33 Wash. 234, 74 P. 358 WOODCOCK V. GUY (S. Ct. 1903).

                W. H. WOODCOCK, Appellant,
                               vs.
                     G. O. GUY, Respondent

                          No. 4559
                SUPREME COURT OF WASHINGTON
                    
33 Wash. 234, 74 P. 358
                    November 16, 1903, Decided

                              
Appeal from a judgment of the superior court for King county,
Tallman, J., entered October 11, 1902, upon sustaining a demurrer
to the complaint, dismissing an action for the infringement of a
                          trade-mark.

TRADE-MARKS -- REGISTRATION -- INFRINGEMENT -- COMPLAINT. A
complaint for the infringement of a trade-mark which fails to
allege that it was registered in accordance with Bal. Code,
3621, must state a case for equitable relief at common law.
TRADE-MARKS -- FRAUD NECESSARY AT COMMON LAW. At common law a
demurrer to a complaint to enjoin the infringement of plaintiff's
trade-mark "Gargline" for a throat medicine, by defendant's use
of "Gargeline" for the same purposes, is properly sustained where
there is no allegation of fraudulent conduct, or that the same
was printed in a particular manner calculated to mislead the
public, or that the public was deceived, or that the plaintiff
sustained any damage.
TRADE-MARKS -- NOTICE TO DISCONTINUE USE -- INJUNCTION. Nor would
such a complaint be sufficient to authorize an injunction without
alleging the facts respecting service upon the defendant of
notice to discontinue such infringement, and an allegation that
such a letter was written to defendant without proof that it was
received is insufficient.


Stafford & Dawes, for appellant.
Fred H. Peterson, for respondent.

PER CURIAM
{*237} Appellant, W. H. Woodcock, commenced this action in the
superior court of King county against respondent, G. O. Guy,
praying injunctive relief against the infringement of an alleged
trade-mark by respondent, and for an accounting of profits. The
respondent interposed a general demurrer to the complaint, which
was sustained by the trial court. The appellant elected to stand
on his pleading, and the court dismissed the action with costs
against appellant, who appeals to this court. There is but one
assignment of error -- that "the court erred in sustaining the
demurrer." Omitting name of court and title of cause, the
complaint is as follows:
"The plaintiff complains and alleges: (1) That more than twenty
years ago the plaintiff coined and adopted the word 'Gargline' as
a symbol and trade-mark for a medicinal preparation devised and
compounded by him as a remedy for sore throat, tonsilitis and
other affections of the mouth, gums and throat. (2) That for more
than twenty years last past the plaintiff has constantly used,
and still uses, said coined word 'Gargline' to distinguish and
identify his said medical preparation. (3) That, through all the
years since said coining and adopting of said trade-mark, the
plaintiff has expended money in advertising{*238} the medicinal
remedy designated thereby, and has used various other means to
make the merits thereof known to the public. (4) That, as a
result of said advertising and other efforts by the plaintiff,
his said medicinal preparation has become extensively and
favorably known to the public under the name of said coined word
'Gargline,' securing to the plaintiff a large sale thereof. (5)
That some time about two years ago, in the city of Seattle, the
defendant began using the word 'Gargeline' to designate a
medicinal preparation compounded and sold by him designed and
alleged to be a remedy for the same ailments for which
plaintiff's 'Gargline' is and has long been known as an effective
remedy. (6) That as soon as plaintiff learned of the defendant's
said use of the word 'Gargeline,' plaintiff procured his lawyers
to write a letter to defendant notifying him of plaintiff's
trade-mark in the word 'Gargline' and requested him to
discontinue using the word 'Gargeline' on the ground that it
infringed plaintiff's said trade-mark. (7) That immediately
thereafter defendant ceased to exhibit conspicuously in his place
of business in Seattle bottles containing his said medicinal
preparation designated 'Gargeline,' and plaintiff was thereby led
to believe, and did believe, that defendant had heeded said
notice written him by plaintiff's lawyers and had ceased using
said word 'Gargeline' to designate a medicinal preparation
compounded by him. (8) That plaintiff has recently learned that
defendant is still selling his said medicinal preparation under
the designation 'Gargeline.' (9) That defendant's said use of the
word 'Gargeline' is an infringement of plaintiff's trade-mark in
the word 'Gargline.'
"Wherefore plaintiff prays for a decree of this court enjoining
and restraining the defendant from using the word 'Gargeline' to
designate a medicinal preparation, ordering the defendant to
account for all profits made by him from the sale of a medicinal
preparation designated 'Gargeline,' and for judgment in favor of
plaintiff and against the defendant for the amount of such
profits and the plaintiff's costs of this action."
{*239} There is no averment in the complaint that the appellant
at any time procured his alleged trade-mark to be registered in
accordance with our statutory provisions. Bal. Code, 3621, et
seq. Therefore, the sufficiency of the complaint must be tested
by the rules of the common law and the principles governing
equitable relief in such cases. The right of the proprietor of a
trade-mark to its exclusive use has long been recognized by the
courts of England and the United States. Shaver v. Shaver, 54
Iowa 208, 6 N.W. 188, 37 Am. Rep. 194. The general rule adopted
by the courts on this subject is, that state statutes providing
for registration of trade-marks are in affirmance of the common
law; that the remedies given by such statutes are either
declaratory of, or are cumulative and additional to, those
recognized and applied by the common law. Derringer v. Plate, 29
Cal. 292, 87 Am. Dec. 170; Trade-Mark Cases, 100 U.S. 82, 25 L.
Ed. 550; 21 Enc. of Plead. & Prac. 752, 753.
The rule with reference to the granting of injunctive relief for
the protection of trade-marks is thus expressed by a learned
author:
"The jurisdiction rests upon fraud on the part of defendant, and
upon the principle that equity will not allow one to sell his own
goods under the pretense that they are the goods of another."
High on Injunctions, 1068 (3d ed.).
In McLean v. Fleming, 96 U.S. 245, 24 L. Ed. 828, the principle
is stated in this language: "Nor is it necessary, in order to
give a right to an injunction, that a specific trade-mark should
be infringed; but it is sufficient that the court is satisfied
that there was an intent on the part of the respondent to palm
off his goods as the goods of the complainant, and that he
persists in so doing after being requested to desist." This
proposition of law is {*240} quoted with approval by Browne,
Trade-Marks (2d ed.), 43. McLean v. Fleming, supra, is also
authority on the proposition that a party may have the right to
use his own name as a trade-mark as against a trader or dealer of
a different name; but, according to the weight of authority,
"Such a party is not, in general, entitled to the exclusive use
of a name, merely as such, without more. . . . Nor will any other
name, merely as such, confer any such exclusive right, unless the
name is printed in some particular manner in a label of some
peculiar characteristics, so that it becomes to some extent
identified with a particular kind of goods, or when the name is
used by the party, in connection with his place of business, in
such a manner that it assumes the character of a trade-mark
within the legal meaning of that term, and as such entitles the
party to the protection of a court of equity, to prevent others
from infringing the proprietor's exclusive right."
See, also, Coats v. Merrick Thread Company, 149 U.S. 562, 13 Sup.
Ct. 966, 37 L. Ed. 847. "The general rule is against the
appropriating mere words as a trade-mark." Hygeia Distilled Water
Co. v. Hygeia Ice Co., 72 Conn. 646, 45 Atl. 957, 49 L.R.A. 147,
and authorities cited; Caswell v. Davis, 58 N.Y. 223, 17 Am. Rep.
233.
Appellant contends that it was not necessary for him to allege
fraud against respondent in the appropriation of his trade-mark.
In support of his contentions on various phases of his case he
has cited Hier v. Abrahams, 82 N.Y. 519, 37 Am. Rep. 589, in his
printed brief, several times. That action was brought to restrain
defendants from infringing upon plaintiffs' alleged right to use
the word "Pride" as a trade-mark, and for damages, etc. It does
not appear whether the plaintiffs had registered their
trade-mark. The trial court found as facts that the defendants,
well knowing the prior adoption of{*241} plaintiffs' trade-mark,
used the same word "Pride" in the manufacture and sale of the
same goods (cigars) at the same city, putting that word upon the
labels and boxes of cigars of the defendants, thereby deceiving
the public, and that plaintiffs were damaged. The court of
appeals in that state declared the law as applied to such facts
to be as follows:
"An actual intent to defraud can hardly be deemed necessary to
entitle the plaintiffs to restrain the defendants from continuing
the unlawful use of the plaintiffs' trademark whereby the
plaintiffs are sustaining damage. The defendants cannot justly
contend that they are entitled to continue to injure the
plaintiffs' business by acts which are in violation of their
legal rights, on the ground that they do not intend to defraud
them."
The facts developed in that case plainly demonstrated that the
defendants had knowingly invaded plaintiffs' rights, caused them
damage, and "would justify an intendment, if one were necessary,
that they [defendants] did so with the intent to defraud." In the
case at bar, the appellant fails to allege any fraudulent conduct
on the part of respondent in palming off his medicinal
preparation "Gargeline" on the public as appellant's goods, or
that he has suffered any injury or damage by reason of respondent
having manufactured and sold his preparation, or that the public
was, or is liable to be, deceived by reason of respondent's acts
in the manufacture and sale of the medicinal compound
"Gargeline". Appellant simply asks to be protected in the
exclusive use of a word "Gargline", which he claims to have
coined and adopted as a symbol and trade-mark for a medicinal
preparation, compounded by him for certain ailments of the mouth,
gums, and throat. "A name alone is not a trade-mark, when it is
applied to designate, not the article of a particular maker or
seller, but the kind or description of thing which{*242} is being
sold." Leclanche Battery Co. v. Western Electric Co., 23 Fed.
277. The court held in that case that the complainants were
entitled to relief against defendants, not in using a word or
words, simply, but in imitating the labels of complainants. Canal
Company v. Clark 13 Wall. 311, 20 L. Ed. 581; In re Meyerstein's
Trade-Mark, 43 Ch. Div. 604; Paul, Trade-Marks, 66; Goodyear's
India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598,
9 Sup. Ct. 166, 32 L. Ed. 535.
Moreover, the complaint fails to show that respondent used the
alleged trade-mark by stamps, labels, or otherwise, so like those
used by appellant as to represent to the public that the goods of
the former were, or are, those of the appellant, or that his use
of the word was fraudulent in any manner. Of course, when the
facts are sufficiently alleged in a pleading to show fraud, the
courts will apply the law and grant the complaining party relief
in all proper cases, but such conclusions cannot be based on mere
hints or suggestions. Andrews v. King County, 1 Wash. 46, 23 P.
409, 22 Am. St. 136; Rathbone v. Frost, 9 Wash. 162, 37 P. 298; 9
Enc. Plead. & Prac. 694.
The allegation of notice to respondent is not by direct
statement, but by way of recital and indirection. Appellant does
not allege in his complaint that respondent ever received the
notice that he procured his lawyers to write, or whether the
notice was served personally, or sent through the mails, or
otherwise. An injunction is a harsh remedy. As a general
proposition, in equity jurisprudence, it is enunciated by law
writers and courts that a party seeking injunctive relief should
allege in his pleading the facts upon which he bases his right to
that particular remedy, in positive language. 1 High, Injunctions
(3d ed.), 34.
{*243} We have examined the authorities of appellant, with
reference to the prior adoption and long continued use of a
trade-name by the complaining party, when such name has been
simulated by the defendant in the manufacture or sale of the
goods of the same kind or quality as those of the complainant.
The courts have held in cases of unfair competition that, when
the words were descriptive of quality, yet if they were used in
such a manner as calculated to deceive the public, it is not
necessary for the complainant to show that purchasers have
actually been deceived, to entitle him to relief. The case of
Fuller v. Huff, 104 Fed. 141, 43 C.C.A. 453, 51 L.R.A. 332,
doubtless goes to the full limit of the law as applied to such
cases. It appeared from the statement of the facts in the opinion
of the court, that the complainant remonstrated with the
defendants against the use of the words, "Health Food Company,"
in exhibiting their goods at or near complainants stand; that the
food business of defendant company was extensively advertised
under that name. The court held that a case of unfair competition
was established in the unlawful use of a trade-name, and granted
the complainant relief. In the case at bar the appellant has
failed to state sufficiently the facts in his complaint upon
which any such contention can be predicated.
Testing the complaint by these rules of law, we reach the
conclusion that the judgment of the superior court in this case
should be affirmed, and it is so ordered.
                     DISPOSITION
                         
Affirmed.
                              
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