Popham v. Cole.

NOTE BY THE Reporter. - See Candee v. Deere, 5 Am. Rep. 125; Choynski v. Cohen, 2 id. 476; Congress and Empire Spring Co. v. High Rock Co., 6 id 8: Gillott v. Esterbrook, 8 id. 553; Newman v. Alvord, 10 id. 588; Holmes v. Holmes, 9 id. 324; Meriden Britannia Co. v. Parker, 12 id. 401; Graham v Pinte, 6 id. 639; Wolfe v. Barnett, 13 id. 111; Burke v. Cassin, id. 204; Glendor Iron Co. v. Uhler, 14 id. 599; Laird v. Wilder, id. 707; Glen v. Hall, 19 id. 278: Caswell v. Davis, 17 id. 233; Taylor v. Gillies, id. 333; Meneely v. Meneely, 18 id

494.

In McLean v. Fleming, decided by the Supreme Court of the United States, in April, 1878, an injunction was sought to restrain an alleged infringement of a trade-mark. The general rules governing such cases were thus stated by Mr. Justice CLIFFORD, who delivered the opinion of the court:

Equity gives relief in such a case upon the ground that one man is not allowed to offer his goods for sale representing them to be the manufacture of another trader in the same commodity. Suppose the latter has obtained celebrity in his manufacture, he is entitled to all the advantages of that celebrity, whether resulting from the greater demand for his goods or from the higher price the public are willing to give for the article, rather than for the goods of the other manufacturer, whose reputation is not so high as a manufacturer. Where, therefore, a party has been in the habit of stamping his goods with a particular mark or brand, so that the purchasers of his goods having that mark or brand know them to be of his manufacture, no other manufacturer has a right to adopt the same stamp, because by doing so he would be substantially representing the goods to be the manufacture of the person who first adopted the stamp, and so would or might be depriving him of the profit he might make by the sale of the goods which the purchaser intended to buy. Seixo v. Provezende, Law Rep., 1 Chan. 195.

"What degree of resemblance is neces-ary 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.

Unreasonable delay in bringing a suit is always a serious objection to relief in equity, but cases arise in litigations of the kind before the court where the complainant may be entitled to an injunction to restrain the future use of a trade-mark, even when it becomes the duty of the court to deny the prayer of the bill of complaint for an account of past gains and profits. Harrison v. Taylor, 11 Jurist (N. S.), 408.

"In such cases the question is not whether the complainant was the original inventor or proprietor of the article made by him, and on which he puts his trade-mark, nor whether the article made and sold under his trade-mark by the respondent is equal to his own in value or quality, but the court proceeds on the ground that the complainant has a valuable interest in the good-will of his trade or business, and having adopted a particular label, sign, or trademark, indicating to his customers that the article bearing it is made or sold by him or by his authority, or that he carries on business at a particular place, he is entitled to protection against one who attempts to deprive him of his trade or customers by using such labels, signs, or trade-mark, without his knowledge or consent. Coats v. Holbrook, 2 Saud f. Ch. 625; Partridge v. Menck, 2 Barb. Ch. 103. "Everywhere courts of justice proceed upon the ground that a party has a valuable interest in the good-will of his trade and in the labels or trade-mark

Popham v. Cole.

which he adopts to enlarge and perpetuate it. Hence it is held that he, as proprietor, is entitled to protection as against one who attempts to deprive him of the benefits resulting from the same by using his labels and trade-mark without his consent and authority. Decided cases to that effect are quite numerous, and it is doubtless correct to say that a person may have a right in his own name as a trade-mark as against a trader or dealer of a different name, but the better opinion is that such a party is not in general entitled to the exclusive use of a name, merely as such, without more. Millington v. Fox, 3 Myl. & Cr. 338; Dent v. Turpin, 2 Johns. & Hem. 139; Meneely v. Meneely, 62 N. Y. 433; S. C., 20 Am. Rep. 489.

"Instead of that, he cannot have such a right even in his own name as against another person of the same name, unless such other person uses a form of stamp or label so like that used by the complaining party as to represent that the goods of the former are of the latter's manufacture. Nor will any other name, merely as such, confer any such exclusive right, unless the name is printed in some particular manner in a label of some peculiar characteristics, so that it becomes, to some extent, identified with a particular kind of goods, or when the name is used by the party in connection with his place of business, in such a manner that it assumes the character of a trade-mark, within the legal meaning of that term, and as such entitles the party to the protection of a court of equity to prevent others from infringing the proprietor's exclusive right. Gilman v. Hunnewell, 122 Mass. 148; Calladay v. Baird, 4 Phil. 141; Sykes v. Sykes, 3 B. & C. 543; Croft v. Day, 7 Beavan, 89; Burgess v. Burgess, 3 DeG., M. & S. 903: Holloway v. Holloway, 13 Beavan, 213; Rogers v. Taintor, 97 Mass. 296.

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, if he takes seasonable measures to assert his rights and to prevent their continued invasion. James v. James, Law Rep., 13 Eq. 425; Singleton v. Bolton, 3 Doug. 293; Morrison v. Salmon, 2 Mau. & Gran. 392; Boardman v. Meriden Co., 35 Coun. 413.

"Such a proprietor, if he owns or controls the goods which he exposes to sale, is entitled to the exclusive use of any trade-mark adopted and applied by him to the goods to distinguish them as being of a particular manufacture and quality, even though he is not the manufacturer, and the name of the real manufacturer is used as part of the device. Walton v. Crowley, 3 Blatchf. 440;

Emerson v. Badger, 101 Mass. 86.

Equity courts will not in general refuse an injunction on account of delay in seeking relief, where the proof of infringement is clear, even though the delay may be such as to preclude the party from any right to an account for past profits. Rodgers v. Rodgers, 31 Law Times, 285; Blackwell v. Crabb, 45 Law Jour., Pt. I, 505.

"Positive proof of fraudulent intent is not required where the proof of infringement is clear, as the liability of the infringer arises from the fact that he is enabled through the unwarranted use of the trade-mark to sell a simulated article as and for the one which is genuine. Wotherspoon v. Currie, Law Rep., 5 App. Cases, 512.

Popham v. Cole.

Nor is it necessary, in order to give a right to an injunction, that a specific trade-mark should be infringed, but it is sufficient that the court is satisfied that there was an intent on the part of the respondent to palm off his goods as the goods of the complainant, and that he persists in so doing after being requested to desist. Woollam v. Ratcliff, 1 Hem. & Miller, 261.

Apply these rules to the case and it is clear that the charge of infringement is satisfactorily proved in this case.

Words or devices, or even a name in certain cases, may be adopted as trademarks, which are not the original invention of the party who appropriates the same to that use, and courts of equity will protect the proprietor against any fraudulent use or imitation of the device by other dealers or manufacturers. Property in the use of a trade-mark, however, bears very little analogy to that which exists in copyrights or in patents for new inventions or discoveries, as they are not required to be new, and may not involve the least invention or skill in their discovery or application. Phrases, or even words in common use, may be adopted for the purpose, if at the time of their adoption they were not employed by another to designate the same or similar articles of production or sale. Stamps or trade-marks of the kind are employed to point out the origin, ownership, or place of manufacture or sale of the article to which it is affixed, or to give notice to the public who is the producer, or where it may be purchased. Canal Co. v. Clark, 13 Wall. 322.

"Subject to the qualification before explained, a trade-mark may consist of a name, symbol, figure, letter, form, or device, if adopted and used by a manufacturer or merchant in order to designate the goods he manufactures or sells, to distinguish the same from those manufactured or sold by another, to the end that the goods may be known in the market as his, and to enable him to secure such profits as result from his reputation for skill, industry and fidelity. Upton on Trade-marks, 9; Taylor v. Carpenter, 2 Sandf. Ch. 673; Coddington's Dig. 9. "Complainant's pills have been in the market as a vendible article for more than forty years, and during that whole period have been sold under trademarks of the forms heretofore sufficiently described, and they are still sold under the trade-mark mentioned in the decretal order.

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 wrong-doer to evade responsibility for his wrongful acts. Colorable imitation which requires careful inspection to distinguish 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 if he has been guilty of no laches. Manufacturing Co. v. Spear, 2 Sandf. S. C. 599; Coddington's Dig. 109; McAndrew v. Bassett, 4 DeG., Jones & Smith, 380.

"Argument to show that the name of the pills as given in the trade-mark of the respondent was of a character to mislead and deceive is scarcely necessary, as they are idem sonans in the usual pronunciation; nor can it be doubted that the form of the box containing the pills and the general appearance of the wrapper which surrounded it were calculated to have the same effect. Mention may also be made of the fact that the color of the label and the wax im

Rice v. Manley.

pression on the top of the box are well suited to divert the attention of the unsuspecting buyer from any critical examination of the prepared article.

"Chancery protects trade-marks upon the ground that a party shall not be permitted to sell his own goods as the goods of another, and therefore he will not be allowed to use the names, marks, letters, or other indicia of another by which he may pass off his own goods to purchasers as the manufacture of another. Croft v. Day, 7 Beavan, 89; Perry v. Truefit, Gid. 73; Newman v. Alford, 51 N. Y. 192.

Witnesses in great numbers were called by the complainant, who testified that the exhibits L and K of the respondent were calculated to deceive purchasers, and the reasons given by them in support of the conclusion are both persuasive and convincing. Differences between those exhibits and exhibits F and H of the complainant undoubtedly exist, and still it is manifest that the general appearance of the package in the respects mentioned, and others which might be suggested, is well calculated to mislead and deceive the unwary and all others who purchase the article without opening the box and examining the label. Caswell v. Davis, 58 N. Y. 233.

"Two trade-marks are substantially the same in legal contemplation if the resemblance is such as to deceive an ordinary purchaser giving such attention to the same as such a purchaser usually gives, and to cause him to purchase the one supposing it to be the other. Gorham Co. v. White, 14 Wall. 528.

“Suffice it to say, without entering further into details, the court is of the opinion that the first assignment of error must be overruled and that the Injunction was properly granted to prevent infringement subsequent to the filing of the bill of complaint."

RICE, appellant, v. MANLEY.

(66 N. Y. 82.)

Action for fraudulently inducing another to violate an agreement void by the statute of frauds - Damages - Evidence.

S. agreed to sell and deliver to plaintiff a quantity of cheese. Defendant by fraudulent and false representations induced S. to sell and deliver the cheese to him. The agreement between S. and plaintiff was not in writing and was void under the statute of frauds, but it would have been performed by S. but for defendant's fraud. Held, that plaintiff could maintain an action against defendant for the damages sustained.*

The market value of cheese at C. where this cheese was to have been delivered, was controlled by the market price in New York, and the cheese was contracted for that market. Held, that it was competent on the question of damages to prove the value of the cheese in New York and the cost of transporting it thither.

*See Ashley v. Dixon, 8 Am. Rep. 559; S. C., 48 N. Y. 430.

Rice v. Manley.

A

CTION to recover damages alleged to have been occasioned to plaintiff by the fraud of the defendant.

The opinion states the case.

A judgment was entered for the plaintiff upon the report of a referee, but the General Term of the Supreme Court reversed it (5 T. & C. 14; 2 Hun, 492), and plaintiff appealed.

Wilkes Angel, for appellants. Fraud, accompanied by damage, makes a cause of action. Pasley v. Freeman, 3 T. R. 51; Upton v. Vail, 6 Johns. 181; White v. Merritt, 7 N. Y. 352, 357; Benton v. Pratt, 2 Wend. 385; Snow v. Judson, 38 Barb. 210; 1 Kent's Com. 478. It was proper to prove the value of the cheese in New York. Durst v. Burten, 47 N. Y. 167; Marshall v. N. Y. C. R. R. Co., 45 id. 502; Richmond v. Bronson, 5 Den. 55 ; Wemple v. Stewart, 22 Barb. 155; Harris v. Pan. R. R. Co., 58 N. Y. 660. Plaintiffs were entitled to recover the profits they might have made. Messmore v. S. and L. Co., 40 N. Y. 422; Griffin v. Colver, 16 id. 489; Heinemann v. Heard, 50 id. 27; Sedgw. on Dam. 80, note; St. John v. Mayor, etc., 13 How. Pr. 527; 6 Duer, 315.

J. R. Jewell, for respondent. The contract was void by the statute of frauds and cannot be enforced directly or indirectly. Dung v. Parker, 52 N. Y. 494; Cagger v. Lansing, 43 id. 550; Lery v. Brush, 45 id. 589. The measure of damages is the difference between the contract-price and the actual market value of the cheese at the time and place of delivery. Pumpelly v. Phelps, 40 N. Y. 59; Bush v. Cole, 28 id. 261; Hubbell v. Meigs, 50 id. 480; Masterton v. Mayor of Brooklyn, 7 Hill, 61; 4 Den. 554; 1 N. Y. 305.

EARL, J. The plaintiffs had made an agreement with one Stebbins to purchase from him a large quantity of cheese, to be delivered at a future day, at Cattaraugus station, Cattaraugus county. There had been no compliance with the statute of frauds so as to make the agreement binding upon either party, but both parties would have performed it but for the fraud of the defendant. The defendant knowing of the agreement, for the fraudulent purpose of defeating its performance by Stebbins, of depriving the plaintiffs of the benefit thereof, and of himself obtaining the cheese, caused a telegraphic dispatch to be sent to Stebbins, signed by the name of E. Rice, which he meant Stebbins should understand to