151 P. 969 | Or. | 1915
Opinion by
It is contended that the defendant was entitled to the use of his family name, and the word “realty,” when applied to the business in which he was engaged, was a term of description, and, such being the case, an error was committed in granting the relief awarded. Though there is a well recognized distinction between a trademark and a trade name, these classifications are usually treated in text-books under the title of the former designation, and legal restraint is granted or denied upon a consideration of the question whether or not the similarity in the appellation is such as to constitute unfair competition: Hopkins, Unfair Trade, § 52. This author, in referring to that subject, observes :
“In using the expression ‘trade name,’ however, it must be remembered that it is simply a colloquial*183 term, used by the courts as a matter of convenience, and that it has no technical significance. ’ ’
Reasonable rivalry in the pursuit of any trade or occupation usually promotes the public welfare by preventing a monopoly. It is only when the persons engaging in a contest, to secure business or to obtain employment, adopt similar trade names or select like designs as trademarks, and thus are enabled to appropriate a competitor’s traffic or the fruits of his vocation whereby such conduct tends to deceive the public, that equity will intervene.
“The name of an individual,” says a text-writer, “does not constitute a valid technical trademark because, as between persons of the same or similar names, each has an equal right to use his own name in his own business, and trademarks, being property rights, are necessarily exclusive. Everyone, however, is entitled to protection against unfair competition, and no one is entitled so to use even his own name as to pass off his goods or business as the goods or business of another, thereby robbing the latter of the benefits of his goodwill and reputation and working a fraud upon the public”: 28 Am. & Eng. Ency. Law (2 ed.), 384.
In Martin Co. v. Martin & Wilckes Co., 75 N. J. Eq. 39, 50 (71 Atl. 409, 414), in discussing this subject Mr. Vice-Chancellor Stevenson remarks:
“I think we have got beyond the notion, if it ever prevailed, that a man has an absolute right to use his name in his business shutting his eyes to the inevitable effect of such use to deceive the public generally, and to injure some other dealer in the market. The maxim, ‘Sic utere tuo ut alienum non laedas,’ applies to everything that a man has, including his name. ’ ’
In a note to the case of Martell v. St. Francis Hotel Co., 16 Ann. Cas. 593, 596, it is said:
“Where a personal name has become identified with certain goods or a certain business, it is incumbent upon a person with a similar name, subsequently engaging in the same business or dealing in the same kind of goods, to take such affirmative steps as may be necessary to prevent confusion.”
It will be assumed, without deciding the question, since a determination thereof is unnecessary on account of the conclusion reached on the other inquiry, that the defendant’s initials, “W. E.,” prefixed to a part of his assumed name, evidence an affirmative act designed to prevent confusion with the plaintiff’s trade name in this particular. See, however, the case of Walter Baker & Co. v. Sanders, 80 Fed. 889, 26 C. C. A. 220, in which it was held that, where by long, use the words “Baker’s Chocolate” had come to mean in the minds of the public the plaintiff’s goods, a subsequent maker of chocolate with the same name was not entitled to use that name, whether with his given name or its initials, in such manner as to announce that the goods he sold were “Baker’s Chocolate,”
“Directly after I heard that he was engaged in that business under that name, I remonstrated with him, and I asked him to desist, that we would have a confusion of business, we were doing business under that name, and he said that he had his stationery out, and I asked him if he couldn’t cancel the stationery and do away with it in some way, and he declined to do that. Finally he told me — well, I spoke to him about it afterward, whether at that time or at the time afterward I spoke to him about it, and he says he thought he had a perfect right to use his own name in his own business. I told him he had no right whatever to use our firm name. I says, ‘Who is your company? Have you a partner?’ ‘No,’ he says, ‘but I expect to have.’ I says, ‘If you haven’t a partner, you are not a company.’ ”
In Fuller v. Huff, 104 Fed. 141, 143 (51 L. R. A. 332, 334, 335, 43 C. C. A. 453, 455), in speaking of a generic term used in a trademark, the court says:
“The term ‘health food’ means healthy food, or health-producing food, and is therefore descriptive of quality, and cannot be a technical trademark, either with or without the word ‘company,’ any more than the word ‘nutritious wine’ could be a valid trademark. If a case against the defendant exists, it is one of unfair competition; and the law upon the subject of the adoption by a competitor of names or words descriptive of quality, which have previously become trade names, and which adoption will constitute unfair competition, is correctly stated by the counsel for the defendant as follows: ‘When such a mark, name or phrase has been so used by a person in connection with his business or articles of merchandise as to become identified therewith, and indicate to the public that such articles emanate from him, the law will prohibit others from so using it as to lead purchasers to believe that the articles they sell are his or as to*186 obtain the benefit of the market he has built up thereunder.”
“The same statement of the law is contained in the case of Reddaway v. Bunham, [1896] App. Cas. 199, decided by the House of Lords in 1896, in which it was held that one person was not entitled to pass off his goods as those of another by selling them under a name likely to deceive purchasers, whether immediate or ultimate, into the belief that they were buying the goods of the former, although the name was, in its primary sense, merely a true description of the goods. The subject of the unlawful use by competitors of the name under which a rival has previously presented himself to the public and has gained a business reputation, although the name is not strictly a trademark, and is either geographical or descriptive of quality, has been frequently of late before the courts, which have demanded a high order of commercial integrity, and have frowned upon all filching attempts to obtain the reputation of another.”
Further in the opinion it is observed:
“Although the intent of the defendant’s principal when it commenced to use the name ‘Health Food’ may have been innocent, the continuance, after it had learned of the complainant’s prior use, indicates its deliberate intention to use the name without reference to the complainant’s possible prior rights.”
A lexicographer defines the word “realty” thus:
“A term sometimes used as a collective noun for real property or estate — more generally to imply that that of which it is spoken is of the nature or character of real property or estate”: Bouvier’s Law Dictionary (Bawle’s 3 ed.).
The term “realty,” as used by the defendant, when employed to qualify the word “company,” evidently means an offer on his part to negotiate for others the purchase and sale of land, the obtaining of loans of money to be secured by real property, etc. The ex
It will be remembered that the defendant, having no partner in the real estate business, adopted as a part of his trade name the word “company,” which indicates that he had formed, with other individuals, an association or partnership: Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598, 602 (32 L. Ed. 535, 9 Sup. Ct. Rep. 166). The employment by the defendant of the word “company,” when there was no other member, evidences a purpose to simulate the plaintiffs’ assumed name, and particularly so when, after the defendant was notified of the prior legal adoption of such word as a part of his rivals’ trade name, he persisted in taking advantage of the term, thereby indicating a deliberate intention to continue such use without reference to the plaintiffs’ right: Eygeia Distilled Water Co. v. Consolidated Ice Co. (C. C.), 144 Fed. 139; Regis v. H. A. Jaynes & Co,, 185 Mass. 458 (70 N. E. 480). But, however this may be, it has been held that, in a suit to enjoin the infringement of a trade name, it is not necessary to prove that there was a fraudulent intention to deceive: Viano v. Baccigalupo, 183 Mass.
It appears from the testimony that several persons wrote to the defendant upon matters pertaining to real estate dealings when they supposed they were addressing their communication to the plaintiffs, and that by the use of the name referred to the public was deceived, thereby substantiating the fact of unfair competition.
It follows from these considerations that the decree should be affirmed, and it is so ordered.
Affirmed.
Rehearing Denied.
