Boston Shoe Shop v. McBroom Shoe Shop, 72 So. 102

72 So. 102 | Ala. | 1916

SOMERVILLE, J.

(1) On the principle that the “good will” of a business is a valuable property right, and that the public who may intend to patronize a particular business, whether it dispenses merchandise or merely labor, ought not to be deceived or misled as to its identity, it is thoroughly settled, by a host of precedents, that courts of equity will grant injunctive relief against those who seek to divert and appropriate by imitative devices, symbols, or practices, the trade or patronage which would otherwise go to another established business.—Glen & Hall Mfg. Co. v. Hall, 61 N. Y. 226, 19 Am. Rep. 278; Myers v. Kalamazoo Buggy Co., 54 Mich. 215, 19 N. W. 961, 20 N. W. 545, 52 Am. Rep. 811; Am. Tobacco Co. v. Polacsek (C. C.) 170 Fed. 117; Kyle v. Perfection Mattress Co., 127 Ala. 39, 28 South. 545, 50 L. R. A. 628, 85 Am. St. Rep. 78, and note pages 83-125. Most of the cases in the note referred to are trade-mark cases, but the principle and policy of the protection afforded are substantially the same in cases of unfair competition. — 38 Cyc. 762, 763.

(2) With respect to such imitative devices, the Supreme Court of the United States, in an opinion which has been very generally quoted, lays down a simple test: “Where the similarity is sufficient to convey a false impression to the public mind, and is of a character to mislead and deceive the ordinary purchaser in the exercise of ordinary care and caution in such matters, it is sufficient to give the injured party a right to redress.”—McLean v. Fleming, 96 U. S. 254, 24 L. Ed. 828.

And in applying this test, viz., the likelihood of deception of an ordinary person exercising ordinary care, as was justly observed by Lacombe, J., “regard must be had to the class of persons who purchase the particular articles for consumption, and to the circumstances ordinarily attending their purchase.”—N. K. Fairbank Co. v. R. W. Bell Mfg. Co., 77 Fed. Fed. 869, 871, 23 C. C. A. 554, 556. Nor is “a nice discrimination to be expected from the ordinary purchaser.”—Internat. Silver Co. v. Rogers’ Corp., 67 N. J. Eq. 646, 60 Atl. 187, 110 Am. St. Rep. 506, 510, 3 Ann. Cas. 804.

Of course, the mere existence of differences which are patent to the observant and well informed does not necessarily amount to a sufficient differentiation, and similarity in the main distinguishing features will usually be sufficient to constitute infringement or unfair competition.—Boardman v. Meriden Brittania Co., 35 Conn. 402, 95 Am. Dec. 270; Pratt’s Appeal, 117 Pa. 401, 11 Atl. 878, 2 Am. St. Rep. 676; Saxlehner v. Eisner, etc., Co., 179 U. S. 19, 21 Sup. Ct. 7, 45 L. Ed. 60; 38 Cyc. 790b.

(3) Applying these principles to the case before us, we cannot avoid the prima facie conclusion that respondent’s device for advertising its business and soliciting the patronage of the public was studiously designed to imitate the salient features of the device previously used by the Boston Shoe Shop; and that the imitation is of such form, appearance, and character as may readily deceive the average patron of complainant’s establishment, and thus divert some of its patronage by what must be regarded as unfair competition.

Our conclusion is fully sustained and vindicated by the consensus of judicial opinion as illustrated by a great number of analogous cases: Kyle v. Perfection Mattress Co., 127 Ala. 39, 28 South. 545, 50 L. R. A. 628, 85 Am. St. Rep. 78; Weinstock v. Marks, 109 Cal. 529, 42 Pac. 142, 30 L. R. A. 182, 50 Am. St. Rep. 57; G. G. Fox Co. v. Glynn, 191 Mass. 344, 78 N. E. 89, 9 L. R. A. (N. S.) 1096, 114 Am. St. Rep. 619; Vulcan v. Myers, 139 N. Y. 364, 34 N. E. 904; Lawrence Co. v. Tennessee Co., 138 U. S. 549, 11 Sup. Ct. 396, 34 L. Ed. 997; McLean v. Fleming, 96 U. S. 245, 24 L. Ed. 828; Northwestern Consol. Co. v. Callam (C. C.) 177 Fed. 786; Mellwood Distilling Co. v. Harper (C. C.) 167 Fed. 389; Hansen v. Siegel Cooper Co. (C. C.) 106 Fed. 691; Centaur Co. v. Killenberger (C. C.) 87 Fed. 725; Fairbank Co. v. Bell Co., 77 Fed. 869, 23 C. C. A. 554; Enoch Morgan’s Sons v. Ward, 152 Fed. 690, 81 C. C. A. 616, 12 L. R. A. (N. S.) 729; Same v. Whittier Coburn Co. (C. C.) 118 Fed. 657; 38 Cyc. 780, note 31. See, also, Mr. Freeman’s note in 85 Am. St. Rep. 83-125, on trademark cases.

An inspection of the infringed and infringing devices exhibited by the bill of complaint will illustrate the obnoxious character of the imitation complained of far better than mere verbal description can do. Doubtless the learned trial judge was misled by the obvious difference in the names “Boston Shoe Shop” and “McBroom Shoe Shop.” Such a difference might, indeed, be sufficient to avoid the conclusion of unfairness, but for the fact that the business of the Boston Shoe Shop, as well as its peculiar advertising device, had for many years been associated with the name of its founder, R. A. McBroom, and hence the advertisement of a “McBroom Shoe Shop,” by the same peculiar device, would bear upon its face a powerful and persuasive suggestion that the original shoe shop was now doing business under the new name — a suggestion by no means weakened by the seductive addition of a single syllable to the slogan, “We fix ’em quick.” As said by Tyson, J., in Kyle v. Perfection Mattress Co., 127 Ala. 39, 51, 28 South. 545, 547 (50 L. R. A. 628, 85 Am. St. Rep. 78): “When there is a marked similarity in the labels, signs, literature, and devices for attracting custom, but little weight is attached to precautionary differences or denials of a purpose to deceive the public.”

(4) The bill does not charge in terms that the imitation of complainant’s device was designed or fraudulent. But while design is significent, and may be in many cases of controlling importance, neither design nor actual fraud in such an imitation is a necessary element of the right to relief.—C. S. Higgins, Co. v. Higgins Soap Co., 144 N. Y. 462, 39 N. E. 490, 27 L. R. A. 42, 43 Am. St. Rep; 769; Koebel v. Chicago, etc., Bureau, 210 Ill. 176, 71 N. E. 362, 102 Am. St. Rep. 154; Nesne v. Sumdet, 93 Minn. 299, 101 N. W. 490, 106 Am. St. Rep. 439, 3 Ann. Cas. 30; Wiriz v. Eagle Bottling Co., 50 N. J. Eq. 164, 24 Atl. 658; 38 Cyc. 784, 785, and cases cited in notes 37 and 38.

(5) Nor is it necessary to show, in a bill for injunction merely, that any persons have been actually deceived. — 38 Cyc. 773, and cases cited.

It results that there is equity in the bill, and the general demurrer was erroneously sustained. Let the decree of the lower court be reversed, and a decree be here rendered overruling the demurrer to the bill of complaint.

Reversed, rendered, and remanded.

Anderson, C. J., and Mayfield and Thomas, JJ., concur.