Bradley v. Norton , 33 Conn. 157 ( 1865 )

McCurdy, J.

The principal questions on the merits are— 1st. Has the petitioner an exclusive right to make and vend the article called “ Coe’s Superphosphate of Lime,” under that description as a trade-mark ? — 2d. Has that right been violated ? — and 3d. Is this application the appropriate remedy for an injury ?

1. That this species of property — the exclusive right to a trade-mark — exists and is recognized by law, is beyond question. 2 Swift’s Dig., Rev. Ed., 157. It appears from the finding that Andrew Coe, after some years of experiment and effort in combining certain materials, had succeeded in inventing or discovering a valuable fertilizer, which became widely known and sold in market and extensively used by the public under the distinctive name before mentioned.

In all countries the agricultural interest is of the greatest importance and any improvement in the mode or amount of production must be of the highest value. It is perfectly right therefore that a discovery or invention which conduces to such improvement should be encouraged and allowed to become a source of emolument.

It is very obvious that Andrew Coe used the terms in question not merely as indicating a manufactured article, but to assert a right of property in the mode of making it. Such was the understanding of the parties ; and without tracing the conveyances minutely, it is sufficient to say that, before the bringing of this petition, the exclusive title for at least seven years from the 13th day of February, 1862, had become vested in the petitioner. In the agreement of that date it is said that Andrew Coe for many years has been the sole and exclusive owner, with an immaterial exception, of a certain trademark, viz., “ Coe’s Superphosphate of Lime,” which has become valuable &c. This agreement was ratified and confirmed by Russell Coe'and Elmore F. Coe, May 2, 1862, by an instrument in which it was stipulated that the petitioner should pay to them a certain portion of the profits of the business. Russell Coe then can not be permitted to deny that the article is the proper subject of a trade-mark, and that the right to use it is valuable, and is the property of the petitioner. The respondent, from his .business relations with Russell Coe, and especially if, as he claims, he is his mere agent, is embraced in the same restriction.

2. It is well settled that the imitation of a trade-mark to render a party liable need not be a precise copy. If there is a substantial similarity, so that the community would be likely to be deceived, it is a sufficient infringement of the right. Law’s Dig., 834, 5, and the cases there cited.

Now, without repeating the different forms of words set forth in the finding of the court, it is evident that the variations between the descriptive terms used by Russell Coe and the respondent and those which constitute the petitioner’s trade-mark, are very slight and little calculated to attract attention. The article manufactured by them must have been understood to be “ Coe’s Superphosphate of Lime.” It was so intended by them. Hence the false stamping of the article as “ patented April 1st, 1862,” and the concealment of the true position of the parties in transacting the business,

3. An injunction is the sole adequate remedy. In an action at law it would be impossible to trace the extent or ascertain the amount of the mischief. The spurious article might by its cheapness supersede the true one, or by its inferiority destroy its character and drive it from the market.

4. The parties are right. Prom the mode of conducting business adopted by Russell Coe and the respondent, either may be considered as a principal for the purpose of this case.

The petitioner had the sole interest in the trade-mark, and was justified in instituting legal proceedings in his own name to protect his property. Courts of equity often require new parties to be joined for fear that injustice may be done, or that the decision may not be final. These reasons do not exist in this case.

5. The assignment was incomplete and inoperative in relation to this right, and the respondent can not be permitted to set it up to screen himself from the consequences of his illegal proceedings.

6. The acts of the respondent were sufficient evidence of his intention to continue the wrong without averring or proving threats.

We advise that the injunction be made perpetual.

In this opinion the other judges concurred;