
    LEA against WOLF.
    
      Supreme Court, General Term, First Department ;
    
    
      October, 1873.
    Modifying 13 Abb. Pr. N. S., 389.
    Trademark. —Ik junction.
    As a general rule geographical names cannot be appropriated as trademarks, and their use by another will not be enjoined ; but the rule has its exceptions, where the intention in the adoption of the descriptive word is not so much to indicate the place of manufacture, as to intrench upon the previous use and popularity of another’s trademark.
    Where plaintiffs had for thirty years manufactured at Worcestershire, an article, sold by them under the name of “ Worcestershire Sauce,”—Held, that the defendants should be enjoined from selling under that name a similar article, put up with labels and wrappers, imitating in color, size, language and appearance, those used by the plaintiffs, but not manufactured at Worcestershire.
    Appeal by plaintiffs from so much of an order of special term as denied an injunction pendente lite restraining defendants from employing the words “ Worcestershire Sauce” as a trademark.
    This action was brought by John W. Lea and others, against Julius Wolf and another, to enjoin them from selling a sauce made by them as “Worcestershire Sanee,” the plaintiffs claiming that those words were their trademark, which they had an exclusive right to use. They also sought to restrain the defendants from using labels and wrappers in imitation of those used by the plaintiff’s. A motion was made for an injunction pendente lite, which was granted as to the use of the labels and wrappers, but was denied as to the use of the words “Worcestershire Sauce.” (Reported in 13 Abb. Pr. N. S., 389.) From that order this appeal was taken. The other facts necessary to an understanding of the case are stated in the opinion.
    
      C. W. Sandford, for plaintiffs.
    
      H. H. Shook, for defendants.
   By the Court.—Fancher, J.

The imitation of the plaintiff’s labels on the celebrated article of their preparation was so palpable that the learned judge at special term granted an injunction against the defendants, restraining such imitation. He, however, held that in regard to the name—“Worcestershire Sauce” —“it contains nothing but the name of the place where it is manufactured, and the word 'sauce ’ as descriptive of the article sold,” and that “neither of these words can be used in such a manner as to give the exclusive use of them as a trademark.” The learned judge referred to several decisions as authority upon the point. Among them is a case decided by himself (Wolfe v. Goulard, 18 How. Pr., 64). That case has been cited with approbation in thirteen States in the Union. Perhaps the cases are so numerous as to establish a uniform current of authority in favor of the principle enunciated at special term.

But we are not called upon to extend the principle to a case where it is not strictly applicable. For the purposes of this case it is not necessary to deny that the name of the place where an article is manufactured, and the word which is descriptive of the article manufactured, may not be used by any tradesman who there makes and vends the article. This is not this case. The defendants’ preparation is not manufactured, at “Worcestershire” ; the plaintiffs’ is, and has been for more than thirty years. The adoption, under such circumstances, of the very words contained in the plaintiffs’ trademark, and the imitation in colors, size, language and appearance, of their labels and wrappers, are irresistible proof of an intention of the defendants to deceive the public and to lead purchasers to suppose that the defendants’ preparation was the original Worcestershire sauce, so long manufactured by the plaintiffs. Where such an intention exists, the defendants should not be protected in their fraudulent imitation by the pretense that in the words employed the name of a place and the word descriptive of the article only are used. The defendants, doubtless, might, under proper circumstances, employ the name of a place where an article is manufactured, as well as the word descriptive of its character; but such words must be employed honestly and properly, and not with a design to imitate and deceive to the detriment of another. Where words or names are in common use, no one person can claim a special appropriation of them to his peculiar use; but where words, and the allocation of words, have, by long use, become known as designating the article of a particular manufacturer, he acquires a right to them, as a trademark, which competing dealers cannot fraudulently invade. The essence of the wrong is the false representation and deceit. When the improper design is apparent, an injunction should be issued. In such cases injunctions have been sustained, though the name of a place, or of a celebrated person, were within the trademark protected by the injunction (Messerole v. Tyneberg, 4 Abb. Pr. N. S., 410 ; Matsell v. Flanagan, 2 Id., 459; Amoskeag v. Spear, 2 Sandf., 599; Caswell v. Davis, 4 Abb. Pr. N. S., 6; Newman v. Alvord, 49 Barb., 588; Wotherspoon v. Currie, 27 L. Times, N. S., 393).

In the last mentioned case the plaintiff had purchased from Fulton & Co., of Glenfield, near Paisley, the goód-will and trademark of their business. They had for several years prior to 1847 manufa'ctured powdered starch, principally from East India sago; and was called “Glenfield patent double refined powder starch,” and commonly “Glenfield starch.” The plaintiff had actually removed his manufactory from Glenfield to Maxwelton, where the starch was made and sold, when he applied for an injunction against John Currie, trading as Currie & Co. Currie had rented a small building from Fulton & Co., at Glenfield, where he manufactured starch, which was sold in packets similar in size and appearance to those of the plaintiff, and which he labeled “the royal palace double refined patent powder starch, manufactured by Currie & Co., Glenfield.”

The plaintiff’s case was that the defendant had taken the small building at Glenfield, and adopted the mark or label containing the name of that place, for the express purpose of inducing people to believe that his starch was the article made by the plaintiff. The vice chancellor granted an injunction, although the defendant was an actual resident at Glenfield and his manufactory was there. It was dissolved on appeal, but reinstated and affirmed by the house of lords. The vice chancellor said, “that no man had a right to avail himself of a trademark, or to adopt any other means, whereby he should induce people to purchase his goods under the belief that they were purchasing the goods of another man,” and he was of opinion that “the defendant had pursued that course with the deliberate and fraudulent intention of palming off Ms starch upon the public as the starch of the plaintiff, and acquiring a sale of his starch by means of the connection and reputation of the plaintiff.”

In Newman v. Alvord, 49 Barb., 588, it appeared that the plaintiffs for thirteen years had carried on business at the village of Akron, in the county of Erie, where they manufactured and sold cement, or water-lime, which they designated as “Akron cement” and “Akron water-lime.” The defendants manufactured an article in Onondaga county, wMch they labeled “ Alvord’s Onondaga Akron cement or water-lime, manufactured at Syracuse, New York.” They were perpetually enjoined from using the word “Akron” on their bills and labels, or in any other way in connection with the manufacture or sale of their cement or lime. The judgment awarding the injunction was affirmed at the general term, and also by the commission of appeals.

As a general rule geographical names cannot be appropriated as trademarks, but the rule has its exception where the intention in the adoption of the descriptive word is not so much to indicate the place of manufacture as to intrench upon the previous use and popularity of another’s trademark.

The order appealed from should be modified and the injunction extended so as to prohibit the use of the words “Worcestershire Sauce” on the bills, labels and wrappers of the defendants.

Brady, J., concurred. 
      
       Affirmed in 51 N. Y., 189.
     