Fair v. Jose Morales & Co.

Mr. Justice Seaes delivered the opinion of the court. The bill alleges, among other things, ownership in appellee of the trade-mark “La Matilde” and an infringement through use of same by appellant. It is contended by appellant that the allegations of the bili of complaint are not sufficient to entitle appellee to relief upon this ground. And we regard the contention as sound. For, while the bill does allege ownership, it, nevertheless, in alleging the facts upon which such ownership is based, sets forth an original adoption and use of the trademark by another, one Morales, and a conveyance of the trade-mark to appellee, without alleging that appellee succeeded to the business of the originator, i. e., the business to which the trade-mark originally attached. That trademarks can not be thus conveyed in gross by independent transfer, without also conveying the business to which the trade-mark attaches, is established by many decisions of different jurisdictions, among which are: Dixon v. Guggenheim, 2 Brewster (Pa.), 321; Witthaus v. Brown, 44 Md. 303. Hor do we regard the indefinite allegation that the trademark was registered by some one as sufficient to show even prima facie ownership in appellee. There is, however, another and a quite distinct ground for relief presented by the bill of complaint, viz., an unfair and fraudulent competition by appellant, in that appellant by dressing its goods up in imitation-of the goods of appellee not only assuming its claimed trade mark, but as well by simulating its labels and the general appearance of its boxes is fraudulent, undertaking to palm off its goods upon the public as the goods of appellee, which latter through at least five years of manufacture and sale, have become known to the public. Courts of equity are quite ready to find ground of jurisdiction and for relief in such inequitable and fraudulent competition by imitation of labels, names, etc., for the purpose of palming off goods as those of another, even when there is a lack of exclusive and proprietary right in such labels, names, etc., as trade-marks. Croft v. Day, 7 Beav. 84; Sawyer v. Horn, 1 Fed. Rep. 24;.Merchants Detective Ass’n v. Merchants M. Agency, 25 Ill. App. 250; O’Kane v. West End D. G. S., 72 Ill. App. 297. We are of opinion that there is here such a showing of fraudulent acts and intent as bring the case presented by allegations and exhibits within the doctrine announced in the foregoing cases. But it is contended ‘by appellant that it appears from th.e allegations of the bill of complaint and the exhibits that appellee is itself fraudulently simulating the trade-mark and labels of another, viz., one Morales, and that therefore it is not entitled to any protection in equity against appellant, and it is urged that this contention avails as well against the allegations of unfair and fraudulent competition as against the allegations of ownership of trade-mark. In this behalf it is argued that the labels and decorations of the boxes of appellee, which are made exhibits, disclose that appellee is presenting its goods to the public as manufactured in Havana by Jose Morales, while the fact is, as the bill states, that they are manufactured in Florida by Jose Morales & Co., the appellee. If such a state of facts should be concluded from the bill of complaint and exhibits, then the contention would be tenable. But we can not draw any such conclusion from the bill and exhibits. The bill alleges that appellee is engaged in manufacturing and vending cigars in the United States and foreign countries. The exhibits, if they are to be considered for the purpose of raising this question, are also entitled to consideration in resolving the question in favor of appellee so far as they tend thereto. There are upon the boxes the words “ La Matilde de J. Morales,” and also words which mean in English “ Tobacco factory of. Jose Morales, Ho. 127 Calzada de Galiano street, Havana.” If they stood alone it might be said that these words were likely to mislead the public into a false belief that the cigars were made at a factory of Jose Morales, and not at a factory of Jose Morales & Co., the appellee. There is nothing in either bill of complaint or exhibits to lead to the conclusion that appellee does not manufacture cigars at the street number named in Havana; and the allegations are that it does manufacture in foreign countries. From other -parts of the exhibits it may be said that there is no attempt to mislead the public in this behalf. The name of the appellee appears in several places upon the box, and in at least one place is located at 127 Galiano street, Havana. In a conspicuous place at the top of the filled box, appears a loose paper, upon which is plainly printed the following : “ Hotioe to toe Public. The tobacco we use in our factory in manufacturing our well known ‘ La Matilde ’ brand, we guarantee to be the finest Yuelta Abajo wrappers and fillers obtainable on the Isle of Cuba, and we employ only the best and most skilled Cuban workmen. This is equally true of our branch factory, Ho. 181 District of'Florida, as all of the tobacco there used is shipped and specially prepared and packed in zinc-lined cases in our Havana factory and shipped to our Florida factory weekly as needed, thus preserving all the fine aroma of the tobacco and making the cigars there manufactured equal to our celebrated imported cigars manufactured in Havana under this brand. We guarantee every box to be as represented. Very respectfully, Jose Morales & Co. Havana, Cuba, April 1, 1898.” From these exhibits, taken together with the allegations of the bill of complaint, we can not say that the chancellor should have concluded that the appellee was guilty of fraud in its use of the name and labels which it now seeks to have protected. If there is an inconsistency in the use of the name “Jose Morales” upon the box without the accompanying “& Go.” it is not of itself so likely to mislead and deceive as to impute bad faith to the appellee, to the defeat of its equities. Edelston v. Vick, 23 L. & E. Rep. 51; Dixon v. Guggenheim, 2 Brewster (Pa.), 321; Dole v. Smithson, 12 Abbott’s Pr. 237. We are not informed by bill of complaint or exhibits, or by anything save the argument of counsel, that the name of Jose Morales was ever used by any other than appellee in the manufacture and sale of cigars. We are of opinion that the order for a témporary injunction was warranted. The order is affirmed.