147 N.Y.S. 138 | N.Y. App. Div. | 1914
The recovery was for the penalty given by section 367 of the General Business Law, being chapter 20 of the Consolidated Laws (Laws of 1909, chap. 25), as amended by chapter 475 of the Laws of 1909, which added said section thereto.
The plaintiff was duly incorporated under the laws of Indiana in September, 1904. It has been duly authorized to do business in this State and has a plant at Astoria, Queens county, N. Y., where it manufactures and prepares for sale and sells there and elsewhere acetylene gas in five sizes of copper-plated steel shells, containers, cylinders or tanks, which for brevity will be designated tanks, containing porous asbestos brick or disc fillers for absorbing acetylene gas dissolved in a liquid acetone solvent for use in lighting motor vehicles, the gas, when thus dissolved in the acetone, being forced into the tanks under pressure. There is only one method by which acetylene gas is manufactured, and that is by adding carbide to water, whereby the gas is given off. The gas is extremely soluble in water, and, according to the evidence, is dangerous under pressure unless “stored in a safety material.” The plaintiff has a standard formula for thus preparing the gas in the acetone solvent for storage in the tanks. When the gas is dissolved in liquid acetone and inserted in the tanks according to the plaintiff’s formula, a tank will hold forty cubic feet of acetylene gas at a pressure of two hundred and twenty-five pounds — the unit whether per square foot or inch is not given — at a temperature of sixty degrees Fahrenheit, or eight times the quantity that a tank would hold if the gas were not thus dissolved in the acetone liquid solvent and absorbed in the asbestos fillers under pressure. When desired for lighting, the gas is admitted to the burner from the tank through a needle valve
On the 25th day of December, 1900, the United States Patent Office duly issued letters patent No. 664,383 to G. M. A. Claude and G. A. Hess, the inventors and their assignee, for an apparatus for storing and distributing acetylene gas, and in the specifications forming part of the letters patent it is recited that the apparatus, to which the invention pertains, “is designed to carry out a process of storage and distribution involving the employment of a chamber charged with a solvent of the gas to be stored and into which the gas is forced under suitable pressure,” and that the tank is to be charged at a central station or distributing point and transported “as a complete article or ‘ package ’ adapted to be placed in communication with the burners ” where the light is desired, and that “to this end the apparatus embodying the present invention consists, essentially, in a closed receptacle containing acetylene gas in solution and having an outlet for the gas so positioned as to be normally above the level of said solution and adapted to be provided with a burner or connected with a pipe system for the final use or distribution of the gas which escapes from the solution owing to the diminution of pressure when the said outlet is opened.” It is not necessary to describe the patent in full. It is sufficient to say, for the purposes of this appeal, that it covered the tank and its contents, "prepared and filled as already described, as a complete package ready for commercial use. Each of the six specifications of the invention, as claimed by the inventors, and upon which the patent was granted, shows that the patent was claimed on the “ prepared package” or “closed vessel” con-taming acetylene gas so dissolved in a solvent and stored, described in one of the specifications as “a gas-package.”
It was held by the Federal courts, and is now conceded, that
The plaintiff attempted to register the word “Prest-O-Lite” as a trade mark pursuant to the provisions of said section 361 of the General Business Law, and its right to recover the penalty depends upon whether it is entitled to the protection of the provisions of the statute in the use of the hyphenated word “Prest-O-Lite” as a trade mark on tanks containing gas manufactured by it.
When article 24 of the General Business Law, entitled “ Trade Marks,” went into effect on the 11th day of February, 1909, it contained only sections 360-366, inclusive, which related to certain specifically enumerated trade marks. By adding section 361 thereto on May 25, 1909, the Legislature brought within the regulation and protection of the statute other trade marks by general language. Section 361 was analyzed by the Legislature itself, as shown by the heading thereto, as one containing “Further provisions concerning trade-marks on articles of merchandise.” The 1st sentence of the section is as follows: “Any person or corporation engaged in manufacturing, packing, bottling or selling any article of merchandise, put up by him for sale in any bottle, vessel, box, package or other receptacle with his name, trade-mark, label or private mark appearing in any way thereon, or branded, stamped, affixed, blown or impressed thereon, may file in the office of the Secretary of State, and in the office of the county clerk of the county where the same is manufactured, packed, bottled or put up for sale, or where his, its or their principal place of business is situated, or if such person or corporation shall manufacture, pack or bottle outside of this State, then in any county of this State, and also in the office of the Secretary
Pursuant to the provisions of this statute, the plaintiff on the 5th day of December, 1912, filed in the office of the clerk of the county of Queens a notice, signed in its name by its man
The defendants deal in automobile accessories, and their place of business is at No. 1651 Broadway, borough of Manhattan, New York. On the 16th day of January, 1913, one Jones took an empty tank of the plaintiff’s manufacture into the defendants’ store and asked for “a refilled tank,” and received another tank of the plaintiff’s manufacture which had been refilled by the Searchlight Gas Company at Camden, N. J., with acetylene gas manufactured by it, for which Jones was required to pay one dollar and fifty cents. The word “ Prest-O-Lite ” on the body of the tank thus received by Jones was visible through a torn part of a yellow label with which the Searchlight Gas Company covered it. Two paper labels of the Searchlight Gas Company had been attached to the tank. One was a square yellow label, upon which was printed in black a notice in the name of that company to the effect that the tank had been refilled with acetylene gas made by it according to its system of acetylene storage. The other was a round yellow label printed in red containing a “Cold Weather Notice ” in the name of the Searchlight Gas Company stating the effect on the pressure of taking the tank from a warm to a cooler atmosphere. The name “Prest-O-Lite” on the gauge of the tank was not covered by either label. This tank as thus filled came into the possession of the Searchlight Gas Company in New York about the 8th day of December, 1912, and it had been received by it in New Jersey about ten days prior thereto.
The plaintiff,' in the first instance, for proof of its right ’to the word “Prest-O-Lite” as a trade mark, rested on the presumption declared by the statute. The defendant raised various objections to the constitutionality of the statute, which, in the view we take of the case, are not necessarily presented for decision and no opinion will be expressed thereon. It may be observed, however, that the Legislature by this statute has not attempted to confer trade-mark rights, but merely to more effectively regulate existing common-law trade-mark rights
The act of Congress of March 3, 1881 (21 U. S. Stat. at Large, 502, chap. 138), ivhich is the Federal statute with respect to the registration of trade marks enacted after a former statute had been declared unconstitutional, contains like provisions with respect to the effect of the registration as evidence. {Elgin Nat. Watch Co. v. Illinois Watch Co., 179 U. S. 665.) The Legislature has merely attempted to declare what shall be prima facie evidence in such cases, and we will assume that it was competent for it to declare that the presentation of the certificate of registration of the trade mark with proof of compliance with the statute, in view of the careful provisions made for annulling the registration of trade marks at the instance of persons not entitled thereto, is presumptive evidence of the right thereto in an action to recover the penalty. (See Howard v. Moot, 64 N. Y. 262; Colman v. Shattuck, 62 id. 348; People v. Cannon, supra; People v. Johnson, 185 id. 229.) The defendant, however, thereupon showed the facts already stated with respect to the issuance of a patent pursuant to which, and to the license granted thereunder, plaintiff manufactured the gas packages, and further showed that the name “Prest-O-Lite” was used both as a generic name to designate the gas package and as a trade mark indicating the origin and manufacture of the contents of the tank. There is no doubt from the evidence that the word “Prest-O-Lite” conveyed to those familiar with gas used for lighting automobiles, information that the tanks upon which that name appeared contained gas prepared and stored therein according to the formula for which the patent had been issued and which was used by the
The case, therefore, falls within the rule established by the Federal' decisions that a name used during the life of a patent both as a generic name for the patented article and as a trade mark to indicate the origin of the manufacture, becomes public property on the expiration of the patent, on the theory that it is essential to the public enjoyment of the right to manufacture and sell that which was theretofore protected as a
The learned counsel for the respondent argues that it cannot be successfully maintained that the word “Prest-O-Lite” was used by the plaintiff as a generic name descriptive of or to designate the particular style of its gas package manufactured under the license from the owner of letters patent, for the reason that it was neither the owner nor a general licensee of the patent, but that its license was limited both as to territory and as to the use to which the gas manufactured and so prepared by it should be applied, and it cites numerous decisions in which it was held that it had acquired a proprietary right to use the hyphenated word as a trade mark. (See Prest-O-Lite Co. v. Avery Lighting Co., 161 Fed. Rep. 648; Prest-O-Lite Co. v. Post & Lester Co., 163 id. 63; Prest-O-Lite Co. v. Bogen, Inc., 209 id. 915; Prest-O-Lite Co. v. Davis, Id. 917.) He also contends in his points that other names are used by other licensees in manufacturing acetylene gas pursuant to the letters patent; but there is no evidence on that point in the record.
The plaintiff evidently succeeded to the rights of a company which had a license from the assignee of the patent under date
but only for the purpose of use in connection with the lighting of lamps on automobiles, carriages and other moving vehicles, but not including railway and tram cars, or boats or marine vessels.” The last renewal of the license, which was on the 24th of October, 1906, contained a provision by which the parties agreed that it should include “the license to manufacture and sell automobile cylinders in the Dominion of Canada, it being understood that all cylinders shall by {sic) shipped into Canada in an incomplete condition, viz: without acetone or acetylene, to our Canadian Branch, for completion; this condition being for the protection of our patents.” There is no evidence that there was any other manufacturer of acetylene gas prepared and stored for use in lighting automobiles and other moving vehicles under the letters patent. There is no difference in principle between the use of a name by a licensee, having an exclusive license to the extent of such use, to designate a patented article manufactured by it, and the use of the name by the owner of the patent. The licensee, therefore, like the owner of a patent, loses with the expiration of the patent his exclusive right to the use as a trade mark of a name which he applied to a patented article and permitted it to become known by during the life of the patent.
It follows that the determination of the Appellate Term is reversed, with costs, and the judgment of the Municipal Court reversed, with costs to the appellant, and the complaint dismissed, with costs.
Ingraham, P. J., and Scott, J., concurred; McLaughlin and Hotchkiss, JJ., dissented.
Determination and judgment reversed and complaint dismissed, with costs in all courts. Order to be settled on notice.