
    Benno Jaffe and Ludwig Darmstaedter, Appellants, v. Evans & Sons (Limited), Respondent.
    
      Trade mark—a name generic and descriptive of a patented preparation — use of such name by the public, after the expiration of the patent.
    
    "Where a patent is issued for the manufacture of a hydrous wool fat preparation called “lanoline,” and during the term of the patent such word becomes the generic and descriptive name of the preparation, a corporation which, after the expiration of the patent, engages in manufacturing a wool fat preparation,, essentially similar to the preparation manufactured under the patent, may use the word “lanoline” to designate its product, providing that it accompanies such name with indications showing that it is the manufacturer thereof.
    
      Appeal by the plaintiffs, Benno Jaffe and another, from a judgment of the Supreme Court in favor of the defendant, entered in the office of the clerk of the county of New York on the 28th day of August, 1901, upon the decision of the court, rendered after a trial at the New York Special Term, dismissing the complaint upon the merits.
    The suit was brought to restrain the defendant, a British corporation, from using the word “ Lanolin ” or “ Lanoline,” which is claimed to be a trade mark of the plaintiffs’, and from selling its product in packages similar to plaintiffs’ and for an accounting.
    The plaintiffs are citizens of Prussia and are engaged in the manufacture and sale of a hydrous wool fat preparation called “ lanoline,” and until the year 1896 were protected in such manufacture and sale under the term “ lanoline” by United States patent. Although such patent has now expired and they admit that every one is at liberty to manufacture and sell their article, they claim to have a trade mark in the word “ lanoline,” or words similar to it, and, therefore, seek to restrain the defendant, who sells its product, both of hydrous and anhydrous wool fat in this country, as hydrous and anhydrous “lanolin.”
    The plaintiffs’ and also the defendant’s preparation is sold in circular tin cans of very nearly the same size, but a comparison of the labels shows a distinct difference excepting that the defendant’s label contains in red letters the words “ British Lanolin,” printed horizontally and underscored; and on the plaintiffs’, in red letters, printed diagonally, are the words “Dr. Oscar Liebreich’s Lanoline,” the word lanoline being in large type and on a line by itself. The plaintiffs’ label further states that the product is made in Germany ; and names and addresses there and names and addresses of New York agents are given. It has also on one side two designs denoted “ trade mark.” The defendant’s label states that the product is made by special plant and patent process, “ produced by British enterprise and labour only,” and is “ sweeter and cheaper than most makes.” English, Canadian and New York addresses are given and a special trade mark entirely dissimilar from plaintiffs’ is placed at the top.
    From the testimony it appears that during the continuance of the plaintiffs’ patent various manufacturers of wool fat prepared by different processes sold their products under names other than lanoline. The. plaintiffs’ patent related to the process of manufacture and the product, was hydrous wool fat containing a fixed proportion of water which, if driven off, would again be absorbed or taken up. The use of the product was as a base for ointment's, salves, etc.
    It was testified that the defendant’s preparation of hydrous wool fat' or “hydrous lanolin”' was essentially the same in character as the plaintiffs’ “ lanoline ” and could be used as well. One druggist said “ they appeared to be identical,” but that when he bought the British product he knew it was not the plaintiffs’, and there .was no confusion. He wotild in his work use from either can. Another • pharmacist testified that the British manufacture was so labeled he would not be deceived at all as to what he was getting; that he tried it, and as it is cheaper, he now uses no other. The plaintiffs’ hydrous lanolin,, according to the testimony, contained about forty per. cent of water, which brought it within the requirements of the trade.
    Leading text books and manuals were used in evidence in which the word “lanoline” is defined as a “mixture of 75% of pure wool fat and 25% of water,” and, in the Standard Dictionary, lanoline is defined as “An unctuous fatty mixture * * "•'■ • with fatty acids, obtained from various keratin tissues, as the wool of sheep * * * (<L. lana, wool, + oleum, oil).”
    Upon the evidence the Special Term dismissed the complaint, and from the judgment so entered the plaintiffs appeal.
    
      Louis C. Raegener, for the appellants.
    
      Charles W. Lefler, for the respondent.
   O’Brien, J.:

We might well rest our affirmance of this judgment upon the statement of the law as contained in the opinion of the learned judge at Special Term. The insistence of the appellants, however, that the case presents questions of fact and not of law, requires that we again examine the record.

In the leading case of Singer Mfg. Co. v. June Mfg. Co. (163 U. S. 169) it is said : “ The result, then, of the American, the English and the French doctrine universally upheld is this, that where, during the life of a monopoly created by a patent, a name, whether it be arbitrary or be that of the inventor, has become, by his consent, either express or tacit, the identifying and generic name of the thing patented, this name passes to the public with the cessation of the monopoly which the patent created.” That case is also authority for the further statement that one who avails himself of this public dedication may use the generic designation in all forms with the fullest liberty, by affixing such name to the machine or product and by referring to it in advertisements, subject, however, to the condition that the name must be so used as not to deprive others of their rights or to deceive the public and that the name must be accompanied with such indications as will show by whom it is made so that the public may be informed of that fact.

. In the present case, if the word “ Lanoline ” or “ Lanolin ” is generic or descriptive of the article, which we think upon the evidence adduced it is, it follows that the defendant may use the word provided its preparation is substantially the same product as plaintiffs’ and the word is accompanied with indicia which show clearly that the defendant is the manufacturer. This necessarily includes the other proposition that the defendant has no right to manufacture something entirely different and call it “ Lanolin,” nor would it have the right to use that name in advertisements or labels in such a way as to deceive the public into' thinking its product was the one manufactured by the plaintiffs.

As said in the case from which we have already quoted (Singer Mfg. Co. v. June Mfg. Co., supra): “ The public having the right on the expiration of the patent to make the patented article and to use its generic name, to restrict this use, either by preventing- its being placed upon the articles when manufactured, or by using -it in advertisements or circulars, would be to admit the right and at the same time destroy it. It follows then, that the right to use the name in every form passes to the public with the dedication resulting from the expiration of the patent.”-

The law being settled, therefore, what the.plaintiffs claim is, that the words “ British Lanolin Hydrous ” and “ British Lanolin Anhydrous” do not honestly describe the defendant’s product; and, although the word may be descriptive, it was unnecessary for the defendant to use it on its labels and thus injure the plaintiffs. Taking up this last proposition first, if defendant had the right to use the name,, even though such use might have injured the business of the plaintiffs, which was likely, since the latter according to the evidence charged sixty cents a can,- while the defendant’s price was twenty cents — nevertheless, the court, would have no right to interfere unless by imitating the plaintiffs’ label or by simulating the appearance of the packages, the defendant was guilty of fraud upon the public in endeavoring to palm off its own product as the one manufactured by the plaintiffs.

There was upon the trial no proof offered that would justify the court in finding, nor did it find, there was any fraud' or misrepresentation on the part of the defendant; nor did the defendant introduce any confusion in the trade; nor did it appear' that any one was misled by the expression “ British Lanolin,” as employed by it, into believing that he was purchasing the plaintiffs’ lanoline, which is made in Germany. Nor does it appear that there was any-marked likeness in the label or dress of the goods of the parties; and, therefore, the whole dispute turns upon defendant’s right to use the word “ Lanolin,” which, as we have said, being descriptive of the article, it might do, provided the word honestly described the defendant’s product and that product did not essentially differ from the plaintiffs’. Both use wool fat as the basic ingredient ; and though it was not shown (nor was it important) precisely how either product was manufactured, the goods sold had common characteristics.

The plaintiffs’ product consisted of wool fat prepared by a certain process, containing, besides wool fat, about twenty-five per cent of water. The defendant’s preparation, referred to as British hydrous lanolin, in addition to wool fat, contains, as testified, about thirty per cent of water. Further, it was shown the two preparations were substantially the samé in nature; and there was other proof tending to show that lanoline was accepted as standard if it contained no more than thirty per cent of water. And it appears that the ability of the prepared wool fat to take up a large amount of water, which, if driven off, is again absorbed, is characteristic of the product termed lanoline, which characteristic the defendant’s preparations indisputably had.

“ Hydrous ” is the scientific term indicating the presence of water; while anhydrous ” signifies the absence of water and the quality of taking it up. The term “ anhydrous,” therefore, might properly be applied to the plaintiffs’ product after the water it contained was driven off; and thus it becomes evident that' the use of the words “hydrous” and “anhydrous,” in connection with lanoline, would have a definite meaning and be entirely understood by every one familiar with its nature and characteristics. Hence, no one would be misled • by the addition of these words, although, strictly speaking, the phrase “ hydrous lanolin ” may be tautological and “anhydrous lanolin” a contradiction of terms. What the defendant sold was the product in its two forms.

In view of the fact that the defendant had two preparations of wool fat, designated as hydrous and anhydrous lanolin, the one containing water in the first instance and the other without water, but capable of absorbing it, as was clearly indicated by the terms used, any question of fraud or deception was eliminated so far as'the public was concerned and particularly as the name by whom and the place where manufactured was expressly stated, was there no probability of any one being deceived into thinking that the defendant’s was the plaintiffs’ product. So far as the manufacture of British hydrous lanolin was concerned, it was substantially the same article or product as was manufactured by the plaintiffs and no deception was practiced. Nor was there any deception in the sale of “ Anhydrous Lanolin,” which the plaintiffs make no claim of preparing for sale.

We think, therefore, that there was nothing to prevent the defendants from applying to their product as prepared the terms which truthfully represented the inherent elements and characteristics of lanoline.

Upon the facts, therefore, as well as upon the law, we think that the Special Term was right in the conclusion reached, and the judgment, accordingly, should be affirmed, with costs.

Van Brunt, P. J., Ingraham, Hatch and Laughlin, JJ., concurred. .

Judgment affirmed, with costs. 
      
       The following is the opinion of O’Gorman, J., delivered at Special Term:
      O’Gorman, J.:
      The plaintiffs and their assignors for twenty years prior to 1896 had through certain patents a monopoly in the manufacture of a purified wool fat used in ointments, salves and soap, which product they designated "Lanoline.” Since-1896 they have used the same name as a trade mark, and this action is brought to restrain the defendants from applying the name to their product, which is-substantially similar to the one covered by the plaintiffs’ patents; and is sold as “ British Lanolin Hydrous” and “British Lanolin Anhydrous.” The action cannot be maintained. Upon the cessation of the monopoly created by the patents the plaintiffs reserved no exclusive right to the manufacture of their product or to the use of its identifying and generic name. Upon the expiration of the patents the name, as well as the right to manufacture and sell the product, became public property, and no trade mark right exists or could be acquired by subsequent use. (Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169.) The name was the property of-the patentee only during the life of the patents, and to permit its exclusive retention thereafter would practically extend the monopoly indefinitely. That somewhat similar articles produced by other processes were known by other names during the period covered by the patents is entirely immaterial. ‘ ‘ Lanoline ” was then exclusive property, and competitors were driven to the employment of other names for their goods to escape the imputation of infringement of rights under the patents; but now, the patents having expired, the commodity and process and the scientific or descriptive term by which it was designated by the plaintiffs, and by which it has become universally known, have passed to the public, and the plaintiffs are not entitled to the relief which they seek in this case. The allegations as to deception and unfair competition are without evidence to support them, and the complaint must be dismissed, with costs.
     