Brown v. Seidel

153 Pa. 60 | Pa. | 1893

Lead Opinion

Per Curiam,

There is no such similarity in the trade-marks used by the respective parties to this controversy as to justify the conclusion that the one is intended as an imitation of the other. This is so palpable upon inspection that any discussion of the subject is unnecessary. In fact, the complaint of the plaintiffs is not so much that the defendants have pirated their trademark as that they put up their goods in a form and style of package which resembles those of plaintiffs.. The respective parties are engaged in the manufacture and sale of an article of stove polish, and there certainly is a resemblance in the size of the packages, and in the manner in which they are put up, between those of the defendants and the plaintiffs. They both use tin foil as wrappers for the stove polish, over which is placed a paper wrapper of similar colors. The packages as thus put up might perhaps induce an ignorant or a careless person to mistake the one for the other, provided he made no examination whatever. The mere possibility of a mistake, however, is not sufficient. As was said in Heinz v. Lutz, 146 Pa. 592: “ It is not enough that there may be a possibility of deception. The offending label must be such that it is likely to deceive persons of ordinary intelligence.” See authorities there cited.

We are not prepared to say that the mere resemblance, accidental or otherwise, in the size and style of putting up packages, is of itself sufficient to justify the interference of a court of equity.

Where there is an actual infringement of the trade-mark itself, or where the resemblance of the one to the other is such as to leave the fact of imitation in doubt, the fact that the party charged with such imitation has also adopted a like style of putting up his packages, may be some evidence upon the question of intention. It is only where there is a manifest intent on the part of one manufacturer to sell his goods as and for the goods of another manufacturer that the aid of equity has been successfully invoked to restrain it. This whole subject has been so recently and fully discussed by this court that we do not think it necessary to elaborate. See Hoyt v. Hoyt, 29 W. N. C. 309; Heinz v. Lutz, supra, and other cases.

The decree is affirmed and the appeal dismissed at the costs of the appellant.

---

Dissenting Opinion

Dissenting opinion,

Me. Justice Mitchell,

Feb. 6,1893:

I am unable to concur in this decision. If my difficulty was only on the facts I should not think it worth while to dissent, but as this is another step in the series that tends to fix the law of this state on what I cannot help regarding as a wrong basis I deem it proper to put my views briefly on record.

Trade-marks, whatever may have been the early view, are now mainly valuable, and they are immensely so, as means of advertisement and business identification. As a kind of property with this special element of value they are entitled to protection from the point of view of honest business, and equity has so regarded them for many years in England and most of the best courts in this country. Nor is the application of the principle confined to cases of trade-marks strictly so called. To be effective many things must be included in the protection, which are not trade-marks, nor individual property at all, except for the special and limited purpose to which they are applied. The rule was thus stated half a century ago by Lord Langdale, in Perry v. Truefitt, 6 Beavan, 66, a man is “ not to be allowed to use names, marks, letters or other indicia by which he may induce purchasers to believe that the goods which he is selling, are the manufactures of another person. I own it does not seem to me that a man can acquire property merely in a name or a mark; but whether he has or not a property in the name or mark I have no doubt that another person has not a right to use that name or mark for the purpose of deception, and in order to attract to himself that course of trade or that custom which without that improper act would have flowed to the person who first used, or was alone in the habit of using the particular name or mark.”

The true role I take to be that in cases of trade-mark proper, anything so similar as to be likely to deceive intending purchasers, will be treated as an infringement, without reference to the purpose to deceive, or to whether the resemblance is intentional or accidental; but that where the imitation is with intent to acquire, wrongfully and in an underhand manner, a portion of another’s good will or business, equity will enjoin the attempt as a fraud, though the imitation be not of a legal trade-mark. And such intent may be gathered from imitation of name, descriptive words used, size or style of package, color or shape or mode of application of label, general appearance, or any circumstances which afford basis for the inference of an intent to copy, and where such intent is thus indicated, the actual resemblance need not be so close as to deceive any but the most careless buyers. It is enjoined not as a deception of the public likely to be successful, but as an attempt to defraud the plaintiff. Any rule short of this' is a premium on dishonesty, and an invitation to a commercial policy which measures its actions not by conscience or right, but by ingenuity in dodging the law.

The cases both English and American will be found cited in the admirable brief of the appellant in Putnam Nail Co. v. Dulaney, 140 Pa. 205, a case where the principle was conspicuously applicable, and where, under precisely similar facts with another defendant, it was actually applied by the circuit court of the United States in Nail Co. v. Bennett, 43 Federal Reporter, 800.

In the present case the learned master reports, “ That the label used by the defendants was suggested by that of the plaintiffs, the master cannot doubt.” That fact of itself was enough to support an injunction.