Walter Baker & Co. v. Delapenha

• Decision Date: 13 April 1908
• Citation: 160 F. 746
• Parties: WALTER BAKER & CO., Limited, v DELAPENHA et al.
• Court: U.S. District Court — District of New Jersey

160 F. 746

WALTER BAKER & CO., Limited, v DELAPENHA et al.

United States Circuit Court, D. New Jersey.

April 13, 1908

Carrick & Wortendyke, for defendants.

CROSS District Judge.

This is strictly a trade-mark case, and presents no element of unfair competition in trade. The complainant is a well-known manufacturer of chocolate, doing business at Boston, Mass and is the owner of two common-law trade-marks registered under the act of Congress of February 20, 1905, c. 592, 33 Stat. 724 (U.S. Comp. St. Supp. 1907, p. 1008). One of the trade-marks consists of the word 'Auto' and is registered as No. 44,405; the other consists of the representation of a 'motor car' and is registered as No. 45,580. The application for the former was filed April 3 1905, and it was registered July 4, 1905; the application for the latter was filed April 14, 1905, and it was registered August 22, 1905. An application was originally filed February 17, 1905, under the trade-mark act of 1881, which embraced both the picture and the word 'Auto,' but when the trade-mark act of 1905 took effect, as it did on the 1st of April of that year, an amended application was filed under the new act which embraced only the representation of an automobile and another application was filed April 3, 1905 for the word 'Auto.' The president of the complainant corporation testifies that he conceived the idea of these trade-marks for use upon the wrappers of small packages of sweet chocolate for eating purposes, in the fall of 1904 that the design of an automobile, for use as a trade-mark, was suggested to him while looking over magazines containing advertisements of those vehicles, and that from such advertisements he selected one which he regarded as the prettiest and most suitable in size for the purpose, and having changed the color from black to red, had a cartoon prepared which showed the picture of an automobile and the word 'Auto' on it, for use upon wrappers containing the article above mentioned. Packages of chocolate thus wrapped were sold in large quantities in the course of trade to customers in the various states of the United States, and in foreign countries, beginning in the month of December, 1904, and thereafter continually to the present time. The president of the complainant company also testifies that, at the time he adopted the above trade-marks, he did not know of their use by anybody in this country or elsewhere, upon similar or like preparations, and that so far as he knew their use by the complainant in that connection was absolutely novel. The bill of complaint in this cause is filed to enjoin the defendants, who do business in New York as agents of foreign importers, from selling in the United States chocolate manufactured by Societe Anonyme, J. Klaus of Locle, Switzerland, bearing trade-marks infringing the complainant's.

The packages of chocolate manufactured abroad and sold by the defendants, bear upon the wrapper the word 'Auto' and also a design of an automobile, which word and design it appears were registered by the foreign manufacturers in Switzerland, in September, 1903, but it does not distinctly appear that the trade-marks se registered were placed upon any goods actually sold in Switzerland. It does appear, however, that a company known as the Canadian Swiss Trading Company, imported the Klaus Auto-Noisettes into the Dominion of Canada a few months before they were imported into the United States by the defendants, but whether or not they were imported for sale, or any were sold, is not disclosed. There is no positive proof to show that the foreign trade-marks were ever placed upon any goods which were actually sold anywhere prior to those which came into the hands of the defendants, about the 1st of March, 1905, which was several months after the complainant had adopted and used its trade-marks, and several days after it had filed its original application for their registration. Upon this point counsel for the complainant in their brief well say, 'A manufacturer does not acquire a trade-mark by sending goods bearing it to his agents and by the agents sending it to subagents, as from its nature a trade-mark must be used on goods sold. ' Section 16 of the trade-mark act of 1905, constitutes registration prima facie evidence of ownership, and thereby imposes upon the defendants the burden of disproving such ownership. This burden they have not sustained. The most that has been conclusively shown is foreign registration, but this did not confer title, certainly not in the absence of user. But granting that an inference of prior use in a foreign country may be drawn from the testimony, the fact still remains that there is no evidence whatever from which even an inference can be drawn of any use or sale in the United States of any goods on which the foreign trade-marks appeared, until some time after the complainant had, in good faith, adopted and used its trade-marks in question, and upon this foundation, if no other, I think the complainant's case can be rested. The following rule is laid down in Hopkins on Trade-Marks, p. 62:

'A foreigner has no common-law right to a trade-mark in the United States as against a citizen who had adopted a similar mark in good faith before the alien has sold any goods in this country.'

A footnote shows that this doctrine is rested upon the authority of Richter v. Anchor Remedy Company (C.C.) 52 F. 455, where Judge Acheson of this circuit, at page 458, says:

'As we have seen, prior to his first registration, the plaintiff had never sold in the United States any of his medicines. Nor had he himself made any importations thereof before that registration. Having then no trade in this country we do not see how the plaintiff could well have here a common-law trade-mark.'

See, also, Richter v. Reynolds et al., 59 F. 577, 8 C.C.A. 220; Eiseman v. Schiffer et al. (C.C.) 157 F. 473, 475.

Nor does the fact that the complainant adopted and used its trade-marks but a short time before the defendants imported and sold goods bearing like trade-marks, alter the situation.

The complainant's rights accrued as soon as it had put goods upon the market bearing its trade-marks. Priority of use rather than priority of invention confers the right. The right to use does not depend upon any particular period of user; once a trade-mark is adopted in good faith and used the right thereto inures and will prevail against any subsequent user. As was said in Columbia Mill Co. v. Alcorn, 150 U.S. 460, 463, 14 Sup.Ct. 151, 152, 37 L.Ed. 1144, 'the exclusive right to the use of the mark or device claimed as a trade-mark is founded on priority of appropriation; that is to...