Pleading. The defense of "unclean hands" need not be pleaded. 98a 20. Showing that the infringement has ceased.99 21. Showing that the complainant has made a third party his licensee for the territory in which the infringement was committed.1 22. Showing that the defendant has made no sales of goods bearing the infringing mark, where it appears that he would have done so had the suit not been instituted." "Proof of injury is unnecessary if the evidence establish the fact that injury will result unless such use (of the infring intermediate proceedings see 201 Fed. Rep. 99; 119 C. C. A. 134; 209 Fed. Rep. 495; 215 Fed. Rep. 361; 131 C. C. A. 503. 98a-Memphis Keeley Institute v. Keeley Co., 155 Fed. Rep. 964, 974, 84 C. C. A. 112; Bell & Howell Co. v. Bliss, 262 Fed. Rep. 131, 135; Andrew Jergens Co. v. Woodbury, 271 Fed. Rep. 43, 44. 99-Frese v. Bachof, Fed. Case No. 5110; 13 Blatchf. 234; Burnett v. Hahn, 88 Fed. Rep. 694; Hutchinson v. Blumberg, 51 Fed. Rep. 829-831; Clark Thread Co. v. Wm. Clark Co. (1), 55 N. J. Eq. 658; 37 Atl. Rep. 599. Contra, see Brennan v. Emery-Bird-Thayer Dry Goods Co., 99 Fed. Rep. 971, which can not be regarded as of authority. For a very proper exception to the rule, under peculiar facts, see Van Raalt V. Schneck, 159 Fed. Rep. 248. Thomas G. Plant Co. v. May Merc. Co., 153 Fed. Rep. 229. Discontinuance by the defendant, two years before the bill was filed, of the simulated markings, was held in the eighth circuit to be ground for refusing injunction, in a case not involving a technical trademark. Ferguson-McKinney Dry Goods Co. v. J. A. Scriven Co., 165 Fed. Rep. 655; 91 C. C. A. 491. To the same effect, G. W. J. Murphy Co. v. Metal Stamping Co., 214 Fed. Rep. 382. That cessation of the infringement is no bar to relief in equity see Saxlehner v. Eisner, 147 Fed. Rep. 189, 191, 77 C. C. A. 417, 419, where Judge Lacombe said: "In view of the past conduct of defendants, complainant might fairly aver an apprehension that they would in some way continue the old infringement or concoct some new one, even though the company itself were enjoined. The circumstance that since that time they have not in fact infringed is not controlling." That the same principle applies to the "cease and desist" orders of the Federal Trade Commission see Sears, Roebuck & Co. v. Fed. Trade Com., 258 Fed. Rep. 307, 310, 169 C. C. A. 323 6 A. L. R. 358; Guarantee Veterinary Co. v. Fed. Trade Com., 285 Fed. Rep. 853, 860, C. C. A. 2. 1-Moxie Nerve Food Co. V. Baumbach, 32 Fed. Rep. 205. 2-Cuervo v. Landauer, 63 Fed. Rep. 1003; McLean v. Fleming, 96 U. S. 252; 24 L. Ed. 828. ing mark) will be restrained." 3 "The infringement of a trademark implies injury."4 23. Showing that the defendant is merely a dealer who has purchased from the originator of the infringement,5 or merely the agent of another in the sale of the infringing goods. Although a dealer may escape injunction where it would be granted against the manufacturer, in exceptional cases. 24. Showing that the defendant once held a license from the plaintiff, permitting the use of the mark, when that license has been revoked for failure to pay royalties and other breaches of the licensing contract.s 25. Showing that there has been an adjudication against the plaintiff in a court of a foreign country. The subject-matter, in cases of the classes treated in this work, is a tort. Such subjects are not concluded by foreign adjudications, even when the acts referred to are the same identical acts." 26. Showing that the defendant was insane at the time of the commission of the infringing acts.10 27. Showing the defendant's innocence of guilty knowledge or fraudulent intent.11 28. Showing that defendant has used plaintiff's mark only in connection with matter explanatory of its use (as where the plaintiff marked his goods "Akron Dental 3-Maddox, J., in Brown V. Braunstein, 83 N. Y. Supp. 1096. 4-Thomas, J., in Lanahan v. John Kissel & Son., 135 Fed. Rep. 899 5-Burnett v. Hahn 88 Fed. Rep. 694. 6-Walter Baker & Co. v. Sanders, 80 Fed. Rep. 889; 26 C. C. A. 220. 7-Billiken Co. v. Baker & Bennet Co., 174 Fed. Rep. 829. 8-Martha Washington Creamery Buttered Flour Co. v. Martien, 44 Fed. Rep. 473. 9-Hohner v. Gratz, 50 Fed. Rep. 369; City of Carlsbad v. Kutnow, 68 Fed. Rep. 794. 10-Avery v. Wilson, 20 Fed. Rep. 856. 11-Saxlehner V. Siegel-Cooper Co., 179 U. S. 42; 45 L. Ed. 77: Colman V. Crump, 70 N. Y. 573; Taendsticks-fabriks Aktiebolaget Vulcan V. Myers, 139 N. Y. 334; 34 N. E. Rep. 904: Regis v. J. A. Jaynes & Co., 185 Mass. 458; 70 N. E. Rep. 480: affirmed, 191 Mass. 245; 77 N. E. Rep. 774; Day v. Webster, 49 N. Y. Supp. 314; 23 App. Div. 601; E. P. Dutton & Co. v. Cupples, 102 N. Y. Supp. 309; Eagle White Lead Co. v. Pflugh, 180 Fed. Rep. 579, 583. Rubber" and defendant marked his as "Non-Secret Dental Vulcanite, made according to our analysis of the Akron Dental Rubber," the words "Akron Dental Rubber" being printed in red, from large type), where the added matter is a mere evasive attempt to hide the similarity.12 29. Showing that the plaintiff is a party to a combination in restraint of trade. 13 "It does not tend to foster right, if one has acquired it, monopoly to sustain the to the exclusive use of a trademark.'' 14 30. Showing that the plaintiff is a foreign corporation which has failed to comply with the foreign corporation law of the state in which the infringement occurred.15 31. Showing that defendant did the alleged infringing acts under the advice of counsel. This would appear selfevident. Such a defense was disposed of by the Massachusetts Supreme Judicial Court as ineffective where it appeared that all the material facts had not been disclosed to counsel. 16 32. Showing, in the case of a mark composed of single letters, that the peculiar arrangement of the complainant is not followed by the defendant. Thus [MF] has been held to be infringed by M. F. H.17 33. Showing that the mark is used upon a medicine which is harmful, where it appears that it is injurious only if taken in excessive quantities. 18 34. Showing that there has been no actual conflict of trade and so no present injury, if there is a threat or certainty of future injury.19 12-Keller v. B. F. Goodrich Co., 117 Ind. 556; 19 N. E. Rep. 196. 13-General Electric Co. v. Renew Lamp Co., 128 Fed. Rep. 154, 156; R. J. Reynolds Tobacco Co. v. Allen Bros. Tobacco Co., 151 Fed. Rep. 819. 14-Gray, J., in Independent Baking Powder Co. v. Boorman, 130 Fed. Rep. 726; Northwestern Consl. Mill Co. v. Wm. Callan & Son, 177 Fed. Rep. 786; Fontipia Limited v. Bradley, 171 Fed. Rep. 951, 959; O. & W. Thum Co. v. Dickinson, 245 Fed. Rep. 609, 622, C. C. A. 5. 15-Consolidated Ice Co. v. Hygeia Distilled Water Co., 80 C. C. A. 506; 151 Fed. Rep. 10. 16-Nelson v. J. H. Winchell & Co., 203 Mass. 75; 89 N. E. Rep. 180, 187. 17-American Tin Plate Co. v. Licking Roller Mill Co., 158 Fed. Rep. 690. 18-Theodore Rectanus Co. V. United Drug Co., 141 C. C. A. 301; 226 Fed. Rep. 545, 548. 19-Ibid, at p. 549. 35. Showing that defendant's product is hand-made, where the plaintiff's is machine-made.20 36. Showing that defendant has added a prefix or suffix, not present in plaintiff's mark, to the mark charged to infringe; for example, plaintiff's mark "Lava," infringing mark "V-Lavo;" 20a "Lash-Brow" and "Lash-BrowIne." 20b 37. Showing that defendant has reversed the words composing plaintiff's mark; as "White Lily" and "Lily White." 20c § 192. The relief in equity.-In regard to making an application for a preliminary injunction in cases of unfair trade or trademark infringement, it should be remembered that wherever there is any doubt as to the plaintiff's right or the defendant's infringement, the application pendente lite will be denied.21 Accordingly, the courts have refused to grant the preliminary injunction where it appeared probable that the plaintiff had never acquired the exclusive right to use the mark,22 but held it as a tenant in common with another; where there existed a doubt whether the words claimed as trademarks by the plaintiff ("Pile Leclancha" and "Dis 20-German-American Button Co. v. Heymsfeld, Inc., 156 N. Y. S. 223. 20a-Wm. Waltke & Co. v. Geo. H. Schafer & Co., 263 Fed. Rep. 650, C. A. D. C. 20b-Anschl V. Williams, 267 Fed. Rep. 9, C. C. A. 8. 20c-R. H. Macy & Co. v. New York Grocery Co., 267 Fed. Rep. 749. 21-"An interlocutory injunction operates somewhat in the nature of judgment and execution before trial. Without question it is at times an appropriate remedy in the prevention of a great wrong, but to authorize its issuance there must exist a pressing necessity. The right to it must be clear, and the apprehended injury must be grievous, and generally, where the injury must be measured in money, the alleged wrongdoer should be shown to be unable pecuniarily to respond.' Jenkins, J., in American Cereal Co. v. Eli Pettijohn Cereal Co. (2), 22 C. C. A. 236; 76 Fed. Rep. 23 372-374. To the same effect, see Smith-Dixon Co. v. Stevens, 100 Md. 110; 59 Atl. Rep. 401; E. T. Fairbanks & Co. v. Des Moines Scale & Mfg. Co., 96 Fed. Rep. 972. In refusing to grant a preliminary injunction Mr. Justice Bradley, on circuit, said: "My great reluctance to grant a preliminary injunction for suppressing the use of a business name or trademark, in any case in which the matter in issue is a subject for fair discussion, induces me to withhold the order." Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 Fed. Rep. 94-102. And to the same effect see Van Camp Packing Co. v. Craikshanks Bros. Co., 90 Fed. Rep. 814: 33 C. C. A. 280; Charles E. Hires Co. v. Consumers' Co., 41 C. C. A. 71; 100 Fed. Rep. 809, 813; Goldstein v. Whelan, 62 Fed. Rep. 124. 22-Societe des Huiles D'Olive de Nice v. Rorke, 31 N. Y. Supp. 51. 23-American Cereal Co. v. Eli Pettijohn Cereal Co., 76 Fed. Rep. 372; 22 C. C. A. 286. que," applied to electric batteries) were or were not merely descriptive words; 24 where the facts indicated that the complainant was possibly guilty of laches; 25 and where the defendant's affidavits created a doubt in the mind of the court as to whether the plaintiff had been the exclusive user of the symbols claimed by him as his trademark.26 A preliminary injunction will not be awarded on ex parte affidavits unless in a clear case,27 particularly where the defendant is financially able to respond for damages, 28 or where there is a probability that the complainant has been guilty of misrepresentations which would disentitle him to relief in equity.29 A mandatory injunction pending the suit is not granted except in extreme cases where the right thereto is clearly established and it appears that irreparable injury will follow from its refusal.30 So when the court has reason to doubt that the defendant has been guilty of acts amounting to an invasion of the plaintiff's trade rights, a preliminary injunction will not be issued.31 But while refusing the interlocutory injunction, the court may, in its discretion, require the defendant to keep an account, pending the suit, of all his dealings in goods bearing the alleged infringing mark; as Judge Treat said in making such an order: "It will not hurt him to keep an On a motion for preliminary injunction it is no defense to show misrepresentation on the part of the plaintiff; in asserting this rule, it has been said that "the refusal by a court V. 24-Laclancha Battery Co. Western Electric Co., 21 Fed. Rep. 538. Same of "air-cell" and "fireboard" applied to fire-proofing material. New York Asbestos Mfg. Co. v. Amber Asbestos Air-Cell Covering Co., 99 Fed. Rep. 85, affirmed 43 C. C. A. 46; 102 Fed. Rep. 890. 25-Estes v. Worthington, 22 Fed. Rep. 822. 26-French v. Alter & Julian Co., 74 Fed. Rep. 788; Leclancha Battery Co. v. Western Electric Co., 21 Fed. Rep. 538; Portuondo v. Monne, 28 Fed. Rep. 16; Davis v. Davis, 27 Fed. Rep. 490. 27-New York Asbestos Mfg. Co. v. Amber Asbestos Air-cell Covering Co., 99 Fed. Rep. 85; Lare v. Harper & Bros., 86 Fed. Rep. 481; 30 C. C. A. 373; Anargyros & Co. v Anargyros, 167 Fed. Rep. 753, V. 769; 93 C. C. A. 241. Gerson Iowa Pearl Button Co., 254 Fed. Rep. 363; Societe Anonyme du Filtre v. Consolidated Filters Co., 248 Fed. Rep. 35S. 28-H. Mueller Mfg. Co. v. A. Y. McDonaly & Morrison Mfg. Co., 132 Fed. Rep. 585, 588; Baglin v. Cusenier Co., 72 C. C. A. 555; 141 Fed. Rep. 497; reversing s. c., 156 Fed. Rep. 1015. 29-National Starch Co. v. Koster, 146 Fed. Rep. 259. 30-Hagen v. Beth, 118 Cal. 330. 31-Goodyear Rubber Co. v. Day, 22 Fed. Rep. 44; Whiting Mfg. Co. v. Jos. H. Bauland Co., 56 N. Y. Supp. 114. 32-Goodyear Rubber Co. v. Day, 22 Fed. Rep. 44. For a similar order, see Cantrell & Cochrane, Ltd. v Wittemann, 109 Fed. Rep. 82. |