complainant's business, which, under familiar principles of equity, entitles it to injunctive relief," pages 393-4. 2 § 319. Difference between Proof of Cases Involving a Fanciful Name, or Mark, and one Involving Secondary Meaning. When proof is exhibited that a fanciful name is already in use as a trade-mark and further proof that after such use commenced another person began to use it as his trade-mark on the same class of goods, the court will presume that the second person acted with fraudulent intent. Where the name so used is not fanciful but is used by the plaintiff or by the public to refer to the plaintiff's goods and in such a manner as to give to the word a secondary or trade meaning, proof must be exhibited to show that the defendant's use of the name is not in its natural meaning but in its trade or secondary sense. In such case, the defendant's fraud will not be presumed from the mere similarity of the two names; the plaintiff must also prove the existence of the secondary meaning of the name he is using. § 320. Evidence Connected with Comparison of Names or Marks Used by the Parties- Similarity. Unfair competition cases usually involve a comparison by the court of the name or marks used by the plaintiff with those used by the defendant. These may be termed questions of similarity. In the first edition of this book the cases in which this question of similarity is discussed were placed in a chapter entitled "What is Similarity?" In the present edition they will be found in this chapter. It has been said that proof of imitation or similarity rests in (1) character of the merchandise on which the marks are used; (2) use to which the merchandise is put; (3) kinds of people who order it; (4) manner in which they order it.3 These and similar questions must be considered in order to arrive at an accurate understanding of the rules of evidence in these cases. 321. What is Similarity?"Similarity, not identity, is * Julius Kessler & Co. v. Goldstrom, 177 Fed. 392-1910 (C. C. A. 8th Cir.). Similar proof has been held to justify an injunction in the following cases: Lever Bros. v. Pasfield, 88 Fed. 484; Chicago Pneumatic Tool Co. v. Phila. Pneumatic Tool Co., 118 Fed. 852; Ligget & Myer Tobacco Co. v. the usual recourse, where one party seeks to benefit himself by the good name of another." 4 This statement of Judge Bradley has become an axiom of Unfair Competition Law. It is with this sort of similarity, that this chapter deals. So long as there are many chancellors, so long will their opinions on such a question differ. The New Jersey court of equity has laid down the following rule: "If the counterfeit so closely resembles the genuine as to mislead ordinary purchasers, buying with the care usually exercised in such transactions, the use of the counterfeit should be prohibited. An important part of this rule, as it applies to this case, is that clause of it which directs that, in determining whether the counterfeit so closely resembles the genuine as to be likely to deceive the ordinary buyer, the court must take into consideration the degree of care which buyers usually exercise in buying such an article as that which is the subject of the distinguishing mark; for it is a matter of common knowledge that the ordinary buyer does not, as a general rule, exercise as much caution in buying an article for which he pays a few pennies as he does in purchasing a more valuable thing. The instances are very rare, I suppose, where a purchaser exercises as much care in buying a bottle of beer as he does in buying a bottle of whiskey, a box of cigars, or a hat or a coat." In Payton & Co. v. Snelling, Lampard & Co., Lord Macnaghten said: "I think it is very desirable to bear in mind what Lord Cranworth said on one occasion that no general rule can be laid down as to what is a colorable imitation or not; you must deal with each case as it arises, and have regard to the circumstances of the particular case." "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 trade-mark, so resembling that of another trader, as that ordinary purchasers, buying with ordinary caution, are likely to be misled." 5" § 322. Test of Similarity is General Impression Made, Not Detailed Examination. In deciding as to what is or is not Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 Fed. 94 at p. 97. 5 Wirtz v. Eagle Bottling Co., 50 N. J. Eq. 164-1892, at page 169. similar, the court should not depend on elaborate description of the points of resemblance or those of difference; but should decide by the impression created by the name or mark on the ear or eye, thus deciding the question on the same basis as the purchaser who, in ordinary course of trading, is called upon to judge as to the identity of the defendant's name. It should be said here also that the buyer usually has not the chance of trial by side-by-side comparison. Test of identity is not whether a difference is recognized when the two competing articles are placed side by side, but whether it will be recognized by a purchaser when not having opportunity to compare. Such similarity as will deceive is that likeness which renders the average buyer unable to distinguish the defendant's name or mark from the memory of the plaintiff's name which he carries in his mind, not such as will enable him to know them apart when the two are put side by side before him. Lord Russell, in Liebig's Extract of Meat Co. v. Chemists Cooperative Society, decided by the British Court of Appeal November 20, 1896,' held that "one must be guided very largely by the judgment one forms by the use of one's own eyesight." Fischer v. Blank 10 holds that similarity is such resemblance as "is calculated to deceive, and does, in fact, deceive the ordinary buyer making his purchases under the ordinary conditions which prevail in the conduct of the particular traffic to which the controversy relates. No inflexible rule can be laid down. Each case must in a measure be a law unto itself." 11 It has often been held, 7 See Liggett & Myers Tobacco Co. v. Finzer, 128 U. S. 182. 8 McDonald v. Mueller, 183 Fed. 972-1910. 13 R. P. C. 736-38, 17 L. T. (N. S.) 298. See also p. 635 for case in court below. 10 138 N. Y. 244-52-1893; 33 N. E. 1040. 11 Cited in Dunn Co. v. Trix Mfg. Co., 50 App. Div. (N. Y.) 75-1900; 63 N. Y. Supp. 333; Munro v. Tousey, 129 N. Y. 38-43-1891; 29 N. E. 9; 14 L. R. A. 245n. "A court of equity should proceed in the exercise of its power with a wise and judicial discretion. In cases such as this, it should presume that the public makes use of the senses of sight and hearing, and that it is possessed of a sufficient amount of intelligence to note the difference the senses convey. The court ought not to interfere with the freedom of conduct of trade and with general business competition. Its power to restrain should be reserved to prevent fraud and imposture from some real resemblance in the name and appearance of the publications." also, that direct comparison of the articles is a test of similarity. "The eye, at a glance, takes in the whole of one exhibit and the whole of another; and the comparison thus made of the two is the surest, and the only satisfactory way of satisfying the judgment as to the existence of the alleged deceptive imitation." 12 "It is not a question whether the defendant has in all respects imitated the trade-mark of the complainant, but whether he has so imitated it that the purchaser has been imposed on." 128 This was formerly quite generally regarded as the rule. Its fallacy is obvious, however, when one considers how seldom in actual purchase of goods the buyer has the opportunity of placing the various brands of competing goods side by side. § 323. Similarity Does not Mean Exact Likeness. - Similarity does not mean exact likeness-exact facsimile a precise copy. If the court decides the likeness is sufficiently near to cause deception of the ordinary purchaser, this is enough. It need not be such an imitation that the two cannot be distinguished except by an expert or upon a critical examination by a person who knows the genuine article well. It is sometimes even sufficient that there are points of resemblance. The Supreme Court of the United States has discussed this question in McLean v. Fleming. 13 "Much must depend, in every case, upon the appearance and special characteristics of the entire device; but it is safe to declare, as a general rule, that exact similitude is not required to constitute an infringement, or to entitle the complaining party to protection. If the form, marks, contents, words, or the special arrangement of the same, or the general appearance of the alleged infringer's device, is such as would be likely to mislead one in the ordinary course of purchasing the goods, and induce him to suppose that he was purchasing the genuine article, then the similitude is such as entitles the injured party to equitable protection" (id. p. 253). * "Difficulty frequently arises in determining the question of infringement; but it is clear that exact similarity is not required, as that requirement would always enable the wrongdoer to evade responsibility for his wrongful acts. Colorable imitation, which requires careful inspection to distinguish 12a Enoch Morgan & Sons Co. v. Hunkele, Fed. Case No. 4,493. 1396 U.S.245-55-1877; 24 L. ed. 828. 12 Lorillard Co. v. Peper, 86 Fed. 956-1898, at p. 958 (C. C. A. 8th Cir.). the spurious trade-mark from the genuine, is sufficient to maintain the issue; but a court of equity will not interfere when ordinary attention by the purchaser of the article would enable him at once to discriminate the one from the other. Where the similarity is sufficient to convey a false impression to 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." id. p. 255. Here again is seen the great necessity of refraining from laying down exact rules and limits to be enforced. To be able to do justice in all cases, the court must be governed by elastic doctrines. 134 § 324. Care Used by Average Buyer of the Class of Article in Question Must be Considered. Similarity such as will deceive the critical, well-posted buyer is not the degree of likeness necessary to this action. It is the buyer who uses ordinary caution in making his purchase, who is buying with the care usually exercised in such transactions, who must be deceived by this similarity. He who buys a bottle of ale does not use as much care as he who buys a watch. He who buys a handkerchief does not usually examine the goods offered him as carefully as he who purchases a suit of clothes.14 The class of persons who customarily purchase an article must be considered, in deciding as to what constitutes similarity. Two names made up of technical words may be entirely distinct to the scholar's eye and ear and yet to an unlearned person they appear. identical. 15 * 134 Colman v. Crump, 70 N. Y. 57378-1877. "It is not necessary that the symbol, etc. should be a facsimile, a precise copy, of the original trade-mark, or so close an imitation that the two cannot be distinguished except by an expert, or upon a critical examination by one familiar with the genuine trade-mark. * If the resemblance is calculated to deceive the careless and unwary; and thus to injure the sale of the goods of the proprietor of the trademark, the injured party is entitled to relief." See also Tallcot v. Moore, 6 Hun (N. Y.) 106-1875., 14 Wirtz v. Eagle Bottling Co., 50 N. J. Eq. 164-1892; 24 Atl. 658; Fairbank Co. v. Bell Mfg. Co., 77 Fed. 869-1896; De Voe Snuff Co. v. Wolff, 206 Fed. 420-423. "It may be true that the cautious and discriminating purchaser is not likely to be so misled; but the protection accorded to a trademark is not limited to the cautious and discriminating customer, but embraces the 'ordinary' or 'unwary' purchaser as well." 15 Fairbank Co. v. Bell Mfg. Co., 77 Fed. 869-1896 (C. C. A. 2d Cir.). |