70 Md. 574 | Md. | 1889
Lead Opinion
delivered the opinion of the Court.
The appellees, Martin G-ille.t & Co., tea dealers, in Baltimore City, obtained a decree for injunction in the Circuit Court of Baltimore City, restraining the appellant, Cornelius D. Kenny, from using certain cylindrical bags containing tea for sale, with certain labels, with devices upon them, which tea was called Hi-Hi,” because the Court held appellant’s bags, devices and labels to be fraudulent simulations of the appellee’s trade-mark, bags and labels, for the sale of their iCHeNo” tea. Erom that decree this is an appeal.
The conclusion we have reached renders it unnecessary for us to decide whether appellant has simulated the appellees’ trade-mark; for we are clearly •of opinion that though he may have done so, as the Circuit Court of Baltimore decided he had done, but about which we express no opinion, still the appellees are not entitled to the relief asked for, because their trade-mark is accompanied with statements in their label so plainly calculated to deceive and mislead purchasers, that they cannot rightfully claim equitable interference. The statements made upon the label may, possibly, not have been designed to be false and fraudulent, yet the language employed cannot be construed otherwise than as asserting, concerning the tea exposed for sale, that which is, in fact, deceptive and misleading. Courts of equity never interfere in cases of this
Careful inspection and examination of the appellees’ trade-mark and label leave no doubt upon our minds that any one who is not informed of the true state of facts would be deceived thereby. The tea is put up in cylindrical packages, twisted at the top, and tied securely with a small string. Three concentric blue circles surround the twisted part as a common centre. At the top and bottom of the bag or package Chinese characters encircle the bag which, translated into English, mean “Martin Gillet & Co’s genuine £ He-No’ tea.” Upon the front of the package appears the following inscription, viz., “Standard He-No.” “Trademark registered 3 8*75. ” Martin Gillet & Company, importers, guarantee this t'ea pure and free from all adulteration. On the reverse part of the package is printed this statement: “Kind the Chinese drink.” On a blue band passing around the bag from top to bottom, is this further representation: “The importers of He-No Tea are Martin Gillet & Co., a house established in 1811 by Martin Gillet. The present members of the firm are his descendants in the third generation. He-No Tea is the successful result of their experience;” andón this band is the further statement : “This band of any color is our trade-mark.”
From these statements the casual reader of them would certainly understand that there was a kind of tea in China called “He-No” tea, and that this tea was the kind the Chinese drank; and that this very tea the appellees imported direct from China, and was by them guaranteed to be the pure and genuine article. We were so impressed, and believed until we knew the contrary; and we do not think the most scrutinizing
The Circuit Court decided that the representations were not necessarily fraudulent and harmfully misleading; and therefore granted the relief ashed for. That Court thought, that because the component parts of the preparation came from China, and were purified by the appellees’ secret process, and was sold as pure tea, no matter if there was no variety in China known as He-Eo, (as there is not) the representation was only that it was a pure tea such as the Chinese drink; that is, unadulterated, as contra-distinguished from ordinary tea which is adulterated before exportation from China, and which the Chinese do not drink.
It is not necessary that the appellees should have deliberately designed to deceive, (and in this case they may not have so intended ;) yet if what they have said in their label is naturally calculated to deceive, and must and does inevitably deceive ; then the falsehood which their label conveys must bring to them the same -consequences as.if wilfully uttered. Knowingthe facts, the inscriptions maybe understood truthfully, perhaps, but ignorant of them, we cannot think any one would understand from what is said on the packages, that the tea they contain^was other than a particular kind of tea grown in China and drunk by the Chinese people. Eo one certainly would suspect that it was a tea compounded in Baltimore of three different brands of tea ; and if it were guessed to be a mixture, still it would be thought to be brought in that form from China. Indeed the statement, that it is the kind the Chinese drink, of necessity implies, that the particular article thus described was the drink of the Chinese, and most
We cannot doubt in this case, from the proof, that the appellees, by some method, which is their secret, so cleanse the teas composing this mixture of most objectionable impurities, so as to sell a good article; but this cannot excuse the deceptive statements they make in their labels, nor relieve them from the consequences of the natural, and necessary import of the language employed in their labels.
This case is very similar to that of Pidding vs. How, 8 Simons, 477, where the representations of the plaintiff respecting his tea on the market were held to be so deceptive as to deprive him of the right to injunction. To us it seems to be nearly, if not quite, as strong a case for the application of the rule that equity will not interfere, as the cigar case of Palmer vs. Harris, 60 Pa.,
Decree reversed, and bill dismissed.
Dissenting Opinion
filed the following dissenting opinion:
Martin Gillet & Co. filed a bill in equity against Kenny. The complainants alleged that they were engaged in the business of buying and selling teas; and that in the year eighteen hundred and seventy-five they placed on the market a tea of superior quality which they called “He-Ho;” that this word was the invention of the complainants, and that they had acquired the right to the exclusive use of it, and had registered it as a trade-mark in the office of the Commissioner of Patents ; and that the tea prepared and sold by them under this name acquired a high degree of publicfavor, i>and became known throughout the United States as their preparation; and that the packages, fnarks, symbols and other indicia used in connexion with the name of “He~Uo,” became well known within the same limits, and served to identify the tea, and to distinguish it from tea prepared by other persons. It was
He-No tea is put up in cylindrical paper packages of different sizes; containing respectively a pound, half a pound, and a quarter of a pound. These packages have at the top and bottom Chinese letters or characters; and on the front have these words printed in blue: “Standard He-No Tea, Trade-Mark, reg’std 18*78 — Martin Gillet & Co., importers, guarantee this tea pure andfree from all adulteration.” The packages of Kenny are of the same size, have different Chinese letters at the top and bottom, and in front hear these words of a deeper blue than Gillet’s: “Standard Hi-Hi Tea, Trade Mark applied for. C. D. Kenny, the packer, guarantees this tea free from all adulteration.” On the reverse side Gillet’s package has a Chinese junk, and under it the words, “Kind the Chinese drink.” Kenny’s has a mandarin holding a flag; ‘on the flag is the word “Hi-Hi.” Two hands of blue color run lengthwise on the Gillet package, separating the front from the reverse side. On one of these in white letters there are certain directions for preparing the tea for the use of the table. On the other of these hands, these words are printed also in white letters, “The importers of He-No tea are Martin Gillet & Co. A house established in 1811 by Martin Gillet. The present mem
The statement on the complainants’ packages clearly sets forth that “ He-No ” is a trade-mark. If this word described any of the qualities or characteristics of the tea, or its species, or place of production, it would not be a valid trade-mark. It is a perfectly'arbitrary and meaningless word, a mere symbol used by the proprietor for the purpose of identifying the merchandise which he oilers for sale. Any device, or emblem, or figure would have answered the same purpose, provided it did not indicate the generic name of the subject, or describe some quality of it. The proprietors for instance might have adopted a facsimile of an ancient work of art; or they might have called the article “Astrological Tea,” or “Patriotic Tea,” or have given it any other name which fancy or caprice suggested. The simple statement that the word “ He-No” was a trade-mark, was a distinct and unequivocal declaration to the public that the complainants had invented this name; and for their own purposes, and to suit their own wishes, had bestowed it on the merchandise which they offered for sale in these packages.
Taking everything which appears on these packages, and considering it as the expression of one harmonious meaning, and regarding it, as it was presented to the minds of the proprietors of this article, we may paraphrase it as follows: “He-No is a meaningless word, by which we designate a mixture of different descriptions of tea; these teas which we have compounded are not the manipulated kind which are prepared in China for foreign markets, but they are pure and unmanipulated, such as the Chinese themselves drink and we import them ourselves.” It would be easy to assign a different meaning to the words used on the packages, if we excluded from consideration the grand
The decree of the Circuit Court was in accordance with the views which I have expressed, and I think it ought to he affirmed.