#### Max Gabriel et al., Plaintiffs, *v.*The Sicilian Asphalt Paving Co., Defendant.

(Supreme Court, New York Special Term,

May, 1898.)

Trade-marks — When a geographical designation cannot be made the subject-of an exclusive use.

In an action brought to restrain the defendant from the use of the. name “ Brunswick in the manuf-aciture or sale of rock asphalt, it appeared that the plaintiff’s asphalt was manufactured in cylindrical ' cakes at Eschershausen in the Duchy of Brunswick, Germany, and was-sold under the brand “ Brunswick G. & ¡S. Germany,” while the, defendant’s asphalt was manufactured in the city of New York upon " a basis of 80 per cent, of rock asphalt, which had been quarried from one of numerous similar deposits in or near Eschershausen.

Held, that the complaint was properly dismissed.

That where the great element of the value of the manufactured article consisted in the locality of the principal material of which the. article was composed, the geographical designátion of the locality from which that principal material was derived might be used by another dealer. That as a general rule a geographical designation could not become the subject of .proprietary use as a trade-mark, but that courts would interfere where the use was deceptive as to the locality of the basic production, or where the value of the designation consisted in identifying the things sold as valuable because, of the well-known quality of the thing manufactured.

Action for an injunction to restrain the use of a trade-mark.-

George S. Hastings, for plaintiffs.

Joseph Fettretch, for defendant.

Russell, J.

The plaintiffs seek to restrain the defendant from the use of the ñame “ Brunswick,” in the manufacture or sale of rock asphalt. The plaintiffs’ asphalt is manufactured in. the form of cylindrical cakes at Eschershausen in the duchy of Brunswick, Germany. The defendant’s asphalt is manufactured at New York city from a basis of 80 per- cent, rock asphalt, quarried from one of the several deposits in. or near Eschershausen,' and is sold by the *535defendant as “ Brunswick Rock Asphalt.” The brand of the plaintiffs is .“ Brunswick G. *&*S. Germany.”

Ordinarily a geographical designation is not the subject of proprietary use as a trade-mark, but may be claimed as such where specially equitable reasons exist for such claim. Montgomery v. Thompson, House of Lords, 64 Law Times (N. S.), 748; Anheuser Busch Brewing Co. v. Piza, 24 Fed. Repr. 149.

In the first of these cases the use of the term “ Stone Ale ” was enjoined, as the plaintiffs for over a century had brewed ale, sold by this designation, at Stone, England. In the second case cited, the United States Circuit Court enjoined the use of the term “ St. Louis Beer,” as the plaintiff had acquired a valuable trade for its beer, sold under the name of “ St. Louis Lager Beer.”

In both of these cases, however, the product manufactured was the combination of several common ingredients rendered valuable as a whole by the process of manufacture:

In the case of Newman v. Alvord, 51 N. Y. 189, it appeared that the plaintiffs had acquired a valuable good will from the manufacture of cement or water lime, from stone taken from quarries near Akron in the county of Erie in this State, which they sold in the market as “Akron” cement. The defendants manufactured their cement from stone quarried near Syracuse and sold it as “ Alvord’s Onondaga Akron Cement,” or water lime manufactured at Syracuse, New York. An injunction was sustained against the' use of the term “ Akron,” as it was plainly deceptive, for the plain import and value of the word “ Akron ” was to designate the lo^ cality of the .basis of the production.-

It is needless to cite other cases to show-that the deceptive use of a geographical term is unlawful. It may be restrained where the value tof the term applies to a well-earned good will in the manufacture, and consists in identifying the thing sold as valuable from the well-known quality of the thing manufactured; and also where a false use is made of the name of the locality of the basic production.

But how can any one acquire a right to the exclusive use of the name of an entire duchy, principality, kingdom or state, for the sale of a production four-fifths of the value of wrhich depends upon the locality of the basis of the thing sold, and where there are-numerous deposits separately used by different companies for the-acquiring of the basic commodity? It is not suggested that other-products manufactured wholly within the duchy of Brunswick, may not be sold as Brunswick, asphalt or mastic. Gan it be said! *536that an advertisement is misleading which states that the thing sold is Brunswick asphalt or mastic when four-fifths. of the composition is the commodity taken from the quarries within the duchy of Brunswick, when it is well' known that the principal Value of the finished product is derived from this fact, and it is also well known that a small percentage of other materials has. to he used to put the asphalt into a suitable condition for laying into walks or pavements? I am of the opinion that in all ■ cases where the great element of value of the manufactured article consists in the locality of the principal material of which it is composed, the geopraphical designation of the locality ‘from which that principal material comes may be used. Otherwise the freedom of manufacture and commerce would be seriously disturbed by the enforcement of a monopoly in the use of the term designating the place from where the material comes, and competition would not be left open for the growth of a good will dependent upon the value of the thing sold.'

The complaint is, therefore, dismissed, with costs.

Complaint dismissed, with costs.