149 F. 100 | 2d Cir. | 1906
Lead Opinion
Notwithstanding the voluminous record and the .elaborate briefs by which the controversy between the parties has been presented, the controlling questions of fact and law are few and simple, and permit the case to be briefly disposed of.
The action was brought by the sons and successors in business of Dr. J. G. Siegert, who was the original manufacturer of an aromatic bitters which became known as “Angostura Bitters,” to restrain the defendants from selling a preparation made by C. W. Abbott, and put upon the market under the same name, in bottles and wrappings iri imitation of those previously adopted by the Siegerts. The action was defended by Abbott, and may be treated as though it had been brought against him. The court below dismissed the bill of complaint upon the grounds that the Siegerts never acquired any right to use the name as a trade-name or trade-mark, that they had been guilty of fraudulent misrepresentations in offering their preparation to the pub) lie, and that Abbott had not committed any acts of unfair competition)
It appears that Dr. Siegert, a physician and surgeon, compounded and commenced the manufacture and sale of his bitters some years prior to 1846 at Angostura, a seaport town of Venezuela. In 1846 the name of the town was officially changed from “Angostura” to that of “Cuidad Bolivar.” Nevertheless, the former name also survived, and the town has ever since been commercially designated to some extent by the original name. The hitters were originally sold under the name of “Dr. Siegert’s Aromatic Bitters.” In 1853 they bégatí to command an extensive sale in foreign countries, and were common
Abbott, who as has been said is the real defendant, claims to derive his right to use the name, which had thus been adopted as the trade-name of the Siegerts, through the firm of Maynard & Co., who in the fall of 1872 began making bitters and putting them on the market under the name of “Angostura Aromatic Bitters.” This firm put up their bitters in bottles of the same size and shape of the Siegerts’ bottles, sometimes using second-hand Siegert bottles; and they wrapped the bottles in labels which were obviously designed to imitate the Siegert labels in their conspicuous features. In 1877 Abbott registered the name “Aromatic Angostura Bitters” as a'trade-mark for the bitters. Subsequently in putting them on the market he dropped the word “Aromatic,” and has since in his labels, circulars, and advertisements styled them “Angostura Bitters.” Neither Maynard & Co. nor Abbott have'ever directly represented that their bitters were the Siegert preparation, and they have always stated in their labels and advertisements that their bitters were manufactured by themselves at Baltimore. Nevertheless, we are satisfied that they used the name and simulated the Siegerts’ bottles and labels to confuse the identity of their bitters with those of the Siegerts’ preparation, and to lead the public to believe that in buying theirs they would be buying those originally made and sold by the Siegerts. In order to justify the use of the word “Angostura,” they employed as one of the ingredients of their bitters a trifling infusión of Angostura bark.
The case is essentially in its facts like one which was considered by the Circuit Court of Appeals of the Seventh Circuit in Bauer & Co. v. Siegert, 120 Fed. 81, 56 C. C. A. 487, which was a bill in equity by the Siegerts to enjoin Bauer & Co. from unfair competition in using the word “Angostura,” and from simulating their labels and the dress upon the bottles, and in which it was contended that the Avord “Angostura” could not be the subject of a trade-mark or a trade-name. But the court sustained the bill, and enjoined the acts complained.of.
Undoubtedly the Siegerts did not, and could not, acquire such a monopoly in a geographical name as a trade-mark or trade-name as would entitle them to prevent others from .using it under any circumstances. But it is sufficient to entitle them toi relief that they used
“Geographic names often acquire a secondary signification indicative not only of the place of manufacture but of tlie name of the manufacturer or producer, and the excellence of the thing manufactured of produced, which enables the manufacturer or owner to assert an exclusive right to such name as against every one not doing business within the same geographical limits; and even as against them, if tlie name be used fraudulently for the purpose of misleading buyers as to tlie actual origin of the thing produced or palming off the productions of one person as those of another.”
If the geographical name has become a secondary designation indicative of the product of the particular manufacturer, it is as much entitled to protection as any arbitrary or fancy name which he might have selected; and the circumstance that the manufacturer may have removed his place of business, and is making his product in some other place, is of no more consequence than it would be if he had adopted the fancy name.
The court below was impressed that the Siegerts had been guilty of fraud in misrepresenting the therapeutic qualities of their hitters, and especially in falsely representing that they were free from all intoxicating ingredients. We cannot assent to these conclusions. The misstatements referred to are mainly contained in certain certificates of physicians and chemists embodied in an advertising circular issued by the Siegerts. Some of these certificates depict ■ the bitters as a valuable remedy for nearly all the ills that flesh is heir to; but the extravagance of their laudations is sufficient to deprive them of any weight in the minds of those who read the more careful statements in the certificates which accompany them. Representations that the bitters when mixed with water, beer, wine, and spirits make a “splendid drink,” that they are free from admixture with the dangerous ingredients “so commonly present in what are termed ‘pick-me-ups,’ ” and' are a useful, hygienic liqueur “that may be used by invalids and those in good health, by adults and children, with equal advantage,” are hardly a sufficient basis for a charge of fraud. Medical experts have testified to the substantial truth of the statements; and it is not un
‘.‘They consist of a mixture of certain bitter, aromatic and carminative substances, together with alcohol, added as a preservative and solvent.”
The defense of unclean hands comes with ill grace from a rival manufacturer who advertises his article in equally glowing and exaggerated terms, stating among other things that his bitters are “unequaled as a cure for liver complaint, dyspepsia, fever and ague, bilious, intermittent and remittent fevers,” and “a sure remedy against Asiatic cholera .and yellow fever.”
.. Upon the whole case we are of the opinion that the complainants were entitled'to: an injunction restraining the defendants from using the word “Angostura,” and from imitating complainants’ labels and the. dress upon their bottles, and to an accounting.
.The decree is therefore reversed, with costs, and with instructions to ¡the court below to decree conformably with this opinion.
Rehearing
On Motion for Rehearing.
In view of the fact that the opinion expressly states that the case is considered precisely as if it were brought against Abbott, we see no reason for the assumption, which is the basis of this application by the nominal defendants, that they are charged with dishonorable conduct.
. The motion is denied.