117 Ind. 556 | Ind. | 1888
The appellee is and long has been engaged in the manufacture and sale of an article used in dentistry, and the trade-mark, printed upon each box or package, is “ The Akron Dental Rubber.” The appellant is engaged in the same line of business, and manufactures and sells an article •which he claims is the same as that manufactured and sold by the appellee. He puts the articles in boxes of a different shape and material from those used by the appellee, and has printed on them these words : “Non-Secret Dental Vulcanite, made according to our analysis of the Akron Dental Rubber.” The words preceding the words “ Akron Dental Rubber” are printed in black ink and large type. The words “ Akron Dental Rubber ” are printed in red ink, the type is large and the words are prominently displayed. They are so printed and arranged as to readily and quickly catch the eye. They are followed -by the formula for the preparation of the article, also printed in red ink, but in very small type.
The contention of the appellee, which prevailed below, is, that in using the words “ Akron Dental Rubber,” as the appellant did, he infringed its trade-mark; the appellant, on the other hand, contends that there was no infringement because the label used by him does not assert that the article is the “ Akron Dental Rubber,” but informs the public that it is a non-secret vulcanite, manufactured according to an analysis of the “ Akron Dental Rubber,” and that the similarity is not such as is likely to mislead.
"We should, perhaps, be able to sustain the views of the appellant’s counsel if it were not that the words constituting the appellee’s trade.-mark are printed in colors that attract attention at once, and are so prominently displayed as to catch and hold the eye.
"What should be the rule where the use of a trade-mark is made by a rival in business of the owner of the mark for the simple purpose of apprising the public that his (the rival’s) article is manufactured from the same formula as that used
The words so prominently displayed are not simply words of similar sound and meaning as those chosen by the appellee, but they are the identical words. It is true that other words are associated with them, but the words of the trademark are so prominently displayed, arranged and printed as to make it appear that they designate the article contained in the box or package, thus indicating that they were used for the purpose of conveying information as to the composition of the article manufactured by the appellant. The trademark is given the prominent position, and the other words are placed in subordinate ones. It is easy to perceive that the words “Akron Dental Rubber” might well be taken as designating the article sold by the appellant, and thus de
As it was the purpose of the appellant to do wrong, it is the duty of the courts to prevent its accomplishment, since to do otherwise would be to permit a wrong-doer to secure an advantage from his own wrong. This conclusion, with all its necessary incidents, results when it is affirmed that this was the appellant’s purpose, and if that was his purpose, he should not be permitted to persist in a course that may probably result in loss to his competitor or in the deception of others. Where it appears that a trade-mark is used for the purpose of securing a benefit at the expense of its owner, the person who uses it must be presumed, unless the contrary appears, to intend to deceive dealers, and if this intention does appear, or is to be presumed, it should be held that what is intended will probably result. Where, therefore, it appears that the trade-mark was used to secure benefit to the user at the expense of the owner, and that it was not simply used in good faith for the purpose of explanation or information, the just presumption is that the person so using the trade-mark intends to deceive, and that he will probably succeed in his purpose. This being true, the courts should restrain him from persisting in his wrong.
It is difficult, if not impossible, to deduce any general rule from the decisions under which a particular case can be placed. As held by Mr. Justice Bradley, in Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 Fed. Rep. 94, “ each case must be de
In Wotherspoon v. Currie, L. R. 5 H. L. 508, the labels are set forth, and an inspection of them clearly shows that the infringement was not so clearly apparent as in the case before us, yet it was held that the complainant was entitled to an injunction. There is one passage in the opinion in that case which so forcibly applies to the present that we quote it: “ There is,” said the Lord Chancellor, “ a passage in the respondent’s answer in which he says : ‘ There is no reason in the .world why I should take the name, because I manufacture something superior, and at a cheaper price, therefore why should I take the name of the plaintiffs ? ’ Well, then, one naturally asks, why should he do anything to lead people to suppose that his name is to be in any way associated with Glenfield, or this inferior article (as he says) with his.” So may we ask here,why should the appellant, doing business in Fort Wayne, Indiana, do anything to associate his name with Akron, in the State of Ohio ? The natural presumption is that he expected to derive benefit from it, and secure buyers from among those who had bought and used the Akron dental rubber. If we may assume, as we justly may, that he intended to mislead, and not in good faith to convey information, we must carry this assumption to its logical consequences, and assert that his act was likely to accomplish what he intended it should.
The labels used by the opposing parties appear at full length in Metcalfe v. Brand, 5 S. W. Rep. 773, and the similarity between them was not so great as between the labels before us, yet an injunction was awarded. We collect and cite, without comment, other cases which support our conclusion : Siegert v. Findlater, L. R. 7 Ch. Div. 801; McAndrew v. Bassett, 10 Jurist, N. S. 550; Newman v. Alvord, 51 N. Y. 189; Edelsten v. Edelsten, 1 De G. J. & S. 185; McCartney v. Garnhart, 45 Mo. 593; Partridge v. Menck, 2 Barb. Ch. 101.
We conclude this brauch of the case by affirming that where the similitude is in the substantial parts of a trademark there is an infringement, and that an evasive attempt to hide the similarity, or a colorable explanation which appears to be made for the purpose of .escaping the effect of a wrongful use of the trade-mark, will not defeat the owner’s right to an injunction.
It is settled upon sound principle that an independent tort can not be made a defence against another tort, either by way of set-off or counter-claim. Standley v. Northwestern M. L. Ins. Co., 95 Ind. 254; Terre Haute, etc., R. R. Co. v. Pierce, 95 Ind. 496; Sterne v. First National Bank, 79 Ind. 560; Washburn v. Roberts, 72 Ind. 213; Shelly v. Vanarsdoll, 23 Ind. 543; Lovejoy v. Robinson, 8 Ind. 399; Conner v. Winton, 7 Ind. 523. The decisions are harmonious, and they
Corson, one of the witnesses for the appellee, after having testified that the article manufactured by the appellant was inferior to that manufactured by the appellee, was asked whether the formula from which it was prepared was not the same as that used by the appellant, and he declined to answer,, because to answer would be to reveal a trade secret. The appellant moved to suppress the entire deposition of the witness. The rule for which appellant contends would result in punishing the party, and not the witness, and the modern rule in analogous cases is not to make the party suffer, but to punish the contumacious witness. State, ex rel., v. Thomas, 111 Ind. 515, and authorities cited. We are not now prepared to assent to the views of appellant’s counsel on this question of procedure; we are, on the contrary, inclined to the opinion that the rule of procedure is this : Where a witness under examination before an officer not having power to punish for contempt refuses to answer á proper question, the officer should report to a court having jurisdiction, and ask it to compel an answer or punish the contumacious witness. On the principle of comity, the courts of the State where a deposition is taken to be'used in another State will exercise their authprity, when appropriately invoked, to secure competent testimony, and will assist an officer within their jurisdiction, when assistance is properly asked, to secure answers to competent questions. We doubt very much whether the witness was, in any event, bound to answer the question, since an answer would have disclosed a trade secret. A manufacturer -who has discovered a method of preparing a valuable article has a property in his discovery, and to compel him to make known his process might entirely destroy the value of that property. There are authorities affirming that a witness is not bound to disclose the trade secrets, but we do not decide the question of their applicability, as we have concluded that the question arising on the denial
Judgment affirmed.