National Commodities Co. v. Viret, 296 F. 664

National Commodities Co. v. Viret

296 F. 664 | 2d Cir. | 1924

MAYER, Circuit Judge

(after stating the facts as above), It is, of course, elementary that the granting or denial of a motion for preliminary injunction rests largely in the discretion of the Court, by which is meant the judicial discretion. It is also elementary that, to warrant the granting of a preliminary injunction, the showing must be clear and convincing as to the propriety of such relief.

In commercial cases of the character of that at bar the failure to grant an application for an injunction, particularly when the trial *666of cases is not promptly reached because of delays in an overburdened court, may have the practical effect of a denial of justice, and permit an infringer to do grave injury before the rights of the parties are determined on final hearing. On the other hand, to grant a preliminary injunction, except in a clear and convincing case, may have the result of destroying a defendant’s business ,in the article of merchandise which is the subject of controversy, and a bond, no matter in what amount given, is frequently not a truly adequate security, because of the legal difficulties attending proof of damage, if it should appear that the preliminary injunction was improvidently issued.

In the case at bar it is apparent that the District Judge held that there was no unfair competition between the parties, and there could not possibly be confusion in respect of the appearance of the packages in which the goods were put out by each party. Plaintiff’s case, therefore, rests wholly on such rights as it may have under its registered trademark. It will be noted that in its first registration it asserted its date as September 1, 1916. As the result of the proceedings in the Patent Office, it was found that it was entitled to a date in 1913, which thus preceded the clearly established date of defendants; i. e., 1915.

We do not fail to give due weight to the decision of th'e Patent Office, and to this we referred in Curtiss Aeroplane & Motor Corp. et al. v. Janin et al., 278 Fed. 454, in a proceeding under another statute. In the case at bar, the Patent Office, however, had no greater opportunity of seeing the witnesses than had the District Court. The Patent Office decision was rendered upon a transcript of testimony taken before a notary public, and thus this decision, while entitled to weight and respect, does not carry the conviction which accompanies a decision upon a question of fact, where the trier of the facts has seen and heard the witnesses.

In the present record, there are several affidavits which were not before the Patent Office, and we think upon this record that the question of priority is a debatable question, which can only be satisfactorily solved when and if there shall ,be a trial of the issues in open court. We are also satisfied that there is at least a debatable question as to whether the human-hair net put out by plaintiff is really a competitor of the silk hair net put out by defendants. We also observe that the words “Palm Beach” have been registered as applicable to other kinds of merchandise. Pabst Brewing Co. v. Decatur Brewing Co. (C. C. A.) 284 Fed. 110, commented upon in Anheuser-Busch, Inc., v. Budweiser Malt Products Corporation (C. C. A.) 295 Fed. 306, 2nd Circuit, November 5, 1923.

Finally, in view of the form in which the two packages are printed, there is also a question as to whether or not, in the circumstances disclosed in the record, the use of the words, “Palm Beach” by defendants in an entirely different appearing wrapper or package constitutes infringement. We express no opinion in regard to the several matters supra, to which we thus call attention. Our purpose in referring to them is to point out that the various controverted questions between *667the parties are too debatable to have warranted the granting of a motion for preliminary injunction, and that plaintiff has not made out a case so clear and convincing as to justify the granting of so drastic a remedy in advance of final hearing.

Order reversed, with costs.