Carmichel v. Latimer.

with the same mark. About 1825 they removed their business to Margam, about forty-four miles from Carmarthen, and, with several changes as to partners, continued there the business and the use of the mark. From 1825 to 1836 the old works were closed. In 1836 the defendants hired the old works, began business as the "M. C. Tin Plate Co.," and manufactured the tin plates with the "M. C." mark, with the word "Carmarthen" in large characters, under the letters "M. C." A bill was brought for injunction; SHADWELL, V. C., granted one, and, on appeal, COTTENHAM, L. C., dissolved it. He said the real question was whether the former occupants of the works had acquired a right to prevent subsequent tenants from using a mark which it was clear was originally derived from those works. The injunction was dissolved, with liberty to sue at law.

There is to be noticed a peculiarity in some English cases growing out of the practice of keeping up the name of an old mercantile firm for several generations, or successions of partners, and when no partner of the original name remained. This practice is noticed and commented on in Hall v. Barrows, 4 De G., J. & S. 150, 156; The Leather Cloth Co. v. The American Leather Cloth Co., id. 137, 143; and by Lord KINGSDOWN, in the last-named case in House of Lords, 11 H. L. 542, mentioning instances. See, also, Croft v. Day, 7 Beav. 84. In such cases no one is deceived. The name and goodwill are understood by the public to belong to the existing firm.

It is believed, so far as we can learn from the cases, that that practice is not common in this country, and in New York it is forbidden by express statute. So, also, in France.

Parsons on Contracts, 6th ed., 1873, vol. 2, book III, ch. 15, § 4, C. *257 br., states the rule, that, where a trade-mark "declares that an article is made by a particular person or firm, it cannot be transferred;" and this seems to be sustained by the cases.

In the present case there has been no continuation of an old firm by a gradual change of its members. There is no person of the name of Stillman in the complainants' firm, and the goods (although one of the partners was superintendent of the old firm) are made by a new firm, and in another place. The goods had (and it may be as claimed, through the skill of Carmichel) acquired a valuable reputation; but that old firm does not now exist. They do not describe themselves as successors, or the goods as made by one who was formerly superintendent, but by the old firm as if it still existed.

Carmichel v. Latimer.

It has not been claimed by the respondents that the complainants intend any deception. The facts are probably pretty well understood by the large dealers, and by the trade generally.

And if we look upon the mark as having come to designate merely a quality or sort of goods, in that light the complainants would not be entitled to the exclusive use of it.

On the other hand, the defendants hire the old mill, formerly occupied by Stillman & Co., and are making linseys there. While there is evidence that this mill was often called the "Seventh Day Mill," there is reliable evidence that it was also called the Stillman Mill." It was leased to the defendants by that name, two years before they began the manufacture complained of. Persons of that name have been engaged in Westerly in manufacturing for many years, and there is evidence that the name of Stillman has also been applied to other mills. The defendants have a right to call their mills so if they choose.

The labels, it is true, are of about the same size, but the borders are dissimilar, and the defendants' ticket gives the true names of the makers, not in small type, but in letters of sufficient size not to be overlooked. The similarity is only in the one prominent word, "Stillman." We cannot deny them the right to use the name of their mills on their tickets, being satisfied that the name was not a new name, given to the mills for purposes of deception, but that their mill might properly be, and had been so called; and that the name, "Stillman," was used with sufficient explanation (to use the language of some cases) to prevent any misunderstanding.

Evidence has been put in showing the excellent quality of the goods made by the plaintiffs, and, so far as the evidence goes, some of the goods of the defendants have been of a less substantial make, and were sold for a less price, the purchasers knowing the difference.

The fact that Stillman, Stanton & Co. paid George Stillman for the use of the old name, we cannot consider as of much weight, as that firm contained several of the persons who were in the old firm who had sold to George the right to use it.

We must, therefore, deny the motion for an injunction.

DURFEE, C. J., concurring. There are cases in which a court of chancery refuses to protect a trade-mark because it is an imposition on the public. The defendants contend that this is a case of that kind. I think, however, there is little reason to doubt that pur

Carmichel v. Latimer.

chasers who are looking for Stillman & Co.'s linseys get what they are looking for when they get the linseys manufactured by the plaintiffs. The firm of Stillman & Co. has ceased to exist, and, consequently, Stillman & Co.'s linseys, manufactured by Stillman & Co., can no longer be procured; but the plaintiffs are their successors, by purchase, in the use of their firm name, and continue the same manufacture with improvement, and, therefore, I am reluctant to hold, that a continuance of the old name upon their labels is intrinsically any fraud upon the public, who are interested to get the same or a better manufacture, but who, so long as they do get it, can have little care whether it comes from the original manufacturers or their successors. And see Eddleston v. Vick, 18 Jur. 7; Cox's Amer. Trade-mark Cas. 666; Fulton v. Sellers & Co., 4 Brewst. 42; Dale v. Smithson, 12 Abb. Pr. 237; Cox's Amer. Trademark Cas. 282; Dixon Crucible Co. v. Guggenheim, 2 Brewst. 321; Cox's Amer. Trade-mark Cas. 559.

There is a defense, which, to my mind, seems more meritorious. If the firm of Stillman & Co. was still in existence, and was the plaintiff in this suit, I should find it difficult to protect it by an injunction. The trouble is, the label of the defendants does not resemble the label of the plaintiff's closely enough to deceive any person of ordinary discernment, unless the name "Stillman," which is prominent in both labels, may mislead him. The plaintiffs, therefore, can have no relief unless they can show that the defendants have no right to use that name as they do use it in their labels. How can the plaintiffs do this when the surname of one of the defendants is Stillman, and when the mill where the linseys are manufactured, though it may be popularly known as the "Seventh Day Mill," is also properly called the "Stillman Mill?" A manufacturer has a right to attach his own name to his manufactures, even though a rival manufacturer of the same name, who has given it prestige in the market, may suffer in consequence. The resulting damage is damnum absque injuria. This doctrine was recognized in Croft v. Day, Beav. 84; Holloway v. Holloway, 13 id. 209; Burgess v. Burgess, 17 Jur. 292, where, however, injunctions were granted because the names were coupled with simulative indicia; and in Faber v. Faber, 49 Barb. S. C. 357. See, also, Clark v. Clark, 25 id. 76; Rogers v. Taintor, 97 Mass. 291, where it was strongly asserted.

And if a manufacturer has the right to label the products of his mill with his name, I do not see why he has not an equal right to

Carmichel v. Latimer.

label them with the name of that mill itself, provided the name is not unfairly assumed for that purpose, or fraudulently employed. Newman et al. v. Alvord & Bailey, 49 Barb. S. C. 588; Glendon Iron Co. v. Uhler & Fulmer, 75 Penn. St. 467; Brooklyn White Lead Co. v. Masury, 25 Barb. S. C. 416; Condee v. Deere, 10 Am. Law Reg. (N. S.) 694; Canal Co. v. Clark, 13 Wall. 311. In the lastnamed case the Supreme Court of the United States said, "Equity will not enjoin against telling the truth."

tarians.

The plaintiffs have submitted testimony to show that the defendants, in calling their mill the "Stillman Mill," are not telling the truth. I am not satisfied of this. The defendants, perhaps, are not unwilling to profit by the reputation which the plaintiffs have acquired for the name; but I do not find that they are practicing any such fraud to that end as entitles the plaintiffs to an injunetion. The testimony shows that the mill has been popularly known as "The Seventh Day Mill," but it appears that that name is a kind of nickname, given to it because its owners have been SabbaNaturally the defendants would not care to put their goods upon the market under such a name. The defendants also show, by their testimony, that the mill has long been known to certain persons as the "Stillman Mill," and that a portion of its products, before even it came into the hands of the defendants, was sold with labels or tickets attached bearing that name. Moreover, I do not find any proof of a fraudulent imitation of the plaintiffs' label. The words, "Stillman Mill," are not on that label. The resemblances are general, and may have occurred without improper design; and that they did so occur is inferable from the testimony of the engraver, who says he knew nothing of the plaintiffs' label. Indeed, if the plaintiffs have suffered from the competition of the defendants, I am inclined to think they have suffered rather because the linseys made by the defendants are considerably cheaper than those made by the plaintiffs, while closely resembling them, than because of any similarity in their respective labels. Against the losses incident to such a competition the court, of course, cannot protect. I, therefore, concur in the decision against granting the injunction.

Peabody & Crafts, for complainants.

Injunction refused.

N. F. Dixon & N. F. Dixon, Jr., for respondents.

The sale and assignment of a life insurance policy outstanding and valid, and containing no prohibition of such alienation is good, though made to one who has no interest in the life insured, provided such sale and assignment is a bona fide transaction and not a device to evade the law. Query, whether in Rhode Island, a person can legally take out an original policy on a life in which he has no interest.

A

SSUMPSIT on a policy of life insurance. The opinion states the case.

Charles Hart, for plaintiff. A person cannot purchase and hold for his own benefit, as a matter of speculation, a policy of insurance on the life of another in whose life he has no insurable interest.

Nor can a policy, valid in its inception, issued to one holding an insurable interest, be assigned to one holding no such interest so as to sustain an action in favor of the assignee. Franklin Life Ins. Co. v. Hazzard, 41 Ind. 116; Stevens, Adm'r, v. Warren, 101 Mass. 564; Cammack v. Lewis, 15 Wall. 643.

A policy may be assigned to a creditor of the insured, he having an interest in the life of the insured.

Upon the death of the insured the creditor may collect the policy, but must account to the representatives of the deceased for any surplus above his debt and advance for premiums or otherwise.

The cases of St. John v. Am. Mut. Life Ins. Co., 13 N. Y. 31, and Valton v. Nat. Fund Life Ins. Co., 20 id. 32, seem to hold that a policy valid in its inception may be assigned for value to one having no interest in the life of the insured, and the assignee be entitled to collect the whole amount: that is to say, from the insurers. They do not decide that the assignee of the policy would not be obliged to account to representatives of the insured for any surplus received over amount advanced by him. The latter case of Reese v. Mut. Life Ins. Co., 23 N. Y. 516, practically overrules the cases cited from the 13 and 20 id. This case in 23 id. decides that one pro