193 F. 384 | 7th Cir. | 1911
Appellants were enjoined from using in any of their soap brands, labels, packages, and advertisements the word “Williams’5—
“either in a corporate name, or in the name of any business concern, or as an individual name, or in any maimer, without distinguishing such word from the complainant’s name and the complainant’s products and advertising matter by adding to the word ‘Williams’ some other word or words, which shall not be merely a Christian name, or by joining with the printed corporate or business name such printed words as will say in effect that the soap designated or referred to by such other printed words is not the soap manufactured by the J. B. Williams Company of Glastonbury, Connecticut.”
Appellee is owner of an old and well-known business at Glastonbury. The shaving-soap part of the business dates hack to 1845. The evidence is that toilet soaps were added at least as early as 1885. On soaps, wrappers, cartons, boxes, and in all advertisements the word “Williams” has always been conspicuously displayed. Eor 50 years the products have been popularly known as “Williams Shaving Soap” or “Williams Soap,” and the company as “Williams Soap” Company. The name is of great value, and-appellee has always endeavored to protect it.
In 1895 one Whitney and one William Williams, as Whitney & Williams, began a soap business at Indianapolis, Ind. George, a brother of William, soon bought out Whitney, and the business was continued as Williams Bros. In 1899 this firm was succeeded by the William Williams Soap Manufacturing Company, a corporation. In 1902-03 the appellants S. F. and J. M. Daily bought all of William Williams5 stock and all of George’s except nine shares. George remained as superintendent till October, 1903, when he ceased to have any part in the management, and in October, 1904, sold his last share. In May, 1904, the corporate name was changed to the Williams Soap Company. From the time of Williams Bros, to the present the pub-
About June, 1904, appellants put forth a brand of shaving soap in a carton which in size, color, and general appearance was quite similar to a carton of complainant’s. The resemblance was not intended. After remonstrance of appellee, appellants changed the size and color, and quit sending out the first design.
In 1903, after the Dailys were,in control, they put forth a brand, “Genuine Antiseptic Shaving Soap, Manufactured by Williams Soap Co.” This was a fraudulent imitation of appellee’s oldest label. The Dailys were familiar with appellee’s label. They approached it in size and color, and their use of “Williams Soap Co.” without name or location of the actual makers was particularly deceptive. On June 23, 1904, appellants shipped their last order of this brand, and thereafter discontinued the sale.
Prior to August, 1904, appellants had used the word “Williams” as part of the name of brands of toilet soap, for instance, the brand “Williams Antiseptic Tar Soap.” On appellee’s complaint in August, 1904, appellants discontinued such use.
Soap of appellants was sold by retailers, who stated to the purchasers that the soap was the much-advertised Williams Shaving Soap, the kind that barbers use.
By conferences and correspondence extending from August, 1904, to April, 1905, appellee endeavored to secure protection of its rights without suit. The end was that, while appellants admitted they had no right to use “Williams” as the name, or as a part of the name, of a brand of soap, they insisted that no wrong had been done in taking 'or using the name, “Williáms Soap Company,” and therefore intended to use the name in the future as they had in the past.
Appellants, before suit was brought, ceased to imitate labels and abandoned the word “Williams” as the name, or as any part of the name, of a brand of soap. The quitting was under circumstances which indicated that those offenses would not be repeated. Unless, therefore, the use and the threat to continue the use of the name “Williams Soap Company” were wrongful, an injunction would not be justifiable. Kennicott Co. v. Bain, 185 Fed. 520, 107 C. C. A. 626.
No error was committed in ordering an accounting. Repentance does not satisfy the damages.
The decree is affirmed.