Liggett & Myers Tobacco Co. v. Sam. Reid Tobacco Co.

Black, J. — This suit was instituted in the Buchanan circuit court to enjoin the defendant from manufacturing, selling or offering for sale plug tobacco having affixed thereto the mark of a star or a mark resembling a star in imitation of plaintiff’s trade-mark. On final hearing of the cause the circuit court dissolved the temporary injunction, gave judgment for defendant, and also assessed damages on the injunction bond and gave judgment therefor in favor ©f the defendant. From the proofs and admissions made at the hearing it appears the firm of Liggett & Myers had been [59] for many years prior to January, 1878, engaged in the manufacture and sale of plug tobacco at the city of St. Louis in this state. The plaintiff corporation was organized under the laws of this state at the last-mentioned date, and became the successor of the firm of Liggett & Myers, and as such successor acquired the business, good will and trade-marks of the old firm. The firm of Liggett & Myers was the first to adopt a star as a trade-mark. It is a symbol in the form of a five-pointed star made of tin, with a circular hole cut through the center. Six of these stars are attached to each plug of tobacco. This brand manufactured by the plaintiff is well and favorably known and has a large sale throughout the United States, and it is called the “ Star tobacco.” The defendant, a corporation organized under the laws of this state, began the manufacture of plug tobacco at St. Joseph in December, 1888, long after the plaintiff’s trade-mark had become well known to the trade. The defendant adopted a device asa trade-mark of which complaint is made. It is a symbol of the same size as that of the plaintiff, made of tin, with eight points slightly inclined to the right, with a hole in the center, and has the word “ Buzz.” dimty impressed upon the surface. It is attached to the plugs the same as the star of the plaintiff. The defendant placed its tobacco upon the market calling it the “Buzz-saw” at a few cents per pound less than the price at which plaintiff sold its brand “ Star,” and as a result there was a very great depreciation in sales made by plaintiff for five or six months. While experts in the tobacco business would readily detect the difference between the two brands, still it is apparent from an inspection of the tags that an ordinary consumer would not notice the difference. Indeed, there is a vast amount of evidence in the case showing that this “Buzz-saw was often sold as “ Star tobacco,” and in [60] many instances the consumer purchased and paid for defendant’s brand, supposing and believing at the time that he got what he called for, namely, “Star tobacco.” The general principles of the law concerning trademarks are well settled. A person has a right to the exclusive use of marks, forms or symbols appropriated by him for the purpose of pointing out the true origin or ownership of the article manufactured by him. The limitation upon this right is that such designs or words may not be used for the simple purpose of naming or describing the quality of the goods; for to permit that would be to foster a monopoly, while the great purpose of the law of trade-marks is to protect the owner in the exclusive use of his device which distinguishes his product from other similar articles, and to protect the "public against fraud and deception. Any contrivance, design, device, name or symbol may be used as a trademark for the purpose of pointing out the true source and origin of the goods to which it is affixed. Under some circumstances the name of a place may be used as a trade-mark. The law is also well settled that one who has appropriated a trade-mark, to distinguish his goods from other similar goods, has a property right in it, a right that will be protected by injunction against the infringing party. To entitle the plaintiff to a perpetual injunction, the imitation need not be exact or perfect. To constitute an infringement it will be sufficient to show that the imitation is such as would be likely to mislead one in the ordinary course of pnrchasing the goods and lead him to suppose or believe that he was purchasing the genuine article. It is not necessary to show that any one has in point of fact been deceived, nor is it, at this day, necessary to show intentional fraud. The following cases and many others assert some one or all of the foregoing principles of law : Filley v. Fassett, 44 Mo. 168 ; Mfg. Co. v. Trainer, 101 U. S. 51 ; Newman v. Alvord, 51 N. Y. 189; McLean v. Fleming, 96 U. S. 245; [61] McCartney v. Garnhart, 45 Mo. 593; Hostetter v. Vowinkle, 1 Dillon, 330 ; Shaver v. Shaver, 54 Iowa, 208. Applying the foregoing principles of law to the case in hand there can be no doubt but the defendant should be perpetually enjoined from using the so-called “ Buzz-saw” device. There is, it is true, some difference between‘that symbol and the plaintiff’s star, but the difference is slight and consists in eight instead of five points, and the eight points incline slightly to the right. At a distance of a few feet they would be readily taken to be one and the same mark. The difference is color-able only, so much so as to indicate even guilty knowledge and a deceptive purpose. Besides this the proof is clear that consumers have been and are often deceived and led to believe that this so-called “Buzz-saw” is .genuine “ Star.” The defendant’s device is but an evasive effort to cover up a wrongful use of the plaintiff ’ s trade-mark. This trade-mark has become of great value to the plaintiff by reason of its long use and the continued excellence of the article to which it is affixed, and the plaintiff is entitled to the exclusive use of it. The defendant has made no appearance in this court and we are at a loss to know upon what ground the court refused the relief prayed for. The judgment is reversed, and a perpetual injunction will be entered here to the full extent of the relief prayed for in the petition. All concur.