
    Eva W. Day and Others, as Executors of and Trustees under the Last Will and Testament of Thomas Day, Deceased, and Others, Respondents, v. Charles B. Webster and Others, Appellants.
    
      Action based upon unfair and dishonest competition—fraud is of the essence thereof — use of a label in imitation of that used by the plaintiffs.
    
    In an action based, not upon the infringement of a technical trade mark, but upon unfair and dishonest competition, resulting from the use by the defendants of a label alleged to be an imitation of that used by the plaintiffs, it is of the essence of the right of action that the plaintiffs prove that the defendants are fraudulently attempting to sell their own goods as those of the plaintiffs.
    Proof required where there is no evidence to show that customers have been actually deceived and where the case is to be decided simply upon an inspection of the two .labels, considered.
    Appeal by the defendants, Charles B. Webster and others, from an interlocutory judgment of the Supreme Oourt in favor of the plaintiffs, entered in the office of the clerk of the county of ¡New York on the 27th day of March, 1897, upon the decision of the court rendered after a trial at the ¡New York Special Term.
    The action was brought to restrain the defendants from using upon their goods a label claimed to be an imitation of that used by the plaintiffs, and for an accounting by the defendants of the profits realized by them upon goods bearing the alleged imitation of the plaintiffs’ label.
    
      Delos McQurdy, for the appellants.
    jE H. Moeran, for the respondents.
   Barrett, J.:

There is no question in this case of the infringement of a technical trade mark. No claim upon that head, apart from their entire label, is made by the plaintiffs in their complaint'; and upon the trial, in answer to a query of the learned, judge, the plaintiffs’ counsel conceded that there was no question of trade mark. The plaintiffs’ label was treated as the equivalent of their trade mark. They speak throughout of their adoption, not of any defined name or' device, but of a special, particular and distinctive label, device and trade mark,” a facsimile of which is appended to thei/r complaint. That facsimile is their entire label as applied to every bottle of ale-put up and sold by them.

What they claim, therefore, is, in substance, unfair competition; that is, that the defendants are fraudulently attempting to pass off their goods as the goods of the plaintiffs. The question thus is, have the plaintiffs proved this charge of fraud % In the case of a technical trade mark to which the plaintiff shows a property right, fraud is- not the essence of the claim. That property right may be - infringed unintentionally as well as fraudulently, and the innocent infringement will be restrained irrespective of the question of intention. Not so, however, where the question is solely one of unfair competition. There, fraud is the essence -of the claim. It is true that the similarity of the alleged wrongdoer’s label may be so great that fraud will be inferred from a mere inspection of the respective labels. Where, however, the similarity is not so great as, upon a mere inspection, to warrant the conclusion of fraud, resort may be, and usually • is, had to evidence aliv/nde. In the case at bar, the plaintiffs rested upon the introduction, of the respective labels. They offered no scintilla of evidence tending otherwise to show a fraudulent intention. On the other hand, the defendants gave evidence, which is not in any manner rebutted, to the effect that London Club ale Lad been openly sold by them under the label now complained of for some four years, without objection or interference; also, that this ale, thus labeled, had been on the market for upwards of six years; that it had been listed on their catalogues as London Club ale, and billed and sold under that name; that they never knew of any instance, and never heard of any, in which their ale or their label was mistaken for the plaintiffs’. All this evidence was fortified by that of an independent witness, himself an importer of wines and liquors, who- testified that he had known the London Club ale and' its label for some ten or twelve years; that he never heard of any one mistaking that ale for the plaintiffs’ ; that the difference between the two is perfectly plain and. clear; that the London Club ale is a brand of ale prominently known among dealers, and is and has been for years listed and sold by dealers'for London Club ale.

We are, therefore, called upon to determine whether the similarity of the two labels is so great that, without additional proof on the part of the plaintiffs, and against this positive and undisputed testimony furnished by the defendants, a fraudulent intention upon the latter’s part to palm off their ale as that of the plaintiffs is made out. Ho actual deception has been shown; quite the contrary, as we have seen. Is, then, the probability of deception so great as to .warrant the presumption of fraud? We think but one answer can be given to this question, and that it must be in the negative.. It is difficult to see, upon an inspection of these labels, how even the most unwary purchaser could be deceived. The prominent feature of the plaintiffs’ label is “Bass & Co.’s Pale Ale.” In the circle which forms the center of a device founded upon the British arms, we find printed in red letters the words, “ Bottled by Thomas McMullen, 44 Beaver St., Hew York.” As if to. draw the eye to these words in red letters, the signature “ Thomas McMullen & Co.” appears, apparently written across the circle in deep black ink. At the top of the label are the words “ Trade Mark,” in red letters; at the bottom the words “ White Label,” also in red letters. Beneath the device-of the British arms appears the signature “Bass & Co.,” also seemingly written, followed by the printed words, “ Burton on Trent, England.” Underneath the latter words a “ caution ” is subjoined, in red letters, as follows: “ To prevent deception observe facsimile of signature on Label and Cork.” Upon the neck of the bottle is a small label, with the words “'White Label” printed on it, followed by the written words “ Thomas McMullen.”

Let us now look at the defendants’ label. Its most striking feature is “London Club Ale.” These words are prominently printed in even larger letters than the words “ Bass & Co.’s Pale Ale ” upon the plaintiffs’ label. In the center of the circle, which in a measure corresponds with that upon the plaintiffs’ label, the words “ Wells. Bros. London,” appear in printed letters, together with a triangular-shaped device in red. Not a word here as to the bottling of the ale. No signature of Wells Bros, across the circle in contracted ink. No signature^ in fact, at all.. No signature beneath Wells Bros, or of any one. Instead of the plaintiffs’ “ caution ” we find a few words as to the proper manner of keeping the ale in good condition. The words at, the top and bottom of the plaintiffs’ label are .conspicuously absent, while the small label on the neck of the defendants’ bottle reads, “ London Club — Wells Brothers.”

The suggestions of similarity are the use of the British arms device, the word “ Extra ” in red letters after the words London Club Ale,” and the appearance beneath the British arms device of the words, “ From Burton on Trent, England.” As to the British arms device, there is no attempt to photograph the plaintiffs’ design.. On the contrary, the defendants’ design varies materially from that of the plaintiffs. There is, in this particular, nothing more than the application, in a modified form, of something which is in general use. The word “ Extra ” has surely no possible significance. As to the remaining point of alleged similarity, we need only say that the defendants were certainly not called upon to defend themselves from the mere .insinuation — for that is all there is of it, in the absence of averment or proof—■ that their ale was not manufactured at, and did not come from, Burton on Trent, England. The defendants’ label, we may add, is white like the plaintiffs’, and it is shaped in a somewhat similar manner to the plaintiffs’. These details, however, are trivial and entire insufficient, in view of the marked evidences of dissimilarity in crucial matters, to warrant such a finding as was essential to entitle the plaintiffs to the relief they asked.

The rule, where the case is one of unfair and dishonest competition, and not of trade mark • proper, is well stated in Fischer v. Blank (138 N. Y. 252). The true rule^ as was said by the Court of Appeals in that Case, “is whether the resemblance is such that it 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.” The learned trial judge observed, in the course of the trial now under review, after an inspection of the two labels, that he saw no resemblam.ee at all between them ; yet in his written opinion he says he is unable to distinguish the case at bar from Fischer v. Blank (supra). It is apparent that the judgment which he expressed upon the trial was subsequently changed by what he supposed to have been held in the case cited. We think the learned judge must have overlooked the fact that in Fischer v. Blank (supra), there was abundant proof, not only that the defendant’s labels were calculated to deceive, but that they did, in fact, deceive many purchasers. This latter fact was adverted to and emphasized in the Court of Appeals as well as at the General Term. In the case at bar, however, such evidence is completely wanting, and, consequently, we have no guide save the labels, standing alone. How, as these labels stand alone, they must, be considered, as the Court of Appeals said, in the light in which they would appear to an ordinary buyer, making his purchases under the ordinary conditions which prevail in the conduct of the particular traffic in question. What, then, would an ordinary purchaser of Bass & Co.’s pale ale look for ?• And what would naturally and primarily strike his eye ? Clearly the name. As was said in Blackwell v. Crabb (36 L. J. Ch. [N. S.] 504), where the case of infringement is to be decided merely by an inspection of the two labels, and it is difficult to say where the imitation begins, the “ important question is, what is the customer likely to look at?” In that case, said the court, the “name is the thing which a customer would look at, and that is conspicuously different.” This doctrine is applicable here. These plaintiffs are selling their “ Bass & Co.’s Pale Ale,” with a label which emphasizes that fact. The defendants are selling their “ Wells Bros. London Club Ale,” with a label which, with equal, if not greater prominence, brings their trade name and characterized ale directly before the eye. The name, however, is here but a single point of dissimilarity. There are, as we have seen, many- others. Points of dissimilarity in fact abound. The-more we look at these labels the less we see of similarity. If, ' however, our view of the marked dissimilarity in these labels be too strong, still the question whether, upon the whole;, the defendants’ label is calculated to deceive the ordinary buyer of “ Bass & Co.’s Pale Ale,” is, to say the least, sufficiently doubtful to call for further proof before convicting reputable merchants of inténtional fraud.

We think, therefore, that the judgment should be reversed and a new trial ordered, with costs to the appellants to abide the event.

Van Brunt, P. J., Rumsey, Williams and Patterson, JJ., concurred.

Judgment reversed, new trial ordered, with costs to appellants to abide event.  