Opinion
22123.
ARGUED SEPTEMBER 9, 1963.
DECIDED NOVEMBER 7, 1963.
Injunction. Dougherty Superior Court. Before Judge Lilly.
Farkas, Landau Davis, for plaintiff in error.
Perry, Walters Langstaff, contra.
The petition stated a cause of action and it was error to sustain the general demurrer.
ARGUED SEPTEMBER 9, 1963 — DECIDED NOVEMBER 7, 1963.
Citizens Jewelry Company filed its petition against Savelle Jewelry Company of Albany, Inc., to enjoin the defendant from the use of the plaintiff's trade name, "Citizens." It was alleged: The plaintiff was incorporated in the Superior Court of Fulton County on September 1, 1959, under the name "Citizens Jewelry Company," and is successor in title to the business conducted since 1949 under the trade name of "Citizens Jewelry Company." The plaintiff and its predecessor in title have carried on a business under the trade name "Citizens" continuously since 1949, both within and without the State of Georgia. The plaintiff at all times has been engaged in the business of a discount house offering such items as jewelry, appliances, and general merchandise, having its principal office and place of business in Atlanta, Fulton County, Georgia. Since the year 1949 the plaintiff has advertised extensively in newspapers and other printed media having a general circulation in the State, and has used radio and television advertising extensively. The plaintiff has printed a catalogue twice yearly of its merchandise, which catalogue has been, and continues to be, mailed throughout the State of Georgia and the Southeast, including the Albany area, where 750 families receive its mail order catalogues. In various advertising media the plaintiff has advertised that it is the "South's largest discount house," which words appear on the marquee sign attached to the plaintiff's principal place of doing business in the City of Atlanta. The plaintiff has expended many thousands of dollars in advertising its name and business to the people of Georgia and the Southeast under the name and style of "Citizens Jewelry Company," as well as the name of "Citizens," and as a result thereof the name "Citizens" has become generally known throughout the State, and has become so extensively known in the minds of the buying public that the plaintiff's business needs no further identification. "As a result of merchandising policies and through the advertising media of newspapers, radio, television and printed catalogues and pamphlets mailed and otherwise distributed throughout the State of Georgia by plaintiff, plaintiff has enjoyed a highly successful business operation and its name has become known and referred to generally in the trade and by the buying public simply as `Citizens,' and the name `Citizens' has come to identify plaintiff's business exclusively in the trade and in the minds of the buying public and thereby, the name `Citizens' has acquired a secondary meaning." The plaintiff has enjoyed a successful business operation in the Albany area and for several years has had more than 200 active customers and numerous other casual customers, in the area, who make purchases of its merchandise by catalogue and through one of its salesmen, who makes at least three trips each year into the Albany area. The defendant is a Georgia corporation located in Dougherty County with its principal office and place of business located therein. Around January 1, 1962, the defendant opened a store engaged in the business of a discount house selling to the public items of jewelry, appliances, and general merchandise identical to the business of the plaintiff, the business being located at 210 Tarver Avenue in the City of Albany, under the trade name and trade style of "Citizens Wholesale Discount Company." For several months the identical business, located at 111 Broad Street in Albany, under the name "Savelle Jewelry Company" and "Savelle," but on July 5, 1962, and on July 11, 1962, the defendant announced in the Albany Herald and in other advertising media that "Savelle Liquidates... Citizens Takes Over," when in fact Savelle was not liquidating, but merely changing its name and trade style to "Citizens Wholesale Discount Company." Upon learning of the defendant's use of the trade name and trade style "Citizens Wholesale Discount Company," on February 9, 1962, the plaintiff through its attorneys protested, and advised the defendant that the use by it of the name "Citizens" under the circumstances would constitute an unfair trade practice. Again on July 23, 1962, the plaintiff protested to the defendant the use of the plaintiff's name by the defendant. The use by the defendant of the trade name and trade style "Citizens Wholesale Discount Company" and "Citizens" has deceived and confused the buying public into believing that the defendant's business is that of the plaintiff, and the continued use of the name by the defendant will perpetuate the deceit. The selection of the trade name "Citizens Wholesale Discount Company" by the defendant was for the fraudulent, illegal, and unfair purpose of capitalizing on the benefits of the advertising, reputation, goodwill, and name of the plaintiff, and for the purpose of deceiving, misleading, and confusing the public. If the defendant is permitted to continue to use the trade name and trade style "Citizens Wholesale Discount Company" and "Citizens," it will benefit from the advertising, reputation, and goodwill of the plaintiff, to which the plaintiff alone is entitled.
The general demurrer of the defendant to the petition was sustained, and the exception is to that judgment.
It is the law of this State that words or names which have a primary meaning of their own, may by long use in connection with a business or trade be understood by the public as designating the goods, service, or business of a particular trader. This is what is known as the doctrine of secondary meaning. "A court of equity will enjoin the use of such names by a competitor, upon the principle of unfair competition." Saunders System Atlanta Co. v. Drive It Yourself Co. of Ga., 158 Ga. 1 (2a) ( 123 S.E. 132); Rome Machine c. Co. v. Davis Foundry c. Works, 135 Ga. 17 (2) ( 68 S.E. 800). The Georgia rule, known as the doctrine of secondary meaning, is the general rule in this country. See Coca-Cola Co. v. Koke Co., 254 U.S. 143 ( 41 S.C. 113, 65 LE 189); Armstrong Paint Varnish Works v. NuEnamel Corp., 305 U.S. 315 ( 59 S.C. 191, 83 LE 195); 52 Am. Jur. 554, Trademarks, etc., § 72; 87 CJS 355, Trade-Marks, etc., § 104; 150 ALR 1067.
In the present case the plaintiff alleged facts to show that its name "Citizens" has acquired a secondary meaning representative of its goods and merchandise, and that the use of its name "Citizens" by the defendant is for the fraudulent purpose of deceiving and misleading the public, and constitutes an unfair trade practice.
Counsel for the defendant have not cited any case (nor has our search revealed one) where this court has approved a judgment sustaining a general demurrer in an action for infringement on a trade name where facts were alleged to show that the plaintiff's name had acquired a secondary meaning and the allegations otherwise supported the cause of action. In Gano v. Gano, 203 Ga. 637 ( 47 S.E.2d 741), as shown by the opinion in that case, the plaintiff failed to allege facts to show that its name had acquired a secondary meaning. The decisions of this court in First Federal Savings c. Assn. v. First Finance c. Corp., 207 Ga. 695 ( 64 S.E.2d 58), and Fraser v. Singer, 211 Ga. 26 ( 83 S.E.2d 599), were not based upon the doctrine of secondary meaning. Secondary meaning was in issue in Atlanta Paper Co. v. Jacksonville Paper Co., 184 Ga. 205 ( 190 S.E. 777), where there was a jury trial.
In the present case the petition alleges a cause of action and it was error to sustain the general demurrer.
Judgment reversed. All the Justices concur, except Mobley, J., who dissents.