71 N.J. Eq. 750 | N.J. | 1907
The opinion of the court was delivered by
The evidence establishes that the absorbent cotton and gauze of the complainant have been known for a number of years as “Bed Cross Cotton” and “Bed Cross Gauze;” that the words “Bed Cross,” as applied to absorbent cotton and gauze, have acquired in the trade a secondary meaning and designate goods of the complainant’s manufacture. The time when this secondary meaning was acquired is not and probably cannot be fixed with certainty. Doubtless it was, as usually happens in cases
We are satisfied also that the defendant has unfairly simulated the complainant’s packages of absorbent cotton. The original business connection between the predecessors of complainant and the predecessors of defendant, the competition which resulted from their separation, and the original controversy as to the merits of interleaving cotton with tissue paper,' show that the defendant was familiar with complainant’s method of packing goods.
In view of this knowledge, vre cannot explain the change in the color of the carton in which an inferior grade of defendant’s cotton was packed, from granite and chocolate to dark blue, the use of granite cartons for the best grade and dark blue for the inferior grade, the use of the “Mercury” seal on the former and the “Bed Cross” seal on the latter, the increased prominence given to the red cross by defendant after a somewhat irregular-use for so many years, and the adoption of the interleaving by tissue paper of the same color as complainant’s, upon any theory except that of an effort on the part of defendant to profit by complainant’s trade. The injury was increased by the attempt to confuse the complainant’s cotton with an inferior grade. If the defendant had desired to avoid confusion it had only fo continue its previous course of business.
The question as to gauze is more difficult. The defendant was the first ‘to use an amber glass jar, and the color was later adopted by the complainant, whose motive in doing so does not seem to be questioned. The defendant then changed from a round jar to a square jar like that of complainant. The change
The greatest difficulty we have had has been with the right of the complainant to claim relief in equity. Beginning with 1894 and continuing for several years, at least until 1899, the complainant circulated catalogues and price lists containing a statement that an act of congress had vested the use of the red cross symbol in the American National Red-Cross Society, and that the society in recognition of the services of the complainant, in perfecting surgical appliances and medicinal preparations, had granted to complainant the exclusive right to use the red cross trade mark upon this class of preparations. This statement was untrue. The only foundation for it was that the red cross society, in order to induce the complainant to withdraw opposition to a pending bill intended to secure the exclusive use of the red cross to the society, had recognized the exclusive right of the complainant to the red cross as a trade mark on chemical, surgical apd pharmaceutical goods, and had agreed not to contest complainant’s exclusive right in case the bill passed.
There is no question about the principle that a false representation in a trade mark will prevent equitable relief for its protection. The cases cited by the defendant are, with one exception, cases-where the false representation was contained in the trade mark itself. In such a case it is quite impossible to deter
In this country we have a case in a federal court of first instance in which a different view was taken. Preservaline Manufacturing Co. v. Heller Chemical Co., 118 Fed. Rep. 103.
The question was suggested by Vice-Chancellor Emery in Stirling Silk Manufacturing Co. v. Sterling Silk Co., 59 N. J. Eq. (14 Dick.) 394 but not decided.
We think the rule laid down in Ford v. Foster is too favorable to the complainant. If it can be established in any case that the trade name which the complainant seeks to protect owes its value in any material degree to false representations on his part, we think he is not entitled to the protection of a court of equity. To give him relief would not perpetrate a falsehood by decree of the court as in a case where the false representation is on the face of the trade mark or label, but it would enable a man to profit by his own wrong, and the court would be in the position of protecting a property right acquired by fraud. But we think there is no presumption that a trade reputation is due to the highly-colored or false statements in advertisements. Such statements are not so uncommon as to mislead an ordinary man; most persons discount them. In the present case the complainant’s goods had come to be known as “Red Cross Cotton” and “Red Cross Gauze” before the first publication in question; it was the already existing reputation which led it'to oppose with vigor the proposed legislation by congress. To afford relief does not, .as the case stands, give prolonged life to the misrepresentation, for the publication had been discontinued before this suit was begun. We do not say that the mere discontinuance of publication before suit brought would cleanse the complainant’s hands; we hold that in the absence of proof that the trade name was due to false representations, and upon proof that the false representations had ceased, the complainant is entitled to protection.
An injunction should’issue restraining the defendant from selling, offering to sell or otherwise disposing of any absorbent cotton not by or for complainant made in packages to which a representation of two red crosses shall be attached or applied, or to which a representation of one red cross shall be attached or applied in any way except as part of a label substantially as in defendant’s Exhibits D 3, D 1±, D ¡6, D 7 and D M; and likewise from selling and from offering to sell or otherwise disposing of any gauze not by or for complainant made in packages to which a representation of two red crosses shall be attached or applied, or to which a representation of one red cross shall be attached or applied in any way except as part of a label substantially as in defendant’s Exhibits D 3, D 4 D 6, D 7 and D 12; and likewise from using in connection with the sale of absorbent cotton the package or packages complained of in the bill of complaint heretofore by it the defendant used, or any other package or packages which shall so closely resemble the package of the complainant by it availed of in connection with the sale of its absorbent cotton and described in the bill of complaint as to be caleu
The decree should be reversed and a decree entered in accordance with this opinion.
The complainant is not, in my Opinion, entitled to enjoin the use of the red cross by the defendant.
With regard to the simulation by the defendant of the complainant’s packages in other respects, I concur in the view of Mr. Justice Swayze.
I shall vote to reverse the decree in order that it may be modified in the manner above indicated.
I am authorized by Judges Bogert, Dill and Green to say that they concur in the above modification.