
    ALEXIS GODILLOT, Plaintiff and Respondent, v. EDWARD C. HAZARD, et al., Defendants and Appellants.
    Trade-marks.—Injunction.
    Every manufacturer and every person for whom goods are manufactured, has a right to distinguish the goods he manufactures, or sells, by a peculiar mark or device, that they may be known as his in the market, and he is entitled to protection of the same, irrespective of the fact that similar goods are manufactured or sold by others (See cases cited in opinion).
    
      Held also, by the court below, that this right extends to a vendor who merely sells, and has no direct relation to the manufacturers.
    A trade-mark may consist of anything not already appropriated; marks, forms, symbols, which designate the true origin or ownership of the article; this, although the words adopted are in common use. It cannot, however, consist of anything which merely denotes the name or quality. There can be no right to the use of mere generic words.
    The language of Lord Justice Gifford, in Lee «. Haley (39 Law Journal, 380), approved: “ The principle upon which the cases go is not that there is a property in the word, but that it is a fraud upon a person who has established a trade, ” &c., &c.
    
      Held, in this case, that the- injunction sought to be obtained in the action should be granted.
    Before Curtis, Ch. J., Sedgwick and Freedman, JJ.
    
      Decided January 6, 1879.
    Appeal by defendant from judgment enjoining Mm from using a certain trade-mark, &c.
    The action was tried before the Hon. Claudius L. Monell, at a special term, April, 1875.
    The complaint alleged that the plaintiff, for more than three years, had been engaged in putting up in packages of about one pound each, and importing, an article known as “ Julienne,” compounded of various vegetables, for making Julienne soup, upon which package he had placed a label or trade-mark devised by him, a copy, of which is annexed to the complaint.
    The device consists of the words “ Conserves Alimentaires,” under which is the coat-of-arms of the city of Paris ; upon either side of the monogram a “ C ” in a circle, and underneath the words “Paris” and “ Julienne,” with directions for preparing for use and using.
    The device adopted by the defendants is in all -respects like the plaintiff’s device, except the monogram is “F. Gr.” In size, type, color, and appearance, the two devices are entirely alike.
    The answer alleged that “Julienne” was a generic name, and the mixture of vegetables used in making julienne soup was prepared and imported into the United States long prior to its' being put up and imported by the plaintiff, and was previously well known to the general public by the name of “ Julienne.”
    Upon the pleading and affidavits, a motion was made and granted to dissolve the preliminary injunction, but no appeal was taken.
    On the trial the plaintiff testified that the article was put up for him in Paris, and that it has not before been prepared or put up in the same manner. There was evidence on the part of the defendants that the article known as “ Julienne” was prepared and put up by several other manufacturers in France, and was imported into this country.
    One of the defendants testified that the defendant caused the label they used to be printed in Paris by their agent, having previously seen the plaintiff’s label on packages of the “ Julienne” they had purchased from him.
    The court found the fact that the plaintiff first adopted, and uses the label claimed as his trade-mark, that the defendants’ label was calculated to deceive the customers of the plaintiff to his damage.
    The following opinion was delivered at special term :
    Mo well, Ch. J.—The case made by the evi-, dence upon the trial of this action so far varies it from the case presented upon the motion to vacate the injunction, that I am not embarrassed by the decision then made.
    It now appears that the article sold by the plaintiff was prepared-and put up for him in Paris by the firm of Hollier & Co., and although there is evidence that a similar article, designated “Julienne,” is prepared and put up at other establishments in France, yet it is clearly established that the “Julienne” imported and sold by the plaintiff is prepared and put up expressly, for him.
    
      It is not, therefore, in my opinion, material whether other manufacturers prepare the same article in the same manner and of the same material, or that it is imported into the United States and sold by other persons.
    There is no such property in the secret of manufacture that it can be protected; any one may prepare “ Julienne ” of the same ingredients that enters into the composition of the plaintiff’s article, and he may designate it “ Julienne,” and sell it as such. The property and right to protection is in the device or symbol which is invented and adopted to designate the goods to be sold, and not in the article which is manufactured and sold.
    The right to protection is not exclusively in the manufacture. The person for whom the goods are manufactured (Amoskeag M’f’g Co. v. Spear, 2 Sand/. 599 ; Walton v. Crawley, 3 Blatch/. 440) and the vendor -who sells and who may have no direct relation to the manufacturer, has such right (Partridge ». Menck, 2 Barb. Oh. 103 ; Taylor r. Carpenter, 2 Sand/. Oh. 614).
    Even, therefore, assuming that the article imported by the plaintiff is an article of common manufacture in France, and is imported generally into this country, and sold under the name of “ Julienne,” that does not deprive the plaintiff of his property in the device which he has invented as a trade-mark, and which he has put upon the packages, for the purpose of designating the article he sells.
    In Amoskeag Manufacturing Company r. Spear {supra), the learned Justice Duer says (p. 605):— “ Every manufacturer and every merchant for whom goods are manufactured has an unquestionable right to distinguish the goods he manufactures or sells by a peculiar mark or device, in order that they may be known as his in the market;” and in Partridge v. Menck {supra), the chancellor says (p. 103): “ The question is not whether the complainant was the original inventor or proprietor of the article made by him, and upon which he now puts his trade-mark, nor whether the article made and sold by the defendant is of the same quality and value.” And Beardsley, J., says, in Tyler v. Carpenter (supra) : “It is immaterial that the complainants were not admitted to be the manufacturers of the article. It was conceded that they were the vendors, and engaged in the sale of it.” In Lee v. Haley (39 Law Jour. 284) the plaintiffs were dealers in coal—a natural product, in the general reach of all dealers. Yet the court protected the good-will of a business represented by a particular style of address.
    It sufficiently appears from the evidence that the plaintiff is in a position to entitle him to adopt a trademark to designate the goods in question. They were manufactured exclusively for him, and, within the authorities I have cited, he, as the vendor, had a right to establish a reputation for the quality of the article he sold, and perpetuate it by a device which would denote its origin and ownership.
    If he has done so, he should be protected in its exclusive use.
    A trade-mark may consist of anything, marks, forms, symbols, which designate the true origin or ownership of the article. It cannot consist of anything which merely denotes the name or quality.
    There can be no right to the use of mere generic words. Hence “Julienne,” designating the manufactured article, does not denote origin or ownership, and like “ Schnapps” (Wolfe v. Goulard, 18 How. Pr. 64) and ‘ • Club House Gin ’ ’ (Corwin v. Daly, 7 Bosw. 222), it is a word used merely to designate the article or its quality.
    The words “ Conserves Alimentaire,” which are alike applicable to every description of preserved or dessicated food, do not relate exclusively to the name or the quality of - any particular preparation, and are, ‘therefore, the subject of an exclusive appropriation in connection with words which did not denote the name or quality, and in that sense they may be regarded as designating the true origin or ownership of the manufacturers.
    The adoption of words in common use as a trademark was sanctioned in Matsell v. Flanagan (2 Abb. Jf. 8. 459), where the “ United States Police Gazette” was held to be an- infringement of the plaintiff’s right to the use of the “National Police Gazette and in Messerole ». Tynberg (4 Id. 410), the word, “Bismark,” as a trade-mark for a particular description of paper collars, was protected; and in Newman v. Alvord (49 Barb. 588), a stronger case, “ Akron Cement,” which was the name of the place where the cement was made, was brought within the class of words entitled to be appropriated as a trade-mark. These several cases are apprpved in Billet v. Oarlier (11 Abb. N. 8. 186), inhere the manufacture of a syrup from the juice of the pomegranate was called “Grenadine” and “Grenade Syrup.” In that casee it appeared that “Grenade” was a French word signifying pomegranate, and that '“ Grenade Syrup ” was sold in France under that name. It was, however, held that the plaintiff, by the adoption of the words, has acquired a property in their use which the courts would protect.
    Again, the copy of the coat-of-arms of the city of Paris, when in connection or combination with other-marks, words or devices, not denoting name or quality, will cover a property in it which will prevent its use in the same connection or combination by another person., ; In this case, however, none of the words or devices are isolated or disconnected with each other. They form in combination a whole, supplemented by the plaintiff’s monogram, together, as is claimed, constitute his trade-mark.
    
      It is not necessary in this case to designate any particular words or symbols as constituting the plaintiff’s trade-mark ; although I am of opinion that the words “ Conserves Alimentaires ” on the coat-of-arms of the city of Paris as a symbol, could, if it was necessary, be separately regarded as such ; but the combination of all the words and symbols, which the plaintiff has put upon his label, entitles him to be protected against the appropriation and use of such combination by the defendants.
    It has now come to be well settled, that the adoption of any words or device not already in use, and not denoting the name or quality of the article, will constitute a trade-mark ; and they so far become property that the courts will protect the owner against any usurpation or interference ; and for the well-grounded reason that a person who, by his skill and industry, has acquired a good reputation for the commodity he manufactures or sells, ought to be allowed to reap the fruits of it. This is forcibly illustrated in Williams v. Johnson (2 Bosw. 1), when the trade-mark was “ Genuine Yankee Soap,” words of common use, but as they did not denote the name or quality of the manufacture, the plaintiff’s property in them was fully sustained.
    Independently of this, the label, as ,a whole, is entitled to protection. The courts have gone to the extent of bringing within its protection not the trade-mark alone, but the packages, cases, and handbills (Williams v. Spence, 25 How. Pr. 366). In Cook v. Stark-weather (13 Abb. N. 8. 392), the court held, that the package, case, or vessel, in which the commodity is put," is prepared in a peculiar or novel manner, constituted it so much a part of the trade-mark as to entitle it to participate in the protection which would be given to the trade-mark itself.
    Upon the whole case, therefore, I am satisfied that the plaintiff has such property in the label he has adopted to designate the goods he offers for sale, that he should be protected in its exclusive use. He has, through his skill and industry, gained a reputation in the community for the excellence of the article he imports, and he ought to be permitted to reap the profits of it.
    I am led to my conclusion in this case the more readily for the reason that I can find ho excuse or justification for the defendants’ acts. One of them testified that they had frequently purchased packages of the plaintiff’s “ Julienne,” and had sent to Paris directions to have their label prepared. It was prepared in ail respects like the plaintiff’s, except the insignificant change in the monogram.
    That it was a willful invasion of the plaintiff’s rights there can be no possible doubt. The defendants were at liberty to manufacture “ Julienne,” or have it manufactured for them, of the same materials and in the same manner, and to import and sell it in this market under the same name, and the plaintiff would have had no legal cause of complaint. 'With that undisputed right they were not content, but they meant to also trade upon the plaintiff’s reputation, and profit by it.
    In Lee v. Haley {ubi supra), Lord Justice Gifford says: “The principle upon which the cases go is not that there is ' property in the word, but that it iá a fraud upon a person who has established a trade, and carries it on under a given name, that some other person should assume the same name.” And the Chancellor in Partridge v. Monck {ubi supra), also says: “ That, having appropriated to himself a particular label or sign or trade-mark, indicating to those who wish to give him their patronage, that the article is manufactured or sold by him or by his authority, or that he carries on his business at a particular place, he is entitled to protection against any person who attempts to pirate upon, the good-will of the complainant’s friends or customers, or of the patrons of his trade or business, by sailing under his flag, without his authority or consent.”
    And, again, in Billet v. Carlier (ubi supra), Mr. Justice Pratt says: “The defendants can have no possible motive in using these words (Grenade Syrup), except to avail themselves of the reputation the plaintiff’s article has gained under this name.”
    The plaintiff must have judgment perpetually, enjoining the defendants from using the trade-mark, with costs.
    
      Hugh Porter, attorney, and of counsel, for appellant,—Cited:
    Newman v. Alvord, 51 N. Y. 189; Amoskeag Manufacturing Co. v. Spear, 2 Sandf. 599 ; Partridge v. Menck, 2 Barb. Ch. 101; Lemion v. Ganton, 2 E. D. Smith, 343 ; Wolfe v. Barnett, 24 La. An. 97; Del. and Hudson Canal Co. v. Wallace, 13 Wall. 311 (U. S. Supreme Court, 1871); Ferguson v. Davol Mills, 2 Brew. 314, and Cox Am. Trademark Cases, 516 ; Caninchal v. Latimer, 5 N. Y. Weekly Dig. 46 ; Osgood v. Allen, 1 Holmes, 185; Congress and Empire Spring Co. v. High Rock Congress Spring Co., 45 N. Y. 291 ; Dixon Crucible Co. v. Guggenheim, 2 Brews. 321; Upton Trademarks, 25-30 ; Leather Cloth Co. v. Am. Leather Cloth Co., 11 H. Ld. Cas. 523; Piddin v. Howe, 8 Sim. 477; Partridge v. Menck, 1 How. App. Cas. 547; Wolfe v. Burke, 56 N. Y. 115; Palmer v. Harris, 60 Penn. 156; Hobbs v. Francis, 19 How. Pr. 567 ; Fetridge v. Wells, 4 Abb. Pr. 144.
    
      Nelson Smith & Leavitt, attorneys, and Nelson Smith, of counsel, for respondent,—Cited:
    Amoskeag Manufacturing Co. v. Spear, 2 Sandf. 599; Walton v. Crawley, 3 Blatchf. 440 ; Taylor v. Carpenter, 2 Sandf. Ch. 603, 614; Same v. Same, 11 Paige, 292 ; Wotherspoon v. Currie, L. R. 5 H. L. 508; Partridge v. Mauk, Cox Am. Trademark Cas. 72 [This reporter gives the case as decided by Y.-Ch. Sanford, Ch. Walworth, and the court of appeals]; Morrison v. Case, 9 Blatchf. 548; Coleman v. Crump, 70 N. Y. 573 ; Brie v. Larband, decided in the French court of Itiom, and reported in Brown on Trademarks; Raggett v. Findlater, L. R. 17 Eq. Cas. 36; McAndrew v. Boss, 4 De Gex, J. & S. 380; Ford v. Forrester, L. R. 7 Ch. App. 70; Broadhurst v. Barlow, decided by Vice-Chancellor Wickens, in 1872, 11 Alb. L. J., 169, where the case is reviewed; Knott v. Morgan, 2 Keen, 213 ; Seixo v. Provezende, L. R. 1 Ch. App. 198 ; Croft v. Day, 7 Beavan, 85 ; Edelsten v. Edelsten, 1 De Gex, J. & S. 185; Hirst v. Denham, L. R. 14 Eq. 542; Braham v. Bustard, 1 Hemming & M. 447.
    The decision of the general term was as follows:
   Per Curiam.

The judgment appealed from should be affirmed with costs upon the opinion delivered at special term.  