124 Ky. 173 | Ky. Ct. App. | 1905
Opinion of the- Court by
Reversing.
E. H. Taylor, Jr., & Sons Company is a corporation formed under the laws of Kentucky, and engaged in the manufacture and sale of whisky in "Woodford and Franklin counties, claiming the exclusive use of a certain trade-mark, which is lettered upon the barrels, bottles and cases containing their whisky, and printed upon their letter heads and their advertisements; their brand being “Old Taylor,” coupled with the words, “The Premier Kentucky "Whisky,” and with the script signature of E. H. Taylor, Jr., & Sons. It filed this suit, charging in its petition that, while it had the exclusive right' to use the above trade-mark the defendant, Marion- E. Taylor, was, without its consent, in the-city of Louisville1, using on barrels, bottles, etc., containing a spurious compound of whisky, a trade-mark and brand substantially the same as, and almost identical with, that of the plaintiff; that this he did fraudulently to mislead the public, purchasers and consumers of whisky, into the belief that the whisky so branded by him was the whisky manufactured by the plaintiff; that the
The proof shows that on January 1, 1887, a partnership was formed of E. H. Taylor, Jr., & Sons.
It remains, therefore, to determine what trademark the firm had. It appears that the firm applied in 1887 to the United States authorities to register a trade-mark, “Taylor,” or “Old Taylor,” but the application was rejected by the Patent Office because of a prior use of the brand. After this, in the year 1889, the firm made another application to the Patent Office to register a trade-mark, which was granted. In this application they said: “Our trade-mark consists of the arbitrary word symbol ‘E. H. Taylor, Jr., & Sons, ’ being a script fac simile of the signature of our firm name by the senior member thereof. This has generally been arranged, as shown, in the accom
Where a trade-mark is registered, the registry must be presumed to show what the trade-mark is, and things which are disclaimed as going to make up the trade-mark must be considered as abandoned. Under this rule, the trade-mark of the firm did not consist in the words ‘ ‘ Old Taylor, ’ ’ for these are expressly said to be non-essential in the application, and the essential feature in the trade-mark is the script fac simile signature, “E. H. Taylor, Jr., & Sons,” by the senior member of the firm. Stagg v. Taylor, 95 Ky. 661, 16 Ky. Law Rep. 213, 27 S. W. 247. It is not claimed that the defendant has: infringed in any way this trade-mark. He has not used anything in his brands of this character, and therefore so much of the action as sought an injunction to restrain the defendant from infringing the plaintiff’s trade-mark, or an account of profits therefor, was properly dismissed by the circuit court.
It remains to consider whether there was a fraudulent simulation of the plaintiff’s whisky by the defendant. The proof shows that the plaintiff’s whisky was a high-priced article, and was advertised extensively as a pure distilled whisky, most of it
Appellee used on his bottles the following labels:
Appellee advertised his whisky extensively, and we think it reasonably clear that one reading these advertisements, who was not familiar with the whisky trade, would understand that “Old Kentucky Taylor” was a straight whisky; and, without going into the minutiae of the evidence, we deem it sufficient to say that we are satisfied from it that appellee intentionally labeled and advertised Ms whisky as he did, to pass it off, not as blended goods, but as. the whisky of appellant, which had attained a very high reputation as a pure Kentucky distilled whisky, and that his thus selling Ms blended whisky was a violation of appellant’s rights. Appellant had sent out
In the action for fraudulent simulation of .the plaintiff’s goods there can be no accounting of profits in equity. The remedy is by the common-law action for damages, as in any other ease of fraud. So much of the action as sought damages having been dismissed by the appellant without prejudice, the only remedy to which it is entitled is an injunction as above indicated.
Judgment reversed and cause remanded for a judgment and further proceedings consistent herewith.