Dunbar v. Glenn, 42 Wis. 118

Dunbar v. Glenn

42 Wis. 118 | Wis. | 1877

Cole, J.

Upon principles which courts of equity have often recognized and enforced, we are satisfied that the plaintiff is entitled to an injunction restraining the defendants from selling, or procuring or offering to be sold, any mineral water represented as being “ Bethesda Mineral Water,” or the water dealt in or sold by the plaintiff, whether so represented by way of trade-mark, label or other simulated device. This is a part of the relief demanded in the complaint, and to which, upon the facts, we think she is entitled.

The law in relation to trade-marks has frequently been the subject of discussion in the courts; and it seems to be well *135settled tbat tbe owner of any original trade-mark bas an undoubted right to be protected in tbe exclusive use of all the marks, forms or symbols tbat be may appropriate as designating tbe true origin or ownership of tbe article or fabric to which they are affixed; but be bas no right to appropriate a sign or mark which indicates tbe name or quality of tbe goods, and which others may employ with equal truth for tbe same purpose. Amoskeag Manuf. Co. v. Spear, 2 Sandf. S. C., 599; Coats v. Holbrook, 2 Sandf. Ch., 586; Congress Spring Co. v. High Rook Spring Co., 45 N. Y., 291; Canal Co. v. Clark, 13 Wall., 311. And tbe rules laid down in respect to an artificial or manufactured article are said to apply to tbe proprietorship of any peculiar natural product which a party may have acquired wdth tbe avails of bis industry, sagacity and enterprise; tbe owner or vendor of tbe one, equally with tbe owner or vendor of tbe other, having a right to tbe exclusive use of bis mark employed in connection with tbe sale of tbe commodity. Folger, J., in Congress Sprung Co. v. High Rook Spring Co., supra. It is very obvious that this must be so if tbe reason for the interference of tbe court is founded upon the injury to the owner when bis trade-mark is invaded, or tbe fraud upon tbe public; for, whether tbe vendible commodity be natural or artificial, the purchaser bas imposed upon him an article tbat be never meant to buy, and the owner “ is robbed of tbe fruits of tbe reputation tbat be bad successfully labored to earn.” Dueb, J., in Amoskeag Manuf. Co. v. Spear. Tbe correctness of these principles was not seriously questioned or controverted by tbe learned counsel on either side, on tbe argument. It only remains to determine bow they affect or control this case.

Notwithstanding tbe denial of tbe defendants, it is difficult to believe tbat in advertising and selling tbe water of tbe Glenn spring in the way it was advertised and sold, tbe public were not in fact deceived, and bad not reason to suppose, when they purchased those waters, tbat they were really ob*136taining tbe waters of tbe plaintiff’s spring. At all events, it seems a fair inference from all tbe facts, that the defendant Glenn attempted to avail himself of the benefit of the plaintiff’s trade-mark, and to appropriate the good will of a business whieh the enterprise and care of the plaintiff had established. This was certainly calculated to injure the plaintiff and diminish the profits of her business. It is admitted that the Bethesda spring water had become widely known as a valuable and useful commodity or article of commerce, and had a high reputation as a remedial agent in a certain class of diseases. And it is impossible to believe that the defendant Glenn, who owned another spring at Waukesha, did not seek to avail himself of that reputation by the means he resorted to in advertising and selling the water of his own spring. What he did was "directly calculated to induce persons to believe that in buying the water thus advertised they were obtaining that from the plaintiff’s spring, which had an established reputation. There is an implied admission in the affidavit of Mr..Glenn, that, prior to the service of the injunctional order, he had advertised in circulars his spring as the “ Glenn Bethesda Mineral Water of Waukesha,” thus appropriating the word “Bethesda,” which was really ’the trade-mark of the plaintiff. Under these circumstances, the case seems to come fully within the principles of the decision in Congress Sprung Co. v. High Rock Spring Co., supra, and cases of a kindred character, and must be ruled by them. It is true, in the Congress Spring case the names or initials of the successive proprietors of Congress Spring were upon the bottles containing the water, upon the corks of the bottles, and upon the boxes in which the bottles were packed for transportation. This method served to indicate both the origin and proprietorship of the ■water of Congress spring, while in the case before us the word “ Bethesda ” may only indicate the origin of the water. However this may be, it is sufficient to constitute it a trade-mark, within the doctrine of the adjudications.

*137The learned counsel for tbe defendants insisted that the word “Bethesda,” as used by the plaintiff, denotes the hind, character, quality or utility of the waters of her spring, and therefore could not be a lawful trade-mark. But we do not understand that the plaintiff uses or applies the word in any such sense or for any such purpose. It will avail little to resort to the original meaning of the word “ Bethesda ” as defined by biblical writers. It is sufficient to say that the word, as used by the plaintiff, does not describe any quality of the water. It seems to have been adopted to indicate origin or ownership, and to have a name by which the water could be distinguished when bought and sold in the market. The plaintiff' has a right to the exclusive use of the word, when employed as a trade-mai’k for such a purpose. The cases cited on the brief of defendants’ counsel clearly recognize such a right. Where the trade-mark, in its original signification or by association, distinctively points to the origin or ownership of the article to which it is applied, it will be protected. But where it is a generic or geographical name, designating a city or district of country, or is merely descriptive of the article manufactured, and can be employed with truth by other manufacturers, it is not entitled to legal protection as a trade-mark. Canal Co. v. Clark, supra; Brooklyn White Lead Co. v. Masury, 25 Barb., 416; Wolfe v. Goulard, 18 How. Pr., 64; Burke v. Cassin, 45 Cal., 468; Stokes v. Landgraff, 17 Barb., 608; Corwin v. Daly, 7 Bosw., 222; Caswell v. Davis, 58 N. Y., 223; Taylor v. Gillies, 59 id., 331; Choynski v. Cohen, 39 Cal., 501; Perry v. Truefitt, 6 Beav., 66. But this case does not fall within any of the exceptions stated to the rule in the above cases. Here the plaintiff adopted and applied the name “ Bethesda ” to her spring to mark or distinguish the waters thereof in the market; and she ha's the right to its exclusive use. It is not intended to, nor does it, indicate the quality or constituents of the water, but rather its origin or ownership; *138and is designed as a name for distinguishing the water, by which it may be bought and sold.

It follows from these views that the order of the circuit court dissolving the injunction must be reversed, and the cause remanded for further proceedings according to law.

By the Court. — So ordered.