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Brendlinger v Smith et al. Injunction-Trade Name-Secret Formula-Deceiving the Public-Unfair

Competition.

to

a

The rights incident

trade mark or trade name constitute property rights, and are recognized and protected by the common law, as well as by statute and equity will restrain an infringement thereof.

The use, by a corporation, of plaintiff's secret formula and the trade name identified therewith was by permission of the plaintiff in the manufacture of flavoring extracts and without consideration constituted a mere license which was revoked by the forfeiture of the charter of the corporation and all rights to said formula and trade name thereupon reverted to the plaintiff and equity will protect plaintiff in the sale of such products by restraining defendant.

Equity. No. 749 October Term, 1919. C. P. Allegheny County.
Moorhead & Knox, for plaintiff.
A. L. Cramer, for defendant.

KLINE, J., March 6, 1920.–This is a bill in equity filed by the plaintiff to restrain the defendant from selling, or causing to be sold, substitute flavoring extracts bearing the trade name, “Brendlinger's Non Alcholic Flavoring Extracts."

The bill as amended prays that the defendant be also restrained from selling or offering for sale Non Alcholic Extracts in bottles similar in size and shape to those used by plaintiff and with labels and wrappers or trademarks, simulating or copying plaintiff's advertising material, price lists and from using or publishing invoices, letterheads having written or printed thereon, “Distributors, M. H. Brendlinger Company Flavoring Extracts.”

We find the following facts and conclusions of law:

FINDINGS OF FACT. First. On or before the 1st of December, 1916, the plaintiff purchased from one H. A. Kernocham, of Brooklyn, N. Y., certain secret formulas for the manufacture and production of non alcholic flavoring extracts for a valuable consideration and the title thereto has ever since remained in the said plaintiff.

Second. Subsequently the plaintiff and others applied for aid secured a charter under the laws of the state of Delaware, for a corporation named the "M. H. Brendlinger Company.” The said corporation was organized under the charter so granted at a meeting held December 7th, 1916, and continued in existence until March 19th, 1919, on which date the said charter was forfeited by the state of Delaware, for the non payment of taxes. The said corporation during the entire period of its existence was located and transacted its business at No. 200 Lehigh Avenue, Pittsburgh, Pa., the said corporation was never registered to do business under the laws of Pennsylvania.

Third. During its existence for a period of upward of two years, the corporation manufactured and sold non alcoholic flavoring extracts, said extracts being produced under the formulas and by permission of the plaintiff, but without agreement between the plaintiff and the corporation in respect to the use of said formulas and without consideration moving to the plaintiff for said use.

Fourth. The name, “Brendlinger's Non Alcholic Flavoring Extracts," was adopted as and for the trade name for the products so manufactured under the formulas of the plaintiff. Said products were sold under said name for a period of more than two years. The said trade name was derived from the surname of the plaintiff by permission of the plaintiff but no consideration was received by the plaintiff for such use.

Brendlinger v Smith et al.

Fifth. A form of label was adopted for the products so manufactured under the formulas of the plaintiff having thereon the said trade name, "Brendlinger's Non Alcholic Flavoring Extracts,” and the said form of label was used on the products so manufactured and sold for a period of upwards of three years.

Sixth. In February of 1916, the defendant was employed by the corporation as salesman and continued in that capacity until about December 1st, 1918. On or about said date, the defendant ceased to be an employee of the corporation and became a jobber or selling agent for the products of the corporation, continuing, however, to occupy the premises and conduct his business at the office of the corporation, 200 Lehigh Avenue, Pittsburgh, Pa.

Seventh. On or about March 1st, 1919, the plaintiff, having been notified that the charter of the corporation would be forfeited for non payment of taxes, severed her connections with the said corporation and commenced a business of manufacturing and selling non alcoholic flavoring extracts as an individual, using the formulas above mentioned for the production thereof. Subsequently, the plaintiff removed to her present location, No. 5221 Ellsworth Avenue, and continued in the business at that place.

Eighth. From and after March 1st, 1919, the defendant, with knowledge that the plaintiff had commenced a business of manufacturing and selling non alcoholic favoring extracts, acted as jobber for the said products of the plaintiff both prior and subsequent to her removal to her new location.

Ninth. On July 7th, 1919, the defendant began to manufacture and produce non alcoholic flavoring extracts and to sell the same in his own name as an individual.

Tenth. On or about July 21st, 1919, the defendant conducted a demonstration at McCrory's Five and Ten Cent Store, on Penn Avenue, East End, Pittsburgh, Pa., at which demonstration certain bottles of non alcoholic flavoring extracts, under the trade name of “Brendlinger's Non Alcoholic Flavoring Extracts," with labels thereon identical with those under said products have always been sold, were offered for sale to the public. The flavoring extracts contained in the bottles so demonstrated and offered for sale were not produced from the formulas from which the genuine, “Brandlinger's Non Alcoholic Flavoring Extracts,” were produced and were different from the said products in color, consistency and chemical composition. At the same time bottles of extracts with the above described label thereon and containing similar flavoring extracts were offered for sale and sold at Thomas Market on Penn Avenue, East End, Pittsburgh, Pa., and at McCann's, Market Street, Pittsburgh, Pa.

Eleventh. That since the early part of July, 1919, the defendant has made and placed upon the market his own non alcoholic flavoring extracts put up in clear glass bottles in shape and size as those used by the plaintiff and others who placed upon the market products of like nature several years prior to the plaintiff engaging in the manufacturing business.

Twelfth. That since the defendant has made and placed upon the market his own yon alcoholic flavoring extracts, the labels used by him in the sale of his products, though similar to a degree to those used by the plaintiff, were adopted and used by the trade for several years prior to the plaintiff engaging in the manufacturing of her products.

Thirteenth. That the published circuars, advertisements, letterheads, invoices and stationery used by the defendant in his own business bearing his own name, though somewhat similar to the circulars, letterheads, invoices and stationery used by the plaintiff, are also similar to those adopted by others engaged in the same business and used by them for several years

Brendlinger v Smith et al.

prior to the plaintiff engaging in business and the same as was used by the M. H. Brendlinger Corporation, in which the plaintiff and defendant were stockholders prior to its dissolution.

CONCLUSIONS OF LAW.

First. The rights incident to a trade mark or trade name constitute property rights, and are recognized and protected by the common aw, as well as by statute.

Second. The use, by the corporation, of the plaintiff's formula and the trade name identified therewith was by permission of the plaintiff and without consideration and therefore constituted a mere license which was revoked by the forfeiture of the charter of the corporation and all rights to said formula and trade name thereupon reverted to the plaintiff.

Third. The defendant's agreement to act as jobber or selling agent for the products of the plaintiff and his so acting after the forfeiture oi the charter of the corporation and while the paintiff was engaged in business as an individual, estop him from denying plaintiff's right to manufacture her products and to use the trade name identified therewith.

Fourth. The defendant's acts in selling or offering for sale a clifferent article under the trade name identified with plaintiff's products, constitute an infringement of plaintiff's rights in said trade game.

Fifth. The use by the defendant of clear glass bottles of the size usually used for flavoring extracts, the use of labels, circulars, invoices, letterheads and stationery similar to that used generally by the trade, but with the defendant's name clearly set forth thereon, was not a simulation calculated to deceive the public or to constitute unfair competition.

Sixth. We are of the opinion that the costs of this proceeding should be paid by the defendant.

Let a decree be drawn in accordance herewith.

Berks County v Liebovitz & Sons.

Taxation Machinery -Real Estate

April 29, 1844, P. L. 486.

-Acts of April 5, 1834, P. L. 511, and

Machinery placed in a building leased for manufacturing purposes

and which the owner had the right to remove at any time was taxable as real estate for county purposes against the owner.

Case Stated. No. 36 May Term, 1919. C. P. Berks County.

1

Ira G. K'utz, for plaintiff.
B. Morris Strauss, for defendant.

ENDLICH, P. J.-Under the head of real estate, the assessor of the Borough of Mohnton, in this county, returned for taxation for county purposes, as the property of defendants, a certain number of sewing machines, valuing them at $600. These sewing machines are set up by the defendants in a building which they rent from one Stamm, the owner thereof, for the term of one year, the machines to be and continue the exclusive property of defendants, with the right and privilege to defendants of removing them at any time. They are used by defendants to sew together shirts out of parts ready cut and shipped there by the defendants from other places. The land and the building are assessed for taxation, of course as real estate,

Berks County v Lieboyitz & Sons.

*

against the owner. The defendants appeared before the board of county commissioners on the day fixed for an appeal from said assessment, contending that the assessor had no right to assess said sewing machines as real estate against the defe:idants. The county commissioners, however, affirmed the assessment as made, and from it the defendants have appealed. The parties agreed to a case stated, setting forth the facts, recited, and in the last paragraph stipulating as follows:

“The question for the decision of the court is whether the said sewing machines are liable for taxation against S. Liebovitz & Sons under the Acts of Assembly of 1834 and 1844. If the court be of the opinion that the said S. Liebovitz & Sons are taxable on the value of the said sewing machines, then judgment to be entered in favor of the plaintiff; but if not, then judgment to be entered in favor of the defendants.

On that inquiry, as pointed out in Bemis v Shipe, 26 Pa. Superior Ct., 42, 45, the criterion is not whether, as between the landlord and the tenant, the machinery, etc., involved is to be treated as personalty or realty. The question is one of statutory enactment. The Act of April 15, 1834, Section 4, P. L. (1833-34) 511, makes taxable, as real estate, for county purposes, "manufactories of all descriptions,” and the Act of April 29, 1844, Section 32, P. L. 486, subjects to such taxation "*

all real estate, to wit, * manufactories of all kinds.". Under these enactments, machinery in manufactories has been uniformily held liable to county taxation as real estate, not only when its owner is also the owner of the land and building, as in Patterson v Delaware County, 70 Pa., 381, but likewise where the land and building belong to one and the machinery, etc., to another party occupying the land as lessee. Thus, in Luzerne County v Galland Bros. & Co., 3 Kulp, 11, there was a house and lot owned by one Fitzpatrick, but leased to the defendants for manufacturing purposes, and certain machinery belonging to them had been set up and was operated by them. It was held subject to taxation against them as real estate. And so in the case already cited of Bemis v Shipe, 26 Pa. Superior Ct., 42, followed in Guthrie v Dry Goods Co., 47 Pa. Superior Ct., 384 (where the value of the machinery was assessed against the land owner). See, also, Penna. Stave Co.'s Appeal, 236 Pa., 97, where a lessee of the title was held liable to taxation upon it and structures placed upon it by the lessee under its lease, which, as in both of the foregoing cases and in the present case, gave the lessee the right to remove them. The plain teaching of the decisions referred to seems to be that the Acts of 1834 and 1844 make manufactories, with the machinery, etc., contained in them, realty for purposes of county taxation; i. e., the land as realty and the machinery,etc., upon it as realty also, and if it belongs to the lessee it is assessable and taxable against him as part of the realty.

If this is the correct view, then it is clear that the defendants have no ground for complaint against the assessment they seek to avoid, and that the conclusion upon the case stated must be in favor of the plaintiff.

Judgment is directed to be entered upon the case stated in favor of the plaintiff and against the defendants.

Sturgeon v The Borough of Oakdale. Equity-Borough, -Removal of Sewer Surface Water-Agreement.

A borough was not required to remove a sewer or to change its location so as to prevent plaintiff's land from being damaged by surface water, and bill dismissed where the sewer was constructed under an agreement with the former owner of the land, and so far as appeared, in the manner agreed upon between the defendant and that owner. The defendant had a right to maintain its sewer.

Equity. No. 1159 January Term, 1920. C. P. Allegheny County.

Leitch & Adelman, for plaintiff.
J. F. Wallace, for defendant.

SHAFER, P. J., February 25, 1920.—The bill is by the owner of land in the Township of North Fayette, to require the re-construction of a sewer line laid by the Borough across the land, and for damages.

FINDINGS OF FACT,

1. In the year 1914 one Samuel H. Sturgeon was the owner of a tract of land containing twenty-one (21) acres, located near the Borough of Oakdale in Allegheny Couty. The Borough in that year passed ordinances for the construction of a sanitary sewer system, and proposed to put its disposal plant and filter-beds on this land. The owner, being desirous that the disposal plant should not be put upon his property, agreed with the Borough that they might lay their sewer line through his property, provided they would put the disposal plant on another piece of ground farther from the Borough.

2. The Borough thereupoplaced its disposal plant as agreed upon and laid its sewer across the land in question near the bank of Robinsons Run, where the sewer crossed a small stream running into Robinsons Run, provision being made for the water of the stream by placing two large sewer pipes in the bed of the stream under the sewer.

3. A considerable tract of ground next to Robinsons Run was low and wet, and there were laid in it drains, which had been in existence for many years, for the purpose of carrying off the water, these drains emptying into the small run above mentioned.

4. Samuel H. Sturgeon died on October 23, 1916, leaving a will by which he devised the land above mentioned to the plaintiff, Walter G. Sturgeon, who is now in the possession of the same.

5. The plaintiff complains that the sewer pipes under the drain crossing the run on his farm have become clogged up, backing the water at various times upon a portion of his land and destroying the crops, and we find as a fact that the water course under the sewer, as well as the pipes laid to conduct the water under them, have become more or less clogged up, and that the water has therefore been backed upon a certain part of the plaintiff's land, doing damage to his crops.

CONCLUSIONS OF LAW.

1. The prayer of the plaintiff's bill is that the Borough of Oakdale be required to re-construct and replace its sewer so that the top of it shall be level with, or below the natural surface of the land, and so that the water course in question shall be as open as it was before the sewer was constructed.

As the sewer was constructed under an agreement with the former owner of the land, and so far as appears, in the manner agreed upon

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