183 Mass. 160 | Mass. | 1903
When the defendant entered upon the business of roasting peanuts he found the plaintiff Miaño and one Cavagnaro carrying on the same business, as partners, at 94 Fulton Street, under the name of the “ Boston Peanut Roasting Company ”; and he found that the plaintiff Miaño, either with Cavagnaro or with the plaintiff Roman as a partner, had carried on that business for five years under that name and at the same place. It was under these circumstances that the defendant, entering upon the business of roasting peanuts for the first time, hired premises on the same street, Fulton Street, and adopted as a business name the identical name used by the plaintiffs, with the sole exception that he inserted the word Trade between Boston and Peanut.
The defendant justifies this on the ground that Boston being a geographical name is open to the public, and that he has the right to describe his particular business as a “ Peanut Roasting Company.” The argument is an old one, and is so completely and satisfactorily disposed of by what was said by this court in American Waltham Watch Co. v. United States Watch Co. 173 Mass. 85, 87, that it is not necessary to go over the ground a
In the case at bar the defendant has a right to carry on the business of roasting peanuts for the trade, and to carry it on in
The defendant particularly relies on the case of Aerators, Limited v. Tollitt, [1902] 2 Ch. 319. That was a case where the plaintiff, being established as a joint stock company to sell spark-lets, sought to enjoin the defendant from registering a company under the name of Automatic Aerators Patents, Limited, on the ground that such name so closely resembled the plaintiff’s name as to be calculated to deceive within § 20 of the companies act of 1862. It appeared that “ sparklets ” were a small apparatus containing carbonic acid gas, by means of which the contents of bottles are aerated. One of the merits claimed for them was their portability, and their applicability to a small quantity of liquid. The patents which it was proposed should be acquired by the defendant company were for the aeration of liquids contained in tanks or cisterns of large size. It is apparent, therefore, that in Aerators, Limited v. Tollitt, the plaintiff relied on the word Aerators solely and by itself. In that case the business to be carried on by the plaintiff and defendant was not the same, and there was no question of confusion from the defendant’s having established its place of business near the plaintiff’s. The principle on which Aerators, Limited v. Tollitt depends is to be found in the previous cases of Reddaway v. Banham, [1896] A. C. 199, and Cellular Clothing Co. v. Maxton, [1899] A. C. 326, decided by the House of Lords and Privy Council respectively, and it is this: Is the defendant, as a question of fact, passing off its goods as the plaintiff’s goods, or passing itself off as the plaintiff? It is laid down in those cases that where the sole thing on which the plaintiff relies for relief against the defendant is a word common to the public, as in case of a geographical name, the plaintiff is not entitled to protection unless he proves that the name has been so exclusively identified with his own manufacture as to have acquired a secondary meaning, as was done in American Waltham Watch Co. v. United States Watch Co. 173 Mass. 85.
Although it might have been more explicit, we think that the finding is sufficient “ that the similarity of names is likely to create confusion and lead to mistakes, and that such mistakes have been and are damaging to complainants. Both complainants and defendant do roasting for persons at a distance from Boston. These customers at a distance sometimes communicate their orders by mail and one mistake in the delivery of mail was proved at the hearing.”
It is not necessary to prove that there was a fraudulent intention to deceive. Cellular Clothing Co. v. Maxton, [1899] A. C. 326, 334, affirming Millington v. Fox, 3 Myl. & Cr. 338, 352. See also Reddaway v. Banham, [1896] A. C. 199, 219.
The defendant’s next contention is that his use of the name is the prior use. This is founded on the fact that the use of the name “ Boston Peanut Roasting Company,” which was being made by Yiano when the defendant began to use it five months before the bill in this suit was filed, was as a partner with Cavagnaro, and that during those five months Cavagnaro retired and the plaintiff Roman succeeded him as the plaintiff Yiano’s partner. We do not think that the plaintiff Yiano’s right to protection in the use of his name as against third persons is affected by this change in partnership.
The last position assumed by the defendant is that Cavagnaro testified that he did not sell his good will to Yiano. But the defendant is a third person who does not claim under Cavagnaro. The question here is of the plaintiffs’ right against a stranger, not as against a former partner, and for that reason the principle
The several objections of the defendant are not well taken, and the plaintiffs are entitled to relief. The terms of the decree must be settled by a single justice.
So ordered.