Siegert v. Abbott, 61 Md. 276

Siegert v. Abbott

61 Md. 276 | Md. | 1884

Irving, J.,

delivered the opinion of the Court

The bill in this case was filed by Carlos D. Siegert and others to prevent, by injunction, Cornelius W. Abbott and Cornelius F. Abbott from imitating the complainants’ trademark and labels, in which they wrapped the bottles of their bitters popularly called “Angostura Bitters,” by putting up a compound represented to have similar properties and virtues, in labels so much like those of the complainants, as to be a palpable simulation of them, by which the-public was likely to be, and was, deceived into buying the defendants’ preparation as and for that of the complainants. The bill also prayed for an account of profits from the sales made by the defendants in that way. The Circuit. Court enjoined one of the defendants, Cornelius W. Abbott, and his agents and employes, and forbade him and them to use the labels described in the proof as used by them ; but the bill was dismissed as to Cornelius F. Abbott, and no account of profits was decreed. The complainants appealed because Cornelius F. Abbott was not eo nomine enjoined, and also because an accounting was. not decreed. The defendant, Cornelius W. Abbott appealed because any relief was granted.

A motion has been made to dismiss the complainants’ appeal, on the alleged ground, that they have estopped themselves from prosecuting the same, by taking proceedings, after decree granting partial relief and awarding them costs, to enforce the payment of the costs. The whole case being open for review on the appeal of the de*284fendant in the suit, and, on careful consideration being of ■opinion that there was error in the decree, and that the bill ought to have been dismissed, we have found the motion unimportant, and have not considered the legal question it raises.

It is a general rule of law, in cases of this hind, that Courts of equity will not interfere by injunction where there is any lack of truth in the plaintiff’s case ; that is, where there is any misrepresentation in his trade-mark or labels. Browne on Trade-marks, sec. 71, and sec. 474, et seq. The respondents invoke the application of this rule to the complainants’ case, as made, which they contend contains a misrepresentation on the face of the label at its very beginning. The heading of the label, as used when the bill was filed, is in three different languages, but the translation of the Spanish and German is the same as the English, which reads “Aromatic Bitters, or Angostura Bitters, prepared by Dr. Siegert, at Angostura, now Port of Spain, Trindad.” Here is, certainly, a statement that the article is prepared by Dr. Siegert; that it was prepared at Angostura, but is now prepared at Port of Spain.

It is a conceded fact that Dr. Siegert died in 1810. The bill so charges. He never lived at Port of Spain. The complainants, his sons and successors in business, removed to Port of Spain several years after his death. One of the complainants was associated with Dr. Siegert in the business as his partner, and alleges that, as survivor, he succeeded to the business; and subsequently he associated his brothers, the other complainants, with him as partners in the trade.

A late case in the Supreme Court of the United States, (Manhattan Medicine Co. vs. Wood, 108 U. S., 218,) decided in April, 1883, since the decision of the learned Court from which this appeal was taken, seems to be conclusive against the right of the complainants to the relief asked. There the complainants sold a medicine, put up in glass *285bottles with panel shaped sides, on five of which, in raised letters, the words “Atwood’s Genuine Physical Jaundice-Bitters, Georgetown, Mass.” are blown in the glass. Twenty-five years ago the medicine was manufactured by Moses Atwood in Georgetown, Massachusetts, and was-sold by his agents throughout the United States. The complainant in the suit was a corporation under the laws, of New York, to which, by successive mesne assignments, the sole right to use the receipt and manufacture the compound had passed; and that right was being exercised in New York City, when a bill was filed against one Wood for using- their trade-mark and labels, or simulating them, for a medicine manufactured by Wood in Portland, Maine.. The Court says, that Dr. Atwood sold his “ Atwood’s Vegetable Jaundice Bitters ” with this designation, that it was-manufactured by him. “As the medicine was tried and proved to be useful, it was sought for under that designation, and that purchasers might not be misled, it was always accompanied with, a label showing by whom and at what place it was prepared. These statements were deemed important in promoting the use of the article and its sale, or they would not have been continued by the assignees of the original inventor. And yet they could not be used with any honest purpose when both statements had ceased to be true. It is not honest to state that a medicine is manufactured by Moses Atwood, of Georgetown, Massachusetts, when it is manufactured by the Manhattan Medicine Company in the City of New York.” The Court-further says : “The object of the trade-mark being to indicate, by its meaning or association, the origin or ownership of the article, it would seem that when a right to its use is transferred to others, either by act of the original manufacturer or by operation of law, the fact of the transfer should be stated in connection with its use ; otherwise a deception would he practised upon the public and the very fraud accomplished, to prevent which Courts of *286equity interfere to protect the exclusive right of the original manufacturer.” Because of these untruthful statements the Supreme Court held that the complainants were not entitled to the aid of a Court of equity, and relief was denied. Numerous cases were cited hy the Court in support of the law as laid down by them, among which are The Leather Cloth Company vs. The American Leather Cloth Company, 4 DeG., J. & S., 137, and 11 Clark H. L., Cases, 523; Pidding vs. How, 8 Sim., 477, and Perry vs. Truefitt, 6 Beav., 66.

A more exactly analogous case can hardly he imagined. It is true a removal from “Angostura” or “Ciudad Bolivar” to “Port of Spain,” is noted in the label; but it is •so noted as to leave the impression that Dr. Siegert, the inventor and original manufacturer, had so removed and was continuing his manufacture at “Port of Spain.” Although Dr. Siegert died in 1870, and anew firm was compounding the bitters at a place where he never did live •and compound them, when the simulation by defendants was begun and committed, no intimation is to he found in the label that he is dead, and that complainants as his legal successors are conducting the business under his name and signature, a fac simile of whose signature is preserved on the label. It should be remarked, that in the note of warning against counterfeits, at the left hand of the label, it is stated the bottles hear the complainants’ signature, which inspection shows to be not theirs, hut the original inventors. We are unable to distinguish this case from the Manhattan Medicine Company case, from the ■opinion in which we have quoted, and which we think it proper to follow in a case of this nature, in the absence of a statute of the State controlling the subject. The complainants have relied on Siegert vs. Findlater, 26 Weekly Reporter, 459, wherein the present complainants after the death of their father, were awarded injunction hy Justice Put in England. The same point respecting misrepresen*287tation seems to have been made in that case, and to have been made in the pleading ; but just how it was pleaded does not appear. The learned Judge however, overrules the objection, but his reasoning is most unsatisfactory. We do not see how the misrepresentation of the fact that Dr. Siegert is personally compounding these bitters is announced and explained by the statement that he has removed to Port of Spain in the Island of Trinidad. The point is treated, in that case, as if the misrepresentation was solely of the place of manufacture, which, in fact, is the most harmless part of the misrepresentation. Upon that question we cannot regard the Findlater decisionas of sufficient authority to control the case as now presented to us. In the case of Robertson vs. Berry & Co., 50 Md., 591, wherein the property right of a publisher to the title and name of his work, is recognized in analogy to the law of trade-marks, and relief was granted against imitation, the point, on which we dispose of this case, did not arise, and the case is distinguishable from this. This decision therefore is not intended to depart from any of the principles therein established.

(Decided 7th February, 1884.)

Eor the reasons we have assigned, the decree in this cause must be reversed and the bill of complaint must be dismissed.

Decree reversed, and bill dismissed.