Drake Medicine Co. v. Glessner, 1 Ohio Law Rep. 393

1 Ohio Law Rep. 393 | Ohio | 1903

The plaintiffs in errpr were defendants in the court of common pleas. Their defense in that court, and in the circuit court on appeal, as well 'as their contention on their petition in error here, is embodied in two propositions: (1) That the plaintiff has no trade-mark which can be protected under the law, and if he has such a trade-mark, the defendant’s label and its use do not constitute an infringement of such rights; (2) That the plaintiff’s conduct in the management of his business has been fraudulent as to the defendants and the public, so that he has no standing in a court' of equity to complain of the acts of the defendants.

When viewed under the tests of a technical trade-mark, or trade-name, it may be conceded that there is ample ground for debate. The generic or merely descriptive term “Croup Remedy,” standing by itself, would not be a trade-mark, and there are numerous cases in the reports in which it' is held that a geographical name or the name of an individual it not a good trade-mark. And hence it may be plausibly argued, as it is contended in this case, that the plaintiff’s alleged trade-mark, “Dr. Drake’s German Croup Remedy,” is not a trade-mark at all. On the other hand, there are strong reasons and high authority for the contention that a geographical name when not used in a geographical sense, that is, when it does not denote the location of origin, but is used in a fictitious sense merely to indicate ownership and origin independent of location, it may be a good trade-mark. For example, “Liverpool” for cloth made at Iiieddersfield (Hirst v. Denham, L. R., 14 Eq. Cas., 543); “Dublin Soap” made in the United States (In re Cornwall, 12 Pat. Off. Gaz., 313); “German Soap” made in the United States (In re Green, 8 Pat. Off. Gaz., 739); “Vienna Bread” for bread made in New York (Fleischmann v. Schuckmann, 63 How. Pr. (N. Y. Sup. Ct., 93); “Anatolia” stamped on liquorice (McAndrew v. Bassett, 10 Jur. N. S., 493 and 550, per Westbury, L. C.); Browne on Trade-Marks Secs. 184, 185. Upon this distinction it is difficult to understand why the word “German” upon a package which expressly shows that it is made at “Findlay, Ohio, U. S. A.,” may not be a valid trademark.

It' is no doubt true that in a technical sense there can be no trade-mark in the name of a person; because all such names are generic, and because, speaking in a general sense, every person has the right to use his own name for the purposes of trade. There is, however, an important qualification of the general rule which is called for in cases like the one now under consideration. The name of the inventor or original maker of an article of traffic, if not used in a way which would be likely to deceive or defraud, will be protected as a trade-mark, and the right to use such trademark and to be protected therein, will pass by assignment. (Filkins v. Blackman, 13 Bl. C. C., 440; Fulton v. Sellers & Co., 4 Brewst., 43; Skinner et al v. Oakes et al, 10 Mo. App., 45; Oakes v. Tonsmierre, 4 Woods, 547; and see McLean v. Fleming, 96 U. S., 345; Massam v. Thorley’s Cattle Food Co., 14 Ch. Div., 748). In the present case the plaintiff’s alleged trade-mark identified, as the fact was found by the circuit court, a “croup remedy” which originated with one Dr. August Drake, a German physician who formerly resided in the state of Iowa, and from whom the plaintiff obtained the formula. In that sense, therefore, the plaintiff’s trade-mark indicates the origin, and is a guarantee of the character and quality of the remedy which was sold with that trade-mark for ten years before the defendant, Warren W. Drake, who resided during all of that time in the same town in which the plaintiff conducted his business, came into the market with his competitive product. Warren. W. Drake had the right to make and sell a croup remedy different from the plaintiff’s compound, using his own name; but under the circumstances found by the court below he could only do so in such an honest and legitimate manner that the public would not be deceived nor his competitor defrauded. For the reasons stated and upon the facts specially found by the circuit court, which are conclusive here, we are satisfied that the plaintiff has-such an interest in the words “Dr. Drake’s German Croup Remedy” as a trade-mark that the use of the words “Dr. Drake’s Famous German Croup Remedy” by the defendants is an infringement thereof.

But the plaintiff in error insists that even if the plaintiff below has a valid trade-mark, the label used by the defendants is not such a simulation of the label of the plaintiff as to entitle the latter to an injunction. They argue that “the plaintiffs in error put out their own medicine; it was a croup medicine; they had a right to label it and describe it and commend it and state the manner of its use;” that a mere inspection of the two labels would show that they differ; and that a very conspicuous difference is the portrait of Warren W. Drake on the label of the plaintiffs in error. This contention brings us to the consideration of the application of the doctrine of fraudulent or unfair competition. When a technical trade-mark is imitated that fact itself constitutes a ground for relief. In cases of unfair competition, so called, courts of equity proceed on the 'ground of preventing,fraud upon the public and upon the complainant. Hence “where a label or style of package is imitated, it is necessary to show by evidence an intent to deceive the public and to steal the plaintiff’s market. This intent may be shown by proof of actual deception, but it may be inferred from an examination of the real -and spurious labels,” etc. Bouvier Law Die. (Rawle’s Ed.), Trade-Mark. In Coats v. Merrick Thread Co., 149 U. S., 562, 566, it was said by Brown, J., that: “Irrespective of the technical question of trade-mark, the defendants have no right to dress their goods up in such manner as to deceive an intending purchaser and induce him to believe he is buying those of the plaintiff.” Positive proof of fraudulent intent is not required if the simulation is clearly shown. Although the differences between the labels or packages may be readily seen on comparison, yet if the infringing device be such that’ persons exercising ordinary caution are liable to be misled into purchasing the article bearing the objectionable device when they inténd to purchase the other one, an injunction will he allowed. The following are some of the cases in which relief has been granted without regard to the question whether a technical trade-mark is infringed or not: Opperman v. Waterman et al, 95 Wis., 583; Pierce v. Guittard et al, 68 Cal., 68; Conrad v. Joseph Uhrig Brewing Co., 8 Mo. App., 277; The American Brewing Co. v. The St. Louis Brewing Co., 47 Mo. App., 14; Willey v. Fassett, 44 Mo., 168; Ketter v. The B. F. Goodrich Co., 117 Ind., 556; Boardman et al v. Meriden Britannia Co., 35 Conn., 402; Foster v. The Blood Balm Co., 77 Ga., 216; Metzler v. Wood, 8 L. R. Ch. Div., 606; Lever v. Goodwin, 36 L. R. Ch. Div., 1; Simmons Medicine Co. v. Mansfield Drug Co., 93 Tenn., 84.

TJpon comparing the two labels in this case it is apparent, as contended by the plaintiff in error, that there are marked differences, one of them being the portrait of Dr. Warren W. Drake, there being no portrait on the plaintiffs label, nevertheless there is a palpable effort at' simulation of the plaintiff’s prior label, 'and it is so successful that ordinary buyers, if they did not compare the labels, etc., would be likely to accept the medicine of the defendants for that of the plaintiff.- The form and size of the packages and the color and general appearance of the labels are so nearly identical, that unless the buyer’s suspicions were aroused, he might readily accept the one for the other and be none the wiser. It is not disputed, 'and the fact is found by the court below, that the plaintiff’s label was in use long before that of the defendants, and the differences as well as the similarity of the inscription on the labels are of such character as to compel the inference that the label used by the defendants was deliberately made in imitation of that of the plaintiff and made to deceive.

The typographical devices and distinctions will appear upon examination of the fac similes of the labels, contained in the statement of the case; but the verbal differences will appear as follows, the variations from the plaintiff’s label being here made to appear in the defendant’s label by italics. Plaintiff’s label on the front of the package is in the words following: “One Dose Cures. Dr. Drake’s German Croup Remedy. ( Trade Mark. A Positive Cure for Croup in its Most Dangerous Forms. ' Instant Relief for Whooping Cough, Hoarseness, Etc. Price 35 cents. Prepared by The Glessner Medicine Co., Findlay, Ohio, U. S. A.” The defendant’s label on front of the package is in the words following: “One Dose Gives Relief. Dr. Drake’s Famous German Croup Remedy. A Sure Cure for Croup in its Most' Dangerous Forms. Quick Relief for Whooping Cough and Hoarseness. Price 35 Cents. Prepared by The Drake Medicine GoFindlay, Ohio, IJ. S. A. Incorporated.” The defendant’s label also contained after the words “Dr. Drake’s” the portrait of the defendant, Warren W: Drake, with the word “Trade-Mark.”

The plaintiff’s label on the back of the package was in the words following: “The proprietors Authorize Every Dealer To Guarantee The German Croup Remedy to Cure Croup of the most' aggravated form, and will refund the money should it ever fail. One Dose Cures in nine out of ten oases, and at the utmost not exceeding two doses are necessary. Relief Is Almost Instantaneous. While prompt' in its action, it is so entirely harmless that it will not sicken even a baby. It Has Never Been Known To Fail.” The defendant’s label on the back of the package was in the words following, indicating the variations from plaintiff’s .label, as nearly as possible, by italics: "Dr. Drake Guarantees The Famous German Croup Remedy To Cure Croup And Hoarseness In The Most Serious Gases If Directions Are Carefully Followed. It Has Never Been Known To Pail. For Colic And Bowel Trouble There Is No Better Treatment Than Dr. Drake’s Group Remedy."

The circuit court after hearing and considering the evidence in the case made the following special finding, viz.: “That in adopting the label and in the manner of formulating their label and trade-mark, the defendants designed as nearly as possible t'o imitate plaintiff's trade-mark and label for the fraudulent purpose of deceiving the public, and defrauding the plaintiff as well, by causing it to be believed by the public that defendant’s remedy was that of the plaintiff, intending thereby to profit by the good will of plaintiff’s said business and the fame of his remedy with the trade and general public.” For the reasons stated we find no error in the conclusion of law made by the circuit court upon the facts found by it, nor in the decree made accordingly.

The second contention of the plaintiff in error, viz., that the plaintiff below has so conducted himself toward the public and the defendants that he can not be heard to complain of the defendants, has not only no support in the findings of fact made by the circuit court, but the contrary appears.

Judgment affirmed.