
    MORGAN’S SONS’ COMPANY v. TROXELL.
    
    [Reversing 23 Hun, 632, which affirmed 57 How. Pr. 121.] .
    
      N. Y. Court of Appeals ;
    
    May, 1882.
    Trade-Mabk. —Imitation. —Ordinary Packages and Labels.— Fraudulent Representations or Devices. —Injunction.
    An ordinary form of package and fashion of Label cannot be appropriated as a trade-mark, so as to exclude every one else from its use or from the use of anything resembling it.
    When there is a simulation, .the intent becomes a subject of inquiry, but an action for an injunction cannot be sustained unless there is an imitation of something that can be legally appropriated as a trade-mark.
    An action to restrain an alleged infringement of a trade-mark cannot be sustained on the ground of fraudulent representations or devices on the part of defendant to palm off his goods as those of plaintiff. Such facts do- not authorize an injunction against the sale of an' ■ article which is not an infringement.
    Appeal from a judgment of the general term of the-supreme court, for the first Judicial Department [reported 23 Hun, 632], which affirmed a judgment of the special term, restraining defendant from using an alleged trade-mark, the property of plaintiff, the court holding that there was a substantial similarity, and an actual intent to deceive the public.
    
      E. More, for appellant.'
    
      Samuel Hand, for respondent.
    
      
       Compare Same v. Schwachofer, 5 Abb. N. C. 265, and cases cited in note.
    
   Rapallo, J.

Specimens of the packages and labels used by the plaintiffs, and of those used by the defendants, and which are claimed to be an infringment of the plaintiffs’ trade-mark, have been submitted to our inspection, and we are clearly of opinion that there is too great a dissimilarity between the two to sustain the judgment in this case. The only points of similarity between the two articles sold is that they are both small cakes of soap covered with tin foil or tinned paper, and having a blue band around them, with gilt lettering. The cakes are not even of the same shape, one being nearly square, and the other an oblong square. But we are of opinion that this form of package, with a blue band and gilt lettering, could not be appropriated by the plaintiffs as a trade-mark. There is nothing peculiar about it, and it is an appropriate and usual form in which to put up small cakes of soap, and the law of trade-marks has not yet gone so far as to enable a party to appropriate such a form of package and fashion of label and exclude everyone else from its use, or from the use of anything resembling it. If it had, the different forms and fashions of cigar boxes, packages of chewing tobacco, perfumery, canned goods, and other small articles, and the color or style of labels which every dealer according to his taste adopts or selects from those in use, would afford food for litigation sufficient to give constant occupation to the courts.

• All these articles of each class bear a general resemblance to each other, and the products of the different dealers can be distinguished only by the brands, marks or names, which they may put upon them, and these can be protected as trade-marks only so far as they are new and comply with the other conditions necessary to constitute a trade-mark.

When there is a simulation of a trade-mark, and the intent becomes a subject of inquiry, the form, color, and general appearance of the package may be material, but to sustain an action there must be an imitation of something that can legally be appropriated as a trademark. When we come to look at the brands or contents of the labels, they are entirely different. The label of the plaintiffs on one side of the package is “ Sapolio for cleaning and polishing, manufactured by Enoch Morgan’s Sons & Co., 440 West street, New York,” and on the other side, “Enoch Morgan’s Sapolio,” with a well-drawn figure of a human face opposite a pan, and reflected in it.

The label of the defendants does not bear the slightest resemblance to this, except that it is blue paper, with gilt lettering; it is different in shape, and the wording is on one side in large letters, “ Troxell’s Pride of the Kitchen Soap,” the words “scouring and polishing” being printed at the bottom in small letters. On the other side is printed in large letters, “Pride of the Kitchen Soap,” under which are six lines in small letters describing its uses. The only mark upon the defendants’ packages, which presents even an idea similar.to that of the plaintiffs, is a very small figure of a monkey sitting down, tail in the air' and looking at something which he holds in his hand, which may be supposed to be a mirror or pan, or some bright article, but so diminutive as not to be at all conspicuous, and entirely different in appearance from the distinct and well-drawn figure printed on the plaintiffs’ label, and on each side of the monkey is ■the word “ trade-mark,” in very small letters. The dissimilarity in these figures is much greater even than that of the hogs in Popham v. Cole (66 N. Y. 69). The mere idea represented by some figure on an article sold for polishing purposes that it will make things bright enough to be used as mirrors cannot be appropriated in a trade-mark. The figures by which that idea is sought to be conveyed may, perhaps, be adopted, but in this case there is no similarity whatever in the figures.

If, as we think,there was no imitation of any trademark of the plaintiffs, the judgment cannot be sustained on the ground of fraudulent representations or devices on the part of the defendants to palm off their goods upon individuals as the goods of the plaintiffs. What remedy there is for such a wrong, if proved, it is. not necessary now to inquire, but the remedy clearly is not to restrain the defendants from selling their own goods in packages, and with labels, which they have a legal right to use, and which do not infringe upon any trade-mark of the plaintiffs.

. The judgment .should be reversed and a new trial ordered, costs to abide the event.

All the judges concurred, except Miller and Tract, JJ., absent. 
      
       Compare Trustees, &c. v. Thacher, 10 Abb. N. C. 235.
     