El Modello Cigar Manufacturing Company, Appellant. vs. Eduardo H. Gato, Appellee, 25 Fla. 886

Mitchell, J.: The first question to be decided is, did the court below err in overruling the first ground of the demurrer to the bill ? In discussing the demurrer to the bill counsel for appellants insist that defendants had the right to use the name of G. H. Gato, and that Gato had the right to manufacture cigars, and that G. H. Gato had the right to use his own name in announcing the origin of his cigars, provided no fraud was practiced by him in so doing, and cite the following authorities as sustaining their position: Partridge vs. Menck, 47 Am. Dec., 281, and note; Clark vs. Clark, 25 Barb., 76; Burgess vs.

Burgess, 17 Law & Eq., 257; Faber vs. Faber, 49 Barb., 357; Wolfe vs. Burke, 7 Lansing, 151; Meneeley vs. Meneeley, 62 N. Y., 848; Mansam vs. Thorley Cattle Food Co., 36 Law Times, U. S., 427; Ainsworth vs. Walmsley, 35 Law Journal, Chancery, 362; Hardy vs. Cutter, 3 U. S. Patent Gazette, 468; Carmichael vs. Latimer, 25 Am. Rep., 481; Decker vs. Decker, 52 Howard’s Practice 218; Gilman vs. Hunnewell, 122 Mass., 139.

Now, we admit the soundness of the legal proposition as laid down supra, but after the complainant, whose factory was located at Key West, had adopted his own name in combination with the words “ Key West,” “ La Estrella ” and “ Bouquet,” and certain brands, labels and pictures as his trade marks, the defendants did not, afterwards, have the right to adopt the name of G. H. Cato in combination with the words “Estella,” “ Bouquet” and “Key West,” and certain brands, labels and pictures, in combination with the name of G. TI.

Gato, as their trade marks, when the words, &c., so adopted by them so closely resembled the trade marks so adopted by the complainant as to enable them to palm off upon and induce an ordinary purchaser to buy their cigars for those of the complainant, whereby the defendants might be profited, and the complainant might be injured. Robertson vs. Barry, Am. Trade Mark Cases, 153; Humphries Specific Homeopathic Medicine Co. vs. Wenz, Ibid, 711; Liggett & Meyer Tobacco Co. vs. Hynes, Ibid, 898; Glen Cove Manufacturing Co. vs. Ludeman, Ibid, 957; Insurance Oil Tank Company vs. Scott, 39 Am. Rep., 286; Hier vs.

Abrahams, 82 N. Y., 519.

It is now well established that a man may acquire the right of a trade mark in his own name or in the name of any person, but a man cannot acquire the right of a trade mark in the use of his own name to the exclusion of the right of another person by the same name, and whose place of business is in the same place; yet it is well settled in the law of trade marks that when one person uses his own name to indentify and distinguish the origin and ownership of his goods which are manufactured at a particular place, no other person by the same name will be permitted to use his name on his own goods, if under such circumstances as are calculated and designed to injure the trade and business of another.

In other words, one man will not be allowed, though his name be the same as that of another person or manufacturer, to represent his goods as, and for the goods of another. Gilman vs. Hunneman, 122 Mass., 139; Robertson vs. Berry, 33 Am. Rep., 337, note 1.

A man may establish his right to a trade mark in the name of a place, city or town, and it is well established that when a man manufactures his goods at a particular place and uses the name of that place in combination with other words as a trade mark to distinguish the origin or ownership of his goods, no other person will be permitted to use the name of .the same place, upon goods manufactured by him at another and different place. Canal Company vs. Clark, 13 Wall., 325; Congress Spring Co. vs. High Rock Spring Co., 45 N. Y., 291; Newman et al. vs. Alvord et al., 51 N.

Y., 189; The Glen & Hall Manufacturing Co. vs. Hall, 61 N. Y., 226; Lawrence vs. Hamm, 1 Federal Reporter, 24; Gilman vs. Hunnewell, 122 Mass., 139; Robertson vs. Berry, 33 Am. Rep., 337, note 1. Under these decisions it will be seen that the defendants clearly had no right to use the name of the place, Key West, or the name of G. H. Gato, either alone or in combination with the other words, as alledged in the bill to have been used by them. The defendants by their answer aver that they did not intend to injure the complainaut by any contrivance, &c.

But, do not the facts and circumstances of the case contradict such averments of the defendants ? If they did notintend to injure the complainaut, why did they aver in their answer that the atmosphere of Key West was not more favorable for the manufacture and preservation of cigars than at points north of that place, when they had branded their boxes u Key West,” and had printed on their letter and bill heads the words “ Key West ” and “ Gate’s Fine Key West Cigars,” thereby inducing the public to lelieve that their cigars were manufactured at Key West, when in fact they were manufactured at Jacksonville ?

And why did they use the name of the junior member of their firm in combination with the words “Key "West,” “La Estella ” and “ Bouquet,” the only difference between the name of the said junior member of said firm being the initial letter of his Christian name, “ G-,” the initial letter of complainant’s Christian name being “ E,” and why did defendants so print the name of the junior member of their firm upon their cigar boxes, that it would readily be taken for the name of the complainant, “ E. H. Gato,” as for that of said junior member, “ G.

H.Gato?” There can, we think, be but one answer to these questions, and that is, that the delendants, by their said actions, intended to deceive the public by palming off their cigars as, and for those of the complaint, as alledged in the bill. A general demurrer to a bill, as for want of equity, will be overruled if there is any ground of equitable relief stated in the bill, even if there are any number of grounds of special demurrer. Thompson vs. Maxwell, 16 Fla. 775.

The demurrer to the bill in the case at bar is general, and the bill shows on its face that the complainant is entitled to the equitable relief prayed for, wherefore, the order for the Chancellor overruling the first ground of the demurrer was not erroneous. In the second place, did the court below err in granting the temporary injunction ?

We have before us as exhibits, (sent up with the record of the case) empty cigar boxes of the complainant’s “La Estrella” and “Boquet” brand of cigars, and one of the defendant’s “Boquet” brand, and by placing the two Boquet boxes side by side, the dissimilarity between the twro is apparent, and there is sufficient difference between them, we think, to cnab'e an expert in such matters to distinguish the brand of the complainant from that of the defendants without placing the boxes side by side, but the general appearance of the two boxes, and the stamps, brands, pictures, labels, letters thereon and therein are so very similar in size, shape, and color that they are calculated to mislead an ordinary purchaser, and whenever this is the caseacourtof equity will grant a decree restraining a defendant from so similating the trade marks of the complainant.

Robertson vs. Berry. American Trade-Mark Cases, 153; Humphries Specific Homeopathic Medicine Company vs. Wenz., Ibid, 711; Liggett and Meyer Tobacco Company vs. Hynes, Ibid, 898; Glen Cove Manufacturing Company vs. Ludeman, Ibid, 957; Insurance Oil Tank Company vs. Scott, 39 Am. Rep., 286; Hier vs. Abrahams, 82 N. Y., 519. When a trade-mark is calculated to mislead, even if no one has been actually deceived, an intention to deceive will be presumed. Oarie’s Appeal, Am. Trade-Mark Cases, 116.

And, although a man may not intend to injure another, yet he will not be allowed to adopt the marks by which the goods of such other person are designated, if the effect of adopting them would injure such other person. Sheppard & Co. vs. Stuart & Peterson, Am. Trade-Mark Cases, 193; Hier et al. vs. Abrahams, 82 N. Y., 519; Williams vs. Brooks et al., 50 Conn., 278; Liggett & Meyer Tobacco Co., vs. Hynes, 20 Federal Reporter, 883.

We have not been furnished with any of defendant’s boxes of the “Estella” brand, but the bill alleges that this brand of defendants so closely resembles the “Estrella” (star) brand of complainant that it is calculated to mislead the public into believing the brand of the defendant to be that of the complainant. The demurrer to the bill admits these allegations of the bill, and the defendants virtually admit the truth of the allegations in their answer.

They, it is true, deny in a general way, the allegations of the bill in regard to the said brand so closely similating complainant’s brand, but failed utterly to show wherein their brand does not resemble the complainant’s. They admit the manufacture of the brand “Estella” brand of cigars at Jacksonville, but say that the word “Estella ” is not “Estrella, ” as alleged in the bill. Is this a denial of the positive allegations of the bill as to the resemblance between the said two brands? Certainly not. Then why did not the defendant's deny the allegations of the bill if they were not true?

They admit the allegations of the bill to be true, that is to say, that they intended to deceive the public, profit by the deception, and to injure the complainant. The omitting of the letter “ r, ” as aforesaid, was bn* an artifice resorted to by the defendants under the belief that it would not be detected, but if detected, it might protect them in a suit for damages by the complainant against the defendants for so pirating his trade-mark. No other conclusion would be consistent with the facts of the case.

The affidavits of Bishop & Co. and others filed in the case, tend to show that the defendants have palmed oft and sold their said cigars as, and for those of the complainant, and that the agents of the complainant have had to publish notices in newspapers cautioning the public against the deception thus practiced by the defendants. This the defendants have attempted to contradict by filing counter affidavits, stating that the affiants knew of no such efforts either on the part of the defendants or their agents, to palm off or use their cigars as, of and for those of the complainant.

This is mere negative evidence and proves nothing. There was no error iu granting the temporary injunction. This disposes of the error assigned by appellants, but counsel in their argument further contend that the complainant has been guilty of such laches that he is not entitled to the relief he prays for, and cites Wait’s Actions and Defenses, volume 6, pp. 42, 43; Beard vs. Turner, 13 Law T. (N. S.), 747. The rule in England in trade mark cases is more stringent than in this country, and a lack of diligence there in suing deprives complainant in equity oí the right to an injunction or on account.

Bnt our courts are more liberal in this respect. A long lapse of time will not deprive the owner of a trade mark of an injunction against an infringer, bnt a reasonable diligence is required of a complainant in asserting his rights, if he would hold a wrong-doer to account for profits and damages. This rule, however, applies only to those cases where there lias been an acquiescence after a knowledge of the infringement is brought home to the complain ant. Sawyer vs. Kellogg, Am. Trade Mark Cases, 564.

Nor will the acquiescence of any person in the wrongful use of his name, estop him from asserting his rights in equity unless he hasmotice during such acquiescence oí the facts rendering the use of his name wrongful. Horton Manufacturing Company, Jamestown, N. Y., vs. Horton Manufacturing Company, Ft. Wayne, Indiana, Am. Trade Mark Cases, 857. And the laches of the complainant will not avail as a defence in a proceeding to restrain the use of a trade name when the defendant adopted the name with a fraudulent intent. Sanders vs. Jacob, Am. Trade Mark Cases, 1048.

The complainant was in no such laches as would deprive him of his rights in the premises. The only remaining question to be considered is, did the chancellor err in sustaining the second ground of defendant’s demurrer to the bill? This court held in Doggett vs.

Hart et al., 5 Fla. 230, that “ in cases of accounts, of agency, of apportionment, of general average, of contribution, of waste and of partnership, when chancery once entertains a suit upon grounds legitimately cognizable in that court, it will proceed to adjudicate other matters of which it has only incidental cognizance, in order to avoid a multiplicity of suits.” “Another rule,” says Mr. Story, (1 Story’s Equity Jurisprudence,

section 64, k,) “ respects the exercise of jurisdiction, when the title is at law, and the party comes into equity for a discovery, and for a rebel, as consequent on that discovery. In many cases it has been held, that, where a party has a just title to come into equity for a discovery, and obtains it, the court will go on, and give him the proper relief; and not turn him round to the expenses and inconvenience of a double suit at law. The jurisdiction having once rightfully attached, it shall be made effectual for the purposes of complete relief.

And it has accordingly been laid down by elementary writers of high reputation that ‘the court, having acquired cognizance of the suit for the purpose of discovery, will entertain it, for the purpose of relief, in most cases of fraud, account, accident and mistake.’ ” In the case at bar the bill prays for discovery, an accounting of profits, injunction, damages and general relief, and the only ground of objection to the bill, raised by the second ground of defendants’ demurrer, is, that the bill prays damages.

That a man whose trade-marks have been infringed upon as in this case, is entitled to compensation for the infringement, is unquestionable, and it strikes us that it makes no difference whether the compensation to which the complainant is entitled is called profits or damages. What is an accounting, but the method by which to ascertain the complainant’s damages or compensation for the wrong and injury done him by the defendants? That the complainant is entitled to damages see Hostetter et al. vs. Vonwinkle et al., 1 Dillon, 329; Pitt vs. Hall, 2 Blatch. U. S. C. C., 229; Atlantic Milling Co. vs.

Robinson et al., 20 Federal Reporter, 217; Graham vs. Platt, 40 Cal., 593; 6 Am. Rep., 639; Marsh vs. Billings, 7 Cush., 322; Stonebreaker vs. Stonebreaker, 33 Md., 252; Blackwell vs, Wright, 73 N C., 310. A party whose trade-mark has been violated is entitled to recover all profits realized by the wrong-doer from sales of the spurious article, and also, damages resulting from such violation. Graham vs. Platt, 40 Cal., 593; Peltz vs. Eichel, 62 Mo., 171; 7 Cush., 322; Atlautic Milling Co. vs. Robinson et al., Am. Trade Mark Cases, 904; Hostetter et al. vs. Vouwinkle et al., 1 Dill., 329; Pitts vs.

Hall, 2 Blatch., 229. The owner of a trade-mark is entitled to nominal damages for the violation'of his trade-mark, although it is not shown that he has sustained actual damages, and although the defendant’s articles are not inferior in quality to his own. Blofield vs. Payne, 4 Barn. & Ad., 410; S. C. 1 New. & Man., 335; Thompson v. Winchester, 19 Pick., 214; Rodgers vs. Nowill, 5 C. B., 109; Conran v. Joseph Uhrig Browing Co., Am. Trade Mark Cases, 316.

The decree of the court below granting injunction is affirmed, but the order sustaining defendant’s demurrer to that part of the bill that claims damages, in excess of profits realized, is reversed, and .the cause remanded for further proceedings consistent with this opinion. The appellant, El Modelo Cigar Manufacturing Company, to pay all costa of the suit.