
    ENOCH MORGAN’S SONS’ COMPANY v. SCHWACHOFER.
    
      N. Y. Supreme Court, First Department;
    
    
      Special Term, January, 1878.
    Trademarks. — Colorable Imitation.
    The doctrine of relief in equity against infringment of trademarks rests upon the principle that no one should be permitted so to dress his goods for sale as to enable him to induce purchasers to believe that they are the goods of another.
    
    
      To sustain an action in a State court for an injunction against an infringement or imitation of trademark or labels, plaintiff, although his label contains a registered trademark, need not prove an imitation of that mark. It is enough if the general effect of defendant’s wrapper and label constitute a wrongful imitation .of those of plaintiff, although defendant may have replaced -the symbol or “trademark ” with a clearly different device.
    
    Trial by the court.
    Enoch Morgan’s Sons’ Company, a manufacturing corporation formed under the laws of New York, sued John T. Schwachofer for an infringement of the trademark and labels, &c., of Sapolio, described in the complaint as consisting of the symbol of a human face . reflected in a polished pan ; of the word “ Sapolio ” ; of wrapping a cake of Sapolio in an argentine foil covered paper, so as to present a silvery surface to the outside of the package, and encircled by an ultramarine colored band of paper, of about half the width of the package, extending entirely around it, and printed in gold letters.
    The defendant, under the name of the East River Chemical Works, had, for some time, been engaged in selling an article called Saphia, of substantially the same properties as Sapolio, and put up in a cake of very nearly the same size and shape, wrapped in similar argentine foil covered paper, and encircled in like manner with the plaintiff’s article by an ultramarine colored band of paper, printed in gold, bearing upon one side the word “ Saphia,” or the “ Queen’s Brilliant,” and on the other side the symbol of a woman’s face looking at an article held up in one hand. The printing of the symbol and of the lettering upon “Saphia” was in gilt, and bore the same general resemblance to that of the plaintiff’s Sapolio, as would be presented by a cake of nearly the same dimensions, encircled in the same kind of silver paper and banded around by a blue colored paper band.
    Other facts appear in the opinion.
    An application for a preliminary injunction had been denied.
    
      John Henry Hull and Clarence A. Seward, for the plaintiff.
    
      J. H. Stanbrough and J. Kugelmann, for the defendant.
    
      
       Earlier cases have sought for various theories in support of this branch of equity jurisprudence. Some authorities put it on the basis of property in plaintiff violated by defendant; others on the basis of fraud and deceit actually committed to the injury of plaintiff; others on damage to him by interference with his trade; and more still, on several of these elements; all, however, seeking for a guide in analogy to other classes of actions for injuries to property, or for fraud. In many cases, therefore, the courts have laid down rules drawn from these analogies, which have limited in various incongruous ways the relief that the courts might otherwise properly give. And much of the conflict in the cases arises from the inherent difficulty of limiting a branch of equity jurisdiction which has its own peculiar necessity and natural limits, by rules which have their origin and propriety in the peculiar character of other branches. The elements of property and of fraud are usually involved, incidentally at least, and considerations of public policy have infused wholesome energy into the modern line of decisions on this subject. The true basis of relief, however, and its just limits are found not in resorting to rules appropriate to other classes of cases, but in the application of the test announced by Mr. Justice Lawbence in the case in the text. The gist of the cause of action is in the fact that defendant is sailing under false colors to the danger of plaintiff’s legitimate trade.
      The extension of the principle beyond cases of trademarks, in which it seems to have originated, to the protection of signs, labels, wrappers, colors, and the like, illustrate the true basis of the doctrine.
      In Massachusetts, where the court has been very cautious in granting relief, and has hesitated to extend the rule, the style and color of label have been recognized as proper subjects of protection beside what is usually understood as a “trademark.”
      In Dixon ». Dixon, which has never been reported, the plaintiff’s labels contained the following words:
      “ Stove Polish, Dixon’s Prepared Carburet of Iron. Price 10 cents.
      “Prepared from pure carburet of iron only by Joseph Dixon & Co., black lead crucible manufacturers and practical chemists, Jersey City, N. J.”
      [Here followed recommendations, &c.]
      One of the imitations by John Dixon and one Meyer had “John Dixon & Co.’s,” instead of “Dixon’s.” Another had the words “Prepared from pure carburet of iron only for George M. Dixon, wholesale druggist, northeast corner of and Main streets, Cincinnati, Ohio,” instead of the corresponding clause in the genuine.
      The decree by Bigelow, J., awarded a permanent injunction according to the prayer of the bill, protecting both the general style and color of package, contents of labels and the trade-cards.
      
        Defendants violated the injunction, and were convicted of a contempt in so doing by Hoak, J.
      For other and more recent authorities, see McLean v. Fleming, U. S. supreme court, 18 Alb. L. J. 38; Colman v. Crump, 70 N. Y. 573; Caswell v. Davis, 58 Id. 223, and cases cited; Taylor v. Gillies, 59 Id. 331, and cases cited; Talcott v. Moore, 6 Hun, 106.
    
    
      
       So when one trader sells an unpatented production of his own in bottles or casks indelibly marked with his known design, .the court will restrain a rival trader from selling a similar production in the same bottles or casks, although the rival trader puts a label of his own thereon. Oh. Dio., April 10, 1878, Rose o. Loftus, 38 Daw Times Hep. 3. 8. 435. S. P., Singer Machine Manuf. s. Wilson, L. B. 3 App. Gas. H. L. 376.
    
   Lawrence, J.

It is quite difficult, in actions of this character, to precisely draw the line between those cases in which the plaintiff is entitled to relief, and those in which relief should be denied. The decisions are conflicting, and many of them irreconcilable ; but, in this case, after fully considering the evidence, I am of the opinion that the plaintiffs are entitled to a portion, at least, of the relief which the complaint demands.

Upon principle, no man should be allowed to sell his goods as the goods of another, nor should he be permitted so to dress his goods as to enable him to induce purchasers to believe that they are the goods of another.

In the consideration of this case, I shall lay out of view the United States statute in relation to trademarks, becatise that provides that “nothing in this chapter shall lessen, impeach or avoid any remedy at law or in equity which any party aggrieved by any wrongful use of any trademark might have had if the provisions of this chapter had not been enacted.” I do not, therefore, regard the plaintiffs as being compelled, in order to obtain the relief they seek in this action, to show that there has been an imitation of the trademark which the plaintiffs have filed in the patent-office.

It would seem that the true rule is laid down in the case of Edleston v. Vick (23 Eng. L. & Eq. 51, 53), where Vice-Chancellor Wood, adopting the language of Lord Langdale in Croft v. Day (7 Beav. 84, 87), says, “ That what is proper to be done in cases of this kind depends on the circumstances of each case. . . . That for the accomplishment of a fraud in each case two circumstances are required — first, to mislead the public; and next, to preserve his own individuality.” Commenting further upon the language of Lord Laegdale in Croft o. Day, the vice-chancellor proceeds : “Now, in that case of Croft v. Day there were, as Lord Laegdale said, many distinctions between the two labels; and in this case before me, just as in that case of Croft v. Day, any one who takes upon himself to study the two labels, will find even more marks of distinction than were noticed in argument. But in this case, as in that, there is the same general resemblance in color. Here there is the same combination of colors, pink and green;- there is the same heading, ‘Her Majesty’s Letters-patent,’ and ‘ solid-headed pins,’ and the name ‘ D. P. Taylor,’ with the words ‘ exclusively manufactured,’ upon the two labels, which are of precisely the same size, and the scrolls in the same form, and ‘ exclusive patentees ’ in an exactly similar curved line.....Nor does it rest only with the general resemblance of the outer wrappers ; the papers in which the defendants’ pins are stuck, bear also a great similarity; they are as like as can be to the papers in which plaintiff’s pins are stuck.” Then, after stating that he agrees that there must be an intent to deceive the public, the vice-chancellor holds that the defend-' ants, both in the outer and inner wrappers, made a palpable imitation with the intent to deceive the public, and he accordingly restrained them. I have referred to this case at length because it seems to me to be peculiarly in point.

But there are several authorities in our own courts which uphold the same doctrine. In Williams v. Spence (25 How. Pr. 367), Mofell, J., says: “The only question to be determined, therefore, in this case, is whether the labels, devices and handbills used by the defendants, as set forth in the complaint, are calculated to and do deceive the public into the belief that the soap they are selling is the soap made and sold by the plaintiff.....The oral evidence that the labels, devices and handbills used by the defendants are calculated to deceive the public also preponderates; and an inspection of the respective labels, devices and handbills satisfies me that the public would be readily deceived, and purchase the defendants’ soap under the belief that they were purchasing the plaintiff’s.”

In Lea v. Wolf (13 Abb. Pr. N. S. 391), Mr. Justice Ifg-baham says: “The color of the paper, the words used, and the general appearance of the labels when used, show an evident design to give a representation of those used by the plaintiff. . . . It is impossible to adopt any conclusion other than that the intent was to leave purchasers, from the general appearance of the article, to suppose that it was the original Worcestershire sauce which they were buying” (See also Cook v. Starkweather, 13 Abb. Pr. N. S. 392).

And in Lockwood v. Bostwick (2 Daly, 521), it was held “that a party will be restrained by injunction from using a label as a trademark, resembling an existing one in size, form, color, words and symbols, though in many respects different, if it is apparent that the design of the imitation was to depart from the other sufficiently to constitute a difference when the two were compared, and yet not so much so, that the difference would be detected by an ordinary purchaser unless his attention was particularly called to it and he had a very perfect recollection of the other trademark.”

And in Kinney v. Basch (16 Am. Law Reg. N. S. 597), Mr. Justice Vaw Brunt says, “ A careful inspection of the labels in question shows, beyond a doubt, that those of the defendant were adopted in order to deceive the public when they purchased the cigarettes of the defendant’s manufacture.”

I- am satisfied from the evidence in this case that the intention of the defendant has been, from the first, to make an article as nearly as possible resembling that manufactured by the plaintiffs, and to put it off upon the public as the same article. I am also satisfied that it was the intention of the defendant, in adopting the blue and tinfoil wrappers, and in printing on them the directions for use in language so closely resembling that employed by the plaintiffs, to impose upon the public and to lead purchasers to believe that in purchasing the defendant’s article, they were, in fact, obtaining the sapolio of the plaintiffs. In this connection the wonderful similarity of the color of the inside of the tinfoil wrapper, used by the defendant, with that used by the plaintiffs, should not be forgotten.

The whole case, to my mind, shows an intention, on the part of the defendant, to avail himself of the reputation which the plaintiffs had acquired in the market for their sapolio, by their enterprize and ability, and by the large expenditures which they had made in bringing the sapolio to the attention of the public.

It appears that the plaintiffs have been for many years engaged in manufacturing sapolio; -that the article has acquired a great reputation, and that the plaintiffs have expended very large sums of money in advertising. The evidence shows that the defendant, after analyzing a cake of sapolio and ascertaining how it was made, set about making an article similar in character, color and appearance to that of the plaintiffs. This he may possibly have a right to do ; but when the court finds that the defendant, after having possessed himself of the secret of the manufacture of the plaintiffs, has, in addition, coined a name much resembling sapolio, in appearance, and which he admits is a fancy name, having no particular derivation or signification, and has then proceeded to encase his cakes of saphia in wrappers also closely resembling the plaintiff’s both in their external and internal appearance, as to color, size, and partially as to inscription and. directions for use, the court has, in my judgment, the power to interfere, and should exercise its power.

It is claimed that the plaintiffs cannot have an exclusive right to use tinfoil or ultramarine blue colored paper, in putting up their article, as such paper is much used for ordinary commercial purposes.

This is true, but the cases cited show that the courts will interfere where it is apparent that there is an imitation of the plaintiffs’ label, whether as to color, shape or inscription, which imitation is calculated and intended to deceive the general public. The evidence satisfies me that the blue wrapper, as used by the defendant, is calculated to deceive purchasers, and I think it is very clearly proven that the ordinary purchaser is deceived by the similarity of the dresses in which the soaps are put upon the market. A critical and careful examination of the two packages will undoubtedly reveal distinctions and differences between the labels, and the devices thereon are different, but there is such a general resemblance that, to borrow the language of the vice-chancellor, in Edelston v. Vick, supra, “The court or jury would be bound to presume that it was not a fortuitous concurrence of events which has produced this similarity ; it would be irrational not to rest convinced that this remarkable coincidence of appearance, external and internal, is the result of design.” In the case of Abbott v. Bakers’ and Confectioners’ Tea Association (Weekly Notes, 1872, p. 31) an injunction had been' issued restraining the defendants from issuing wrappers which were in imitation of those of the plaintiffs. On appeal the lord chancellor said : Defendants violated the injunction, and were convicted of a contempt in so doing by Hoak, J. “That though no one particular mark was exactly imitated, the combination was very similar, and likely to deceive. It was true that there was no proof that any one had been deceived, or that the plaintiffs had incurred any loss ; but where the similarity is obvious that was not of importance.” The appeal was therefore. dismissed (see case reported below ; Weekly Notes, 1871, p. 207). This last case seems decisive of the question now under consideration (see, also, Lockwood v. Bostwick, 2 Daly, 521; Godillot v. Hazard, 49 Now. Pr. 10).

1 am therefore of the opinion that the plaintiffs are entitled to an injunction restraining the defendant from vending saphia in the blue packages in which it is now sold. By this I do not mean to be understood as holding that the defendant has not the right to manufacture and also sell saphia, nor to restrain him from the use of that name, or of the figure or device upon the label. But I do intend that he shall abstain from dressing his goods in wrappers so closely resembling the plaintiffs’ as to enable him to deceive the public, and perpetrate a fraud. That he shall not sell saphia as and for sapolio. In other words, he must sell under his own colors, and not under those of the plaintiffs.

Judgment accordingly.

There was no appeal. 
      
       See Popham v. Wilcox, 14 Abb. Pr. N. S. 206.
     
      
       One wlio, without unfair means, learns the secret of the preparation of an unpatented article, universally known by the name of the original producer, may, after the latter’s death, make and sell the article, and advertise it as made from the original recipe, provided he does not lead the public to suppose that the article sold by him is made by the successors in business of the original producer. Massam v. Thorley’s Cattle Food Co., 36 Law Times Rep. N. S. 848.
     