of guilty knowledge.22 And the fraudulent intention of the defendant must be shown in an action at law,23 or at least to support the recovery of punitive damages. 24 But the rule is fixed both in England and the United States that proof of fraudulent intent, or actual deception of the public, are alike unnecessary in actions in equity, in technical trademark cases; nor is it necessary in cases of trademark infringement or unfair competition to prove actual deception of purchasers where there is shown "a manifest liability to deception."'25 27 § 131. The manner of establishing fraudulent intent.-The inspection by the court of the two marks in controversy is the main test of the alleged resemblance,26 although the testimony of expert witnesses familiar with the trade and the habits of customers is of weight. So, for example, where the plaintiff's mark was a tin star, and the defendant's a tin buzz-saw, both affixed in use upon plug tobacco, the court could have small difficulty in inferring fraudulent intent.28 Among other matters considered by the courts as probative of the defendant's intent are false representations of securing awards at an exhibition;20 the fact that defendant, who adopted as a mark for his factory the words "Norfolk House," previously used by plaintiff, kept the publication of that name out of a city directory;30 and the 22-Moet v. Couston, 33 Beav. 578. See also Rose v. Loftus, 47 L. J. Ch. 576; Millington v. Fox, 3 Mylne & Cr. 338; Weed v. Peterson, 12 Abb. Pr. N. S. 178. 23-Edelsten v. Edelsten, supra. 24-Faber v. D'Utassey, 11 Abb. Pr. N. S. 399; Marsh v. Billings, 7 Cush. 322; Cox, 118. 25-Fuller v. Huff, 43 C. C. A. 453; 104 Fed. Rep. 141. "Thus the inquiry naturally arises: Did appellees' conduct in disposing of the machinery manufactured by it tend to or have the effect of passing the same to purchasers as the machinery manufactured by appellant? In order that this result be accomplished, it was not necessary that appellees or either of them actually take some affirmative action in this respect, or that they or either of them so intended, as actual deception was not necessary. If the name nder which appellees disposed of their machinery, together with the method of dispos 29 the ing of the same, was manifestly 26-Drummond V. Tinsley, 52 Mo. App. 10; Liggett & Myers Tob. Co. v. Finzer, 128 U. S. 182-184; 32 L. Ed. 395; Weyman v. Soder berg, 108 Fed. Rep. 63-65; Empire Guano Co. v. Jefferson Fertilizer Co., 201 Ala. 277, 78 So. Rep. 53. 27-Drummond v. Tinsley, supra. 28-Liggett & Myers Tob. Co. v. Sam Reid Tob. Co., 104 Mo. 53. 29-Cave v. Myers, Seton (4th Ed.), 238; Seb. 304. 30-Rodgers v. Rodgers, 31 L. T. N. S. 285; Seb. 442. circumstance that defendant removed his place of business into the same locality as the plaintiff,31 or is dealing in other fraudulent goods.3 32 The use and circulation of removal notices, "so closely similar as to be a deceptive imitation (of plaintiff's stationery), and * * so ambiguous in phrasing as to lead the unwary to believe that reference was made to the plaintiff, and not to the defendant, is unfair competition." 324 The use by a defendant of the words "sole agent,” may be considered as an evidence of fraud, where no agency exists, and there is similarity of dress.33 A curious instance of facts regarded as indicia of fraud is to be found in a case where a plaintiff whose name, originally "Dr. J. W. Trust," had been changed to "Dr. T. F. Gouraud," was the manufacturer of a cosmetic styled "Gouraud's Oriental Cream," and the defendants, his sons, who had retained the name Trust, engaged in the sale of a cosmetic which they named "Creme Orientale, by Dr. T. F. Gouraud's Sons; the court holding from these facts that the statement of the relationship, though truthful, was made with fraudulent intent.34 The use on defendant's label of fictitious medals of award has been treated as evidence of fraudulent intent.35 As most of these badges of fraud have been referred to by the courts because of their determining influence in cases of unfair competition, we will consider them at length in that 31-Elgin Nat. Watch Co. V. Illinois Watch Case Co., 89 Fed. Rep. 487, 488; reversed on other grounds, 35 C. C. A. 237; 94 Fed. Rep. 667; Fullwood v. Fullwood, (1), W. N. 1873, p. 93; W. N. 1873, p. 185; Seb. 42. See also to same effect, Lee v. Haley, 21 L. T. N. S. 546; 18 W. R. 181; L. R. 5 Ch. D. 155: 39 L. J. Ch. 284; 22 L. T. N. S. 251; 18 W. R. 242; Viano v. Baccigalupo, 183 Mass. 160; 67 N. E. Rep. 641; Church v. Kresner, 49 N. Y. Sup. 742; International Society v. International Society, 59 N. Y. Supp. 32-Chas. E. Hires Co. v. Consumers' Co., 100 Fed. Rep. 809-812; 41 C. C. A. 71. 32a-Blanchard, J., in United States Frame & Picture Co. V. Horowitz, 100 N. Y. Supp. 705. Citing and following DeYoungs v. Jung, 27 N. Y. Supp. 370; 7 Misc. Rep. 56; Johnson v. Hitchcock, 3 N. Y. Supp. 680. 33-National Water Co. V. Hertz, 177 Fed. Rep. 607. 34-Gouraud v. Trust, 3 Hun, 627; Seb. 460. 35-Bolen & Byrne Mfg. Co. v. Jonasch, 60 N. Y. Sup. 555. connection. Those we have mentioned are illustrative, however, of the class of facts pertinent to be shown in cases of technical trademark infringement, and to prove which is important for the reasons and purposes above referred to. Ungrammatical combinations as media of unfair competi tion. The doctrine of "secondary meaning" is of course, more readily invoked where the plaintiff has employed in distinguishing his goods anything out of the usual run of descriptive words or expressions. The words may be descriptive, but used in an abnormal manner which is evidence that the plaintiff was trying to distinguish his goods, while the copying by the defendant is weighty evidence of the intent and purpose with which the copying was done. Thus in the "Flare Front Lamp" case, the court observed "defendant takes the precise combination of words, violating the prevailing rules of dictionary and grammar as well as complainant's rights." 35a § 132. Infringing by refilling trademarked packages.There is no doubt that one who furnishes liquors (or any other class of goods) with the expressed purpose that the goods so sold are to be used in refilling genuine packages whose original contents have been removed will be dealt with as an infringer and enjoined in equity. The refilling of genuine packages will be restrained, even where the package, a bottle bearing a name blown in the glass, is used for a sim 35a-Ray, J., in Rushmore v. Saxon, 158 Fed. Rep. 499, 511. 36-Hostetter Co. V. Brueggeman-Reinart Distilling Co. 46 Fed. Rep. 188; Cox, Manual, 729; Hostetter Co. V. Wm. Schneider Co., 107 Fed. Rep. 705; Hostetter Co. v. Conron, 111 Fed. Rep. 737; Samuel Bros. & Co. v. Hostetter Co., 55 C. C. A. 111; 118 Fed. Rep. 257; Hostetter Co. v. Gallagher Stores, 142 Fed. Rep. 208. Compare Hostetter v. Fries, 17 Fed. Rep. 620. in which defendants compounded a substance to be used in making Hostetter's Bitters, and 37 36 sold it with directions for so using it, but injunction was denied. This decision is entitled to no weight. 37-Evans v. Von Laer, 32 Fed. Rep. 153; Sawyer Crystal Blue Co. v. Hubbard, 32 Fed. Rep. 388; Rose v. Henley, cited at 47 L. J. Ch. 577; 38 L. T. N. S. 410; Seb. 551; Van Hoboken v. Mohns & Kaltenbach, 112 Fed. Rep. 528; Pontefact v. Isenberger, 106 Fed. Rep. 499; Hiram Ricker & Sons v. Leigh, 77 N. Y. Supp. 540; Eckhart v. Consolidated Milling Co., 72 Ill. App. 70; Scott v. Standard Oil Co., 106 Ala. 475. ilar article, in connection with a label not resembling that borne by it originally.38 Injunction will issue even where the refilling was done at the request of a customer.39 Judge Thayer has enjoined a defendant from offering for sale an imitation of Hostetter's Bitters in bulk with advice to customers to refill bottles originally containing the genuine compound, with the spurious article.40 In this class of cases "the burden is strongly upon the complainant to prove fraud by a fair preponderance of evidence."' +1 The injunction will not be denied because of the defendant covering the trademarks of the original container with a paper label.42 The burden is upon the defendant who has undertaken to refill the plaintiff's trademarked containers to "completely and permanently obliterate and remove" the trademark from the container.4 43 A defendant distiller branding its barrels "Canadian Type" and proven to have had both actual and constructive notice 38-Evans v. Von Laer, 32 Fed. Rep. 153; Hostetter v. Anderson, 1 V. R. (W. A'B. & W.) Eq. 7; 1 Anst. Jour. 4; Seb. 652; Rose v. Loftus, 47 L. J. Ch. 576; 38 L. T. N. S. 409; Seb. 608. See contra, Welch v. Knott, 4 K. & J. 747; 4 Jur. N. S. 330; Seb. 157. 39-Barnett v. Leuchars, 13 L. T. N. S. 495; 14 W. R. 166; Seb. 253. 40-Hostetter V. BrueggemanReinart Co., 46 Fed. Rep. 188; Cox, Manual, 729; cited and followed in Hostetter v. Sommers, 84 Fed. Rep. 333. These cases overrule Hostetter v. Fries, 17 Fed. Rep. 620, where Judge Wallace refused to enjoin defendants who prepared and sold an extract, giving instructions to their customers for making "Hostetter's Bitters" from the ex tract. The rule stated in the text is followed in Myers v. Theller, 38 Fed. Rep. 607-609; Hostetter Co. v. 41-Coxe, J., in Hostetter Co. v. Comerford, 97 Fed. Rep. 585; and to the same effect see Hostetter Co. v. Bower, 74 Fed. Rep. 235. 42 Prest-O-Lite Co. V. Avery Lighting Co., 161 Fed. Rep. 648, 651. 43 Prest-O-Lite Co. v. Heiden, 135 C. C. A. 515, 517; 219 Fed. Rep. 845, 847: Searchlight Gas Co. v. Prest-O-Lite Co., 131 C. C. A. 626; 215 Fed. Rep. 692, 696; Prest-0Lite Co. V. Davis, 131 C. C. A. 491; 215 Fed. Rep. 349, 350; PrestO-Lite Co. v. Avery Lighting Co., 161 Fed. Rep. 648, 650, 652; PrestO-Lite Co. v. Davis, 209 Fed. Rep. 917, 922, 924; Prest-O-Lite Co. v. Bogen, 209 Fed. Rep. 915, 916; Prest-O-Lite Co. V. Post & Lester Co., 163 Fed. Rep. 63, 64; Searchlight Co. v. Prest-O-Lite Co., 215 that its whiskey was being used to refill "Canadian Club" bottles was enjoined.43a The practice of refilling one partly empty Gordon gin bottle from another was upheld in the absence of proof that the refilling was done with spurious gin.4b 44 § 133. Packages distinguished from their contents.-Where articles are sold to the consumer only in packages of course the marks upon the packages strike the eye of the consumer before those on the articles, and this fact may often be of controlling importance in case of unfair competition. Thus, Judge Richards has said, in a case of this character "it does not appear that the defendant attempted to deceive the public by palming off its matches as those of the complainant. There was no simulation of packages. The packages plainly indicate their origin, and, since matches are always sold in packages, the ordinary purchaser could not well be deceived."' 45 Where there is simulation of the package relief will be granted even though the contents are unobjectionable.46 § 134. Infringement by refitting and reselling worn trademarked articles.-Akin to refilling trademarked packages are cases where, parts of a trademarked article having worn Fed. Rep. 692, 131 C. C. A. 626, C. 43a-Hiram Walker & Sons V. Corning & Co., 255 Fed. Rep. 129, C. C. A. 7. 43b-Gordon Dry Gin Co. v. Righeimer, 258 Fed. Rep. 925, C. C. A. 7. 44-Heide v. Wallace & Co., 129 Fed. Rep. 649, 650 (where liquorice pastilles were sold in boxes); Knickerbocker Chocolate Co. V. Griffing, 144 Fed. Rep. 316 (where chocolate confections were so sold). 45-Diamond Match Co. v. Saginaw Match Co., 74 C. C. A. 59; 142 Fed. Rep. 726, 730. 46-Bates Mfg. Co. V. Bates Mach. Co., 141 Fed. Rep. 213. 47-Compare § 152, post. |