3 N.Y.S. 786 | N.Y. Sup. Ct. | 1889
The counterfeit closely imitated the genuine stamp of the union, and, although distinguishable upon close inspection, it was likely to be taken for the genuine, and to mislead and deceive tiie public. The question presented is whether the charge as made and proved constituted an offense within the statute which provides that “a person who knowingly * * * (1) falsely makes or counterfeits a trade-mark; or (2) affixes to any article of merchandise a false or counterfeit trade-mark, knowing the same to be false or counterfeit, or the genuine trade-mark or imitation of the trade-mark of another without the latter’s consent; or (3) sells or keeps or offers for sale an article of merchandise to which is affixed a false or counterfeit trade-mark, or the genuine trade-mark or an imitation of the trade-mark of another without the latter’s consent; or (4) has in his possession a counterfeit trade-mark, knowing it to be counterfeit, or a die, plate, brand, or other thing for the purpose of falsely making or counterfeiting a trade-mark; or (5) makes or sells or offers to sell or dispose of * * * an article of merchandise with such a trade-mark as to appear to indicate the quantity, quality, or character of the article, but not indicating it truly,—is guilty of a misdemeanor.” Pen. Code, § 364. The genuine label was designed as a trade-mark of the “ Cigar-Makers’ International Un ion of America, ” and has been so used since in 1880, when it was devised and adopted for that purpose, pursuant to a provision of the constitution of the union. The important inquiry is whether, in its application and use, this label has the character of a trade-mark, and its use as such is entitled to protection. As defined by the statute, “a ‘ trade-mark ’ is a mark used to indicate the maker, owner, or seller of an article of merchandise, and includes, among other things, any name of a person or corporation, or any letter, word, device, emblem, figure, seal, stamp, diagram, brand, wrapper, ticket, stopper, label, or other mark lawfully adopted by him, and usually affixed to an article of merchandise to denote that the same was imported, manufactured, produced, sold, compounded, bottled, packed, or otherwise prepared by him, ” etc. Id. § 366. “ An imitation of a * trade-mark’ is that which so far resembles a genuine trade-mark as to be likely to induce the belief that it is genuine, whether by the use of words or letters similar in appearance or in sound, or by any sign, device, or other means whatsoever.” Id. § 368. This is substantially the rule at common law relating to infringement of trade-marks. But it is contended on the part of the defendant that the label cannot be treated as a trade-mark in the legal sense of the term, because it has not the support of any proprietary right in its relation to the merchandise upon which it is affixed, in respect either to the workmanship or ownership of such merchandise, and neither the maker, owner, or seller is indicated by the label. The Cigar-Makers’ International Union of America is a voluntary association of individuals, said to number 25,000. They are cigar-makers. The association is not engaged in the business of manufacturing cigars, and as such has no property in the business.
The only recognized indication of a trade-mark is the source, origin, or ownership of the article of merchandise on which it is placed. Caswell v. Davis, 58 N. Y. 223. This means that the mark is calculated to distinguish the articles which bear it from those of other makers or vendors. It need not-indicate any particular person as maker, manufacturer, or vendor, or give the name or address of either. - When the mark has become recognized by purchasers as a distinctive designation of a particular maker, manufacturer, or seller of a certain quality of goods, it will be a sufficient indication of the origin or ownership, within the rule requisite to its protection as such, although purchasers may not, from the work or otherwise, be able to tell who is the particular maker or seller of the article. Godillot v. Harris, 81 N. Y. 263; Tank Co. v. Scott, 33 La. Ann. 946. Abstractly, and apart from its application and use, a trade-mark has no recognized ownership. Its value is in its employment in marking the goods upon which it is placed. This gives to it the character of property. It is then a symbol of reputation or goodwill. Derringer v. Plate, 29 Cal. 292; Bradley v. Norton, 33 Conn. 157. The contention on the part of the defense is that there is no ownership of the alleged label as a trade-mark, and that it does not come within the purpose which permits its recognition as such. If identity of proprietorship in the mark and the article to which it is affixed, or if identity in the quality of the goods, were requisite to support it as such, the charge cannot be sustained, because the international union neither manufactures nor owns the cigars labeled with it, and they are made in several thousand shops, and by many thousand men, under the direction of their several employers, and with sucli qualities of tobacco as are provided for the purpose. The mark is designed as a symbol to distinguish the cigars produced by the labor of those workmen, which indicates quality of the article manufactured so far only as it is incident to or dependent upon the workmanship. The fact that goods are produced by the work of one person in the service of another, to whom they belong, and that a label cannot be placed upon them without the consent of the owner, does not seem to be in the way of the right of the workman, through
In the case at bar the question is raised whether what is represented by the label is properly the subject of a trade-mark. It is very clear that the language there employed which tends to describe the character or quality of cigars, or of the workmen by whom they are and are not made, cannot be treated as the subject of a trade-mark as such, because there can be no exclusive right to the description of quality of articles produced, or of the skill or quality of the work of the persons by whom they are made; nor can there be .any exclusive right to thus appropriate an idea relating to the quality of the