trolling importance. Any system of registration, to be effective, ought to provide for the registration of marks in the exact coloring which it is intended to apply to the mark in use. After the English Court of Appeal had discussed this question 29 it was enacted by Parliament that registration might be in color.30

In the consideration of cases of alleged unfair competition involving the color of a product, the fact that the color is decorative and fanciful, and "nonfunctional, weighty element in restraining alleged imitation.31

may be a

In this connection the courts have held that where the essence of a mark is its particular color, a similar mark of a wholly different color can not indicate the same origin.31a

§ 117. Infringement of size and form-Distinctive dress.The decision of the leading case, Cook & Bernheimer Co. v. Ross,32 by Judge Lacombe in the Circuit Court of the United States for the Southern District of New York, marked a distinct advance in the scientific development of the law of unfair competition. The complainant was a corporation which had acquired the sole right to bottle, at the distillery, the "Mount Vernon Rye" whiskey distilled by the Hannis Distilling Company, in which bottling the complainant used a bottle of distinctive form. The facts more fully appear in the opinion, a portion of which is as follows:

"Complainant, of course, has no exclusive right to the name 'Mount Vernon,' and the labels of defendant are in no sense

29-In re Worthington & Co.'s Trademark, L. R. 14 Ch. D. 8-18. See also Nuthall v. Vining, 28 W. R. 330; Cartmell, 248.

30-The Patents, Designs and Trademarks Act, 1883, § 67. It has been held, under this section, that the mark registered in color must be distinctive apart from its color; and as said by Kay, J.: "You may register a mark, which is otherwise distinctive in color, and that gives you the right to use it in any color you like; but you can not register a mark of which the only distinction is the use of a color, because, practically, under the terms of the act, that would

give you a monopoly of all the colors of the rainbow." In re Hanson's Trademark, 5 R. P. C. 130; L. R. 37 Ch. D. 112; 57 L. J. Ch. 173; 57 L. T. N. S. 859; 36 W. R. 134; Cartmell, 146.

31-Coca-Cola Co. v. Gay-Ola Co., 200 Fed. Rep. 720; 119 C. C. A. 164; Same v. Same, 211 Fed. Rep. 942; 128 C. C. A. 440; Hiram Walker & Sons v. Grubman, 222 Fed. Rep. 478, 479.

31a-Dunhill v. Bartlett & Bickley, 39 R. P. C. 426, 443.

32-73 Fed. Rep. 203. A similar case, Societe Anonyme Benedictine v. Puziello, 250 Fed. Rep. 928.

an imitation of the labels of the complainant. Complainant's case rests solely on the form of package, which it claims has been so imitated as to make out a case of unfair competition.

"Undoubtedly, a large part of the consumption of whiskey is in public drinking places, where it is dispensed to the consumer from the opened bottle. It is always desirable, therefore, for a dealer who wishes to push the sale of his own goods on their own merits to devise, if he can, some earmark more permanent than a pasted label to distinguish them. Complainant's predecessors accordingly, in March, 1890, adopted a brown glass bottle of a peculiar square shape, unlike any that had theretofore been used for bottling whiskey, or, indeed, so far as the evidence shows for any other purpose. It is a form of package well calculated by its novelty to catch the eye, and be retained in the remembrance of any one who has once seen it. In order to develop and extend the business they expected to control under their agreement with the Hannis Distilling Company, complainant and its predecessors have expended more than $50,000 in advertising its said bottling. In all these advertisements the peculiar square-shaped bottle is the chief and most prominent feature. It is not surprising, therefore, to find it stated in the moving affidavits that the shape and general appearance of the bottle has become to be principally, if not exclusively, relied on by ordinary purchasers as the means of identifying this bottling of Mount Vernon whiskey from all other bottlings, the purity of which is not guaranteed by the distillers, but only by the bottler. Complainant's bottling seems to have acquired a high reputation, large and increasing quantities of it being yearly sold, at a price in excess of that obtained by other bottlers of Mount Vernon whiskey.

"About December, 1895, defendants, who had been dealing in Mount Vernon whiskey for many years, began first to put it up in bottles, which are Chinese copies of the peculiar squareshaped, bulging-necked bottles of the complainant. Of course they aver that this was without any intention to deceive the public, or to palm off defendants' goods for complainant's.' They account for the sudden appearance of their output of Mount Vernon whiskey in this form as follows: 'There was a

demand for Mount Vernon whiskey along in November last, and defendants sought a convenient and useful package in which to place their product upon the market, and purchased a stock of bottles of the square form for that purpose, without making a special design therefor, and in the open market;' and allege that 'such bottles can be purchased of reputable bottle manufacturers from molds used for some time last past.' This last averment may well be true. The industry of defendants' counsel has marshaled here an array of square-shaped bottles filled with whiskey, which shows that for some time imitations of complainant's bottle have been on the market. But there is not a word of proof to trace back any one of these bottles to a period anterior to the adoption of the square shape by complainant's predecessor as a distinctive form of package. Despite defendants' denials, and they only deny intent to deceive the public, not intent to use a form of package just like complainant's, the court can not escape the conviction that they found the square-shaped bottle 'convenient and useful,' because it was calculated to increase the sale of their goods; and that such increase, if increase there be, is due to the circumstances that the purchasers from defendants have a reasonable expectation that the ultimate consumer, deceived by the shape, will mistake the bottle for one of complainant's. This is unfair competition within the authorities, and should be restrained. Injunction pendente lite is granted against the further use of the square-shaped, bulgingnecked bottle as a package for Mount Vernon whiskey."

There never existed a valid reason why a manufacturer should not be protected in the use of a package so peculiar and distinctive in size and shape as not to interfere with the packing methods of the trade generally 32a In this respect the

32a-The distinction appears to lie in the novelty of the package disregarding those elements of its get-up common or open to the trade. Ambassador Chocolate Co. v. Chocolate Products Co., 280 Fed. Rep. 409.

"The complainant has no exclusive right to the red color, nor to

the size and shape of the packages, nor to the use of gilt letters on them. These things are undeniably open to the trade." American Tobacco Co. v. Globe Tobacco Co. (C. C.) 193 Fed. Rep. 1015, at page 1017; Diamond Match Co. v. Saginaw Match Co., 142 Fed. Rep. 727, 74 C. C. A. 59.

33

law of trademarks fell short in the recognition it should have extended to tradesmen, who, like the Cook & Bernheimer Company in the case last mentioned, chose to distinguish their wares by distinctive packing. On account of this deficiency in the law, occasional hardships were inflicted upon honest tradesmen and the dishonest competitor went unwhipped of justice. But the amount of fraudulent trading effected by means of this form of imitation was sure to evoke the ruling of the leading case in time, and there are numbers of other cases in which an imitation of size and form has been a moving ground of injunction.34 The remedy has in some cases been held to be dependent upon proof that the public has actually been deceived by the defendant's package.35 It has been expressly held, indeed, that "there is no unfair competition, apart from the infringement of a patent or trademark, unless the

"All that complainant can claim in this case is that it was the first to put milk chocolate in a red box of this shade. That fact does not prevent anybody else from using a red box, provided proper distinctive marks are placed thereon, SO as to distinguish the product from that of the pioneer."

Carpenter, J., in A. G. Morse Co. v. Walter M. Lowney Co., 256 Fed. Rep. 935, 941.

"The defendant is not responsible for the fact that tricky retailers represent its manufacture as that of complainant, knowing better, provided defendant has done its legal duty in distinguishing its own product from that of complainant." Rathbone v. Champion Co., 189 Fed. Rep. 26, 110 C. C. A. 596, 37 L. R. A. (N.S.) 258; Schlitz Brewing Co. v. Houston Co., 241 Fed. Rep. 817, 154 C. C. A. 519.

The copying of plaintiff's package is often a controlling fact. Ury v. Mazer Cigar Mfg. Co., 253 Fed. Rep. 551, C. C. A. 8.

Where the imitation of get-up is fraudulent the court will not scrutinize small differences. Hattingh's Yeast, Ltd., v. Friedlin, So. African L. R. (Transvaal Div.) 1919, 417.

33-Enoch Morgan's Sons Co. v. Troxell, 89 N. Y. Supp. 292.

34-Charles E. Hires Co. v. Consumers' Co., 100 Fed. Rep. 809; Apollinaris Co. V. Brumler, Cox, Manual, 429; Hostetter v. Adams, 10 Fed. Rep. 838; Sawyer v. Kellogg, 7 Fed. Rep. 720; Sperry & Co. V. Percival Milling Co., 81 Cal. 252; Noera v. Williams Mfg. Co., 158 Mass. 110; Moxie Nerve Food Co. v. Baumbach, 32 Fed. Rep. 205; Kerry v. Toupin, 60 Fed. Rep. 272; Burt v. Smith, 71 Fed. Rep. 161; Hildreth v. McDonald, 164 Mass. 16; 49 Am. St. Rep. 440; Royal Baking Powder Co. v. Davis, 26 Fed. Rep. 293.

35-Hildreth v. D. S. McDonald Co., 164 Mass. 16; 41 N. E. Rep. 56; 49 Am. St. Rep. 440.

competing person so makes or marks his goods or conducts his business that purchasers of ordinary caution and prudence, and not those who are exceptionally dull, are likely to be misled into the belief that his goods are the goods of somebody else. But it is the probability of deception, and not proof that customers have actually been deceived, that controls or should control in all cases of unfair competition as well as in cases of technical trademark infringement. A learned English judge has asked: "Why should we be astute to say that (the defendant) can not succeed in doing what he is straining every nerve to do?" 37 Where the form and size of a package have become common to a trade, resemblance in either or both of these particulars is not actionable.38

There can be no monopoly in the capacity of containers in which merchandise is packed.38a

In all of this class of cases the general rule of trademark law applies, that it is immaterial whether the goods sold by the defendant are inferior or superior to those of the plaintiff. Thus in an early case Judge Morris said: "What we decide is that whether the complainant has a trademark or not, as he was the first to put up bluing for sale in the pecu-liarly shaped and labeled boxes adopted by him, and as his goods have become known to purchasers, and are bought as the goods of the complainant by reason of their peculiar shape, color and label, no person has the right to use the complainant's form of package, color or label, or any imitation thereof, in

36-Allen, J., in Dover Stamping Co. v. Fellows, 163 Mass. 191; 40 N. E. Rep. 105; 28 L. R. A. 448; 47 Am. St. Rep. 448; citing Gilman v. Hunnewell, 122 Mass. 139; Singer Mfg. Co. v. Wilson, 2 Ch. D. 434447; Brill v. Singer Mfg. Co., 41 Ohio St. 127; 52 Am. Rep. 74; Robertson v. Berry, 50 Md. 591; 33 Am. Rep. 328. To the same effect, Van Camp Packing Co. v. Cruikshanks Bros. Co., 90 Fed. Rep. 814; Von Mumm v. Witteman, 85 Fed. Rep. 966; affirmed, 91 Fed. Rep. 126; 33 C. C. A. 404.

37-Lindley, L. J., in Slazenger v. Feltham, 6 R. P. C. 538.

"Danger of injury is sufficient ground for the restraining arm of the court of equity." Manton, J., in Rice & Hutchins v. Vera Shoe Co., 290 Fed. Rep. 124, 127, C. C. A. 2.

38-Allen B. Wrisley Co. v. Geo. E. Rouse Soap Co., 87 Fed. Rep. 589.

38a-Empire Guano Co. v. Jefferson Fertilizer Co., 201 Ala. 277, 78 So. Rep. 53.