63 N.Y.S. 704 | N.Y. App. Div. | 1900
For several years prior to the 24th day of January, 1896, the defendant J. Lloyd Jones, Bert Olney, and James P. Olney owned substantially all the capital stock of and jointly controlled four corporations organized for the purpose of packing vegetables of various kinds, and other products, in tin cans of dif
In view of the facts disclosed by the evidence in this case, we think it unnecessary to determine whether or not the words “F. S. Flag” and “Pride of Rome,” and the devices and symbols used in connection therewith, and constituting the plaintiff’s two labels, were adopted and used in such manner as to entitle it to be protected in their exclusive use; or whether such words, devices, and symbols are properly the subject of copyright, or strictly entitled to protection solely as trade-marks, for the reason that the defendants are estopped from urging those matters as a defense to plaintiff’s claim, because by contract, for a good consideration, they agreed that the labels belong to the plaintiff; that it is entitled to their exclusive use, and that they will not use them, — will not infringe upon or interfere with their use by the plaintiff; and that, as between the parties to the contract, it need only be determined whether or not the terms of the contract have been violated. The inquiry is thus limited to ascertaining whether or not the labels adopted and used by the defendants are so similar to the labels owned and used by the plaintiff “as to deceive a purchaser of ordinary caution, or if they be calculated to deceive the careless or unwary, and thus injure the proprietors of the trade-mark.” If so, then the plaintiff is entitled to the relief decreed by the judgment appealed from. Colman v. Crump, 70 N. Y. 573; Taendsticksfabriks Akticbolagat Vulcan v. Myers, 139 N. Y. 364, 34 N. E. 904.
If the above description conveys any idea of the appearance or chief characteristics of the four labels which it is intended to describe, it will be observed that there are many marked differences between the labels of the plaintiff and those used by the defendants which are claimed to be an infringement, and such as would readily enable a careful, or even casual, observer, if attention were called to the fact, to distinguish one set of labels from the other. It is equally apparent, however, that in some of their features they are very similar, and that some of the distinguishing or more prominent characteristics are common to each set of labels, respectively. Take the “F. S. Flag” and “Our Flag” labels. They are naturally spoken of as the “Flag” labels. “Flag” is the distinguishing word in the name. The letters “F. S.” in one case and “Our” in the other are merely incidental, and in common practice would not be used. A person desiring to purchase goods marked with either label would be very likely only to remember the word “Flag,” even if the fact of the existence of the other letters had not entirely escaped his attention. It is true that upon the plaintiff’s label are the additional words, “Sweet Kernel Brand,” but the distinguishing word is “Flag.” So the prominent emblem, especially when used in connection with the name, is the flag. That emphasizes the fact that the goods offered for sale are the “Flag” brand. The picture of the flag used by the defendants differs in form and in many respects from the emblem used by the plaintiff; but, again, they are only differences in detail. Its place upon the label is the same. In size it. is substantially the same. The names above it occupy relatively the same position. The fact that in one case the stripes of the flag are light red and in the other dark red, that the stars on one are white’and on the other gilt, that the staff of one is perpendicular and of the other at an angle, are all matters of detail, and such as would not attract the attention of a customer, and would not be remembered if noticed. - The feature of each label which appeals to the eye is the flag. The letters or the arrangement of the words upon the two “Flag” labels are not by any means identical, and marked differences may readily be discovered when attention is called to it, and still the similarity in those respects is close enough so that a person of ordinary caution — at least the “careless and un
We think the authorities fully sustain the conclusion reached by the learned trial court, and that the use of the names “Our Flag” and “Pride of the Home” by the defendants was, alone, such an infringement as will support the judgment. In the case of Hier v. Abrahams, 82 N. Y. 519, the plaintiff, who resided in and was engaged in the cigar business in the city of Syracuse, N. Y., called a certain brand of cigars manufactured by him “Pride,” placed them upon the market, and established a large trade in them. The defendant, another cigar dealer in Syracuse, manufactured a different brand of cigars, called them “The Pride of Syracuse,” and placed them upon the market for sale. The court held the name “The Pride of Syracuse” was an infringement upon the name “Pride,” and a judgment restraining the defendant from using such name was sustained. In Newman v. Alvord, 51 N. Y. 189, the plaintiff manufactured cement, and sold it under the label “Newman’s Akron Cement Co., Manufactured at Akron, N. Y.” The defendant manufactured cement in Onondaga Co., N. Y., and attempted to sell it under the label “Alvord’s Onondaga Akron Cement and Water Lime, Manufactured at Syracuse, N. Y.” It was held that the plaintiff was entitled to be protected in the use of the word “Akron” as a trademark, and the judgment restraining the defendant from using that name was sustained. In Charles S. Higgins Co. v. Higgins Soap Co., 144 N. Y. 462, 39 N. E. 490, 27 L. R. A. 42, ‘Walter Higgins Turkish Laundry Soap” was held to be an infringement upon “Charles Higgins German Laundry Soap.” Congress & Empire Spring Co. v. High Rock Congress Spring Co., 45 N. Y. 291; Crawford v. Laus, 29 Misc. Rep. 248, 60 N. Y. Supp. 387; Tuerk Hydraulic Power Co. v. Tuerk, 92 Hun, 65, 36 N. Y. Supp. 384.
“It is not necessary that the symbol or device complained of should be a fac simile of the genuine trade-mark, or so close an imitation as to be distinguished only by an expert, or upon critical examination by one familiar with the original. If the resemblance is such as to deceive a purchaser of ordinary caution, or if it be calculated to deceive the careless and unwary, and thus to injure the sale of the goods of the proprietors of the trade-mark, it is a violation of his property rights therein, and he may maintain an action to restrain such, violation, and to recover damages therefor.”
This rule has been approved in many of the adjudicated cases, and, so far as we have been able to discover, criticised in none. But the rule only states the question presented in each case, and in no manner decides it. Of course, in many cases the dissimilarity between the genuine and the alleged infringing trade-mark is so marked that it can be readily determined that no infringement exists, and in other cases the similarity is so great that the infringement is palpable; but in a case where the marks of similarity or dissimilarity are so evenly balanced that from mere inspection of the trade-mark a different conclusion might be reached by different persons as to whether or not the case falls within the rule above quoted, “whether the resemblance is such as to deceive a purchaser of ordinary caution, or if it be calculated to> deceive the careless and unwary,” it would seem clear that all the circumstances attending the adoption and use of the trade-mark should be considered, — the situation of the parties, the intent with which the alleged infringing trade-mark was adopted, the manner in which it was used, and the actual effect its use had, so far as can be ascertained, — to aid the court in reaching a proper conclusion. It was said in the Higgins Case, supra:
“Whether the court will interfere in a particular case must depend upon circumstances, — the identity or similarity of the names, the identity of the business of the respective corporations, how far the name is a true description of the kind and quality of the articles manufactured or the business carried on, the extent of the confusion which may be created or apprehended, and other circumstances which might justly influence the judgment of the judge granting or withholding the remedy. Whether, upon equitable principles, the remedy should have been awarded in this case upon the facts proved and found, is the question in this case.”
In the case at bar the defendant company’s plant is located in a county adjoining the county where the plaintiff is located. The defendant Jones is practically the owner of another plant in the same city 'where the plaintiff is doing business. The business of the plaintiff and defendant company is identical. The goods of each are in competition. The goods packed by the defendant company at its place of business at Lenox, N. Y., were labeled and sold
We think the court did not commit error in refusing to dismiss plaintiff’s complaint upon the defendants’ motion, made upon the ground that the Fredonia Canning Company was not made a party defendant. No such question is raised by the pleadings, and it is nowhere suggested that the Fredonia Canning Company was guilty of wrongdoing. It could in no way be affected by or interested in the litigation. Its rights under the contracts in question were not involved. In fact, no question is raised as to the true meaning of any of the provisions of said contracts. It follows that the motion for a new trial should be denied, and the interlocutory judgment affirmed, with costs.
■Motion for new trial denied, and interlocutory judgment affirmed, with costs. All concur, except LAUGHLIN, J., not voting.