System 99 v. System 101

Opinion

HASTINGS, J. This is an appeal by the plaintiff and appellant, System 99, a California corporation, from a preliminary injunction issued by the Superior Court of the State of California for the County of Los Angeles, restraining defendant and respondent, System 101, a California corporation, from using the word “System” except in conjunction with at least one other word.

Facts

In 1964, System 99 adopted a company logo consisting of a “99” on a highway shield. In 1967, the corporate name was changed to System 99,1 and that name has been used exclusively from that date to the present time. The combination of the logo type and the name “System 99” is shown on advertising pieces, rate cards and other literature, and considerable money has been spent in promoting the name and service mark. System 99 performs trucking services along the west coast, and particularly Highway 99, but now also uses Highway 101 along with other major highways.

Solvang Freight Lines, Inc., was incorporated in 1967, at which time it performed trucking services primarily on U. S. Highway 101 and did not directly compete with System 99. On June 14, 1971, said corporation [172]amended its articles of incorporation and changed its name to “System 101.” It then filed an application with the Public Utilities Commission, seeking authorization to conduct business under the new name.2 According to System 101, at the time System 99 adopted its trade name, it was not performing trucking services on Highway 101 and was actually using the services of System 101 as an interline or interchange carrier on said highway.

System 99 commenced legal action, seeking to enjoin System 101 from using said name. It is not necessary in this opinion to set forth the various legal maneuvers, which have been lengthy and time consuming. Suffice it to say that on May 25, 1972, the preliminary injunction giving rise to this appeal was issued. The controlling words of the injunction are as follows: “. . . Defendant and its agents ... are enjoined and restrained from engaging in or performing, directly or indirectly, any and all of the following acts:

“(A) Infringing or using in any way that part of plaintiff’s trade name and service mark consisting of the word ‘System’ except in conjunction with at least one other word. The words together must be arranged so that the word ‘System’ is preceded by at least one other word which shall be of the same type or lettering and of the same design or style and color as the word ‘System.’ ”