
    (Montgomery Co., Ohio, Common Pleas)
    BROWN BROTHERS COMPANY v. THE BUCHER & BUCHER COMPANY and FRANK TORRENCE.
    Trade-mark — Cigar label — Rules as lo infringement— ‘‘La Camerita”, and “Carmeneita.” — The name is only a part of the trade-mark; everything found on the label goes to makeup the trade-mark.
   Kumler, J.

On Juna 7th, .1899, the plaintiff, Brown Brothers Company, filed its petition in this court, alleging in substance: that it is a corporation organized under the laws of the stat9 of Michigan, doing business in the city of Detroit and engaged in the manufacture and sale of cigars; that by assignment and transfer to it as a corporation, it is now the owner of the property, real and personal, including-trade-marks and trade names as well as of the business and good will of the firm formerly doing business in Detroit under the name of Brown Brothers; that the said firm was engaged in the business of making and selling cigars for many years,and had built up a large and profitable trade in the same all over the United State; that cigars are made of various kinds- and grades of tobacco differing in color, flavor and cost, and it- is customary in the trade to adopt for each kind a distinctive name including quality and grade by which it becomes well known and by which it is sold at wholesale and retail and not by other marks or designs upon the boxes; that they are packed in boxes containing a definite number of cigars and that the boxes are marked with the name on the lids and sides, both inside and outside,and labels are also printed containing the name, w'hiob are pasted in a conspicuous place on the inside lid of the box to be seen when the box is open for retail trade and the lid properly thrown back, but in the usual course of retail trade the lids are eitber torn off the boxes or so bent back that the labels are net visible, and consequently there is no visible sign or name left by which to identify the cigar except the name printed on the inside and outside of each box; that in 1891, the said Brown Brothers in the course of their business decided to manufacture and put upon the market a superior article out of a fine quality cf tobacco, and adopted for it the name “Carmeneita”, which is the name of a person of some fame in the amusement world; that this name was 'adopted with her consent,and that the said Brown Brothers manufactured a very large number of cigars under the said name and put them upon the market; that said name “Carmeneita” was duly registered according to the custom of the trade by Brown Brothers for a trade-mark as applied to a special brand of cigars of their manufacture.

That by reason cf the superior quality of said cigars and the use of said name as a trade-mark, they acquired a very large and profitable trade in the sal© of the same, and that said Brown Brothers became known to retailers as the sole and only manufacturers of ■cigars known as “Carmencita”.

That the defendant, the Bucher & Bucher Company, is a corporation organized under the laws of Ohio and having its principal place of business in this oounty; that it is also engaged in the manufacture and sale of cigars selling at wholesale; that the defendant Frank Torrence is a resident of Springfield, Ohio, and was formerly in the employ of Brown Brothers as a traveling salesman,and as such beoame familiar with the trade and customers of Brown Brothers, and as a traveling salesman in the sale of cigars is thoroughly conversant with the extensive trade in “Carmencita” cigars; that the Bucher & Bucher Company, well knowing the facts above stated, with the intention of competing with the plaintiff unfairly in the sale of its goods and inducing the public to purchase its wares, in the belief that they are purchasing the goods of the plaintiff, has adopted a name and label for a cigar manufactured by it, which it proposes to put out in boxes made for it,and under which it will offer to the public a cigar inferior in quality and flavor for the price of five cents — the ■cigars sold by th3 plaintiff being customarily sold for the price of ten cants at retail and worth that sum; that it has ordered the boxes made and the labels to be printed, and has already extensively advertised that it is about to offer its brand of cigars to the public and put the same on the market under the name of “La ^amerita”; that the Bucher & Bucher Company pretend that they are preparing said boxes with the name and labels aforesaid for their cc-defendant, Frank Torrence, who is to sell the same, and that the name belongs to him; but such pretext plaintiff believes to be false and it avers that Torrence is employed by said defendant as a salesman to engage in the sale of this brand of cigars especially with others and that the name aforesaid and the salesman have been taken up by said defendant for the express purpose of competing unfairly with the plaintiff in the sale of its cigar known as “Carmencita”; tbat the consumers and users unfamiliar with the business of cigar manufacturers and consumers of oigars made by the plaintiff, will be deceived in many instances by the cigar put upon the market by said defendant under the name “La Camerita”; that the two names “Carmencita” and “La Camerita” appear and sound alike; that said name “La Camerita” is a fanciful name invented and adopted by the defendant because of its close resemblance to the trade-mark of the plaintiff and for the purpose of enabling it to impose upon the public as the superior goods of the plaintiff the inferior goods of the defendant company; that the defendant, the Bucher & Bucher Company, is conspiring and combining with the defendant Torrence for the purpose of profiting by the sale of a cigar under the name of “La Camerita”, and that said Torrence is an irresponsible person financially.

The prayer, is for a perpetual injunction against both defendants, a temporary restraining order having neen granted upon the filing of the petition.

To this petition the defendants, the Bucher & Bucher Company, filed an answer admitting substantially all the allegations cf the petition except those charging bad faith, unlawful competition, fraud and conspiracy, and that they are now the owners of the trade-mark known as “La Camerita”.

The defendant, Frank Torrence, filed no answer, and the case came on for hearing on the petition of plaintiff and the answer of the Bucher & Bucher Company, who pray tc be dismissed with their costs.

The evidence on the part of plaintiff consisted of the verbal testimony of John H. Brown and H. S. Taylor, president and treasurer respectively of Brown Brothers Company, and the defendants on their part, submitted the verbal testimony of Frank Torrence, Frank Bucher, Edward Hutch-ins and the affidavit of Charles A. Speakmen, the latter two being representatives of the cigar label department of the lithographic house of Georg6 S. Harris & Sons of New York.

In addition to the verbal testimony and affidavit cf Speakman above referred tc, the parties introduced in evidence numerous written transfers, a large batch of ccrrespondence between themselves and George S. Harris & Sons bearing on the subject matter of the suit, together with labels, cigars, cigar boxes, etc.

The weight of the evidence establishes the following facts, in addition to those admitted by the answer:

First: That at the time of the commencement of this action, the plaintiff was the owner of the trademark known as “Carmencita” with the exclusive right to manufacture and sell cigars under that name, and that plaintiff acquired said trade-mark by regular assignment and transfer from Brown Brothers of Detroit, Jacob Stahl, Jr., and Company, Carmencita, and Krohn, Feiss & Company of Cincinnati.

Second: That Plaintiff is the successor of Brown Brothers and as such becomes vested with all their property rights including good-will and trademarks under transfer dated May 1, 1899.

Third: That Brown Brothers commenced the manufacture and sale of a certain brand of cigars known as “Carmencita” in the year 1891, and since that time have expended large sums of money in advertising the brand, and have established a large and profitable business throughout the United States.

Fourth: That said cigar is known to the trade as a ten cent cigar, made out of Havana filler and Sumatra wrapper; it retails to the consumer at thiee for twenty-five cents, ten cents straight, two for twenty-five cents and fifteen oents.

Fifth: The “Carmencita” is packed in boxes of fifty each, and the design which is found on the lid of the box when opened' and thrown back consists of a Spanish girl in low necked dancing costume with gold beads around her neck and a rose in her hair, which is supposed to be a correct picture of “Carmencita”. On one side of the picture is a Spanish flag and an American shield — on the other an America flag and a Spanish standard, with white flowers intertwined back of the figure. At the top of the design in large gold and red letters is the name“Oarmencita”. At the bottom of the design are the words “Concha especiáis”. On the inside of the back part of the box is found .the name of “Carmenita” in large red letters, on the left side of which in large blue letters aie found the words “Brown Brothers”, and on the right side in large blue letters are found the words “Detroit, Michigan”.

Sixth: That the title and label design “La Camerita” which defendants are about to use, was conceived by and originated with Charles A. Speakman, manager of the cigar label department cf George S. Harris & Sons, Lithographers, of New York.

Seventh: That as such originator the said Speakman never iaw the name, title, picture, or any ether part of the label or title “Carmencita” as used by Brown Brothers and Krohn, Feiss & Company before the same was used by Brown Brothers.

Eighth: That the trade-mark “La Camerita” was registered in the trademark record by George S. Harris & Sons on the 18th day of November, If 98; that the same was transferred by Harris & Sons to Bucher & Bucher Company of Dayton, Ohio, in March, 1899, and by them transferred to Frank Torrence cn May 5th, 1899, notice of which transfer was given by Torrence in the trade-mark record of May 25th, 1899, and that said Torrence is now the sole owner of the same.

Ninth: That said Charles A. Speak-man of New York, originated the design and coined the name “La Camerita” without the knowledge of either the Bucher & Bucher Company, or the said Frank Torrence, and that neither of them knew of the said name or design until the same was placed on the market and offered to them and others by the said George S. Harris & Sons for sale, and that neither of said defendants ever requested or suggested to said George S. Harris & Sons or to any cf their representatives that they originate the design and title of “La Camerita”.

Tenth: That on the 7th day of March, 1899, Frank Torrence wrote to Harris & Sons for a good title and handsome label as fine as money could huy for the sale of cig-irs; that in answer to that lettter of date March 9th, 1899, Harris & Sons suggested the design of a camera girl under the title of “La Camerita” or under the title of “Camera Belle”, and that this was the first knowledge Torrence ever had that there was a design of a camera girl under the title of “La Camerita” and that the Bucher & Bucher Company first acquired their knowledge of the above fact from Torrence subsequent to March 9th, 1899.

Eleventh: That said Torrence knew of the “Oamenoita” label and design as used by Brown Brothers for many years; that the Bucher & Bucher Company never had any knowledge of the “Carmencita” until a few days before this action was commenced.

Twelfth: That there as no intentional fraud, purpose or design on the part of the Bucher & Bucher Company or Frank Torrence to pirate on the trade and business of the Brown Brothers Company when they purchased the trade-mark “La Camerita” from George S. Harris & Sons.

Thirteenth: That the defendants, the Bucher & Bucher Company and Frank Torrence are about to put on .the market a five cent cigar under the design of a little camera girl and under the title of “La Camerita”, but in so doing there is no proof of any conspiracy, intentional fraud, or design on their part to deceive the public, or to sell their cigars as those of the Brown Brothers Company

Fourteenth: The “La Camerita”is packed in boxes of fifty each and the design which is found on the lid of the boxes when opened and thrown back, consists cf a girl in outing costume-with hat, furs, etc., the girl holding a oamera as though in the act of taking a picture, and cn either side are small views or pictures representing snap shots already taken. Above the picture-is the name “La Camerita”, the word “Camerita” is in large red letters-striped with gold, the word “La” being in much smaller type and same color. On the inside cf the back part of the box is found the name “La Camerita” in large plain red letters of the same size and perfectly visible to-the eye after the first layer of cigars is-taken out cf the box.

The case was argued at length both orally and on brief, and a great many authorities were cited, nearly one hundred in all. It was simply impossible for the court to read all of them and decide the case at this term. The court did, however, read the leading one and enough to ascertain the general principles underlying the law of trade-marks, and find from the books the following principles of law well settled:

1. In an action to-restrain the use of a trade-mark, it is not necessary for plaintiff to show that any person has actually been deceived by defendant’s alleged imitation. Vulcan v. Myers, 139 N. Y., 364; High on Injunctions, sec. 1086 and 7, and cases cited.

This principle, however, has no aplication to the case at bar, for the proof shows that the “La Camerita” has not been put cn the market.

2. Tt is not necessary to show an intention on defendant’s part to infringe upon plaintiff’s trade-mark. It is sufficient to show an actual infringement. Nor is it necessary to show intentional fraud. Vulcan v. Myers, 139 N. Y., 364; Liggett & Myers v. Reid Tobacco Co., 104 Mo., 53, and cases cited.

3. A person has the right tc the exclusive use of marks, signs, forms or symbols appropriated by him for the purpose of pointing out and identifying the true origin and ownership of the article manufactured by him in the markets. 122 Mass., 148, and cases cited.

4. The fixed purpose of the law of trade-marks is to protect the owner .in the exclusive use of his device which identifies and distinguishes his product from other similar articles and protect the public against fraud and deception. 104 Mo., supra; High on Injunctions, sec. 1088, and cases cited.

5. A manufacturer adopting a certain trade-mark and stamping it upon his goods so as to distinguish them from other similar goods in the mark-, et, acquires the exclusive right to use that particular mark or symbol,and it is a property right that will be protected by injunction against the infringing party. Robertson v. Berry & Co., 50 Md., 591; High on Injunctions, sec. 1068 and cases cited; 122 Mass., 148, supra.

6 In applications for relief by injunction against the piracy of trademarks, the question to be. considered is not whether manufacturers or persons skilled in that particular business could distinguish between the two articles, but whether the general public would be likely to be deceived by the .alleged imitation. High on Injunctions, sec. 1088, and cases cited.

7. The resemblance between the genuine trade-mark and the alleged imitation must be such that purchasers of ordinary intelligence proceeding with ordinary care would be likely to be deceived. And our own supreme court lays down the following rule: “How far the similarity is likely to deceive must be determined, not by the impression made upon a heedless and inobservant buyer, but upon one cf at least ordinary intelligence and observation; to entitle a complainant to relief against a colorable imitation for a trade-mark, he must clearly show not only a property right in himself, but also that the resemblance between the original and the imitation is such •as would mislead persons purchasing with ordinary caution.” Brill v. Singer Mfg. Co., 41 Ohio St., 140; Robertson v. Berry, 50 Md., 591; High on Injunctions, sec. 1088, and cases cited.

8. No right can be absolute in a name as a name merely. It is only 'when that name is printed or stamped upon a particular article and thus becomes identified with a particular style and quality of goods, that it becomes a trade-mark. Rowley v. Houghton, Cox’s Trade-Mark Cases, p. 486.

9. A bill for infringement of a trade-mark cannot be sustained as a bill to restrain unfair competition when it does not allege that defendants have attempted or intend to practice any deceit for the purpose of selling defendants’ goods as the goods cf complainant. LaMont v. Leedy, 88 Fed. Rep., 72.

10. Relief in equity to restrain unfair trade is granted only where the defendant by his marks, signs, labels or in other words represents to the public that the goods sold by him are those manufactured or produced by the plaintiff, thus palming off his goods for those of a different manufacture to the injury of the plaintiff. Goodyear Co. v. Goodyear Rubber Co., 128 U. S., 598.

11. All the authorities agree that a court will not restrain a defendant from the use of a label on the ground that it infringes the plaintiff’s trademark unless the form of the printed words, the words themselves and the figures, lines and devices are so similar that any'person with such reasonable care and observation as the public generally are capable cf using and may be excepted to exercise would mistake the one fir the other. Gilman v. Hunnewell, 122 Mass., 148.

12. The court must use its own judgment as to similarity cf packages and labels, and the fact that others may differ from it in opinion or that a few isolated purchasers have been misled or may be misled does not necessarily bind it. This principle was announced by Justice Brewer of the supreme court of the United States in a late case decided by him, March 21, 1898. P. Lorillard Co. v. Peper, Circuit Court of Appeals 86 Fed., 956.

Applying the legal principles just announced to the facts admitted and found by the court, how does the case at bar stand? It must always be borne in mind that the purpose of a court of equity in granting injunctions in trade-mark cases is two-fold — first, to protect the manufacturer against others pirating on his trade which in most instances has been established by years cf industry and the expenditure of large sums of money; and second, to protect the public against the deceptive arts and devices of those who undertake to put upon the market inferior or counterfeit goods for the genuine article, or goods which are not represented by the original trademark.

In this case no claim is made by the plaintiff that there is any such similarity between the designs and labels of the “Carmenoita” and “La Camerita” as would deceive the public in purchasing’either brand of cigars. The claim of the plaintiff, as we understand it, is, that there is such a similarity between the two names “Carmenoita” and “La Camerita” in the spelling and pronunciation as would mislead the public, both ending with “ita” and that the defendants are about to use the name “La Camerita”with the intention of competing with the plaintiff unfairly in the sale of its goods and induoing the public to purchase defendant’s cigars in the belief that they are purchasing the cigars of the plaintiff.

These in their order. As we have already found that there was nc intentional fraud or attempt to deceive on the part cf the defendants in purchasing and attempting to use the name “La Camerita” in the manufacture and sale of cigars, it remains to be seen whether or not the use of the name “La Camerita” is in fact an infringement on the name11 Carmenoita” and so operate as to,induce the public to purchase defendants’ cigars in the belief that they are purchasing the cigars of plaintiff. If “La”is omitted from the name of “La Camerita”, wre have both names commencing with the letters “Ca” and ending with the letters“ita”and to the eye and ear both words lock and sound very much alike, and we can very readily see how a person relying on the name alone could be deceived. We must take the name, however,as we find it — “La Camerita”. If we pronounce the two names — “La Camerita” and “Carmenoita” rapidly there is a similarity. If we pronounce them slowly and distinctly as “L-a C-a-m-e-r-i-t-a” and “C-a-r-m-e-nr c-i-t-a”; there is no such similarity as would confound a person of ordinary learning. But as we take it, we are not bound to look at the name alone in determining whether there is an infringement cf the name. The name “La Camerita” is only a part cf the trade-mark. It appears on the label and is as much a part of the trademark as the picture of the camera girl and other indicia. Everything found on the label goes to make up the trademark. Chief Justice Gray of Massachusetts, now Mr. Justice Gray of supreme court of United States, on that point, says: “All the authorities agree that a court will not restrain a defendant from the use of a label on the ground that it infringes the plaintiff’s trade-mark unless the form of the printed words, the words themselves and the figures, lines and devices are so similar that any person with such reasonable care and observation as the publio generally are capable of using and may be expected to exercise would mistake the one for the other”. And we take it that this principle applies to an infringement of a name as well as a label. 122 Mass., 148, supra.

In determining this question, the court has considered everything on the label — name, - design, pictures, etc., and feels authorized under the authorities to go further and take into consideration the price and character of the cigars. The “Carmenoita” is a ten cent cigar, the “La Camerita” a five cent cigar. It seems to me that nc one can be deceived in the two brands of cigars, the price and size alone being sufficient protection to the purchaser.

The case of Bradbury v. Beeton 39 L. J. C. H. N. S., 57, cited in a foot note to section 1088, High on Injunctions, bears me out in this proposition and says: “In this case the plaintiffs who were the proprietors of a long established weekly comic periodical called “Punch”, were refused an injunction against the publication by defendants of a rival publication of a similar character called “Punch and Judy”, defendant’s publication bearing a different illustration upon the cover and being sold at a different price”.

McMahon & McMahon, for Plaintiffs.

Wright & Ozias and Gottshall, Crawford & Limbert for the Bucher & Bucher Co.

J. S. Zimmerman, for Torrence.

This principle seems to be deoisive of this case. There is no proof in this case that the defendants intentionally, or by adopting the trade-mark ‘‘La Camerita”, represent to the public that the cigars to be manufactured and sold by them are those manufactured and sold by the plaintiff.

It follows, therefore, that there is no infringement on the part of defendants in using the name‘‘La Camerita” and that the action cannot be maintained as one for unlawful competition. Tbe finding must be in favor of the defendants, and the temporary restraining order is, therefore, dissolved and a perpetual injunction denied.  