The complainant is a West Virginia- corporation engaged in manufacturing at Newark, X. J., and selling throughout the United States, a fluid known as “Johann Hoff’s Malt Extract.” The complainant was incorporated May 27, 1891. The
The complainant contends: First, that the defendant has no right to sell Hoff’s malt extract at all. Second, if permitted to sell, the court should compel the defendant to sell under a label so distinct in character that the public will not be deceived in purchasing the defendant’s extract believing that it is the complainant’s.
The defendant insists: First, that it has a right to import and sell malt extract from Hamburg, as it has done for the last 26 years, and that its label and bottle are so distinctive in character that the public cannot possibly be misled. Second. That the complainant does not own the right to make Johann Hoff’s malt extract and that its title to the labels, trade-marks, good will, and business secrets, alleged in the bill, is defective. Third. That the complainant is not here with pure hands, having deceived the public by inducing it to believe that complainant’s extract is an imported German product and having made various false representations regarding its own and defendant’s merchandise.
In 1881 the complainant’s predecessor commenced an action in this court against this defendant praying, substantially, for the same relief as in the present suit. The history of the malt extract in controversy and the relation of the parties existing at that time are fully set out in the opinion in that cause and need not be again stated. The bill was dismissed April 7, 1886. Since then .the contract of 1869 between Johann B. Hoff, Leopold Hoff and the defendant has expired, having been limited to the term of 20 years. Johann B. Hoff died in 1887. Marcus Hoff died in 1885. Leopold Hoff is the son of Marcus. On the expiration of the 1869 contract in July, 1889, the defendant, who for years had been importing malt extract from Leopold Hoff, of Hamburg, made a new contract with Leopold and about the same time changed its labels in the following particulars: The name “Johann” was omitted, the name “Tarrant’s” was substituted for the words “Beer of Health.” The line “Principal Manufactories Berlin and Hamburg” was omitted and the line “Manufactured only at Hamburg” put in its place. Changes were also made in the medal line, medals alleged to have been granted to Leopold being substituted for those theretofore used. Later there were printed in large red letters diagonally across the face of the new labels, the words “Made in Germany.” On the right of all of the labels used by the defendant is a small supplementary label, the lettering being at right angles with the large label, containing the words “Manufactured by Leopold Hoff, Hamburg.” These changes were followed almost immediately by a circular from the complainant presenting a fac-simile of the old and new labels side by side and pointing out the changes which had been made. The circular stated that the object of the suit before alluded to had been practically accomplished, the changes being a victory for the complainant and that further prosecution of the suit was unnecessarv.
“It is reserved for Mr. Leopold Hoff, no matter whether he is the superintendent. partner or owner, of the firm of M. Hoff or not, to continue the business done by him in sending his malt preparations to America, under the linn name of Leopold Hoff; it is understood, however, that in the making of his preparations, he must not use any of the essence of Johann .Hoff's.”
The history of Johann’s malt extract is involved in obscurity and doubt. It is not covered by a patent cither for the product or the process. Anyone who knows the secret is free to make it. That many members of the Hoff family did know the process is found as a fact in the decision of 1886 and is fully sustained by the proof. By the 1882 contract Leopold is not permitted to use the Johann Hoff essence. How far the defendant is bound by this secret contract to which it was not a parly and of the existence of which it was ignorant until 1894, it is, perhaps, unnecessary to determine for the reason that Leopold says, that he does not use the Johann essence from Berlin and there is nothing to contradict Ms testimony. He was in express terms given the right to continue Ms business with the defendant, but, irrespective of the 1882 contract, it would seen! that he has the right to make a malt extract of his own provided it is not the Johann Hoff extract.
When it is attempted to define with exactness all the rights of the parties and to settle all the questions presented by the briefs tbe court is confronted by an almost impossible task. But from the mist which envelopes a quarter of a century of wrangling oyer matters of substance and matters of detail a few prominent facts emerge which tumble the court to decide the present controversy upon equitable principles and with justice to all. First. The com plainant has the right to sell in the United States “Johann Hoff’s Malt Extract — Beer of Health” under the old labels and trademarks used in Germany for many years. The secret of making this extrae!- was imparted to one of the complainant’s officers. If there were no question of contract and assignments in the case the fact that the complainant has built up a large business in the United Míales under a distinctive label entitles it to protection. It has a valuable good will which should be defended from unfair assaults. The court is, however, inclined to think that the transfers in evidence vest in the complainant the right to use the labels, trade
The other accusations against the defendant are either unfounded in fact or relate to distinctions so unsubstantial and acts so trivial that the court could not condemn them without denouncing in equally strong, if not stronger, terms the statements not .in exact accordance with the truth which from time to time have appeared on the complainant’s labels and bottles. In other words, a finding which would compel all the changes asked for on the bill would bv
Without discussing the subject further it is thought that the only relief to which complainant is entitled is a decree enjoining the defendant from using the words “Hoff’s Malt Extract” on its labels, or advertisements, unless preceded by the name “Leopold.”