43 Pa. Super. 221 | Pa. Super. Ct. | 1910
Opinion by
The principal object of this bill in equity was to restrain the infringement of a trade-mark which is thus described: The design or emblem is the keystone symbol of the commonwealth, slightly raised over the keyhole, which divides it', of a small ordinary padlock, such as is usually sold in commerce. The padlock manufactured by the defendant is similar in size, shape and design, with the same emblem cast in the same manner. Both are exactly alike in general appearance, but the plaintiff’s is a little finer in finish. There are no letters or words of any kind on either. This precise emblem was appropriated by the plaintiff or its predecessor and first applied as above described to padlocks of its manufacture in 1900, and by the defendant or his predecessor to padlocks of his manufacture in 1906. On November 6, 1907, the plaintiff caused it to be registered in the office of the secretary of the commonwealth in the manner prescribed in the Act of June 20, 1901, P. L. 582, and received from that officer a duly attested certificate of the record. The defendant, without actual knowledge of the prior appropriation by the plaintiff and this registration on November 6, 1907, continued the use of the trade-mark until August, 1908, when, being notified by the plaintiff of the alleged infringement, he discontinued the manufacture and sale of padlocks bearing it.
1. It is argued that on this last ground alone the bill ought to have been dismissed. It is to be noticed, however, that the ground of defense set up in the defendant’s answer was not that this was an innocent infringement
2. The learned judge held that the certificate of the secretary of the commonwealth, issued under the act of 1901, upon ex parte proofs, does- not divest the jurisdiction of the courts to determine the validity of the act of appropriation or the character of the symbol as a lawful trade-mark, and, therefore, it did not of itself preclude the defendant from asserting its invalidity and denying the right of the plaintiff to a monopoly in its use. This conclusion is so well supported by his opinion that we adopt it without further discussion.
3. The office of a trade-mark is to point out distinctly the origin or ownership of the article to which it is affixed: Delaware & Hudson Canal Co. v. Clark, 80 U. S. 311, and thus to protect the purchaser as well as the vendor. But that a name, device or symbol, although arbitrary and fanciful, may in process of time come, by association, to point unmistakably to the origin of the article, although not immediately connected with the name- of the owner or place of manufacture, is a proposition that is supported not only by reason but by authority. It would be an almost endless task to review and attempt to harmonize or distinguish all the cases from the different jurisdictions of this country in which names and symbols as trade-marks have been considered. But it is safe to
4. In his eighth point of law the defendant requested the court to find that in any event no penalty can be visited on defendant, but only an award of injunction against him restraining him from using said trade-mark, “as his act was neither fraudulent nor calculated to deceive.” The majority of us are of opinion that this point was properly refused and that no error was committed in imposing the penalty. It is true the court found as a fact that the defendant adopted the trade-mark without actual knowledge of its prior adoption by ,the plaintiff, and continued its use after registration, without actual knowledge of that fact. But the court did not find, and would not have been warranted in finding, that the defendant’s action was not calculated to deceive. On the contrary, irrespective of fraudulent intention, the tendency of his action was to produce confusion in the public mind and consequent loss to the plaintiff. And the general rule is, that anything done by a rival in the same business, by imitation or otherwise, designed or calculated to mislead the public in the belief that in buying the product offered by him for sale they were buying the product of another’s manufacture, would be in fraud of that other’s rights and would afford just grounds for equitable interference: Juan F. Portuondo Cigar Mfg. Co. v. Vicente Portuondo Cigar Mfg. Co., 222 Pa. 116; Hohenstein v. Perelstine, 37 Pa. Superior Ct. 540. Is the mere fact that the defendant adopted the trade-mark in ignorance of the plaintiff’s right to its exclusive use ground for refusing to impose the penalty? Section 4 of the act of 1901 prescribes a penalty of $200 for wrongfully performing or permitting to be performed any act expressly prohibited or declared unlawful by sec. 3, and the jurisdiction of a court of equity Upon an injunction bill to impose the
We have not discussed the case as fully as would seem necessary if the opinion of the learned trial judge had not so fully and satisfactorily met and answered the questions raised by the assignments of error and the contentions advanced in the able argument of appellant’s counsel.
The decree is affirmed at the costs of the appellant.