103 Tenn. 40 | Tenn. | 1899
The bill in this case alleges that complainant is the owner of a formula, and for over twentv years has been engaged in preparing from it a valuable medicine well known as “Storm’s Liver Regulator,” for which, after the expenditure of large sums of money, he has created a wide and constantly increasing market, particularly in the Southern Mississippi Valley, and that defendant had recently caused to be prepared, by some one unknown to complainant, a spurious compound, and was seeking to secure purchasers for it by pirating complainant’s trade-mark or trade name, and by resorting to • other devices equally illegal, and thus appropriate wrongfully the patronage which the complainant had acquired for his medicine. The object of the bill was to secure a perpetual injunction against the acts of the defendant.
The facts established by the testimony may be summarized as follows: In the year 1872 Dr. Mitchell, an eminent physician in Memphis, finding the need of preparing a vegetable cathartic which could be substituted for calomel, finally selected the ingredients for such a medicine and took a formula embracing them to the drug firm of Stever & Robinson and asked them to experiment
From this time it is evident Dr. Mitchell exercised no control over, nor claimed, any interest in, this formula. Dor many years he retained a recollection of the constituents of this medicine, but the proportion of the ingredients he did not know, so that he prescribed it always to his patients as “Comp. Elix. Leptandra,” who, taking the prescription to ' Stever & Robinson, and after-wards to complainant, as the successor of that firm, would get it filled. One of the earliest of these preparations was given by Dr. Mitchell to Captain Ad. Storm, a citizen of Memphis, of wide and influential acquaintance, who made frequent use of it, and, finding himself greatly benefited, recommended it to a great many of his friends, the result of which was that it soon became a popular remedy in Memphis and along the Mississippi River.
So instrumental was Captain Storm in its introduction to the public, that Stever & Robinson, who were thus getting the benefit of his recommendations of it, and whose relations to him were of
In 1873 Robinson purchased Stever’s interest in the assets and good will of Stever & Robinson. By this purchase he acquired ■ the sole right to this formula, and, by operation of law, the firm’s trade-marks used in placing the medicine made from this formula on the market. Murry v. Hopes, 111 N. Y., 415; Huxis v. Clary, 143 Mass., 592; Myers v. Kalamazoo, 54 Mich., 215; Shipright Chemists, Cox’s Trade-mark Oases, 99.
From the time of this purchase he has been extensively preparing and placing on the market this remedy, and has succeeded in creating a wide, popular demand for it. In doing so he has expended much labor and large sums of money. All the time it has been conspicuously labeled and sold as “Storm’s Liver. Regulator,” so that in the wide territorial area in which it is used these words have become distinctive, and are associated alone with the compound of complainant.
Several years ago Captain Storm died. After his death the defendant,' an only child, hut neither a druggist or chemist, began his efforts to acquire this formula, with the view of preparing and selling this medicine on personal account. To this end he approached Dr. Mitchell, who declined to give him any aid in accomplishing his purpose.
, As a part of the record in this cause there has been sent' up the packages of these respective parties. Upon examination we find that the labels attached to the bottles of both complainant and defendant, in large display type, have the catch words, “Storm’s Liver Regulator,” while the bottles are of the same general shape, the necks, however, of those of defendant being a little longer than the necks of thpse of complainant. Below, the catch words given above, in language little differing in form and phrasing, each medicine is highly. recommended for diseases attendant upon a torpid liver. The respective cartons vary in color, but this is not sufficiently pronounced to place the
On the side of complainant’s carton is a' statement as follows: “'This prescription has grown from k single prescription written by one of our leading physicians, whose experience in the treatment of diseases which it is given for has been very extensive and who prescribed it among the first for
That the statement on the defendant’s carton that his medicine was based on the original preparation prepared for Captain Ad. Storm by his physician, in the light of this record, is evidently misleading, while on the other hand it is equally clear that the corresponding statement on the carton of- the complainant is true. An examination of these labels and cartons satisfies us that whatever may have been the purpose of the defendant, yet- that very easily, even with an ordinarily cautious purchaser, the medicine of the defendant could be substituted for that of the complainant, and that as defendant wa,s offering his at' a less figure
'In the case many witnesses were examined, among them' being men of high standing and much in~ telligence, who have been accustomed to the preparation of the complainant for many years and who have valned it as based npon a prescription of Dr. Mitchell, and they concur in saying that they would, in buying from any reputable druggist, take without question the preparation of the defendant as that of the complainant. Two of these gentlemen say that, upon calling for the medicine (intending complainant’s), the' retailer gave them the defendant’s preparation, and that after-wards noticing the picture of Captain Storm on the carton, they supposed that this was done by the complainant out of compliment to his memory, and it was only after reading the entire inscription that they discovered they did not get what they intended to buy. With regard to that' class of persons who are the largest buyers of proprietary medicines, the testimony is without contradiction that it would he an easy matter to palm off the medicine of defendant for that of complainant.
Under such circumstances we have no doubt of the right and the duty of a Court of Equity to interfere. It is immaterial that there is a lack of an imitation of the labels and cartons so. as to deceive an expert, or even an ordinary observer,
But it is argued that defendant is entitled to use his own name in placing his own medicine on the market, and that if complainant is injured thereby he must bear the consequences of having selected as a part of his trade-mark or trade name a name common to others.
The law is settled that no one can acquire the right of a trade-mark, either in his own name or in that of another person, so as to exclude one of the same name in using it to identify goods which he sees proper to put on the market, so. long as in doing so the latter perpetrates no fraud thereby or is guilty of no unfair 'artifice. In the words of the Supreme Court of New York, in the well-considered > case of Higgins Co. v. Higgins Soap Co., 144 N. Y., 462: “The right of a man to use his own name in his own business the law protects, even when such use is injurious to another who has established a firm
In the ease of Singer Mfg. Co. v. June Mfg. Co., 163 U. S., 169, the foregoing principle is thus stated: “Every one has the absolute right to use his own name honestly in his own business, even though he may thereby incidentally interfere with and injure the business of another having the same name. In such ease the inconvenience or loss to which, those having a common right are subjected is damnum absque injuria. But al
This principle was applied by the Circuit Court of appeals ' of the Seventh Circuit for the protection of the proprietor of “Stuart’s Dyspepsia Tablets” against a defendant who used his own name and put on the market a medicine which he called “Dr. Stewart’s Dyspepsia Tablets.” The Master in that case found, among other things, that the similarity in sound between “Stuart’s Dyspepsia Tablets” and “Dr. Stewart’s Dyspepsia Tablets” is such as would be likely to deceive careless persons, and even ordinarily careful persons, but that the appearance of the respective packages is such that no reasonably careful person could mistake one for the other. They differ materially in size and shape, and most radically in color, and in the style, color, and general appearance of the printed matter. Besides the particulars enumerated, another important difference, . and one which is calculated
But the Court said: “Almost in his (E. G-. Stewart’s) first- attempt to market his wares he was advised by dealers that he was encroaching upon the rights of the appellant. It is manifest that he was. It needs no argument to show that these names are idem sonans, and that the use of both in connection with dyspepsia tablets must cause great confusion in the sale and great wrong to purchasers. It is clear to ns that the appellee, E. G\ Stewart, and his corporation so understood and so designed. They knew of the extensive advertisement which the appellant indulged with respect to his goods. They knew . that an immense trade had, in consequence, been built up and a large demand existed for “Stuart’s Dyspepsia Tablets.” They sought to appropriate to themselves that good will and to impose upon the public their manufacture as the goods of the appellant. Stewart ' justified himself to the wholesale dealers who cautioned him by the claim that he used his own name, and that he had a right to use it as he would.
The case of Myer v. Dr. Bull Vegetable Co., 58 Fed. Rep., 884, was one where the complainant had placed on the market a cough syrup by the name of “Bull’s Cough Syrup” and “Dr. Bull’s Cough Syrup,” and had established a large trade. The defendant, whose name was Bull, began to put a cough remedy on the market and designated it as “Dr. B. L. Bull’s Celebrated Cough Sryup.” Upon the bill filed the defendant was enjoined from disposing of any remedy to which shall be applied in any form or manner, as the name thereof, the words “Dr. B. Li Bull’s Cough Syrup,” or the words “Bull’s” and “cough syrup,” etc., the Court (Harlan, Circuit Justice, and Woods, . Circuit Judge) saying: “While the right of no one can be denied to employ his name in connection with his business, or in connection with articles of his own production, so as to show the business or product to be his, yet he should not be allowed to designate his article by his own name in such way as to cause it to be mistaken for the manufacture or goods of another already on the market under the same or similar name. Whether it be his name or some other possession, every one, by the familiar maxim, must so use his own as not to injure the possession or right of another.”
In the English case of Seixo v. Provenzende, 1 Ch. App., L. R., 192, Lord Cranworth said: “I do not consider the actual physical resemblance of the two marks to be the question for consideration.
Cases of like import might be indefinitely multiplied , but we content ourselves with referring, as further authority, to Gato v. El Modello Cigar Mfg. Co., 25 Fla., 886 (S. C., 6 L. R. A., 823); Spaver v. Shaver, 54 Iowa, 208; Baker v. Baker, 87 Fed. Rep., 209; Duryea v. National
We have examined the eases relied upon by defendant’s counsel, and. when considered ndtli tlieir limitations, Ave do not think they support the contention of the defendant, or are necessarily ont of line ■with those -which we have referred to as authority for the contrary view, unless it possibly be that of Fish v. Fish, 16 Wis., 453.
But were it otherwise, upon the overwhelming weight of both English and American authority, the defendant, on the facts of this record, was guilty of an infringement of the .trade-mark of complainant, and of an illegal, improper, and unfair competition in business with complainant, as well as of attempted imposition upon the public, and the Chancellor was correct in so holding. We find that his decree perpetually enjoined the defendant from using in connection with the manufacture, sale, and advertisement of his medicine, upon his packages, wrappers, cartons, and bottles, or other-Avise, the words “Storm,” “Captain Storm*” or “Ad. Storm,” in connection or collocation Avith the words “liver regulator;” (2) from the irse of the words, “This medicine is based on the original prescription prepared for Captain. Ad. Storm at his o-wn solicitation, by his physician, one of the leaders of the profession in the city of Memphis, Tenn.,”