 570; Campbell v. Holt, 115 U.S. 620; 1 Am. and Eng. Ency. of Law (2 Ed.), 874; Bollman Bros. v. Peake, 96 Mo.App. 253. (4) Plaintiff can not recover upon the theory of an abandonment of this trade-mark by its originators and rightful owners and its subsequent adoption by plaintiff's predecessors, for the reason that no such allegations are contained in the amended petition, which states that the mark was "originated, devised, adopted and used" by said predecessors in 1867. To permit it would be to allow plaintiff to plead one title and recover upon another. Beck v. Ferrara, 19 Mo. 30; Kennedy v. Daniels, 20 Mo. 104; Waldhier v. Railway, 71 Mo. 519; Raming v. Railway, 157 Mo. 506; Utassy v. Giedinghagen, 132 Mo. 60; Sicard v. Davis, 6 Pet. (U.S.) 124; Robbins v. Harris, 96 N.C. 560; Marshall v. Olds, 86 Ala. 296. (5) The plaintiff can have no technical trade-mark in the words "Old Crow," the words having been used on similar goods by other parties previous to their adoption by Gaines, Berry & Co. Mfg. Co. v. Mfg. Co., 58 Mo.App. 411; O'Rourke v. Soap Co., 26 F. 576; Hoyt v. Lovett Co., 71 F. 173, 17 C. C. A. 652; Mill Co. v. Alcorn, 150 U.S. 460; Corwin v. Daley, 7 Bos. (N. Y.) 222; Wolfe v. Goulard, 18 How. Pr. 64; Stachellberg et al. v. Ponce, 128 U.S. 686; Canal Co. v. Clark, 13 Wall. 322; Coates v. Thread Co., 149 U.S. 569. (6) In the absence of a technical trade-mark, the plaintiff can not recover, as there is a total failure of proof, under all the authorities, of unfair or unlawful competition. Carb. Co. v. Eclipse Co., 58 Mo.App. 411; Goodyear v. Goodyear, 128 U.S. 598; Mfg. Co. v. Mfg. Co., 138 U.S. 537; Centaur Co. v. Marshall, 92 F. 605; Watch Co. v. Watch Co., 179 U.S. 665, 45 Law Ed. 365; Hopkins on Unfair Trade, pp. 32, 212. (7) The laches of the plaintiff and its predecessors should prevent their recovery in this action. Bliss v. Pritchard, 67 Mo. 181; Landrum v. Bank, 63 Mo. 48; Burgess v. Railroad, 99 Mo. 496; McLaughlin v. Railway, 21 F. 574; Smith v. Adams, 6 Paige (N. Y.) 435; Amoskeag v. Garner, 55 Barb. 151; Coates v. Thread Co., 149 U.S. 562; Hathaway v. Noble, 55 N.H. 513; Brown on Trade-marks, sec. 497. (8) The court erred in taxing all the costs, including the costs under the original petition, against the defendant. Tower v. Pauley, 67 Mo.App. 632; Street v. Bushnell, 24 Mo. 328; Crawford v. Spencer, 36 Mo.App. 78; Assn. v. Fehlig, 72 Mo.App. 473; Supreme Council v. Midelet, 85 Mo.App. 283; Schumacher v. Mehlberg, 96 Mo.App. 598. (9) It was error to refuse to make a special finding of the facts and conclusions of law thereon in this case. The statute applies to both legal and equitable actions. R. S. 1899, sec. 695; Hamill v. Talbot, 72 Mo.App. 22; Blount v. Spratt, 113 Mo. 53; Cochran v. Thomas, 131 Mo. 258.

Gage, Ladd & Small for respondent.

(1) The plaintiff has a valid trade-mark, of which the distinguishing feature is the words "Old Crow," because its predecessors originated, devised and adopted them as such trade-mark, in the year 1867, and were the first persons to use the words as a trade-mark, and have since then continuously maintained such use. (2) Even if Oscar Pepper had originally devised, adopted and used the words "Old Crow" as a trade-mark or trade-name for whiskey of his manufacture, they had been abandoned by him, and Gaines, Berry & Company therefore had a right to adopt them in 1867, as their trade-mark, and thereby acquire a valid title thereto. Menendez v. Holt, 128 U.S. 514; McLean v. Fleming, 96 U.S. 254; O'Rourke v. Soap Co., 26 F. 578; Baking Powder Co. v. Raymond, 70 F. 376. (3) The imitation of a trade-mark which will, in law, constitute an infringement, need not be exact or complete. If it be only partial it will be enjoined by a court of equity. Filley v. Fassett, 44 Mo. 168; Tobacco Co. v. Tobacco Co., 104 Mo. 53; McCann v. Anthony, 21 Mo.App. 83; Pillsbury v. Flour Mill Co., 64 F. 847; Tobacco Co. v. Hynes, 20 F. 885; Fairbank Co. v. Luckel, etc., Co., 102 F. 331; Seixo v. Provenzende, L. R., 1 Ch. App. 195. (4) It is no defense that Whyte's name is on the label complained of, and that Gaines & Company's is not. Menendez v. Holt, 128 U.S. 514; Gillott v. Esterbrook, 47 Barb. 455; S. C., 48 N.Y. 374; Coats v. Holbrook, 2 Sandf. Ch. 586. (5) It was no fraud on the part of plaintiff to adopt and use the name "Old Crow." (6) The fact that the complainant's trade-mark has been used by others is no defense, unless it appears that it was with complainant's knowledge, consent and acquiescence. Filley v. Fassett, 44 Mo. 172; Cuervo v. Henkell Co., 50 F. 471; Taylor v. Carpenter, 3 Story 458; Singer Co. v. Mfg. Co., 163 U.S. 202. (7) Even where consent by the owner to the use of his trade-mark may be inferred from his knowledge and silence, it lasts no longer than the silence from which it springs. It is no more than a revocable license. Menendez v. Holt, 128 U.S. 523; Mfg. Co. v. Spear, 2 Sandf. 599. (8) Even if there were not a technical trade-mark, the conduct of the defendant should be restrained on the ground that it constitutes unfair trade and competition. State v. Bishop, 128 Mo. 381; Brewing Co. v. Brewing Co., 47 Mo.App. 19; McLean v. Fleming, 96 U.S. 254; Coats v. Thread Co., 149 U.S. 566; Carson v. Ury, 39 F. 779; Newman v. Alvord, 51 N.Y. 189. (9) Fraud, upon which an injunction issues upon the ground of unfair trade and competition, is clearly shown in this case. Mfg. Co. v. Mfg. Co., 138 U.S. 537; Canal Co. v. Clark, 13 Wall. 325; Newman v. Alvord, 51 N.Y. 189; Fish Co. v. Wooster, 28 Mo.App. 419; Flour Mills Co. v. Eagle, 86 F. 608; Envelope Co. v. Walton, 82 F. 469; Brewing Assn. v. Piza, 24 F. 149; Mfg. Co. v. Mfg. Co., 163 U.S. 169. (10) This action is not barred by any statute of limitations. (11) There is no prescription in the case. 13 Ency. Plead. and Prac., 290; Shields v. Shiff, 124 U.S. 359; Montgomery v. Locke, 72 Cal. 75; Bunten v. Railroad, 50 Mo.App. 425; 19 Am. and Eng. Ency. of Law, p. 23, title "Prescription;" Mfg. Co. v. Spear, 2 Sandf. 604; Taylor v. Carpenter, 3 Story 463; Snowden v. Noah, 1 Hopkins Ch. 352; Matsall v. Flanagan, 2 Abb. Prac. (N. S.) 459. (12) Failure of the trial court to make special findings, is not reversible error.

OPINION

SMITH, P. J.

The plaintiff and defendant are both business corporations, the former organized under the statute of this State and the latter under that of the State of Kentucky. The plaintiff in its petition alleged, (1), that it was and is the owner of a special trade-mark for "Old Crow" whiskey, which defendant had infringed and was infringing; and (2), that by the use of the words "Old Crow" upon bottles containing whiskey other than the genuine "Old Crow" whiskey produced by plaintiff which it offered to the trade, defendant thereby carried on such unfair trade and competition as entitled plaintiff to the injunctive process of the court. The defendant's answer, in addition to a general denial, interposed the defenses of laches and the statute of limitation. There was a trial and decree for plaintiff and defendant appealed.

The first question raised by the appeal is whether or not the plaintiff's action is barred by the statute of limitations. Section 4272, Revised Statutes, provides that the following actions shall be brought within ten years: (1) an action upon any writing, whether sealed or unsealed, for the payment of money or property; (2), actions brought on any covenant of warranty contained in any deed of conveyance of land shall be brought within ten years next after there shall have been a final decision against the title of the covenantor in such deed, and actions on any covenant of seizin contained in any such deed shall be brought within ten years after the cause of such action shall accrue; and (3), actions for relief, not herein otherwise provided for. And the next succeeding section--4273--provides that the following actions shall be brought within five years: ". . . .; fourth, an action for taking, detaining or injuring any goods or chattels, including actions for the recovery of specific personal property, or for any other injury to the person or rights of another, not arising on contract and not herein otherwise enumerated; fifth, an action for relief on the ground of fraud, the cause of action in...