
    Benedickt Fischer et al., Resp'ts, v. Berthold Blank, App'lt.
    
    
      (Court of Appeals,
    
    
      Filed May 2, 1893.)
    
    1. Trade-mark—Package—Name descriptive oe color.
    The adoption of a package of a particular form or color cannot confer any proprietary right to its use, nor can the assumption of a name which is simply descriptive of the color of the package, such as “ Black Package Tea,” be lawfully protected from use by others.
    2. Same.
    Neither can an injunction be upheld which restrains defendant in the use of circular disks, upon which is printed the quality of tea, its quantity and price, or diamond-shaped business labels, upon any hind of a package.
    
    8. Same.
    The form of a package alone will not be an adequate ground for the grant of equitable relief; nor size; nor color; nor the general decoration of the panels; nor disks of the same size and color arranged in the same way; nor a label of the same shape and color attached to the same part; nor the use of the same name to designate the kind or quality of tea. But when all or a number of these distinguishing features are combined in a single package, and so arranged and exhibited that when they strike the eye of the intending purchaser, possessed of ordinary intelligence and judgment, the false impression is likely to be produced that the goods of the plaintiffs are offered, it is the province of equity to interfere for the protection of the purchasing public as well as of the plaintiffs, and for the suppression of unfair and dishonest competition.
    4. Same.
    The true test 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.
    Appeal from judgment of the supreme court, general term, first department, affirming interlocutory judgment in favor of plaintiff restraining defendant from infringing plaintiffs' trademark.
    
      Charles Goldzier, for app'lt; Rowland Cox, for resp’ts.
    
      
       Modifying and affirming 46 St. Rep., 101.
    
   Maynard, J.

We think the interlocutory judgment recovered in this action is too comprehensive in its scope. Some of its provisions are not authorized by the pleadings, proofs and findings as they must be construed and applied under the rules of law which prevail in this class of cases. The injunction granted restrains defendant from making use of the form of package adopted by plaintiffs, and from using £he name Black Package Tea ” in the sale of tea not selected and put upon the market by plaintiffs. The plaintiffs have no proprietary right to this form of package, and are not entitled to its exclusive use. It is a convenient form in which to inclose merchandise of this character when -offered for sale, and all who are engaged in the traffic in the commodity are free to use it without incurring the risk of liability for an infringement of the plaintiffs’ rights. It has been too often reiterated to be now questioned, that under ordinary circumstances the adoption of packages of a peculiar form and color alone, having no distinguishing symbol, letter, sign or seal, is not sufficient to constitute a trade-mark. Brown on Tr. M., §§ 89, 6, 137; Moorman v. Hoge, R. Cox, 373; Harrington v. Libbey, id., 538. Under this judgment the defendant is debarred from using the oblong form of package described, although it may be entirely plain and destitute of any of the plaintiffs’ distinguishing marks and devices, and even if it should be of a different color. Such a trade restriction is not reasonable and cannot be upheld.

So.with respect to the term “Black Package Tea,” we do not think it is such a distinctive appellation as will entitle the plaintiffs to its exclusive use in their business. It manifestly has reference either to the quality of the article, or the color of the package in which it is sold. In either case it cannot be made the subject of individual appropriation. If the adoption of a package of a particular form or color cannot confer any proprietary right to its use, it is difficult to perceive how the assumption of a name which is simply descriptive of the color of the package can be lawfully protected from use by others.

It was held by this court (Second Division), in Koehler v. Sanders, 122 N. Y., 73; 33 St. Rep., 267, that there can be no exclusive right to a trade-mark which represents an idea, nor an exclusive appropriation of that which is descriptive of the articles to which they are attached, or which indicates their ingredients, mode of composition, characteristic qualities, properties or nature ; and that in order to have the right of a trade-mark it must be some arbitrary term or figure, not suggestive of the nature of the article to which it is affixed.

The use of such a name in connection with the particular form, style, color and embellishment of package set out in the complaint :and findings might properly be restrained. Probably it was only to this extent that the injunction was intended to go, but, as it ■stands, it enjoins the defendant from using the name generally, and a prohibition so unrestricted is not permissible. The injunction is also too broad in the restraint which it imposes upon the defendant in the use of the circular disks, upon which is printed the quality of the tea, the quantity and price, and the words in Eussian, “ Genuine Eussian Tea," which are similar in form, color .•and general appearance to the disks used upon plaintiffs’ packages, ■except that the latter have upon them the Eussian words for “Eussian Caravan Tea.” The defendant is prohibited from the use of these disks upon any kind of a package, when the injunction should have been limited to the packages described in the complaint and findings.

There is nothing upon the disks which of itself constitutes a trade-mark. The plaintiffs are compelled to admit, in order to avoid exposure to the imputation of fraud, that the words “ Russian Caravan Tea” have become conventionalized, and are now used to denote a particular grade or quality of the article, like the phrase “ English Breakfast Tea,” and if so, they are not capable of a specific appropriation by him to the exclusion of the rest of the commercial world.

The same objection exists, but with greater force, to the retention of that part of the judgment which absolutely forbids the use of the defendant’s diamond-shaped business label, which has upon it only his name, occupation and place of business. There can be no grounds upon which its use by the defendant may be inhibited, except upon the packages described in the complaint. Elsewhere in his business such labels can be freely and lawfully used.

For the same reasons that part of the judgment which requires both the disks and labels to be destroyed by the referee cannot be retained. As there is a lawful use to which the defendant may put them, he has a property right in them of which he cannot be deprived by their seizure and destruction without compensation. It is sufficient for the plaintiffs’ purpose if he is restrained from unlawfully using them to their injury.

We cannot review the findings of fact of the trial judge if there is any evidence which legitimately tends to support his conclusions. After a careful perusal of the testimony in the record, and an inspection of samples of the packages put upon the market by the parties respectively, we are not prepared to say that the evidence is insufficient to sustain any material fact found by the trial court. The plaintiffs have, we think, acquired an exclusive right to the use of packages of the shape, style and dimensions in which they expose their goods for sale, with the emblems, devices and other distinctive features delineated or impressed upon them, and the name which they have adopted to represent their contents; and there are so many points of resemblance between the defendant’s packages as described in the complaint and findings, and those of the plaintiffs that there is danger that the one may be mistaken for the other, and the proof is and the court has found that such mistakes have occurred in the trade to the detriment of the plaintiffs and to the deception of the public.

Under such circumstances the plaintiffs are subjected to the infliction of a wrong, which authorizes them to invoke some preventive remedy. It must be admitted that there is no single point of resemblance or imitation which would of itself be regarded as adequate grounds for the grant of equitable relief. Form alone would not be sufficient; nor size; nor color; nor the general decoration of the panels; nor disks of the same size and color arranged in the same way ; nor a label of the same shape and color attached to the same part, nor the use of the same name to designate the kind or quality of tea. Each one of these distinguishing features might be separately used and no harm result. But when all, or a number of them, are combined in a single package, and so arranged and exhibited that when they strike the eye of the intending purchaser, possessed of ordinary intelligence and judgment, the false impression is likely to be produced that the goods of the plaintiffs are offered, it is the province of equity to interfere for the protection of the purchasing public as well as of the plaintiffs, and for the suppression of unfair and dishonest competition. The true test, we think, 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. Franks v. Weaver, 10 Beav., 297; Amoskeag Man. Co. v. Spear, 2 Sand. S. C., 599; Colman v. Crump, 70 N. Y., 573; McLean v. Fleming, 96 U. S., 245; Lawrence Man. Co. v. Tenn. Man. Co., 138 id., 537. Ho inflexible rule can be laid down. Each case must, in a measure,be a law unto itself. The authorities bearing upon the general question are numerous and diverse, and a further citation of them would not be profitable.

The judgment must be modified in accordance with the views here expressed, and, as modified, affirmed, without costs to either party in this court.

All concur.  