After the decision in this case, reported in
The defendants’ contention is that although the injunction was rightly issued under the previous decision, Regis v. Jaynes,
The general рrinciple that one who has shown that he is entitled to the exclusive use of a trademark may in equity recover from an infringer against whom he obtains an injunction the amount of the profits arising from the sale of goods upon which the trademark has been wrongfully used, is not denied by the defendants, and is abundаntly sustained by authority. Saxlehner v. Eisner & Mendelson Co. 138 Fed. Rep. 22. Oakes v. Tonsmierre, 49 Fed. Rep. 447. Societe Anonyme v. Western Distilling Co. 46 Fed. Rep. 921. Benkert v. Feder, 34 Fed. Rep. 534. Atlantic Milling Co. v. Rowland, 27 Fed. Rep. 24. Sawyer v. Kellogg, 9 Fed.
The defendants argue that in such a case as this, while an injunction may be granted to protect thе rights of the plaintiffs in their trade name, yet the defendants should not be held for the profits which they have realized by selling articles bearing a name like the one used by the plaintiffs, in the absence of any fraudulent intention on their part, when it was found that they had acted in ignorance of the plaintiffs’ rights, аnd it did not appear that substantial injury had been done to the plaintiffs before the filing of their bill. There is some conflict in the decisions ; but we think that the weight of modern authority is in favor of the rule that an account of profits will not be taken where the wrongful use of a trademark or a trade name hаs been merely accidental or without any actual wrongful intent to defraud a plaintiff, or to deceive the public. Elgin National Watch Co. v. Illinois Watch Case Co.
But we do not think that the defendants are protected by this principle against the taking of the account here in question. The account is ordered to be taken only since the filing of the original bill, upon the charge made in the supplemental bill that during the litigation the defendants have persisted in their infringement. It cannot be said that this conduct on their part was in ignorance of the plaintiffs’ rights; they were at least put upon inquiry, and must be charged with knowledge of what they would have learned upon reasonable inquiry. Nor can it be said that their conduct since the filing of the bill was innocent or free from wrongful intent within the meaning of the rule which has
We are of opinion that the decree appealed from was correct in ordering an account of the defendants’ profits since the filing of the bill to be taken.
The defendants also have filed exceptions to the master’s report made under this decree, and these we now proceed tо consider.
The first and second exceptions are to the master’s ruling that the defendants were liable to account for all profits made by them on all sales of “ Rexall ” goods made since the filing of the original bill, without regard to whether the “Rexall” tablets were sold as and for the goods of the plaintiffs or not, and that it was immaterial and the defendants were not entitled to show whether any actual deception or mistake had occurred or not. We cannot sustain these exceptions. In taking an account of the profits, the defendants should be charged with the entire profit made upon sales of the tablets under the guise of the infringing trademark. All these sales were wrongfully made, and the defendants must be held to account for the profits made upon all of them. Saxlehner v. Eisner & Mendelson Co. 138 Fed. Rep. 22. Fairhank Co. v. Windsor, 124 Fed. Rep. 200, and in 118
But the counsel for the defendants argues' that only those profits are to be accounted for which actually are shown to be due to the assistance derived from the plaintiffs’ trademark. So far as this doctrine finds support in the decisions relied on, it seems to us tо rest upon a confusion between damages and profits. It will appear by reference to the cases which already have been cited that in England in such cases a plaintiff is ordinarily required to elect between damages and profits, while it has been said in many cases in this country that equity, having once obtained jurisdiction, will, where it has granted an injunction, give both damages and profits, so far as this is necessary to secure full compensation. But in this case the order of reference was limited to an account of profits, no damages being allowed; and no question аs to the assessment of damages comes before us.
The defendants further contend that the rule which has been adopted in patent cases should be applied here. This rule has been stated by Field, J., of the Supreme Court of the United States: “ When a patent is for an improvement, and nоt for an entirely new machine or contrivance, the patentee must show in what particulars his improvement has added to the usefulness of the machine or contrivance. He must separate its results distinctly from those of the other parts, so that the benefits derived from it may be distinctly seen аnd appreciated. The rule on this head is aptly stated by Mr. Justice Blatchford in the court below: 6 The patentee,’ he says, ‘ must in every case give evidence tending to separate or apportion the defendant’s profits and the patentee’s damages between the patented feature and the unpatented features, and such evidence must be reliable and tangible, and not conjectural or speculative; or he must show, by equally reliable and satisfactory evidence, that the profits and damages are to be calculated on the whole machine, for the reason that the
The defendants offered to prove, at the hearing before the master, after a statement had been made of their sales and of the amount paid by them for the goods and the amount received by them from the sales, that they had paid out various sums for rent, heat and light in the shops where they had made the sales, and for hire of clerks selling the goods, and for trading stamps given to the purchasers. They admitted that they could not determine the exact amount so paid out, except by some method of apportionment; and they offered to introduce testimony to show that the expenses of conducting their general business were аbout twenty-five per cent of the gross sales, and that the expenses connected with the sale of these goods were as great as those connected with the average of their goods. But the master ruled that the defendants were not entitled to any deductions from the profits to bе accounted for on account of expenses of making the sales, except such expenses as they could prove would not have been incurred except for- the sale of “ Rexall ” goods, and were not entitled to credit for any sums whatever for rent
The defendants contend that their liability for profits cannot exceed the amount of the net prоfits which they have received, and that to determine this amount the actual expenses of carrying on their business must be ascertained, and a proper proportion of such expenses deducted from the gross profits of this department. They rely upon the case of The Tremolo Patent,
We have not found it necessary to consider the effect of our own statute on this subject, (R. L. c. 72, § 9,) as counsel on both sides agree that, so far as it applies to this case, it merely reaffirms the common law rule. We do not, however, intend to throw any doubt upon the validity of this statute, оr to intimate that its force has been at all affected by the act of Congress of 1881, 21 U. S. Sts. at Large, c. 138. See Trade-Mark cases,
The result is that the decree appealed from must be affirmed ; and the defendants’ exceptions to the second report of the master must be overruled, and a final decree entered for the plaintiffs accordingly.
iSo ordered.