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injunction. It must be established that the defendant is unfairly competing with the plaintiff; his fraud must be proven directly or by inference. In a recent opinion Judge Baker says: "While the idea of fraud or imposition lies at the foundation of the law of technical trademarks as well as the law of unfair competition, it must be borne in mind that fraud may rest in actual intent shown by the evidence, or may be inferred from the circumstances, or may be conclusively presumed from the act itself. In the case of unfair competition the fraudulent intent must be shown by the evidence, or be inferable from the circumstances, while in the case of the use by one trader of the trademark or trade symbol of a rival trader, fraud will be presumed from its wrongful use." 54

And the United States Supreme Court states the rule to be that "the deceitful representation must be made out or be clearly inferable from the circumstances.'' 55

"Where an established business with a tradename representing goodwill is drawn into competition by a recent rival with a name so similar and so displayed as to be likely to mislead the former's customers and the public, the denial of a purpose to do so has little weight in the defense of a suit to prevent such

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"An inference to this effect is justified where, on the party's

53a-Shredded Wheat Co. V. Humphrey Cornell Co., 250 Fed. Rep. 960, 163 C. C. A. 210; Harvey Hubbell, Inc., v. General Electric Co., 262 Fed. Rep. 155, 162.

54-Church & Dwight Co. v. Russ, 99 Fed. Rep. 276-279. To the same effect, see Lamont, Corliss & Co. v. Hershey, 140 Fed. Rep. 763; American Clay Mfg. Co. v. American Clay Mfg. Co., 198 Pa. 189; 47 Atl Rep. 936. "This is not a case of unfair competition, but it involves only a pure common law trademark. In such case defendant's good faith is immaterial as respects the right to injunction." Knappen, J., in DeVoe Snuff Co. v.

Wolff, 124 C. C. A. 302; 206 Fed.
Rep. 420, 424.

The good faith of the defendant in selecting and using an infringing name has a bearing on the question of punitive damages but has no bearing on actual damages or the plaintiff's right to injunction. Gehl v. Hebe Co., 276 Fed. Rep. 271, C. C. A. 7.

55-Lawrence Mfg. Co. v. Ten nessee Mfg. Co., 138 U. S. 537-551; 34 L. Ed. 997; followed in Gorham Mfg. Co. v. Emery-Bird-Thayer Co., 43 C. C. A. 511; 104 Fed. Rep. 243, 244.

55a-Per Curian, Carter Transfer & Storage Co. v. Carter, 106 Neb. 531, 184 N. W. Rep. 113.

attention being called to the subject, he unreasonably persists in holding to the imitative dress which he has given to his goods, however innocently intended, at the outstart." 56

The bill need not charge in terms that the imitation is designed or fraudulent.56a

§ 119. What persons liable.-With the establishment of the rule that mala mens need not be shown,57 it followed that liability for infringement was extended to many persons who, in the absence of that doctrine, could not be reached by the owner of the pirated mark. "All persons in any way connected with the infringement of a trademark are responsible to the owner for the injury done to his rights.'

79 58

§ 120. Of labels, generally. The dress of a commercial article usually embodies a label. The consequence is that the cases refer to labels, frequently, as though they were a distinct factor in the law of unfair competition, to be treated as an entity, regardless of the presence or absence of trademark material upon them. Thus Vice-Chancellor Van Fleet, in the Court of Chancery of New Jersey, has said: "If we speak with accuracy, these labels can not be called 'trademarks,' but they serve substantially the same purpose. They are the marks by which the complainant's goods are distinguished in the markets from all like goods put upon the market by other persons, and are, for that reason, according to many decisions, just as much under the protection of the law as trademarks are. The law protects them for the same reasons, and in exactly the same way, that it does trademarks. leading principle of the law on this subject is that no man should be permitted to sell his goods on the reputation which another dealer has established in the market for his goods, and this principle applies with

56-Archbald, J., in Lamont, Corliss & Co. v. Hershey, 140 Fed. Rep. 763, 764.

56a-Boston Shoe Shop v. McBroom Shoe Shop, 196 Ala. 262, 72 So. Rep. 102, 104.

The

equal force to the case where

57-Wotherspoon v. Currie, L. R. 5 H. L. 508-517; Saxlehner v. Siegel-Cooper Co., 179 U. S. 42; 45 L. Ed. 77.

58-Hawley, J., in Hennessy v. Herrmann, 89 Fed. Rep. 669-670.

the goods of such other dealer are known in the market by a label, as it does to the case where they are known by a mark which is strictly a trademark. No dealer can lawfully adopt the label of another dealer, or one so near like it as to lead the public to suppose that the article to which it is affixed was put upon the market by such other dealer." 59

9960

The duty is incumbent upon one entering into competition with an established business to make "an honest effort to accentuate differences in labels and wrappers. A label used on a patented article does not become publici juris on the expiration of the patent.1

§ 121. Of packages, generally.-We have heretofore (Sec. 54) noted those technical objections which prevent the package or wrapping in which the merchandise is sold from being a trademark. It is evident, from the cases referred to in the next preceding section, that the doctrines of unfair competition apply to packages as to every other form of commercial dress in which merchandise is dealt with commercially.

The package usually embraces a label; or it may be a carton, or other package, upon which the designs, emblems, or words selected by the originator of the package are directly imprinted. However it may be composed and by whatever means the emblems upon it are affixed, they can not be protected or recognized in equity except when, and to the extent that, they are distinguishing. To be distinguishing, they must not be common to the trade.

59-Wirtz v. Eagle Bottling Co., 50 N. J. Eq. 164; 24 Atl. Rep. 658; following Miller Tobacco Manufactory Co. v. Commerce, 45 N. J. Law, 18, 24. To the same effect, see American Brewing Co. v. Bienville Brewery, 153 Fed. Rep. 615, 619; Anheuser-Busch Brewing Assn. v. Clarke, 26 Fed. Rep. 410; R. J. Reynolds Tobacco Co. V. Allen Bros. Tobacco Co., 151 Fed. Rep. 819; Clay v. Khne, 149 Fed. Rep. 912 (where the marks involved were cigar bands); DeLong Hook & Eye Co. v. Francis Hook & Eye Co. (2), 139 Fed. Rep. 146; DeLong Hook &

Eye Co. v. Francis Hook & Eye Co., 75 C. C. A. 484; 144 Fed. Rep. 682 (where the hooks and eyes of the respective parties were mounted for sale by being stitched on cards).

A blue label design for stove polish, enjoined for described resemblances in Nekritz v. Klein, 278 Fed. Rep. 687.

60-Lacombe, J., in Saxlehner v. Graef, 81 Fed. Rep. 704.

61-Centaur Co. v. Killenberger, 87 Fed. Rep. 725, 726.

61a-Societe Anonyme Benedictine v. Puziello, 250 Fed. Rep. 928.

This principle applies to the component parts visible upon the exterior of the package, as well as to what the English courts have comprehensively called the "get-up" of the pack

age.

Judge Lowell, in a carefully considered opinion,62 quoted the following applications of this rule as applied in England: "He (the plaintiff) must make out, not that the defendant's are like his by reason of those features which are common to them and other people, but he must make out that the defendant's are like his by reason of something peculiar to him, and by reason of the defendant having adopted some mark, or device, or label, or something of that kind, which distinguishes the plaintiff's from other goods which have, like his, the features common to the trade. Unless the plaintiff can bring his case up to that, he fails." 63

"The evidence is very strong that one tin may be mistaken for the other, very likely; but why? Because of the features common to them and common to all." 64

"The only question you have then to consider is whether the defendant's get-up is so like the plaintiffs' as to be calculated to be mistaken for it. But when, as in this case and in the last, what is called the plaintiffs' get-up consists of two totally different things combined, namely, a get-up common to the trade, and a distinctive feature affixed or added to the common feature, then what you have to consider is not whether the defendant's get-up is like the plaintiffs' as regards the common features, but whether that which specially distinguishes the plaintiffs' has been taken by the defendants." 65

Ensemble. Where no single detail of label or package is controlling, the general effect may be so nearly identical as to be

62-United States Tobacco Co. v. McGreenery, 144 Fed. Rep. 531, 532. The New York courts have held that in an action to restrain simulation of a package "there must be an imitation of something that can legally be appropriated as a trademark." Rapallo, J., in Enoch Morgan's Sons Co. v. Troxell, 89 N. Y. 292. Quoted and followed

in Brown v. Doscher, 147 N. Y. 647, 42 N. E. Rep, 268. This is not in accord with the overwhelming weight of authority.

63-Payton v. Snelling, 17 R. P. C. 48, 52.

64-Payton v. Snelling, 17 R. P. C. 628.

58.

65-Payton v. Ward, 17 R. P. C.

persuasive of the intent to defraud. "The test is to found in the ensemble. 65a

Obviously the judgment based on general effect leads to diametrically opposite opinions. In the case cited below the labels of the respective parties are exhibited in color, and the lower court seems to the writer to have been fully justified in granting the injunctive decree afterward reversed.65b

§ 122. The engraver or manufacturer of the label.-The rule that equity will enjoin one who participates in the production of an infringing mark or label was first established in Guinness v. Ullmer, in 1847, in which case the plaintiffs were brewers of porter, and the defendants, who were engravers, engraved plates to be used in printing labels in imitation of the plaintiff's label. This decision was followed in 1855 by a case in which a printer printed and sold labels which were facsimiles of the plaintiff's labels, and the piracy was enjoined; and the rule is now extended to include one who deals in counterfeit labels, though he does not manufacture them. 68

66

In 1877 a label printer was enjoined by the Superior Court of New York from the manufacture of labels which were colorable imitations of plaintiff's. In affirming the decision of the lower court the New York Court of Appeals announced that it is not necessary in such a case "to establish a guilty knowledge or fraudulent intent on the part of the wrong

65a-Thum Co. v. Dickinson, 245 Fed. Rep. 609, 613, 158 C. C. A. 37, 41. See to same effect Shredded Wheat Co. v. Humphrey Cornell Co., 244 Fed. Rep. 508, 518.

65b-Cantrell & Cochrane v. Hygeia Distilled Water Co., 283 Fed. Rep. 400, 403, C. C. A. 2.

66-Guinness v. Ullmer, 10 L. T. 127; Seb. 89.

67-Farina v. Silverlock, 1 K. & J. 509; 3 Eq. Rep. 883; 24 L. J. Ch. 632; 25 L. T. 211; 3 W. R. 532; 6 DeG. M. & G. 214; 26 L. J. Ch. 11; 2 Jur. N. S. 1008; 27 L. T. 277; 4

W. R. 731; 52 Leg. Obs. 342; 30 L. T. 242; 31 L. T. 99; 4 K & J. 650; Seb. 130. See also to the same effect, Colman v. Crump, 70 N. Y. 573; Cuervo v. Jacob Henkell Co., 60 Off. Gaz. 440; 50 Fed. Rep. 471; Moxie Nerve Food Co. v. Beach, 33 Fed. Rep. 248; De Kuyper v. Witteman, 23 Fed. Rep. 871; Hildreth V. Sparks Mfg. Co., 99 Fed. Rep. 484.

68-Hennessy v. Herrmann, 89 Fed. Rep. 669; Cantrell & Cochrane, Ltd., v. Wittemann, 109 Fed. Rep. 82.

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