Infringement
There is no intrinsic value in a trade-mark. Its worth in dollars is a
creation, and it depends upon the successful sale, or popularity, of
the commodity to which the trade-mark is applied, the distribution of
this commodity, the extent to which it has been advertised, and the
profit that there is in it.
Some widely-known trade-marks are worth millions of dollars, and many
are valued at a hundred thousand dollars or more.
The ownership of an advertised and favorably known trade-mark is,
therefore, a valuable property right. In estimating the assets of a
business, its trade-mark is included under the head of Good-Will, and
Good-Will is Reputation. The value of a trade-mark is the value of the
reputation of the goods it represents and identifies.
A valuable trade-mark--like other valuable things--becomes, sooner or
later, an object of envy on the part of those who want money without
troubling themselves about the manner of getting it. Sometimes this
leads to a more or less ingenious simulation of a trade-mark.
The remedy for the infringement of a registered trade-mark is covered
by sections 16 to 19, inclusive, of the Act of 1905. We quote these
sections of the law:
"Sec. 16. That the registration of a trade-mark under the provisions
of this act shall be prima facie evidence of ownership. Any person
who shall, without the consent of the owner thereof, reproduce,
counterfeit, copy, or colorably imitate any such trade-mark and
affix the same to merchandise of substantially the same descriptive
properties as those set forth in the registration, or to labels,
signs, prints, packages, wrappers, or receptacles intended to be used
upon or in connection with the sale of merchandise of substantially
the same descriptive properties as those set forth in such
registration, and shall use, or shall have used, such reproduction,
counterfeit, copy or colorable imitation in commerce among the
several states, or with a foreign nation, or with the Indian tribes,
shall be liable to an action for damages therefor at the suit of the
owner thereof; and whenever in any such action a verdict is rendered
for the plaintiff, the court may enter judgment therein for any
sum above the amount found by the verdict as the actual damages,
according to the circumstances of the case, not exceeding three times
the amount of such verdict, together with the costs.
"Sec. 17. That the Circuit and Territorial Courts of the United
States and the Supreme Court of the District of Columbia shall have
original jurisdiction, and the Circuit Courts of Appeal of the
United States and the Court of Appeals of the District of Columbia
shall have appellate jurisdiction of all suits at law or in equity
respecting trade-marks registered in accordance with the provisions
of this act, arising under the present act, without regard to the
amount in controversy.
"Sec. 18. That writs of certiorari may be granted by the Supreme
Court of the United States for the review of cases arising under
this act in the same manner as provided for patent cases by the act
creating the Circuit Court of Appeals.
"Sec. 19. That the several courts vested with jurisdiction of cases
arising under the present act shall have power to grant injunctions,
according to the course and principles of equity, to prevent the
violation of any right of the owner of a trade-mark registered
under this act, on such terms as the court may deem reasonable; and
upon a decree being rendered in any such case for wrongful use of a
trade-mark the complainant shall be entitled to recover, in addition
to the profits to be accounted for by the defendant, the damages
the complainant has sustained thereby, and the court shall assess
the same or cause the same to be assessed under its direction. The
court shall have the same power to increase such damages, in its
discretion, as is given by section sixteen of this act for increasing
damages found by verdict in actions of law; and in assessing profits
the plaintiff shall be required to prove defendant's sales only;
defendant must prove all elements of cost which are claimed."
The legal remedies set forth in these sections of the Act of 1905 apply
only in case of infringements of registered trade-marks. In the case of
infringements of common law trade-marks, and in cases where packages,
labels and advertisements are imitated or counterfeited, actions to
restrain must be brought under the law of unfair trade.
_A coined word is the property, in a commercial sense, of the person,
or firm, or corporation, that makes it up and uses it._
This is indisputable. It is a principle of justice that is supported
consistently by the courts, but it needs no legal mind to acquiesce in
its fairness, for it appeals to everybody's common-sense.
How far the use of a coined word may be allowed, when applied by other
persons than its owners to goods of a different and non-competitive
class, is a question that has not been definitely settled. In England,
the court enjoined the use of the word "Kodak" as a name for bicycles.
There is little doubt that the unauthorized use of any widely-known
coined word, that has been nationally advertised, would be enjoined by
the courts, even if applied to a wholly different line of merchandise.
+--------------------------------------------------------------------+
| =Advertising Symbols of Railroads= |
| |
| [Illustration] |
| CANADIAN |
| PACIFIC |
| RAILWAY |
| |
| Burlington |
| Route |
| |
| NEW YORK |
| CENTRAL |
| LINES |
| |
| NORTHERN |
| PACIFIC |
| |
| A railroad cannot have a trade-mark in the true sense, inasmuch |
| as the business of transportation produces no product to which a |
| trade-mark can be affixed. |
| |
| The advertising symbols of railroads stand in the relation of |
| trade-marks, and are protected by the common law against |
| infringement. |
+--------------------------------------------------------------------+
A poorly-made and inferior article, even if it should belong to a class
of goods quite dissimilar to that of another article of the same name,
might indirectly bring discredit upon the latter.
The word "Educator" was refused registration as a trade-mark for fish,
on the ground that as it had already been registered as a trade-mark
for a brand of biscuits, its use by another might lead to confusion,
although fish and biscuits are quite dissimilar products.
There have been cases where a label, or a sign, or a trade-name, or
trade-mark, has been appropriated bodily by a concern not entitled to
use it. Some cases of infringement of this character are given in H. D.
Nims' instructive book on "Unfair Business Competition," from which the
following example is quoted:
"The defendants accumulated in the St. Louis market stoves (not made
by plaintiff) with the name 'Charter Oak' upon them, which they held
for sale as 'Charter Oak Stoves.' They were aware of the plaintiff's
proprietorship of the 'Charter Oak' trade-mark, and were proceeding
to sell in defiance of the plaintiff's rights. Plaintiff had been the
first to use 'Charter Oak' as a name of a stove and had used it for
a long time when this suit was begun. The mark was not registered.
Injunction granted." _Filley v Fassett_, (44 Mo. 168--1869).
Infringements are generally more subtle and clever than a mere bodily
adoption of a trade-mark. For instance, a piratical trade-mark may be
devised so nearly like a well-known mark that it will readily deceive
an unwary or careless or ignorant purchaser, and yet be so different
that a show of defending it may be made.
Or, an entirely different trade-mark may be used, while the size, shape
and color of the package may be imitated. The National Biscuit Company
uses distinctive packages for its products, and its trade-marks are,
in most cases, original, arbitrary, coined words, yet it has so far
prosecuted approximately five hundred suits for infringement of its
marks and packages.
"Uneeda Biscuit" has been infringed by "Iwanta Biscuit", "Uwanta
Biscuit" and "Ulika Biscuit", all of which were enjoined. In the
"Iwanta" case, the opinion of the court was, in part, as follows:
"Defendants present the usual voluminous bundle of affidavits by
persons in the trade to the effect that in their opinion no one is
likely to mistake defendant's biscuit for complainant's. As has
been pointed out before, it makes no difference that dealers in the
article are not deceived. No one expects that they will be. It is
the probable experience of the consumer that the court considers.
Here, too, we have the manufacturer of the articles complained of,
who explains, as usual, that in adopting a trade-name by which to
identify his own product he has been most careful not to trespass
upon any rights of complainant, and that, after considerable thought,
he selected a name which should make the difference between his
goods and complainant's distinct and plain, so that there could
be no possibility of mistake. It is a curious fact that so many
manufacturers of proprietary articles, when confronted with some
well-advertised trade-name or mark of a rival manufacturer, seem
to find their inventive faculties so singularly unresponsive to
their efforts to differentiate. Thus, in one case, with the word
'Cottolene' before him, defendant's best effort at differentiation
resulted in 'Cottoleo'; and 'Mongolia' seemed to another defendant
entirely unlike 'Magnolia'. The manufacturer of the articles which
defendants in the case at bar are selling seems to have had no better
luck, for, with the word 'Uneeda' before him, his device to avoid
confusion was the adoption of the word 'Iwanta'. The incessant use
of the personal pronouns in daily speech has associated in every
one's mind the sounds represented by the letter 'I' and 'U', the two
words are of precisely the same length; both end with the letter
'A', and both express the same idea, namely, that the prospective
purchaser's personal comfort would be promoted by the acquisition of
a biscuit.... Both name and dress are clearly calculated to mislead,
and the statements that both were adopted with an eye single to
differentiation strain the credulity of the court beyond the breaking
point."
In the case of _Lever Bros. v Smith_ (112 Fed. R. 998), the complainant
had built up a large and profitable sale for "Welcome" soap. The
defendant, Welcome A. Smith, put on the market a soap similar in size
and shape to "Welcome" soap, and labeled it with his own name "Welcome
A. Smith", making the word "Welcome" on his labels large and prominent,
with "A" and "Smith" below it, and in much smaller type. On the ends of
the package the word "Welcome" alone appeared. It was held that while
Smith had a right to use his own name, he could not use it in such a
way that it would suggest an identity between these two products.
[Illustration:
Dioxogen
_The trade-mark of a widely advertised household necessity._
]
In the case of _Swift v Brenner_ (125 Fed. R. 826) it was held that
Swift & Company's "Old Mill Soap" which had a picture of an old mill on
the label, was infringed by "Old Stone Mill Soap", the label of which
also had a picture of an old mill.
In the interesting case of the _Welsbach Light Company v Adam_ (107
Fed. R. 463) it was shown that the infringing trade-mark had been
devised before the complainant's mark, but had not been used until
after the complainant's mark had been registered. On Feb. 20, 1900,
the complainant (The Welsbach Light Company) registered the coined word
"Yusea," as a trade-mark applied to gas mantles. Some months before
this, the defendant had conceived the name "U--C--A" with the idea of
using it in connection with gas mantles of his own manufacture. Its
actual use as a trade-mark was not begun, however, until after the
complainant's mark had been registered. On Oct. 23, 1900, the defendant
registered "U--C--A" as a trade-mark.
[Illustration:
Huyler's
_This mark stands for quality in confectionery._
]
The complainant based his action for an injunction against the use by
the defendant of the mark, "U--C--A" on the ground that its resemblance
in sound to "Yusea" was sufficient to confuse buyers and divert trade
from the complainant.
It was shown that "Yusea" is commonly pronounced "You see a"; that
purchasers, in asking dealers for these mantles, called them "You See
A" Mantles; and that the pronunciation of the name of defendant's
mantles was the same as the name of complainant's products.
The defendant contended that there was no similarity in appearance in
the two names; that the similarity in sound was only incidental; that
there was no infringement, because the name "U--C--A" had been devised
prior to the conception of "Yusea"; and that the registration of
"U--C--A", allowed by the Patent Office, was proof of dissimilarity.
The Court sustained the contention of the Welsbach Light Company, and
the use of "U--C--A" as a trade-mark for gas mantles was enjoined on
the ground that it was an infringement of "Yusea."
_Where there is a casual resemblance, not sufficiently marked to
deceive a person of ordinary judgment, there is held to be no
infringement._
A case in point was shown in the contention between the manufacturers
of the well-known "3 in 1" Oil and the owners of a similar product
called "Big Four". The "3 in 1" label bears a large figure "1" in red,
enclosing the figure "3" and the word "in". The defendant's label was
of different size, was printed partly in red and partly in black,
and was headed "Big Four". The figure "4" in black was displayed
prominently on a red background. No infringement.
_A trade-mark may be held to infringe another trade-mark already
established, even if it has no similarity in sound or to the eye, but
if there is a close similarity in ideas._
This is exemplified by a case recently, before the Federal court for
the Southern district of New York. The words "Beats-All" have been
used for a number of years as a trade-mark for pencils. The owners of
the "Beats-All" trade-mark applied for an injunction against the use
of "Knox-All" as a trade-mark for pencils sold by a rival concern. The
defendant contended that "Beats-All" was a descriptive term, indicating
superiority, and, as such, it could not be protected as a trade-mark.
The complainant proved that he had used the mark "Beats-All" for many
years, and that, while it was originally descriptive, long usage had
given it a secondary meaning. He also showed that he had registered
this trade-mark under the ten years' clause. The court held that the
registration of the mark under the ten years' clause removed it from
the class of descriptive phrases--in other words, that registration
under the ten years' clause was a _prima facie_ evidence of validity.
The defendant claimed, that in any case, "Knox-All" was so dissimilar
to the ear and eye, there was no infringement of "Beats-All". This view
was not sustained by the court, which held that a close similarity of
ideas was sufficient to constitute infringement.
_From these, and other cases, it may be seen that a question of whether
a trade-mark has been infringed is sometimes a question of psychology._
It is not necessary for the complainant to produce evidence that buyers
have been actually deceived. His case is established when he can show
that the marks, or symbols, or packages, or general "get-up" of the
goods are sufficiently similar to establish a strong probability of
deception.
The case of _Shaw Stocking Company v Mack_ (21 Blatch 1--1882. C. C.
N. Y.), cited by Mr. Nims, is an example of infringement that seems to
fall within the range of psychological analysis.
"Complainant manufactured at Lowell hosiery of high reputation
and designated one style by the figures '830'. The label bore the
trade-mark 'Shawknit' in script with a flourish and the words
'Seamless Half Hose,' with the name of the manufacturer and the
figures '830.'
"Defendants at Albany bought large quantities of complainant's goods
and with complainant's consent, in effect, held themselves out to the
public as selling agents of complainant's. They then began to buy
of a Connecticut manufacturer goods similar to complainant's '830'
style, but inferior, and sold them under a label generally resembling
complainant's in appearance and bearing the word 'Seamless' in script
of a similar style, including the flourish, followed by the words
'Half Hose, Double Heels,' with defendant's name and address, and the
figures '830.'
"The court enjoined them from using the figures '830' to designate
the Connecticut goods, and from using on the label the word
'Seamless,' printed in imitation of Shawknit."
In the case given above there was no infringement of the actual
trade-mark. But the intent to deceive purchasers was shown by the use
of the style number 830 and by the careful imitation of the general
appearance. Well-informed customers, looking for the trade-mark
Shawknit, would not have been deceived, but the probability of
deceiving the uninformed and careless was sufficient to justify the
injunction.
_It should be kept in mind that the term "infringement" covers not
only the imitation of a technical trade-mark, in whole or in part, but
embraces all violations of the rights of others, in trade, no matter
whether such violations fall under the trade-mark law, or the law of
unfair competition._
The noted case of _McLean v Fleming_ (96 U. S. 245--1877) decided in
1877, is one of the cases that underlie the law of unfair competition.
In this case the Court said:
"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 doing so after being requested to desist."
This is the gist of the whole matter of infringement. If an effort to
trade on the reputation of another can be proved, irrespective of the
form this effort may take, it is held to be an infringement.
"Chatter-Box" is an old-established publication for children, issued
in the form of an illustrated book, once a year. It was held that
"Chatter-Book", a publication issued for the same purpose, and of the
same general appearance, was an infringement.
A piano manufacturer by the name of Henshaw placed upon the market a
piano called the "Steinberg." It was held by the Court that the name
"Steinberg" was an infringement of the name "Steinway," which had been
long used as the name of famous pianos.
[Illustration: _A trade-mark that has achieved great renown._]
In the case of _Johnson & Johnson v Bauer & Black_ (82 Fed. R. 662,
reversing 79 Fed. R. 954) it was held that the complainant's mark of
a red Greek cross, used on plasters, was infringed by the defendant's
mark of a Greek cross with a red circle in the center, containing the
letters "B & B", and used on the same class of goods.
_A trade-mark adopted for a patented article during the life of the
patent, is held to be descriptive of the article, and the right to its
exclusive use expires at the expiration of the patent._
The import of this far-reaching trade-mark doctrine is illustrated in
the celebrated Singer case.
The Singer Manufacturing Company, when the patents on its sewing
machine were about to expire, adopted as a trade-mark the word "Singer"
blended with a device. The effect of this action, if the validity of
the trade-mark had been sustained, would have been to perpetuate the
right to the exclusive use of the word "Singer" as applied to sewing
machines. In this event, at the expiration of the patents, any person
would have had the right to manufacture Singer machines, but only
the Singer Manufacturing Company would have had the use of the name
"Singer."
It was held by the courts that the right to use the name "Singer", as
applied to machines of this particular design, became public property
when the patents expired. The court said, in the case of _Brill v
Singer Mfg. Co._ (41 Ohio St.):--
"A patentee or his assignee, by incorporating into his trade-mark
the distinctive name by which a patented machine has become known
to the public during the existence of the patent, cannot, after the
expiration of the patent, take away from the public the right of
using such name. The trade-mark cannot be made a guise for extending
the monopoly, or preventing the name from becoming, with the patent,
the property of the public."
_But if the trade-mark is adopted and used before the article is
patented, the exclusive right to the trade-mark continues after the
patent expires._
In this case the patent is secondary to the trade-mark, and the
trade-mark is held not to be descriptive. The word "Gants" was used
as a trade-mark on corsets for several years before the article was
patented. At the expiration of the patent, another manufacturer began
to make corsets of this description, calling them "Gants". On the
showing of the plaintiff that the patent was subsequent to the adoption
of the trade-mark, the defendant was enjoined from using the name,
although there was nothing to prevent him from continuing to make
corsets of this description.
_An individual has a right to use his own name in business
transactions, but he cannot use it in a way that will deceive, directly
or by inference, those who buy his goods. He cannot use the likeness of
his name to that of another party of the same name for the purpose of
trading on the latter's established reputation._
This principle of equity is well illustrated by the legal contentions
over the name Baker, used as a trade-mark for chocolate.
For a hundred and thirty-one years the firm of Walter Baker & Co., and
its predecessors, have manufactured chocolate at Dorchester, Mass.
For more than a generation past, the firm has done business under its
present name. "Baker's Cocoa," as the principal product of the firm is
popularly called, has achieved great success. This national popularity
of the name "Baker" as applied to cocoa and chocolates, began, some
years ago, to attract other persons by the name of Baker. One of the
Bakers--a William H.--began to manufacture chocolate in Winchester,
Va., in 1894, and put it on the market, labeled "W. H. Baker & Co." At
that time the products of Walter Baker & Co. were labeled "W. Baker &
Co." It can be seen that the substitution of W. H. Baker & Co.'s goods
for those of Walter Baker & Co., was an easy matter for any retailer
who wanted to do it. The packages were much alike. The retailer made a
larger profit on the product of W. H. Baker & Co.
[Illustration:
LA BELLE CHOCOLATIÈRE
_The Walter Baker Package_
(_Front_)
]
Walter Baker & Co. sued W. H. Baker in the Federal Court in Virginia,
and at the same time began a suit against W. H. Baker's New York agent,
Sanders, to prevent their use of the name "Baker" or the firm name,
"Baker & Co." In the Virginia suit, the opinion of the court was that
while W. H. Baker had a right to use the name "Baker," it being his
own name, he could not use it in connection with the sale of cocoa
or chocolate unless he made a distinction between it and the name of
Walter Baker & Co. which would be easily observed by customers. The
nature of the required distinction was not specified by this court.
In the suit in the Federal Court for the Southern District of New
York against Sanders, the New York agent of W. H. Baker, the court's
decision was essentially the same as that of the Federal Court in
Virginia. The New York court specified, however, that the defendant
should put in conspicuous lettering on his packages these words: "W.
H. Baker is distinct from and has no connection with the old chocolate
manufactory of Walter Baker & Company."
[Illustration:
Established 1780
WALTER BAKER & CO. LTD.
BREAKFAST
COCOA.
DORCHESTER, MASS
_The Walter Baker Package_
(_Back_)
]
This suit had been settled a year or two, when in New York, another
Baker--William P.--began to sell a "Baker's Chocolate." Suit being
brought to enjoin him by Walter Baker & Co., it was decided by the
court that he must not use the name "Baker" alone, or "W. Baker." He
was allowed to use his own name if spelled in full, "William Phillips
Baker," or he might use a middle initial--"William P. Baker"--and he
was directed to state on his labels that his goods were made and sold
by "William P. Baker, of New York."
The contentions of the various Bakers were stilled and the mantle of
peace lay upon them for a short space. Then, as the record shows,
a William H. Baker, of Syracuse, felt the calling of chocolate
manufacturer stir within him.
The William H. Baker of Syracuse imitated the packages and labels of
the William H. Baker of Winchester, Va. His evident intention was to
make it appear that he was the William H. Baker who had been enjoined
by Walter Baker & Co., for he stated conspicuously on his label "W.
H. Baker is distinct from and has no connection with the old chocolate
manufactory of Walter Baker & Co."
William H. Baker, of Winchester, Va., brought suit against the Syracuse
Baker to prevent him from using the former's label. Injunction was
granted, but the defendant was permitted to use the name "William H.
Baker" if he printed the name "Syracuse" conspicuously in connection
with it.
The suit of _Royal Baking Powder Co. v Royal_ (122 Fed. 337--1903; 58
C. C. A. 499-506), deals with the controversy of this well-known baking
powder concern over the use of the name "Royal" on baking powder by an
individual by the name of "Royal." The court held that Royal could make
and sell baking powder under his own name, but to prevent confusion he
should not place his name on the front label, and that he should make
it inconspicuous.
[Illustration:
JUSTICE BRAND
COCOA
WILLIAM H. BAKER
SYRACUSE, INC.
NEW YORK CITY
_The package now used by William H. Baker, of Syracuse, Inc._
]
From a consideration of these cases, and many others where the same
issue was involved, the principle may be definitely established that,
while courts will not prevent an individual from using his name
altogether, they will restrict the manner of its use when there is
shown an intention to trade on another's reputation.
_It is a settled principle of law that a complainant must appear in
a court of equity with clean hands. In other words, an essential
misrepresentation of a complainant's goods, by means of his trade-mark,
or on his labels, or through advertisements, is a bar against his
action for relief from infringement._
One Flavel made and sold a stove under the name "Flavel's Patent
Kitchener." The defendant, Harrison, began to make and sell another
stove under the same name. Flavel sued to enjoin Harrison, but an
injunction was denied when it was shown that Flavel's stove was not
patented, although its name would lead one to believe that it was made
under a patent.
In another case, the makers of a toilet preparation known as "The
Balm of a Thousand Flowers" brought suit to enjoin another party from
selling a similar preparation under the name of "The Balm of Ten
Thousand Flowers." The complainant's motion to enjoin was denied, when
it was shown in court that his "Balm of a Thousand Flowers" did not
contain the balm of any flower whatsoever--in fact, was not a balm at
all, but a soap--and that its chief ingredients were oil and alcohol.
It was held that the trade-mark was deceitful and complainant's motion
was denied. _Fetridge v Wells_ (4 A 66 Pr. 144; B. How. Pr. 385).
The infringement of trade-names and trade-marks in most classes of
merchandise is relatively infrequent compared with the extensive
substitution, infringement and counterfeiting that are continually
going on in the liquor, wine, cigar and allied trades.
This had become an evil of such formidable proportions that in 1904
an organization under the title of the Trade-Mark Protective Company
was formed to run down and prosecute offenders. The clients of this
company are mostly importers and producers of whiskies, wines, olive
oils, cordials, cigarettes and cigars. The company has a staff of
skilled detectives, who are always at work looking for imitators and
counterfeiters of the goods of the company's clients. After securing
evidence of an infringement the company undertakes the prosecution of
the offenders.
The methods of the Trade-Mark Protective Company in prosecuting
infringers and counterfeiters are of the kind that inspire evil-doers
with terror as well as respect.
In many cases the bottles, or packages, and labels--including
trade-marks--have been counterfeited so perfectly, and in such detail,
that expert bottle-makers and lithographers were required as witnesses
to show the difference between the spurious and the genuine.
An account of a few of the cases prosecuted by the Trade-Mark
Protective Company are given here for the purpose of showing the
methods of this class of dealers in spurious goods.
One Young, doing business as the "Cincinnati Distilling Company"
was found using counterfeits of the labels of the Wilson Distilling
Company. He was tried, convicted, and sentenced to six months in the
workhouse and to pay a fine of $300.
A cigar dealer, when asked by customers for the well-known "Romeo and
Juliet" cigar, which bears a label reading "Romeo y Julieta", sold
an imitation bearing a label on which the words "Romeo, el Amante de
Julietta" appeared--the words "Romeo" and "Julietta" being in large
type. The cigars bearing this label were seized, and the dealer was
restrained from selling any "Romeo and Juliet" cigar which did not bear
the genuine label.
+------------------------------------------------------------+
| [Illustration] |
| AWARDED FOR BOOTH'S |
| OLD TOM |
| |
| BOOTH & CO. |
| |
| SUPERIOR |
| OLD TOM |
| GIN |
| |
| LONDON |
| |
| _Genuine Old Tom Gin_ |
| |
| [Illustration] |
| BARTLETT & CO. |
| |
| SUPERIOR |
| OLD TOM |
| GIN |
| |
| LONDON |
| |
| BEWARE OF IMITATIONS |
| NONE GENUINE EXCEPT WHEN IN GLASS STOPPER |
| BOTTLES, AND WITH OUR SIGNATURE ON LABEL. |
| |
| _Spurious Old Tom Gin_ |
| |
| _Reproduced by courtesy of Trade-Mark Protective Company._ |
+------------------------------------------------------------+
On this page are shown pictures of two bottles, each labeled "Old
Tom Gin". The bottle with the spurious label, shown on the right, is
identical in size and shape with the genuine bottle. The labels are
so much alike, in design and coloring, that one would easily pass for
the other on casual, careless inspection. Upon obtaining the requisite
evidence the spurious stock was seized, and the use of the imitation
label was enjoined.
In the case of the owners of Edouard Pernod's Absinthe against John B.
Van Opstal and others it was shown that the defendants were selling an
imitation of Pernod's Absinthe under the fictitious name of "Aernod's"
Absinthe, relying upon the similarity in sound to deceive purchasers.
In this case the label of the genuine Pernod was closely imitated in
design and color, and second-hand Pernod bottles were used.
The defendants being brought into court, a judgment and injunction was
entered against them.
On the next page are two Chartreuse labels. The one on the right,
bearing the name "Garnier" is genuine. The labels were exactly the
same size and color. The infringing label was so clearly an imitation
that the offending party did not contest the case, but surrendered the
imitation labels to the Trade-Mark Protective Company, and agreed never
to use them again.
Since the expulsion of the Chartreuse monks from France, and their
settlement in Spain, they have adopted a new label, but the original
label as shown here is also still used by them.
They have established their right to the exclusive use of the name
"Chartreuse" in the United States by a suit recently decided by the
Supreme Court. Reference to this case has been made on page 35 of this
book.
In another case, where an infringement of Fernet Branca Bitters was
prosecuted, the defendant claimed that he had a right to use the name,
as his partner was named Branca, and that this partner was a skilled
worker in the preparation of bitters. He was, nevertheless, restrained
from using the Fernet Branca name on his labels.
Most of these prosecutions are based on the law of unfair trade, but
in one case, that of Petrotta, accused of selling counterfeit Martell
Brandy and other liquors, the complainant founded his case on the
charge of larceny. He held that in selling spurious goods for genuine
the defendant obtained money under false pretences, and in that respect
he is like a person who obtains money on a worthless check. This
argument was upheld by the court, and Petrotta was sent to prison for
two years.
+-----------------------------------------------+
| _Labels reproduced by courtesy of_ |
| _Trade-Mark Protective Company._ |
| |
| [Illustration] |
| LIQUEUR FABRIQUEE |
| A LA GDE CHARTREUSE |
| |
| _Pre Agostines Pre Agostines_ |
| |
| Agent pour le Etats UNIS et CANADA |
| |
| New York |
| |
| _Infringement of Chartreuse Label_ |
| |
| [Illustration] |
| LIQUEUR FABRIQUEE |
| A LA GDE CHARTREUSE |
| |
| L. Garnier L. Garnier |
| |
| FRANCE |
| |
| Agents for United States H·A·BATJER & Co. |
| 77, Water Street, NEW YORK |
| |
| Trade Mark No. 3989 |
| Registered Sep. 12th. 1876 in the U.S. |
| Patent Office at Washington, D.C. |
| |
| _Genuine Chartreuse Label_ |
+-----------------------------------------------+
This case is notable, in that it is the first case on record of a
conviction for larceny of money obtained on a sale of counterfeit goods.
The refilling of bottles is a specific offence, covered by statutes
in some of the states. It is needless to say that it is extremely
difficult to obtain evidence of refilling that will convict.
In the case of the _People v Luhrs_ (195 N. Y., 377), in which the
defendant Luhrs was charged with having refilled a Wilson Whiskey
bottle, he put in the unusual defence that although he refilled a
Wilson Whiskey bottle, he refilled it with Wilson Whiskey. But the New
York penal code states that it is unlawful to sell any goods which are
represented to be the manufacture of any other party than the seller,
unless such goods "are contained, in the original packages, and under
the labels, marks or names pasted thereon by the manufacturer."
The defendant contended that this law was unconstitutional, because it
prevented him from selling his legitimate property in any way he chose
to sell it, and thus deprived him of his property without due process
of law. The court did not accept this contention, as the defendant
obviously had the right to sell Wilson Whiskey any way he might
desire, and at any price, on the condition that he did not sell it in
a trade-marked package that had contained other goods. The trade-mark
certifies both to the manufacture and the packing of contents. By
refilling bottles, even with the same kind of goods, the dealer makes a
false representation, as the bottle would not contain, after refilling,
what was originally put in it.
Infringement by Foreigners Through Importation
Manufacturers are protected against infringement by foreigners sending
goods bearing infringing trade-marks and labels to the United States by