KATHREINER'S MALZKAFFEE FABRIKEN MIT BESCHRAENKTER HAFTUNG et al. v. PASTOR KNEIPP MEDICINE CO., 82 F. 321

JENKINS, Circuit Judge (after stating tlie facts as above). Upon the record, we are constrained to believe tliat the Pastor Kneipp Medicine Company, the appellee, was “conceived in sin and brought forth in iniquity,” that wrong attended at its birth, and that fraud stood sponsor at its christening, imposing upon the corporate child a name to which it was not entitled, and which it had no right to bear. The name of an eminent philanthropist was taken without his consent and against his protest.

This assumption of name was a wrong which we cannot doubt a court of equity would, upon his application, have restrained, even if the purpose of the corporation had been wholly innocent and praiseworthy; but here, it is clear, the name, the portrait, and the fac simile signature of Rev. Sebastian Kneipp were employed, not only without his consent and against his will, but were so assumed with a view to deceive the public, and to induce the belief that the product marketed and sold was prepared under Ms supervision, and offered to the public with his sanction.

Under such circumstances, equity will not hesitate to extend its preventive arm. Pillsbury v. Mills Co., 24 U. S. App. 395, 12 C. C. A. 432, and 64 Fed. 841. It is true that the Reverend Sebastian Kneipp is not a party to this suit, nor here complaining of the unauthorized use of his name. The appellants cannot therefore be heard in censure, unless they have acquired a right to the employment of this name, portrait, and fac simile signature in connection with the sale of malt coffee.

If they have no property right therein, they have no standing in equity; but if they possess such property right, and it has been invaded, the wrong will be restrained. Without dispute, the present German proprietor, one of the appellants, has the exclusive right, so far as the Reverned Father Kneipp could grant it, to the use of his name, portrait, and fac simile signature in connection with the sale of malt coffee. It is clear, also, that its right to such exclusive use is sanctioned by the law of Germany, and of all other countries where the trade has been established.

It is claimed that no such exclusive right exists in this country, for the reason that, as is asserted, at the time of the assumption of the particular designations complained of, no trade or established market for the goods existed in the United States, and that only sporadic importations are shown. It goes without saying that a trade-mark or trade-name can be acquired only by adoption accompanied with actual use. Whether user in one country confers the exclusive right to the use of the trade-mark or trade-name in another, as against a piratical use of it in such other country, we are not called upon to say.

It would appear to have been so held in Collins Co. v. Oliver Ames & Sons Corp., 20 Blatchf. 542, 18 Fed. 561. The principle of that decision would seem to be that while the owner of a trade-mark may not be entitled to its exclusive use everywhere and under all circumstances, and may not enjoin its innocent use, yet where the public is, by the use of it, deceived and injured, equity will interpose, although the complainant may not have applied the trade-mark to the particular article, but to articles of the same class of merchandise. See, also, In re Munch, 50 Law T. (N.

S.) 12; In re Riviere’s Trade-Mark, 32 Wkly. Rep. 390; Paine v. Daniell & Sons’ Breweries, 10 Rep. Pat. Cas. 217. It may be suggested whether, in these days of rapid and constant intercommunication and extended commerce between nations, any narrow line of demarkation should be established, on the one side of which should stand moral wrong with legal liability, and upon the other moral wrong with legal immunity.

If, however, the courts of a particular government can, with respect to the subject in hand, take cognizance only of wrongs committed within the geographical boundaries of the country, it is still not necessary, in our judgment, that a trade in an

article should be fully established, in the sense that the

article be widely known, before the proprietor of its trademark or trade-name may be entitled to the protection of equity for the preservation of his rights. Otherwise it might be impossible, with respect to a valuable and desirable

article or product of manufacture, designated by a particular brand or in a particular manner, ever to establish a trade.. Craft and cunning, discerning the value of the product, and the profit to be acquired, would, at the inception of the business, flood the market with spurious and cheaper articles or preparations of the similitude of the genuine, and strangle the trade in the genuine at its birth. It is enough, we think, if the

article with the adopted brand upon it is actually a vendible

article in the market, with intent by the proprietor to continue its production and sale. It is not essential that its use has been long continued, or that the

article should be widely known, or should have attained great reputation. The wrong done by piracy of the trade-mark is the same in such case as in that of an

article of high and general reputation, and of long-continued use. The difference is but one of degree, and in the quantum of injury. A proprietor is entitled to protection from the time of commencing the user of the trade-mark. McAndrew v. Bassett, 4 De Gex, J. & S. 380; Jackson v. Napper, 4 Rep. Pat. Cas. 45; Cope v. Evans, L. R. 18 Eq. 138; Hall v. Barrows, 32 Law J. Ch. 548.

In the latter case it is well observed, in language which we do not hesitate to adopt: “It has sometimes been supposed that a manufacturer can only acquire such a property in a trade-mark as will enable him to maintain an injunction against the piyaey of it by others by means of long-continued use of it, or at least such a use of it as is sufficient to give it a reputation in the market where such goods are sold. But I entertain great doubt as to the correctness of this view of the case. The interference of a court of equity cannot depend on the length of time the manufacturer has user of it.

If the mark or brand be an old one, formerly used, but since discontinued, the former proprietor of the mark undoubtedly cannot retain such a property in it, or prevent others from using it; but provided It has been originally adopted by a manufacturer, and continuously and still used by „ him to denote his own goods when brought into the market and offered for sale, then, I apprehend, although the mark may not have been adopted a week, and may not have acquired any reputation In the market, his neighbor cannot use that mark.

Were it otherwise, and were the question to depend entirely on the time the mark had been used, or the reputation it had acquired, a very difficult, if not an insoluble, inquiry would have to be opened in every ease, namely, whether the mark had acquired in the market a distinctive character, denoting the goods of the person who first Used it.

The adoption of it by another is proof that he considers that at that time It Is likely to become beneficial; and, If the'manufacturer who first used It were not protected from the earliest moment, it is obvious that malicious and pertinacious rivals might prevent him from ever acquiring any distinctive mark or brand to denote his goods in the market by adopting his mark, however varied, immediately after its adoption or change by the original user of It.” The evidence here is satisfactory that the product in question was marketed in the United States first in the year 1891, and followed during the years 1892 and 1893 by other importations, not numerous, indeed, but so many and in such quantities as one would look for during the first years of the growth of an infant industry, and indicating the intention of the proprietor to actively occupy the market.

We are satisfied, also, that the appellee, at the outset of its enterprise, imported some of the genuine packages, and thereafter adopted and placed upon packages of its own manufacture the indicia pertaining to the genuine, and which no one but the parent company and its licensees had authority from the Reverend Sebastian Kneipp to employ, and which none other had the right to use.

By reason of the circulation of the works of Pastor Kneipp in this country, faith in his theories of life and his remedies for the ills of life was growing, creating a good will in the sale of this malt coffee, thus authenticated with his name, picture, and fac simile signature, that was valuable to its owner. The date at which the appellee first undertook to impose upon the public its spurious

article is left uncertain. Claiming to have anticipated the appellants in the American market, it should have, with accuracy and detail, exhibited the times of its sales. This has not been done. In the absence of such proof, we are not inclined to be overcn'tical with respect to the date of the first occupancy of the American market by the proprietor of the genuine article.

We cannot but conclude that the appellee was not, as is claimed, the first to occupy the market, and that it sought to aggrandize to itself unlawfully, by the name assumed, and by the indicia placed upon its packages, the good will of a trade which belonged to another, and to deceive the public into the belief that its goods were the goods of the appellant foreign corporation, or its predecessors in right, prepared with the knowledge and under the sanction of the Reverend Sebastian Kneipp, and that it sought to create the impression in the public mind that it was the importer of the genuine article.

Upon the whole record, we think it clear that the appellants were entitled to the equitable relief demanded. The order or decree appealed from is reversed, and the cause remanded to the court below, with directions to issue the writ of injunction as prayed for.