No. 6 | 7th Cir. | Nov 6, 1893

WOODS, Circuit Judge,

(after stating the facts.) Our conclusion is that the appellant’s motion for a modification of the sixth para-, graph of the decree should have been sustained. As it is, the respondent is restrained from using the words, “Dr. Bull’s Cough Syrup,” and other forms of expression containing those words, “upon any label or wrappers for boxes or any packages of cough syrup resembling or in imitation of the labels or wrappers or trademarks of the complainant,” but not from using the words upon labels or wrappers of any style which could not be said to resemble or be in imitation of the labels or wrappers of the complainant. The finding of the court is explicit that- the defendant devised, constructed, and arranged the name as well as the wrapper of its article for the fraudulent purpose of causing it to be mistaken and sold in the market for complainant’s article, and that the tendency of the defendant’s acts in the premises was to effect that result. The question presented, therefore, is not one of trade-mark strictly, but of fraud. Descriptive words, like “cough syrup,” and proper names, of course, cannot be appropriated by one to the exclusion of another; nevertheless they may not he used for the purpose of perpetrating a fraud which affects the public. In Koehler v. Sanders, 122 N.Y. 65" court="NY" date_filed="1890-10-07" href="" opinion_id="3576527">122 N. Y. 65, 25 N. E. 235, it is said:

“There are cases where the right to use a name to designate a product is so qnalifledly exclusive that the right to the protection of its use against infringement by others rests upon the ground that such use by them is'an untrue or deceptive representation. * * * The application of this principle is not necessarily dependent upon a proprietary right in a name, or the exclusive right to its use; hut when another resorts to the use *887of it fra nihil onfly as an artifice or contrivance io represent his goods or ins Business as I hat of a person so previously using it, and to induce the public to so believe, the court may, as against him, afford relief to the party injured.”

The same doctrine is recognized in Lawrence Manufg Co. v. Tennessee Manuf'g Co.. 138 U.S. 537" court="SCOTUS" date_filed="1891-03-02" href="" opinion_id="92978">138 U. S. 537, 31 Sup. Ct. 396; Chemical Co. v. Meyer, 139 U.S. 540" court="SCOTUS" date_filed="1891-03-23" href="" opinion_id="93037">139 U. S. 540, 11 Sup. Ct. 625; Canal Co. v. Clark, 13 Wall. 313. And in Coats v. Thread Co., 149 U.S. 562" court="SCOTUS" date_filed="1893-05-10" href="" opinion_id="93651">149 U. S. 562, 13 Sup. Ct. 966, it is said, upon the authority of a large number of cases cited:

“There can he no question of the soundness of the plaintiff’s proposition that, irrespective of a technical question of Trade-mark, the defendants have no right to dress their goods up in such manner ns to deceive an intending purchaser, and induce him to believe that he is buying those of the plaintiff. Rival manufacturers may lawfully compete for the patronage of the public in tlie quality and price of their goods, in the beauty and fastefulness of their inclosing packages, in the extent of their advertising, and in the employment of agents; but they have no right by imitative devices to beguile the public into buying their wares under the impression that they are buying those of 1hoir rivals.”

In Chemical Co. v. Meyer, supra, the plaintiff’s preparation was called “Brown’s Iron Bitters.” and that of the defendant “Brown’s Iron Tonic,” but, it appearing (hat no fraud was intended, that the two preparations were “known to the trade and purchasers as distinct and separate,” and that the one was never mistaken for the other, a.n injunction was refused.

While it is the right of every producer or manufacturer to show by some form of statement or legend upon the label or brand of bis article where it was made, the names of places being to that extent common property, and incapable of appropriation as trade-marks, yet he may not use the name in a manner and with the intent io make it appear that his article is the same as another, still on the market, which theretofore had been made at the same place, and had been known by the same or by a similar name. In Wetherspoon v. Currie, L. R. 5 H. L. 508, a starch made at Grlenfleld had come to be known as “Grlenfleld Htarch,” and the maker was granted an injunction against the use of the same name by another for his starch, of Avhich the manufacture had been commenced more recently at the same place, and also against the use of the word “Clenfleld” in large and dark letters upon the packets in a way intended to cause one article to be mistaken for tin; other. And in Thompson v. Montgomery, 41 Ch. Div. 35, 50, the proprietors of an ale brewed at Stone, and long known as “Htone Ale,” obtained an injunction against; the use of that name for another and later product of ale, which was also made at Stone. These cases are cited with approval in Lawrence Manuf’g Co. v. Tennessee Manuf'g Co., supra, and the principle upon which they proceed is equally applicable to corresponding uses of personal names. While the right of no one can be denied to employ Ms name in connection with his business, or in connection with articles of his own production, so as to show' the business or product; to be his, yet he should not be allowed to designate bis article by his own name in such way as io cause it to be mistaken for the manufacture or goods of another already on t he market under the same or a similar name. Whether *888it be bis name or some other possession, every one, by the familiar maxim, must so use his own as not to injure the possession or right of another.

The appeal is therefore sustained, at the costs of the appellee, with instruction that the motion for a modification of the sixth paragraph of the decree be allowed; and it is so ordered.