
    THE MERRIMACK MANUFACTURING CO. a. GARNER.
    
      New York Common Pleas; General Term,
    November, 1855.
    InjuNctioN. — Affidavits to Support. — Trade Marks.
    
      It seems, that on a motion to dissolve an injunction granted on the complaint and affidavits, the defendant is not at liberty to read additional affidavits in support of the complaint.
    An injunction should not be granted at the commencement of a suit brought to enjoin the defendants from the use of plaintiffs’ trade mark, and to recover damages, &c., unless the legal right of plaintiff, and the violation of it by defendants are very clear.
    
      Appeal from an order at special term, denying a motion to vacate an injunction.
    This action was brought by the Merrimack Manufacturing-Company against Thomas Garner, Darius B. Mangara, and L. Mortimer Thorn. The complaint stated that the plaintiffs were a corporation established at Lowell, Mass., and engaged in the manufacture of cotton goods, known as “prints —that their goods had acquired a high reputation; — that they had been accustomed, since their incorporation in 1822, to use upon the prints manufactured by them, certain tickets or trade marks, varying somewhat in form and device, but containing the distinguishing words, “ Merrimack Prints,” and by such usage had acquired an exclusive right to the use of the name “ Merrimack,” as a trade mark; — that in 1851 they adopted, and had since extensively irsed a label of a particular device, containing the words, “ Merrimack Prints,” to the use of which label they had acquired an exclusive right; — that the defendants, being engaged in New York in the manufacture of cotton prints, afterwards fraudulently prepared a ticket similar to that adopted in 1851 by plaintiffs, having the word, “Merrimack,” conspicuously inserted, and had used it in the sale of their goods, as an imitation of plaintiffs’ trade mark; — that by reason of this imitated trade mark, many persons had been induced to purchase prints manufactured by the defendants, in the belief that they were of the plaintiffs’ manufacture, whereby plaintiffs had sustained much damage. The complaint prayed an injunction restraining defendants from using the imitated ticket, or the words “ Merrimack,” or, “Merrimack Prints;”- — for an account of profits realized by defendants upon sales of goods made by them, and sold with an imitation of plaintiffs’ trade mark ;■ — and for judgment for such profits, and for damages.
    Attached to the complaint were specimens of the two tickets referred to. They were of nearly the same size, each of them being about six inches long by four wide, and in the shape of a parallelogram scolloped at the corners. Both of them were printed on straw colored paper of almost precisely the same shade. Each of them consisted of a border line, with corner ornaments, an oval wreath of flowers within the border, and an inscription within the oval wreath. The border lines were almost precisely the same. The corner ornaments differed considerably; in the plaintiffs’ label they were light vines whose tendrils extended out upon each side of the parallelogram towards the opposite corner, but there was a considerable space between them. In the defendants’ label the design of the corner ornaments was different, being much heavier, and the arms of each extended out and met those of its neighbor in the opposite corner; so that the four together formed a continuous border around the label. The design of the oval wreath of flowers, which was the most conspicuous ornament in the plaintiff’s label, was almost precisely the same in both tickets, but it was much more nicely executed in the plaintiffs’ label than in the defendants’. At the foot of each wreath was a blank space left for the insertion of the number of yards in the piece. This number in the plaintiffs’ label was printed, in the defendants’ it was written with a pen. The inscription in the plaintiffs’ label consisted of two lines curving with the sides of the wreath, and a sort of ornamental scroll between them. The upper line contained the words, “ MERRIMACK PRINTS,” the lower line “Fast Coloes, # Lowell, Mass.” The inscription in the defendants’ label consisted of three lines, the upper and lower of which were curved like the lines in the plaintiffs’ inscription, and the middle one occupied the place of the scroll used by plaintiffs; the words were :—
    ENGLISH FREE TRADE.
    MERRIMACK STYLE.
    WARRANTED PAST COLORS.
    In general appearance the defendants’ label was heavier or darker, and more coarsely executed than the plaintiffs’.
    On the complaint, which was verified, and one additional affidavit, the plaintiffs obtained at special term a temporary injunction, which the defendants now moved to dissolve.
    Defendants’ motion was based upon their verified answer, which stated as follows: — That the only way in which the kind of goods manufactured by the plaintiffs and the defendants, and known as Merrimack Prints, were distinguished or described by dealers in such goods, was by reference to the names of the manufacturers of them; — that the plaintiffs had no exclusive right in the manufacture of the goods known as Merrimack Prints, or in the use of the term Merrimack, or Mem-mack Prints; — that the plaintiffs had not confined themselves to any peculiar design in their tickets, but had frequently changed them, and had used since the year 1851 a variety of labels beside that mentioned in the complaint, specimens of which were attached to the answer; — that the defendants were engaged as agents in the sale of goods manufactured by the Dutchess Company, a New York Corporation, whose goods were of a finer quality than those made by plaintiffs, but were sold at a lower price; — that the Dutchess Company had, since 1851, used the ticket mentioned in the complaint, but had also, during the same time, used various other tickets, specimens of which were also attached to the answer; — that the words, “ Merrimack Style,” in their labels, were taken from a label affixed to similar goods imported from Great Britain previous to 1850, aná not from any label made by the plaintiffs. And the answer denied that the ticket used by defendants was an imitation of any trade mark of the plaintiffs, or that the defendants had ever sold any of the goods manufactured by the Dufchess Company, as goods manufactured by the plaintiffs, or that the plaintiffs had sustained any of the damage alleged in the complain t-
    Neither of defendants’ labels attached to the answer particularly resembled any of those used by plaintiffs.
    On hearing of the motion the plaintiffs offered a number of affidavits of dry goods merchants doing business in New York, to the effect that “ Merrimack Prints” were known in the trade as prints manufactured by the plaintiffs; — that there was no such thing known in the trade as a “ Merrimack Style,” meaning a particular style of goods independent of the factory from which they came, but that where the word Merrimack was used on prints, the trade always understood that the goods were made by the plaintiffs. These affidavits were offered in support of the allegations in the complaint. The defendants ob-iected to their being so received.
    
      The motion to dissolve the injunction was denied, the following opinion being rendered
   Woodküff, J.

After a careful consideration of the subject, and an examination of the authorities upon which counsel relied on the argument, my conclusions are; — ■

First. That the plaintiff is not at liberty to read affidavits on the motion to dissolve the injunction, to support the allegations in the complaint, and the affidavits which were presented on the argument have been therefore excluded. Whether in a case in which the defence rests upon new matter set up in the answer in avoidance of the facts charged in the complaint, but admitting the charges to be true, the answer may be regarded as itself an affidavit of such new matter. I do not now think it necessary to admit or deny.

Second. That upon the complaint and answer, the complainant’s trade marks have been and are so simulated as probably to deceive those who desire to purchase the complainant’s goods, and so as (although, perhaps, not to deceive those who purchase directly from the defendants themselves) to deceive the great mass of consumers, especially the unskilled and all who are not on the alert to detect devices adopted to facilitate sales, by which false impressions respecting the origin of the goods are produced.

That the specific differences between the two labels are so ambiguous, and convey to the purchaser so little information, that the exhibition of the defendants’ goods, bearing the label in question, unaccompanied by any further information, cannot fail to induce customers to believe that the goods are of the plaintiffs’ manufacture, that is, are “ Merrimack prints.”

That the defendants’ answer does not suggest any sufficient reason or motive for the use of the label complained of, or of the term “ Merrimack,” in connection with the equivocal expression styles, or otherwise, unless accompanied by words clearly and intelligibly excluding the idea that the goods are made by the plaintiff, and that although the defendants deny any actual intent to defraud, their acts tend directly to that result.

That just liberty to compete with the plaintiffs in the fullest and freest manner does not require that the defendants should use the label in question, but, on the contrary, fair and open competition, by its very terms, imports that the goods of the defendant should be exhibited in such wise that the defendants’ shall themselves gain the reputation and credit which the excellence claimed for their goods will secure to the manufacturers.

That the injunction cannot operate to prejudice the defendants in a frank and fair endeavor to compete with the plaintiffs in respect to the description and quality of their goods, unaccompanied by devices to mislead the public in respect to the actual origin of the goods sold; and although this furnishes no reason for granting an injunction if the plaintiffs do not otherwise show themselves entitled thereto, it relieves the remedy from any imputation of harshness towards the defendants.

And that the delay of the plaintiffs in asserting their rights has not been such as ought to deprive them of the injunction, if, in the judgment of the court, they are otherwise plainly entitled to such protection.

The injunction in its spirit and manifest design must be sustained. Some modification of its terms may be proper. The defendants should be restrained from using the label specified in the complaint, and also from using a label containing the word “ Merrimack,” either by ifcelf or in connection with the word “ styles,’’ or any other ambiguous or equivocal word or words, unless accompanied by terms which plainly exclude the idea that the goods (to which it may be affixed) are manufactured by the plaintiffs, or are Merrimack prints. And the injunction may be modified accordingly.

W. S. Dodge and D. Lord, for appellants.

A. F. Smith, for respondents.

The costs of the motion should abide the event of the suit.

Prom the order of Judge Woodruff, the defendants appealed.

Daly, J.

Courts of equity have not interfered by injunction in cases of this kind, except in aid of a legal right, and if the fact of the plaintiff’s property in the trade mark, or of the defendants interference with it, has appeared at all doubtful, the plaintiff has been left to establish his case first by an action at law. (Motley v. Dowman, 3 Mylne & C., 1; Croft v. Day, 7 Beav., 84 ; Spottiswood v. Clark, 2 Phillips, 154 ; Partridge v. Merick, 2 Sandf. Ch. R., 626). Unless the case be very clear, says Lord Cottenham, in Spottiswood v. Clark, it is the duty of the court to see that the legal right is ascertained before it exercises its equitable jurisdiction.” “ Unless it is so clear, that there can be no reasonable doubt with regard to the legal right, it is better that the court should not exercise its equitable jurisdiction,” and, again, he says in Motley v. Dowman, “ although, sometimes in a very strong case, it interferes in the first instance by injunction, yet in a general way, it puts the party upon asserting his right, by trying it in an action at law.” To the same purport was the holding of Lord Langdale in Croft v. Day. “ There are cases,” he says, “ like that of the London Conveyance Company, (Knalt v. Morgan, 2 Keene, 213), in which the injunction is granted at once; there are cases like that of the Mexican Balm, (Berry v. Truefit, 6 Beav., 66), in which the injunction is refused until the plaintiff has established his right at law.”

In the case now before us, the property of the plaintiffs in the trade-mark used by them is not in dispute, but the question is whether that used by the defendants is either a fraudulent imitation of it, or such an imitation as would ordinarily deceive purchasers. There is an undoubted resemblance. The words used to designate the particular kind of goods in both labels are enclosed in a floral wreath of the same description. But this, of itself, is not enough. (Patridge v. Mensk, 2 Sand. Ch. R., 622 , 2 Barb. C. R., 101; Spottiswood v. Clark, 2 Phillips, 154). In the first of these cases, the embellishment of a bee hive was used upon both labels, and in the latter case, the almanac published by the defendant was embellished, like that of the plaintiff, with a wood-cut of the Greenwich Observatory upon the cover. In the words printed upon the two labels, in the present case, there is a difference, and an obvious one. The words on the plaintiffs’ label are “ Merrimack Prints, Fast Colors, Lowell, Mass.,” on that of the defendants, “English Free Trade, Merrimack Style, Warranted Fast Colors.” The existence of any fraudulent intent, or of any intention to imitate the plaintiffs’ labels, and to pass their goods off for those o£ the plaintiff, is denied by the defendants in their answer, and we are left to determine, so far as the present relief is asked for, whether we can say upon a mere comparison of the labels, that the effect of that used by the defendants would be to deceive the public, and thereby operate injuriously to the plaintiffs; and upon that comparison alone I think the case is not so clear to me as to warrant the granting of an injunction in the first instance. The rule laid down by Vice Chancellor Sandford in Partridge v. Mensk is this: The Court will hold any imitation colorable which requires a careful inspection to distinguish its marks and appearance from those of the manufacturers imitated. It is certainly not bound to interfere where ordinary attention will enable a purchaser to discriminate. “ It does not suffice to show,” he says, “ that persons incapable of reading the labels might be deceived by the resemblance. It must appear that the ordinary mass of purchasers, paying that attention which such persons usually do in buying the article in question, would probably be deceived,” and applying that rule to the labels in the present case, I think we cannot say that the ordinary mass of purchasers would be deceived by the defendants’ label.

Their label is not only distinguished from that of the plaintiffs by the words “English Free Trade,” to which a very significant meaning may be attached, but instead of Merrimack Prints, we have Merrimack Style. Now there can be no doubt but that the defendants have a right to imitate and sell the same style of goods as those manufactured by the plaintiffs. (Ingleton v. Bolton, 3 Doug., 293 ; Hogg v. Neely, 8 Ves., 215 ; Canham v. Jones, 2 Ves. & B., 218; Seeley v. Fisher, 11 Sim., 581; Holloway v. Holloway, 13 Beav., 209). And the plaintiffs have no ground of complaint unless the label used upon the article in imitation would lead purchasers to suppose that they were buying goods actually manufactured by the plaintiffs. It is alleged in the answer that the goods of the plaintiffs are widely known as the Merrimack Style,” from their width and description. That the same style and description of printed goods is not otherwise known among the trade, and that the only way of informing the public that the defendants’ goods were of the same style and description, was by comparing them with or likening them to the goods of the plaintiffs. It may be, from the views expressed in some of the cases, that the defendants would not be at liberty to manufacture and vend an inferior article, and put it forth to the public as of the same kind and quality as that of the plaintiffs, though I think it exceedingly doubtful if they could be restrained in such a case. (Clark v. Freeman, 11 Beav., 112). In the present case, however, it is alleged in the defendants’ answer, that the finest qualities of the article sold by them with the label aforesaid, are superior to the finest quality of prints manufactured and sold by the •plaintiffs.

I think the injunction should have been dissolved, and the parties left to try the issue of an actual imitation involving undoubtedly the question of fraudulent intent and of actual injury, raised by the pleadings, and then if the plaintiffs succeed in establishing a case of actual injury to them by the use in the market of the defendants’ label, the Court would restrain the defendants by injunction from making use of that label thereafter.

WooDRUFF, J.,

dissented. — I retain still the views expressed by me in my opinion at special term, which may, for the purposes of this decision, be taken as my opinion on this appeal. 
      
       The principal authorities cited upon the argument before the special term were the following:—
      That the affidavits offered by plaintiffs were not admissible. (Manchester v. Dani, 6 Paige, 295; Hartwell v. Kingsley, 2 Sandf. S. C. R., 674 ; 2 C. R., 56).
      In support of the motion upon the merits. (Canham v. Jones, 2 Ves. & B., 218 ; Singleton v. Bolton, 3 Dougl., 293 ; Perry v. Truefit, 6 Beav., 66 ; Spottiswood v. Clark, 2 Ph., 154; 2 Sandf. Ch. R., 622; Crawshay v. Thompson, 4 Mann. & G., 357 ; Rogers v. Nowill, 5 C. B., 110 ; Seeley v. Fisher, 11 Sim., 581; Clark v. Freeman, 11 Beav., 112 ; Holloway v. Holloway, 13 Ib., 209 ; Cases cited in 2 Sandf. Ch. R., 586, and 600; Bramwell v. Holcomb, 3 Mann. & Gr., 738; Saunders v. Smith, Ib., 711 ; Rochdale Co. v. King, 2 Sim. N. S., 78).
      In support of the injunction. (Coats v. Holbrook, 2 Sandf. Ch. R., 594 ; Perry v. Truefit, 6 Beav., 66; Howard v. Henriques, 3 Sandf. S. C. R., 725; Amoskeag Co. v. Spear, 2 Sandf. S. C. R., 607; Croft v. Day, 7 Beav., 84).
     