Whole Grain Wheat Distributing Co. v. Bon Marche

• Decision Date: 05 December 1929
• Docket Number: 21374.
• Citation: 282 P. 914,154 Wash. 455
• Court: Washington Supreme Court
• Parties: WHOLE GRAIN WHEAT DISTRIBUTING CO. v. BON MARCHE.

282 P. 914

154 Wash. 455

WHOLE GRAIN WHEAT DISTRIBUTING CO. v. BON MARCHE.

No. 21374.

Supreme Court of Washington, En Banc.

December 5, 1929

Appeal from Superior Court, King County; Mitchell Gilliam, Judge.

Action by the Whole Grain Wheat Distributing Company against the Bon Marche. Decree for plaintiff, and defendant appeals. Reversed, with instructions to dismiss.

Beals J., dissenting.

Preston, Thorgrimson & Turner, of Seattle, for appellant.

FRENCH J.

The Whole Grain Wheat Company is a corporation organized under the laws of the state of Arizona. Its place of business is in the city of Chicago, in the state of Illinois. It is engaged in manufacturing and selling to distributors a so-called food product, which it designates as 'Whole Grain Wheat.' The product is wheat in its natural state, cooked in water with a small quantity of sea salt added. As described by the president of the corporation, 'it is natural wheat that has been prepared and cooked without oxidation, so as to produce in the user the same biological effect as though the wheat were raw and uncooked.' The product is sold in hermetically sealed tin cans capable of holding 11 ounces in weight of the product. The can is covered with a paper label on which is printed directions for the use of the product and a statement of the benefits derived from its use. The conspicuous part of the label are the words 'Whole Grain Wheat.' These are printed in white letters on a blue background; the word 'Grain' being immediately under the word 'Whole,' and the word 'Wheat' immediately under the word 'Grain.'

The record discloses that the phrase 'Whole Grain Wheat' has not been copyrighted by the manufacturer as a trade-name and it seems to indicate that the process used in the manufacture of the product has not been pattented, although the can introduced in evidence as an exhibit bears on its label the words, 'Process patented Jan. 6, 1920.' The respondent, Whole Grain Wheat Distributing Company, is a corporation organized under the laws of the state of Washington, and is the general distributor of the product for the western part of the state of Washington. The Arizona corporation has two other general distributors of its product within the state, one located at the city of Yakima and the other at the city of Spokane. Shipments to these distributors are made in carload lots.

The Dr. Brent's Nature Food Company is also a corporation, with its principal place of business at the city of Portland, in the state of Oregon. It manufactures and sells a product called 'Honeyed Whole Wheat.' The president of the company described the composition of the product and its process of manufacture in the following words: 'It is composed of hard winter wheat, ripe red wheat, placed in the can, with water, salt and an amount of honey, vacuumed and still raw, and then cooked by a slow cooking process.' He further testified that his product did not differ from the product of the Arizona company in process of manufacture or in content, except his contained honey, while the other did not. The product is sold in cans of the same size and shape as that of the Arizona company. The can, like the can of the Arizona company, is covered with a paper label, on which is printed directions for the use of the product and a statement of the beneficial effects arising from its use. The conspicuous part of the label printed on the wrapper are the words 'Whole Wheat.' These words are printed in white letters on a red background; the word 'Wheat' appearing under the word 'Whole.' Above the word 'Whole' is printed in a less conspicuous and a different style of type the word 'Honeyed.' Looking at the cans from a short distance away, in the manner they would be viewed on the shelf of a grocer, the printing visible on the one are the words 'Whole Grain Wheat,' and on the other 'Whole Wheat.' The product of the Whole Grain Wheat Company was first placed on the market in the year 1917, and, beginning with the year 1924, considerable quantities of the product have been sold in the state of Washington under its labeled name.

The appellant, Bon Marche, is a corporation, conducting a department store in the city of Seattle. On March 10, 1927, it caused to be inserted in a daily paper published in that city to following advertisement:

'Honeyed Whole Grain Wheat

'Dr. Brent's Health Food

'Cooked Ready to Eat

'Dr. Inns V. Brent, dietitian and food expert, will be in the food department the remainder of the week to explain the importance of using whole grain wheat. Cooked in the can without oxidation.

'11-Ounce Cans, 2 for 25¢

'One Dozen Cans $1.50

'Main Floor, The Bon Marche.'

On the left side of the body of the advertisement is a picture of Dr. Brent, and on the right side a picture of the can. The picture seems to be a copy of a miniature photograph of the can, taken from what might be called a front view. The printing thereon capable of being read with the naked eye are the words 'Whole Wheat.' Dr. Brent was at the place of business of the appellant some days following the date of the advertisement, and explained to inquirers visiting the store, the nature of the product. There were also distributed to the patrons of the store copies of a circular prepared by Dr. Brent, which described the product; the conspicuous words describing the product, printed in capital letters, were these:

'HONEYED WHOLE WHEAT

'THE WHOLE GRAIN WHEAT IN A CAN

'COOKED READY TO EAT.'

When the advertisement and circular appeared, the respondent corporation complained to the appellant of the use of the name, contending that its use was unfair competition, and an infringement upon the respondent's trade-name, and shortly thereafter began the present action to restrain the appellant from advertising and selling the Dr. Brent product under the name of 'Whole Grain Wheat' or 'Whole Wheat.'

After issue had been joined on the allegations of the complaint the cause was tried as one of equitable cognizance. The trial court found as fact that the words 'Whole Grain Wheat' were not a mere descriptive term, but an original combination of words, which could be appropriated as a trade-name to the exclusion of its use by others. It found that the term 'Whole Wheat' was not so far imitative of the term 'Whole Grain Wheat' as to be an infringement on it, holding, however, upon the facts shown, that the appellant was advertising and...