
    Charles Fleischmann, Appellant, v. Jacob Fleischmann and Others, Respondents.
    
      Trademark—action for infringement■—defense that the plaintiff deceived the. public by using the word “patented,” must be both pleaded and proved.
    
    AYhere a defendant has designedly imitated the labels which the plaintiff used upon packages of yeast, and the offense is a flagrant one, the defendant will not be permitted to take advantage of the defense that the plaintiff used upon his labels the word “ patented,” and thereby himself made a false representation in relation to the.property which he sought to protect, unless he both pleads and proves that defense.
    Appeal by the plaintiff, Charles Fleischmann, from a judgment of the Supreme Court in favor of the defendants, entered in the office of the clerk of the county of New York on the 31st day of March, 1896, upon the decision of the court rendered after a trial at the New York Special Term.
    
      C. Bainbridge Smith, for the Appellant.
    
      Samuel Cohn, for the respondents.
   Ingraham, J.:

We agree with the learned judge at Special Term where lie says: I think the evidence establishes clearly that the defendants’ labels are not only imitations of those used by the plaintiff, but were designedly simulated by the defendants for the purpose of inducing .the public to believe that the yeast to be obtained in packages sold •by them has been manufactured by the. old ñrjn óf FJeischmann & Co., the plaintiff ” — and we agree with the reasons for this conclusion stated in the very satisfactory opinion upon that question. The court, however, felt constrained to dismiss the complaint on the ground that the plaintiff by using the word “ Patented ” upon his labels had made a false representation to the public, applying the principle that if the plaintiff is himself' guilty of any false or misleading representations in relation to the property he seeks to protect, he loses the right to obtain the assistance of a court of equity.

While we regard the rule, as stated by the court below, well settled in this State, we do not think it should have been applied in this. case, as the defendants neither pleaded that the plaintiff had made any false representation, either in his trade mark or in the business connected with it; nor did he prove or offer to prove, upon the trial, that any statement of the plaintiff’s contained in his trade mark was false or fraudulent. Nor was any motion made to dismiss the complaint on the ground stated. At the commencement of the trial, before any evidence was offered, the defendants moved to dismiss the complaint on the' ground that the court had no jurisdiction, as the action was, in fact, for an infringement of letters patent. After the evidence was all in, the counsel for the defendants again moved to dismiss the complaint upon two grounds: (1) “that the court has no jurisdiction of the cause of action;” and (2) that the “ plaintiff has failed to make out a cause of action; and it is in evidence that defendants’ name is Fleischmann, and they have the right to use that; and * * * there is no evidence on the part of the plaintiff of any deception.” There seems to have been no intimation of any kind, either by the pleadings or by counsel upon the trial, that the allegation on the wrappers and labels used by the plaintiff that a patent had been obtained by him was false or untrue. . And when a defendant comes into a court of equity and seeks to justify his appropriation of another’s trade mark, or his. unfair competition in business, by which he is enabled to deceive the public into thinking that his goods are the goods of another, on the ground that the plaintiff has in some way in the description of his goods -been guilty of fraud or deceit, so that a court of equity will not aid him in protecting his trade mark or business, we think that that fact should be alleged in the'answer and proved upon the'trial.

This case is a flagrant example of the adoption by these defendants of the plaintiff’s trade mark and name for the purpose of selling their goods to the public as the goods of the plaintiff. These defendants, the Fleischmanns, were originally in the employ of the plaintiff. They left his employ and commenced business as Fleischmann & Brothers ; but that name not shoeing so close a similarity as 'was necessary to enable them to sell their goods as the plaintiff’s, they took in a partner and changed the firm name to Fleischmann & Co., under which name the plaintiff had done business and had established a valuable business connection. They then proceeded to adopt labels for their goods of a color so similar that, except upon comparison, no difference could be noticed, using almost the exact words used by the plaintiff, and going as -far as to imitate the signature of the plaintiff upon the labels.

To refuse to allow relief for such a flagrant violation of common honesty, strict proof should, be required of some act of the plaintiff which placed his business and property outside of the protection of the law. Fraud must always be proved. It is never presumed. And yet this judgment proceeded upon the assumption that a statement upon plaintiff’s trade mark was false, and thus a misrepresentation.

It is stated in the respondents’ brief that, “ upon the motion being so made by defendants, it was conceded by the plaintiff that although the word Patented ’ appeared upon the label, and although the words inserted upon the wrapper appeared thereon, which is abo ve referred to, yet, nevertheless, the Letters Patent granted, to the plaintiff were declared unconstitutional in the year 1819.” Ho such concession- appears upon the record, and counsel for the appellant, in his brief submitted, states that, had that point been made, letters patent would have been produced which would justify the statement upon the wrappers.

It seems hardly necessary to cite authorities to establish the proposition that where fraud or misrepresentation of the plaintiff is relied upon as a defense to the enforcement of a legal right, it must -be pleaded and proved upon the trial. But the case of Honegger v. Wettstein (94 N. Y. 259) is in point. There the court say: “ Counsel for the defendants insists that they, having proved that the goods sued for and alleged to have been 'sold at one price, were by. the plaintiffs valued and entered at a lower price in the invoices, prepared and transmitted by them with the goods, for the purpose of entering the same in the custom-house, and that plaintiffs had thereby knowingly made, or attempted to make, the entries thereof by means of-the false invoices, in consequence of which the goods were forfeited to the United States," the court was bound to take notice of the undervaluation, and that the contract proved being fraudulent by law, the court could not give effect to the same, and was justified in directing a verdict in favor of the defendants. The correctness of this rule is beyond dispute, and where it is made to appear, upon the plaintiffs’ own proof or upon a defense interposed by the defendants in due form, that the contract in question, was illegal, and that the goods were bought and sold for the express purpose of being introduced into the country in violation of its revenue laws, and that the vendor is either a sharer in the illegal transaction or assisted in defrauding the customs, it is a defense to-the action, and the plaintiffs cannot recover. In the case at bar no-such facts were proved by the plaintiffs upon the trial, and no such defense was set up in the answers of the original defendants.. * * * The examination which we have given to the question considered leads us to the conclusion that, inasmuch as the defendants Wettstein and Meyer did not plead the defense of undervaluation in either of their answers, they were not at liberty to insist upon the illegality of the transaction.”

In this case, this defense not having been pleaded, and no proof having been offered to sustain it, we think the plaintiff should have-had judgment.

The judgment should, therefore, be reversed and judgment, directed in favor of the plaintiff restraining the defendants from using the wrappers set up in the complaint, with costs to the plaintiff in this court and in the court below.

Van Brunt, P. J., Williams, Patterson and O’Brien, JJ., concurred.

Judgment reversed and judgment ordered for plaintiff, with, costs in this court and in the court below.  