doer." 69 It is now the settled rule that "the mere act of printing and selling labels in imitation of the complainant's might be innocent, and, without evidence of an illicit purpose, would not be a violation of the complainant's rights." 70 Judge Thayer, however, held that the court would presume fraudulent intent where counterfeit labels were manufactured and sold and advertised for sale by the defendant.71 Where a person induces a manufacturer to make for him goods marked with the trademark of a third person, the manufacturer can hold him liable for all money paid and expense incurred by the manufacturer in compromising a suit brought against him by the owner of the trademark.72 Where both parties are in a similar business, one will be enjoined from buying up the empty bottles or other packages used by the other.73 Where a suit against a manufacturer using an infringing carton had been compromised, the plaintiff releasing all claims. against the defendant's customers, a subsequent suit against 69-Colman v. Crump, 70 N. Y. 573-578; affirming s. c., 40 N. Y. Super. Ct. (8 J. & S.) 548; Seb. 579. The court of appeals in this case further says (per Allen, J.): "It is an infraction of that right (i. e., the right to a trademark) to print or manufacture, or put on the market for sale and sell for use, upon articles of merchandise of the same class as those upon which it is used by the proprietor, any device or symbol which by its resemblance to the established trademark will be liable to deceive the public and lead to the purchase and use of that which is not the manufacture of the proprietor, believing it to be his." From which Mr. Cox makes this deduction: "The distinction would seem to be that where the facts of the case show that the printer of the labels contemplated their use upon goods not made by the owner of the mark, the court will interfere whatever the intent; but where the purpose was that they should be honestly used in such manner as to be tantamount to an application of the mark by its owner, the courts will decline to interfere." Note to Farina v. Silverlock, Cox, Manual, 130. 70-Wallace, J., in De Kuyper v. Witteman, 23 Fed. Rep. 871; Cox, Manual, 694. 71-Carson v. Ury, 39 Fed. Rep. 777; Cox, Manual, 709. See also Von Mumm v. Wittemann, 85 Fed. Rep. 966. 72-Dixon v. Fawcus, 9 W. R. 414; 3 Ell. & Ell. 537; 30 L. J. Q. B. 137; 7 Jur. N. S. 895; 3 L. T. N. S. 693; Seb. 194. 73-Evans v. Von Laer, 32 Fed. Rep. 153; Sawyer Crystal Blue Co. v. Hubbard, 32 Fed. Rep. 388. the manufacturer of the cartons used by the first defendant was dismissed as inequitable." $123. Of counterfeiting trademarks.-A counterfeit mark is one which is a facsimile (e. g., an exact copy or reproduction) of a genuine trademark. Counterfeiting may be accomplished either by using forged facsimile trademarks, or by using genuine trademarks upon goods substituted for those of the owners of the trademarks; as by refilling bottles, boxes or other packages bearing trademarks after their original contents have been consumed. Infringement or unfair competition in advertising matter.In an English case the plaintiff sued for infringement of a registered mark consisting of a whiskey label bearing a map of Ireland; defendants were charged to infringe by use in advertising matter, only, of a map of Ireland in combination with other features, the map being a prominent feature. The court in dismissing the action said "once it is determined that the defendants' advertisements are not merely copies of the plaintiff's registered trademark there seems to be an end of the plaintiff's case, because in every case of infringement, except that of mere copying, there must be either deception in fact or the reasonable probability of deception." 74a There may be close resemblance of advertising matter without unfair competition.74b $124. Of imitation of trademarks.-An imitation is a mark so contrived as to resemble an established trademark. The imitation is actionable only in cases where, upon comparison, the court determines that the difference is "merely colorable," " or as stated by Vice-Chancellor Wood: "In every case the court must ascertain whether the differences are made bona fide in order to distinguish the one article from them, whether the resemblances and the differences are such as V. 74-Hillside Chemical Co. Munson, 146 Fed. Rep. 198. 74a-O'Connor, M. R., in Duncan Alerdice & Co., Ltd., v. E. & J. Burke, Ltd., 33 R. P. C. 341, 355; citing Hennessy v. Keating, 25 R. P. C. 125 (1908); 1 Ir. R. 43. 74b Schulte v. Colorado Tire & Leather Co., 259 Fed. Rep. 562, 564, C. C. A. 8. 75-Davis v. Kendall, 2 R. I. 566; Cox, 112; Seb. 103. naturally arise from the necessity of the case, or whether, on the other hand, the differences are simply colorable." " § 125. Colorable imitation.-As to what constitutes colorable imitation, some apparent diversity of opinion arises in the cases. In the opinion of Vice-Chancellor Wood from which we have quoted in the foregoing section, he says: "Resemblance is a circumstance which is of primary importance for the court to consider, because if the court finds, as it almost invariably does find in such cases as this, that there is no reason for the resemblance, excepting for the purpose of misleading, it will infer that the resemblance is adopted for the purpose of misleading."" But this dictum is not convincing, because if the resemblance is not, in fact, calculated to mislead, the fact that it was adopted for the purpose of misleading is wholly immaterial. Thus it has been held repeatedly that where there is no imitation of the essential part of the trademark, a resemblance in particulars common to the trade is not an infringement." 78 § 126. The test of probability of deception.-The variance of opinion as to what constitutes colorable imitation arises from the standards adopted by the different courts as to the tendency of the alleged infringement to deceive the cautious, ordinary or unwary customer. It is never necessary to establish actual deception. Lord Westbury said that it was not "necessary for relief in equity that proof should be given of persons having been actually deceived, and having bought goods with the defendant's mark under the belief that the were the manufacture of the plaintiffs, provided the court 76-Taylor v. Taylor, 2 Eq. Rep. 290; 23 L. J. Ch. 255; 22 L. T. 271; Seb. 124. 77-Taylor v. Taylor, supra. 78-Portuondo v. Monne, 28 Fed. Rep. 16; Price & Steuart, 1115; Ball v. Siegel, 116 Ill. 137; 56 Am. Rep. 766; In re Horsburgh, 53 L. J. Ch. 237; Tucker Mfg. Co. v. Boy ington, 9 Off. Gaz. 455; Fed, Case No. 14,229; Thornton v. Crowley, 47 N. Y. Super. Ct. 527; Price & Steuart, 455; Coats v. Merrick, 36 Fed. Rep. 324; 45 Off. Gaz. 347; Marshall v. Hawkins, 4 N. Z. L. R. Sup. Ct. 59; Stachelberg v. Ponce (2), 128 U. S. 686; 32 L. Ed. 569. be satisfied that the resemblance is such as would be likely to cause the one mark to be mistaken for the other. 19 79 Accordingly it is no defense to show that all the persons purchasing goods bearing the simulated mark were aware that the goods were not of the plaintiff's manufacture,80 or that the maker of the spurious goods, or the jobber who sells them to retailers, informs those who purchase that the article is spurious or an imitation; 81 the reason being that there is no assurance that the retailer will give the same cautionary information to his customers.82 So where the defendant claimed that the goods bearing the false mark were for his own family's use, he was enjoined; 83 and where the defendants contended that they did not deal in the goods bearing the fraudulent mark, but only acted as forwarding agents, they were enjoined.84 It is always the presumption, however, that the consuming purchaser has no opportunity of comparing the conflicting marks, and this presumption is an important element in passing upon the probability of the defendant's mark effecting deception.85 79-Edelsten v. Edelsten, 1 DeG. J. & S. 200; 9 Jur. N. S. 479; 11 W. R. 328; 7 L. T. N. S. 768; 1 N. R. 300; and to the same effect, see Monro v. Smith, 13 N. Y. Sup. 708; Cox, Manual, 724; Dixon v. Fawcus, 3 Ell. & Ell. 537; 30 L. J. Q. B. 137; 7 Jur. N. S. 895; 3 L. T. N. S. 693; 9 W. R. 414; In re Christiansen's Trademark, 3 R. P. C. 54; Cartmell, 95; Compania General de Tobacos v. Rehder, 5 R. P. C. 61; Cartmell, 103; Orr-Ewing v. Johnston, 7 A. C. 219; 51 L. J. Ch. 797; 46 L. T. 216; 30 W. R. 417; Cartmell, 249; Seb. 646; Reddaway & Co. v. Bentham Hemp Spinning Co., 9 R. P. C. 503 (1892); 2 Q. B. 639; 67 L. T. 301; Braham v. Bustard, 9 L. T. N. S. 199; 1 Hem. & M. 427; 11 W. R. 1061; 2 N. R. 572; Seb. 226; Filley v. Fassett, 44 Mo. 168; Seb. 313; Abbott v. Bakers & Confectioners Tea Assn., W. N. 1871, p. 207; W. N. 1872, p. 31; Seb. 379; Osgood v. Allen, Fed. Case 80-Edelsten v. Edelsten, 9 Jur. 81-Coats v. Holbrook, 2 Sandf. Ch. 586; Seb. 79. 82-Chappell v. Davidson, 2 K. & J. 123; 8 DeG. M. & G. 1; Seb. 136. 83-Upmann v. Forester, L. R. 24 Ch. D. 231; 52 L. J. Ch. 946; 49 L. T. 122; 32 W. R. 28; Cartmell, 331. 84-Upmann v. Elkan, L. R. 12 Eq. 140; 40 L. J. Ch. 475; 24 L. T. N. S. 869; 19 W. R. 867; L. R. 7 Ch. 130; 41 L. J. Ch. 246; 25 L. T. N. S. 813; 20 W. R. 131; Seb. 369. 85-Pillsbury v. Pillsbury-Washburn Co., 64 Fed. Rep. 841; 12 C. There is the further presumption which has been recognized judicially, that the consuming purchaser is "apt to act quickly, and is therefore not expected to exercise a high degree of caution."' se Among other statements of the rule as to the necessary probability of deception in cases of unfair competition we find the following: "It is sufficient if the proofs show that the actual and probable result of the use of defendant's label will be to deceive the ordinary purchaser making purchases in the ordinary way. Actual intention to mislead the public need not be proved.87a 99 87 § 127. The degree of resemblance which constitutes infringement.-It follows from the principles which we have reviewed that the question of infringement may be treated from the standpoint of the degree of approximation between the conflicting marks. The rule for applying this test has been thus expressed: "What degree of resemblance is necessary to constitute an infringement is incapable of exact definition, as applicable to all cases. All that courts of justice can do in that regard is to say that no trader can adopt a trademark so resembling that of another trader as that ordinary purchasers buying with ordinary caution are likely to be misled. Where the similarity is sufficient to create a false impression in the public mind, and is of a character to mislead and deceive the ordinary purchaser in the exercise of ordinary care and caution in such matters, it is sufficient to give the injured party a right to redress."' 88 C. A. 432; Manufacturing Co. v. 86-Paris Medicine Co. v. W. H. Hill Co., 102 Fed. Rep. 148-151; 42 C. C. A. 227. 87-Hazel, J., in Aluminum Cooking Utensil Co. v. National Aluminum Works, 226 Fed. Rep. 815, 817. "In determining whether the brand used by the defendant is an infringement of plaintiff's trademark, this court is not disposed to consider or apply any nice, technical distinctions, such as an artist's eye would readily perceive, but rather only such marked differences as would be readily apparent to the ordinary purchaser of horse feeds." Donahue, J., in Peters Mill Co. v. International Feed Co., 262 Fed. Rep. 336, 338, C. C. A. 6. 87a-Bissell Chilled Plow Works v. T. M. Bissell Plow Co., 121 Fed. Rep. 357, 372; Trappey v. McIlhenny Co., 281 Fed. Rep. 23, 27, C. C. A. 5. 88-McAdam, J., in Jerome v. Johnson, 59 N. Y. Supp. 859; quoting the first two sentences from |