56 A.D. 143 | N.Y. App. Div. | 1900
The complaint in this action avers that a corporation called the “ Roachsault Manufacturing Company ” adopted and began to use in its business in September, 1895, a trade mark for insecticide prepared and sold by it, consisting of the word “ Roachsault,” and that in December of that year it procured such word to be registered as a trade mark in the patent office of the United States, pursuant to an act of Congress authorizing the registration of trade marks,- and that a certificate of such registration, No. 27,503, was issued to such corporation; that about the ninth day of May said corporation transr ferred all of its right, title and interest in and to said trade mark, in connection with the business in which it had been used, to the plaintiff herein, and thereafter the plaintiff has continued and conducted its business under such trade mark; that by advertising and other lawful means it has extended its’business in the city of New York and elsewhere in the sale of said insecticide, and that under the said trade mark name it has become widely and favorably known, and has had an extensive sale in the city of New York and elsewhere. The complaint further avers that in March, 1897, the defendant was to a small extent engaged in putting up and selling an insecticide
The plaintiff also attaches to his complaint and makes a part thereof the respective labels. It is clearly apparent that there is a considerable-difference in their appearance, both as to the.emblems appearing thereon, the arrangement and spelling of the words, the ■color of the label, the name of the article sold, and in the size and arrangement of the printed matter, and" if the case turned upon the ■ question whether there was imitation or simulation, by the defendant’s label of the plaintiff’s, a strong argument could be made in
So far as the right exists to enjoin the infringement of a trade mark it is not made to depend upon the fact that deception was either intended or practiced. If the opportunity is furnished where deception may be practiced, a basis exists to grant relief. As was said by the court in T. A. Vulcan v. Myers (139 N. Y. 364), “ no evidence was given or offered to show that any person had actually been deceived by the imitation of the plaintiff’s trade mark, and we think that none was necessary for the maintenance of the action. It is the liability to deception which the remedy may be invoked to prevent. It is sufficient if injury to the plaintiff’s business is threatened or imminent to authorize the court to intervene to prevent its occurrence.”
It scarcely needs argument to show that the conditions which are averred to exist in this complaint create a situation which would enable an energetic and enterprising manager to substitute,-to a considerable extent, the defendant’s compound for that of the plaintiff. And while it may be true that a close or even casual scrutiny of the labels themselves would apprise an intending purchaser of the difference between the two compounds, yet it is well known that not all purchasers do make careful scrutiny, and some make none at all, while under many circumstances goods are purchased without being examined or seen, and if the purchaser calls simply for Roachsault,
An interesting collection of cases is made in section 33 of Browne ■ on Trade Marks (2d ed.), wherein the1 learned author has stated the differences- which appear in words, labels and designs, and where the court felt called upon to interfere. A comparison of these cases ' with the present one clearly shows that this case is brought within the principle entitling the plaintiff to relief.
Upon the subject of damages, the questions of dissimilarity, intent to deceive, and actual deception will become pertinent subjects of inquiry and evidence. These are matters, however, to be determined.by the court upon all the proof which is offered. The plaintiff may not prove any damages, but his action is not to be defeated for that reason. For, as we have already stated, the plaintiff is entitled to preventive relief upon showing that there maybe deception practiced on account of the infringement. There can be no doubt but that the plaintiff obtained a- proprietary right in the word “ Roachsault.” It is in no sense descriptive of the article, sold, but is an arbitrary or fanciful designation of the compound. This brings it within that class of terms, or words, which may be adopted as. a trade mark, or word,' and in which the user or inventor acquires a property right which the law protects. (Cohn v. Reynolds, 26 Misc. Rep. 473 ; affd. on opinion below, 40 App. Div. 619.)
• It follows from these views that the judgment should be reversed, and a new trial granted, with costs to the appellant to abide the • event.
Rumsey, Patterson and.Ingraham, JJ., concurred ; Van Brunt, P. J., dissénted.
Judgment reversed, new trial ordered, costs to appellant to abide event.