The opinion of the court was delivered by: Tolin, District Judge.
The Complaint alleges that defendants' use of the trade-mark
"Smarkoff" for vodka infringes the following registered
trade-marks owned by plaintiff:
The words "Ste Pierre Smirnoff
Fls" and a picture of a crown Registration No. 309,865
The words "Pierre Smirnoff" Registration No. 326,253
Picture of a shield Registration No. 328,594
The words "Ste Pierre Smirnoff
Fls" and a picture of a crown Registration No. 330,899
The word "Smirnoffka" Registration No. 394,058
The word "Smirnoff" Registration No. 513,428
Unfair competition is also charged.
Plaintiff is a Connecticut corporation, organized January
12, 1939. It is the successor to a New York corporation of the
same name which was organized September 19, 1933.
Defendants are citizens and residents of California.
In 1818 a Mr. Pierre Smirnoff began to make and sell vodka
in Russia under his surname "Smirnoff". The business was
continued in Russia by his descendants under the "Smirnoff"
name. The "Smirnoff" vodka attained a considerable reputation
After the Bolshevik revolution the owners of the "Smirnoff"
business fled to Poland where they established a firm which
did business in Poland, France and elsewhere.
In August 1933, in consideration of a lump sum, the Polish
firm sold its rights for the United States of America to its
trade-marks, formulas and processes to Mr. Rudolph Kunett. Mr.
Kunett's rights were later transferred to the New York
predecessor of plaintiff.
Beginning in 1934, this predecessor New York corporation
began to sell "Smirnoff" vodka nationally, including sales in
The New York corporation secured Registration No. 330,899 on
December 17, 1935, under the former Trade-Mark Act of 1905,
which was replaced on July 5, 1947 by the Lanham Trade-Mark
Act of July 5, 1946 which went into effect on July 5, 1947, 15
U.S.C.A. § 1051 et seq.
The registered mark No. 330,899 displayed the corporate name
of the New York corporation, the picture of a crown, and the
pictures of four medals granted for the original Russian vodka
in 1877, 1882, 1886 and 1889. It also registered "Pierre
Smirnoff" as No. 326,253 on July 16, 1935 under the Trade-Mark
Act of March 19, 1920.
When plaintiff became the successor to the said corporation,
it secured an additional registration under the Act of
February 20, 1905. This registration was No. 394,058, issued
March 17, 1942 for "Smirnoffka".
From the beginning the domestic vodka of plaintiff and its
predecessor had been plainly marked and advertised as being of
During World War II defendants manufactured a vodka which
they sold under a trade-mark and name dissimilar to those
involved in this litigation. It enjoyed modest success in a
firmly established market wherein defendants also sold other
alcoholic beverages. During the war years there was difficulty
in obtaining high-grade distilling material and some of
defendants' established trade complained of a falling off of
good-will for defendants' vodka because of inferiority of the
product attributable to war conditions. After defendants
returned to their prior standard of product, they sought to
recapture such of the vodka market they had lost and to
re-establish complete good will with such as they had
retained. In aid of this project they renamed one of their
brands "Smarkoff". Defendants' testimony is that they coined
the name "Smarkoff" by combining parts of the names of two
Russian cities. As compared to plaintiff's open, extensive and
exclusive claim of exclusive right, defendants have used the
name "Smarkoff" only since May 25, 1948. It ...