after giving the foregoing statement, delivered the opinion of the court.
The contest in this case arises as to the use, and the right to the use, of the name “ Allegretti ” in connection with the manufacture and sale of chocolate cream candy. Ho point or suggestion is made in the briefs or arguments of counsel as to the phraseology of the restraining decree quoted. The case is presented upon the broad question that appellants have a right, as against appellee, to use the firm name “ Allegretti & Co.” in just the manner they have been and are using it.
Appellants contend that appellee can not maintain its bill of complaint filed in this case, because (1) no right exists in any one such as to justify the entry of said decree; and (2) if any such right ever existed, it never passed to appellee.
It is not necessary for the purposes of this case to determine whether the right contended for by appellee be a trade-mark, or trade-name, or good will, or by what name such right be designated. The important inquiry is, did the alleged right exist in the appellee when its bill was filed ? There is no testimony showing that Allegretti Bros, executed and delivered to appellee any formal assignment or transfer of the right claimed. But no such formal transfer is necessary to vest the right in appellee if such right existed in Allegretti Bros.
In Snyder Mfg. Co. v. Snyder, 54 O. St. 86, 97, the Supreme Court, quoting from Horton Mfg. Co. v. Horton Mfg. Co., 18 Fed. Rep. 816, states the rule thus: “If one has made of his own name a trade-mark, and then transfers to another his business, in which his name has been so used, the right to continue such use of the name will doubtless follow the business as often as it may be transferred.”
In Williams v. Farrand, 88 Mich. 473, 480, it is held “ that an assignment of all the stock, property and effects of a business * * * carries with it the exclusive right to use * * * such trade-marks and trade-names as have been in use in such business. These incidents attach to the business or right of manufacture and pass with it. Courts have uniformly held that a trade-mark has no separate existence; that there is no property in words, as detached from the thing to which they are applied; and that a conveyance of the thing to which it is attached carries with it the name.”
In the case of Fish Bros. Wagon Co. v. La Belle Wagon Works, 82 Wis. 546, the business of the firm of Fish Bros., wagon manufacturers at Bacine, together with all the property and assets, passed to Fish Bros. & Co., agents; thence into the hands of a receiver; thence to the Fish Bros. Wagon Co., a corporation. The Fish brothers remained in the business through the successive changes and became officers of the corporation, although the majority of the stock was owned by others. During all this time the wagons were marked “ Fish Bros.” “ Fish Bros. & Co., Agents,” or “ Fish Wagons,” or with a picture of a fish on which were the words “ Bros.,” “ Bros. & Co.” or “ Wagon,” and were advertised under those names and with a picture. Several years after the organization of the corporation the Fish brothers withdrew therefrom and formed a partnership to manufacture and deal in wagons in another place, under the name of Fish Bros. & Co. In an action against them by the corporation it is held that the latter had acquired the good will of the original business and the right to use the said names and pictures as trade-marks, although the same were not specifically mentioned in any of the transfers of the business to the corporation
In the case of Merry v. Hoopes, 111 N. Y. 415, it is held that where, upon the dissolution of a firm, one of the partners purchases and succeeds to the business of the firm, the exclusive right to use trade-marks belonging to the firm passes to the purchaser, although no express mention is made of them in the deed of assignment.
There was no express assignment in Feder v. Benkert, 18 U. S. Cir. Ct. Appeals, 549, yet it was there held that the trade-mark passed to the several successors, although no one originally connected with the firm had any longer any interest therein.
In the case at bar the same persons, Ignazio Allegretti and his two sons who composed the firm of Allegretti Bros., own all the capital stock of the appellee. The same persons continue the same business in the same manner. The material inquiry upon this branch of the case is whether any such right as the appellee contends for ever passed from Allegretti Bros, to appellee, not when it passed. If Allegretti Bros, had such a right that they could have maintained this suit in case the appellee had not succeeded to their business, then the appellee may maintain the suit, notwithstanding the fact that it succeeded to such right after appellants had commenced business. The fact, if it be a fact, that they had commenced pirating before appellee succeeded to the business, does not justify its continuance afterward.
The further question is whether appellants are so using the firm name “ Allegretti & Co.” as to justify the intervention of a court of equity by injunction.
One firm is not at liberty to so use or assimilate the name of another firm, or of a corporation, as to pass off themselves for that other, or their goods for the goods of that other.
The law is very tersely and clearly stated by Beck, J',, speaking for the Supreme Court in Shaver v. Shaver, 54 la, 208, 211, thus : “In order to authorize the interference of chancery it is not necessary that the trade-mark should be copied with the fullest accuracy. An imitation which varies from the original, in some particulars, may be restrained. The rule is, that if the imitation is calculated to deceive, and may be taken for the original, its use will be restrained.”
In Lee v. Haley, 5 Ch. Appeal Cases, 155, the complainants, who were and for some years had been doing business as coal dealers in Pall Mall, London, under the name “ The Guinea Coal Company,” sought to restrain the defendant from doing the same kind of business on the same street, under the name “ The Pall Mall Guinea Coal Company.” A number of other companies who called themselves Guinea Coal Companies, some with prefixes and others with no prefixes, were engaged in the same business in the same city. In sustaining the interlocutory restraining order entered by the vice-chancellor, Sir G. M. Gifford, L. J., said (p. 161): “ I quite agree that they have no property in the name, but the principle upon which the cases on this subject proceeds is, not that there is property in the word, but that it is a fraud on a person who has established a trade, and carried it on under a given name, that some other person should assume the same name, or the same name with a slight alteration, in such a way as to induce persons to deal with him in the belief that they are dealing with a person who has given a reputation to the name.”
The rule as above stated seems to be the well settled law. Russia Cement Co. v. Le Page, 147 Mass. 206; Fish Bros. Wagon Co. v. La Belle Wagon Works, supra; Shaver v. Shaver, supra; Higgins Co. v. Higgins Soap Co., 144 N. Y. 462.
Do the facts in this case show that this rule should be applied as against appellants? We think they do. It hardly seems probable that any one familiar with the facts would contend otherwise as to Giacomo Allegretti. Only seven days after he left the employ of Allegretti Bros., he advertised in the public press that he was the “ originator and sole possessor of the genuine process for manufacturing Allegretti chocolate creams.” It would be idle to attempt to argue that this was not calculated and intended to deceive.
Within a few days Giacomo was making a batch of chocolate creams in a loft of the hardware store of the other appellants, where temporary arrangements were made for that purpose. The other appellants also made inquiry to satisfy themselves as to whether Giacomo “ ivas the gentleman he represented himself to be.” They were familiar with the Allegretti chocolate creams, and one of them even went to the place of business of Allegretti Bros., and inquired as to the amount of their sales. In less than twenty days after said advertisement appeared, appellants had formed their partnership under the firm name “ Allegretti & Co.,” and within the next ten days, thereafter they had rented a store on the principal retail business street in this city, fitted it up for occupancy, procured the necessary utensils for manufacturing, procured the necessary boxes, printing, etc., and entered upon the manufacture and sale of Allegretti chocolate creams. The letters upon their windows were the same kind as those used on the windows of Allegretti Bros., and the chocolate creams displayed had the same general appearance. The boxes in which the creams were put were very similar. The lettering upon the boxes has a great similarity. The words “ Allegretti ” and “ Chocolate Creams ” are displayed in gilt as the prominent and principal words. They are upon heavy and highly glazed paper, as were those of Allegretti Bros.
And then, why was the name Allegretti used as the only one appearing in the firm name ? The answer given by the Bubels, when on the witness stand, was that they used this name “ because they wanted to.” This is a peculiar, or at least an uncommon name in this country. We are impressed with the firm conviction that if G-iacomo Allegretti had been known by some familiar name not connected with the particular kind of business that his firm was about to enter upon, his name would not have been the only name used to designate the firm. The similarity shown by this record is so great as to compel the conclusion that it could only exist as the result of design and intent. “ Similarity, not identity, is the usual recourse where one party seeks to benefit himself by the good name of another.”
The decree of the Superior Court is affirmed.