70 F. 613 | 9th Cir. | 1895
This is a suit in equity brought by the appellee, a citizen of Pennsylvania, as complainant, against the appellants, citizens of California, as defendants, for an injunction to restrain defendants from using the name “C. Benkert & Son” upon boots or shoes, and from using any colorable imitation thereof, and also for damages for an alleged infringement upon complainant’s alleged exclusive right to that name. The cause was heard upon the bill, answer, and testimony, before the late Judge Sawyer, who rendered an interlocutory decree granting the injunction prayed for, and directing an accounting of the profits realized by defendants by the infringement. An accounting was had, and a final decree was subsequently entered thereon, making the injunction perpetual, and for the recovery by the compláinant as damages of the amount of profits shown by the accounting. The only points made upon the appeal are that neither the complainant’s bill, nor the testimony adduced in support of it, discloses anv title in the complainant to the exclusive use of the alleged trade-name of C. Benkert & Son, or any right in him to be.heard in a court of equity to complain of the use of that name, or its imitation, by defendants.
The original bill, which was filed in 1884, alleges that about 25 years before that time Casper Benkert (who was the father of complainant) and the complainant were partners, and as such were engaged in the city of Philadelphia, under the firm name of C. Benkert & Son, in the business of manufacturing and selling boots and shoes of high grade and excellent quality, and that they continued to carry on that business under that name in the city of Philadelphia until the year 1876, when Casper Benkert conveyed his entire interest in the business to the complainant and retired therefrom, ever since which time the complainant has carried on the business in the city of Philadelphia, and has been and still is the sole owner and proprietor thereof; that during the times mentioned the partnership of C. Benkert & Son, and the complainant as its successor, manufactured large quantities of such boots and shoes, which they sold in all the markets of the world; that all of the boots and shoes so manufactured by them are of the very best and finest quality, and command a higher price throughout the markets of the world than any other boots and shoes manuf rtured and sold in quantities by any person, firm, company, or corporation; that each and every one of the boots and shoes so manufactured and sold by the partnership of C. Benkert & Son, and by the complainant as its successor, had plainly marked upon them the name and.words “C. Benkert & Son”; that that name was placed upon the boots and shoes as a trade-mark, and to indicate the ownership and origin thereof, and that during all of the 25 years then last past the boots and shoes so manufactured and sold have been known throughout all countries and throughout all the markets of the world by the name “C. Benkert & Son,” which was upon them; that that name has been a trade-mark upon the boots and shoes so manufactured and sold, and that the partnership
The record contains abundant evidence of the fraudulent imitation of and infringement upon the trade-mark of C. Benkert & Son by the defendants. But the point is made that: the case shows that the complainant is himself guilty of such fraudulent misrepresentation in respect to the trade-mark in question as bars him from relief in equity. It is said for the appellee that this point was not made in the court below. For the appellants it is asserted that it was made. We have no means of determining this dispute between counsel. But, whether there made or not, it must he here met and decided; for if it he true that the record shows that the case is one which a court of equity, under the principles by which such courts are controlled, will not entertain, it must be here so held, whether the attention of the trial court was called to the point or not. The evidence shows that Casper Benkert, the father of the complainant, established the business of manufacturing tine boots and shoes in the city of Philadelphia in the year 18:17. In 184-9 he commenced manufacturing rtne boots and shoes for tiie trade of the Pacific coast. This proved a very successful and profitable enterprise. No goods were made except of standard high grade;, by the best skilled mechanics, at the highest ruling rate's of wages, and the name; “Casper Benke;rt” became1 identiiied with exe-lusively fine; boots and shoes throughout; the Unite'd States; especially on the Pacific coast. Tn March, 18(50, Oaspe'r Benkect took the e-omplainant, William J. Bemkect, into partnership with him, undew the; linn name of O. Bemke;rt & Bon. On the 1st day of June;, 1874, Casper Bendecid solel anei transfecreei all his right, title*, anei interest in the* busine'ss of 0. Bemkert & Hem to-Oe;e)rge F. Bemkert, Ilemry L. Bemkert, and tiie; e:e>mplainant, William J. Bemkert. The interest of Geiorge* F. Benkert therein was pur-ediase'd by William J. Bemke'rt in Be;pte;mbec, 1875, and that of Henry L. Benkert in March, 1877, from which time the; complainant has remained the sole owner erf 1 he husine;ss, which has, from the; time; the; complainant was admitted into partnership with OaspeT Bemkert, in March, 18(50, continued lo lie cemelue-terl under the; name P. Benkert & Bon. All of t.lie boots and shea's manufactured anei sesld by Casper Benkert whe;n sole; proprietor erf the; busine'ss we're; stampe'd “C. Bemkert,” and sill erf the boots and shoes manufacturer! and sesld by the firm of C. Bemkert & Son, and by George F. Benke;rt,
In the case at bar the trade-mark for which protection is claimed consists of nothing beyond the mere name of the ñrm, C. Benkert & Son, read in the light of the circumstances under which the name was established, and in which its use has been continued. Casper Benkert for more than 20 years before the complainant entered the /inn of C. Benkert & Son, was engaged in the manufacture, in the city of Philadelphia, of boots and shoes whose sole characteristic, except the name “0. Benkert,” which lie stamped upon them, was the excellency of their manufacture. Because of their fine quality they attained a high reputation in the markets of the country. His name it was that first gaye to boots and shoes so manufactured and put upon the market their value and reputation, and when he took the complainant into partnership with him under the firm name of 0. Benkert & Son, and continued the manufacture of the same quality of boots and shoes, giving them as a trade-mark the name “0. Benkert & Son,” Ms name and skill continued, at least in párt, to be a guaranty of the excellency of their manufacture, and to give reputation and value to the goods. Yet the complainant was also an original member of the firm of 0. Benkert & Son, continued such throughout its existence, and finally, as his brothers one by one conveyed their interest in it to him, became sole successor to its business. The evidence shows that for more than two generations the name “Benkert” lias been associated by the trade with the business established in Philadelphia by the father, first under his own name, and afterwards, in connection with the complainant, under that of “O. Benkert & Son,” of making and selling boots and shoes of a specially fine grade, and in the course of that long period the name has become indicative of the quality of the goods, irrespective of the particular Benkert who was their manufacturer. Under such circumstances, we are of opinion that the public could not have been misled, and that tlie complainant cannot be fairly held to have incurred the charge of misrepresentation. 26 Am. & Eng. Enc. Law, 260, and cases there cited. Judgment affirmed.