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TRADE MARKS.

151 [Superior Court of Cincinnati, General Term.)

John T. HOEB ET AL. v. R. M. BISHOP ET AL. 1. A small metallic frame containing a portrait fastened to a pin, so as to be used

as a personal ornament, does not constitute a valid trademark when so attached to and sold with a cigar, as to be readily detached and used separately in the

manner indicated. 2. An article having a distinct commercial value of its own, cannot be made a trade

mark for another article by beiug attached to and sold with it. 3. Where it is charged that the defendant has imitated the packages of the plain

tiff, for the purpose of imposing the goods of the former upon the public as those of the latter, not only must the fact of imitation be shown, but it must also appear that the imitation was made with iutent to impose upon the public as aforesaid, and such intention may be presumed from the fact of imitation, but the presumption is not conclusive, and may be overcome by facts

showing that the imitation was for other and innocent purposes. PECK, J.

The action below was prosecuted by defendant in error to enjoin plaintiff from infringing an alleged trade-mark, to which an exclusive right is claimed by Bishop & Co. as designating cigars of their manufacture. It is stated to consist of "a metallic tag or label attached to the end of a cigar, in connection with a box of peculiar form, in which, as ordinarily used, the cigars rest on, and, said box having an overlapping or fold down lid which is thrown back when open, exposing the ends o the 'cigars and their labels to view. That the tags or labels are smal! metallic frames of various shapes, stamped out of sheet brass, tin, etc, and contain a picture symbol, or name, usually a picture of a presidential candidate."

At a special term a decree for an injunction was entered, and plaintiff now seeks a reversal of the same

It is claimed in behalf of the defendants that their case as presented to the court by the record of the pleadings and evidence entitled them to relief upon two grounds :

That Hoeb & Co. were infringing their trade-mark, and that they were also packing and making their goods in such manner to imitate the packages of Bishop & Co., and were thereby intentionally imposing the goods of Hoeb & Co., upon the public as the goods of the defendants. That these are two distinct grounds of action, appears to be established by the authorities. The right to restrain the infringement of a definitely established trade-mark is well known, but the right to restrain a defendant from intentionally palming off his goods upon the public by means of an imitation of packages and marks, although these do not constitute a definite trade-mark, has also been maintained. McLean v. Fleming, 96 U. S., 245, 254; l'ollam v. Ratcliff, 1 Hem. & Mil., 259; Craft v. Day, 7 Beav., 84; Boardınan v. Brittania Co., 35 Conn., 402.; Wolf v. Burke, 56 N. Y., 122; Holloway v. Holloway, 13 Beav., 209.

As to defendants' first claim, it is to be observed that the petition stated the alleged trade-mark in a somewhat doubtful and indefinite way. Instead of alleging a single well defined mark, such as usually constitutes a trade-mark, it claims a number of marks of similar design and appearance. Assuming, however, that a trade-mark may be pleaded in that way, we have before us the question whether the evidenc 1.99

Superior Court of Cincinnati.

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established the right of defendants to the use of any valid trade-mark which comes within the description of the petition.

Concerning the metal frame or tag to be attached to each cigar as above set forth, the petition contains the following additional allegation. "The tag or label is preferably attached to the cigar by means of a pin soldered or affixed to the rear of the tag so that the same when removed from the cigar may constitute an ornament or campaign badge to be affixed to the coat of the user."

This allegation seems to show beyond question that the pin or tag, has a value of its own, apart from its use as a trade-mark. All the samples offered in evidence consisted of small metallic portraits of the late presidential candidates attached to pins, which may be detached and worn in the same way as an ordinary scarfpin. It is not disputed that they are at times extensively sold as articles of commerce and much worn. It is claimed in behalf of plaintiff in error that a distinct article of commerce, having a value of its own, can not be converted into a trade-mark by attaching it to another article and selling the two together. The question is not free from doubt or difficulty, and authority on the point is scanty. Perhaps all that can be said of the adjudged cases is that they tend to establish the proposition that a trade-mark is not a thing in itself capable of ownership. 47 Am. Dec., 285, note.

In Harrington v. Libby, 14 Blatchford, 128, a claim to the exclusive use of a tin pail to contain paper collars and sold with the collars, was denied on the ground that it would be against public policy to permit anyone to monopolize such a use of a well known article of commerce. In Mooreman v. Hoge, 2 Sawyer, 78, a similar right to the use of a barrel of peculiar shape was claimed, but the claim was not sustained.

In the case at bar, it is urged that the effect of granting the injunction herein, was not to restrain the defendants below from selling campaign badges, or from selling such badges with cigars, but only to prevent them from attaching them to cigars; and that this demonstrates that it is not the intrinsic value of the badge of which Bisliop & Co. claim the exclusive use, but only its value as a mark or designation. This argument is plausible and so ingenious, as to do credit to the powers of counsel-and had great weight with the court at special termbut upon careful consideration of all the facts, we do not regard it as sound. It is to be born in mind, that a pin is attached to and sold with each cigar. It is clear, that in that condition the pin answered a purpose other than that of a trade-mark. It assisted to sell the cigar because of its own value. Perhaps it is not too much to say that the pin would often form the principal inducement to the sale. The device is of the same sort as that so common nowadays, whereby a shop-keeper gives to each purchaser of a particular article, a toy, a picture, or something else as an inducement to the purchase. If the attachment of the pin to the cigar served only the purpose of a mark, the argument of defendants might be sustained; but the difficulty with their position is that it serves the double purpose of a mark and of adding by its own value, to the value of the article sold. The law does not favor monopolies; and he who seeks to establish an exclusive and perpetual right to a particular device, should be careful that it is such as can in no degree infringe upon the rights of others. All dealers have the right to resort to every legitimate device to expedite the sale of their wares, and if the attachment of a badge to a cigar in any degree tends to facilitate the sale of the latter, because the purchaser receives, or supposes he receives, a larger consid

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eration for his money, the dealer can hardly be prevented from doing so, on the ground that someone has previously made use of the same device, and that the badges also serve as trade-marks. The position of the articles might, perhaps, with equal propriety, be reversed--and the cigar claimed as the trade-mark of the badge. If the contention of defendant be correct, then almost any two saleable articles may be attached together, and the one designated as the trade-mark of the other. We do not think such a practice is authorized by the law.

As to the other claim that Hoeb & Co. have imitated the packages of Bishop & Co., even if there was not a valid trade-mark, it seems that the right of the latter to an injunction depends upon the purpose of the imitation. We have been cited several authorities to the proposition that the intention to deceive the purchaser, and impose upon him the goods of one make for those of another, is to be presumed from the fact of imitation. Taylor v. Carpenter, 11 Paige Ch., 292; Coffeau v. Bounton, 4 McLean, 516; Rodgers v. Nowill, 5 M. G. & S., 109; Blofield v. Payne, 4 B. & Ad., 410; Marsh v. Billings, 7 Cush., 3:22.

The cases of Rodgers v. Nowill and Marsh v. Billings, do not appear to sustain the doctrine. In the former the question of imitation was submitted to the jury, and then the question of the intention with which it was done was submitted separately, and the instruction was held correct. In Marsh v. Billings, the imitation and the intention to defraud being shown, it was held that the law would presume damage, which is different from presuming the intention. In Blofield v. Payne, the defendant had made use of the plaintiff's wrappers, not an imitation merely, but the same as those used by plaintiff, and the court held that in such case daniages might be presumed. In Taylor v. Carpenter, and Coffeau v. Bounton, the intention seems to have been assumed from the fact of iinitation, but those cases were decided, the one in the year 1844, and the other in 1849, before the law on this subject was well settled. It is also to be observed that in many cases, where the imitation is clearly shown, the fraudulent intention may be presumed, and where there are no facts or circumstances tending to show a different intention, the court would be warranted as matter of law in presuming that the imitation was made with intent to deceive, but to hold that such a presumption is conclusive in all cases, is going further, we think, than the authorities warrant. In Woolam v. Ratcliff, supra, Vice-Chancellor Wood speaking of the fact of imitation, there perfectly established, says: "This is of course, always an element of suspicion; but I cannot treat it as conclusive. I think there might be cases in which 110 man could doubt that the object of imitation was to deceive, but it requires very strong evidence indeed to raise such a case,” and an injunction was refused, and the bill dismissed.

Farina v. Silverlock, 6 D. M. G., 214. Applying the rule how stands the case? Bishop & Co. first pit iheir goods upon the market packed and marked in the way described, in June, 1888. The sale of i hem had but fairly begun when Hoeb & Co., in july following, sent out their goods packed and marked in a similar

manner. From this fact it seems improbable that Bishop & Co. could have established a trade in the goods so marked at the time Hoe & Co. commenced to imitate their packages. Under such circumstances, it is difficult to perceive how there could be in the mind of any one a strong desire to imitate an article so little known to the public, or how could there be much probability of deception where the imitated article was so recently put upon the market. There is a fact already alluded to,

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which seems to explain the purpose of the imitation, upon grounds other than of an intent to palm off the goods of Hoeb & Co. for those of Bishop & Co. The aitachment of the pin or badge to the cigar, would perhaps, especially during a heated presidential campaigu, be a very successful means of advertising the cigar, and inducing its purchase. All the evidence seems to indicate that Hoeb & Co. wished to avail themselves of this mode of advertising their wares, and to induce customers by offering to each a badge with a cigar, and that these were their reasons for adopting a mode of packing, and attaching a pin similar to but not identical with that of the defendants.

Judgment reversed and petition dismissed.
Taft and MOORE, JJ., concur.
J. H. Cleveland, G. J. Murray and C. W. Merrill, for plaintiffs.

Simrall & Mack and Harmon, Colston, Goldsmith & Hoadly, for defendants.

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[Superior Court of Cincinnati, Special Term.)

CINCINNATI (CITY) v. LONGWORTH ET AL., EXERS. Where a notice to repair sidewalk has been served upon the owner of abutting prem

ises, it is for the city authorities, in the first instance, to decide whether the notice has been duly complied with, and such decision, if open to dispute by the owner, can only be overcome by evidence clearly showing compliance with

the notice. PECK, J.

The action is prosecuted to recover the amount of a sidewalk assessment levied upon the property of defendants by the city authorities. It appears from the evidence, that a notice to repair the sidewalk was duly served upon the agent of the defendants, and that the agent thereupon directed certain employees to repair the walk. The latter made repairs, which they testified were sufficient, and of such a nature as to put the walk in good condition. That proposition is disputed by the city engineer in charge of sidewalks, and by the inspector, who testify that the repairs were insufficient, and left the sidewalk in bad condition. After defend ant's workmen had completed the repairs made by them, the inspector condemned the walk, and ordered it relaid-which was done by the city contractor-and the assessment in dispute is levied to pay for the work so done.

The controversy in the case resolves itself into the question whether the defendants complied with the notice to repair served upon them in pursuance of the statute, within the time specified-Rev. Stats., 2329, 2330, as amended, 81 Laws, 87. These statutes plainly vest in the city authorities the power to determine when sidewalks shall be repaired; and that by implication would seem to confer the power to determine the nature and extent of the repairs necessary. If, therefore, when a notice to repair is served upon an owner of abutting property, a. dispute arises as to whether the notice has been complied with, who shall decide the controversy? The statute provides that if the repairs be not made within ten days, the board “may have the same done at the expense of the owner." The duty of determining whether they will cause the same to

153

City of Cincinnati v. Longworth et al.

be done at the expense of the owner, is thus cast upon the board, and seems necessarily to include the power of determining whether the preceding notice has been complied with. It is upon the failure of the owner to comply with the notice, that the power of the board to cause the same to be done at his expense, depends.

In this case, the board, by its officers and by the levy of the assessment, has said that the notice was not complied with. Testimony has been offered by both sides, to show, on the one side that there was compliance, and on the other that there was not. There is nothing in the evidence to show that the city authorities were acting otherwise than in good faith. In such case it seems quite doubtful whether the determination of the board is subject to review by the court. If the owner may allege that he has made the necessary repairs when the board say he has not, he may also dispute the necessity for repairs in the first instance, when notice is served upon him.

The power to open, improve and repair streets, is vested in the corporation, and is not subject to judicial control-1 Dillon Mun. Corp., secs. 94, 95; Iron R. Co. v. Ironton, 19 Ohio St., 299; Carr v. Northern Liberties, 35 Pa. St., 324, 329.

The city is liable in damages to any one injured by reason of the failure to keep the sidewalks in repair; and with the duty to repair is necessarily coupled the discretion to determine the time, and the extent of the repairs necessary. If the determination of the board as to the insufficiency of the repairs is open to dispute in any case, it would certainly seem incumbent upon the party resisting its order, to prove his claim by evidence so clear and convincing, as to leave little room for doubt, while in the case at bar, the evidence is very conflicting, and not unevenly balanced.

It is urged, however, that if the city officers were not satisfied with the repairs made by defendants, a further notice should have been given them, and another opportunity to repair. The statutes gave defendants a certain time within which to comply with the notice, and authorized the board to act in case they did not. It is not disputed that the time which elapsed between the service of the notice and the performance of the work by the city contractor, was at least as much as that allowed by statute. There is no provision for any further notice—nor is there anything in the law or public policy to require it.

Judgment for the plaintiff,
Oliver B. Jones, for plaintiff.
Thos. McDougall, for defendant,

PATENT RIGHTS CONTRACT.

165 (Superior Court of Cincinnati, General Termi, 1889.)

JOHN BRYAN v. FREDERICK H. CHYNE. Where it is alleged that a defendant has contracted for the exclusive personal ser

vices of the plaintiff for the performance of a particular work, a court of equity will not interfere, by injunction, to restrain the defendant from securing the performance of the same work by other persons, if there is a doubt about the contract-rights of the plaintiff, or the intended breach by defendant. ERROR to Special Term.

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