CENTAUR CO. v. NEATHERY, 91 F. 891

SWAYNE, District Judge, after stating the case as above, delivered the opinion of the court. The error assigned in this case is that the court below' erred in denying a preliminary injunction. The record establishes the constant and exclusive use by the complainant of its wrapper for 20 years or more, and the expenditure of a large amount of money in advertising the preparation wrapped in such labels.

That respondent’s labels were such close imitations of those of complainant that they were calculated to deceive purchasers, and cause them to buy respondent’s goods instead of the preparation prepared by complainant, cannot be doubted. Indeed, with a very slight difference, they are exact copies of them. “Exhibit G, Defendant’s Wrapper,” which the respondent admits, in his answer, he and A. F.

Reinecke are now using, under the name of the “Phenix Medicine Concern,” when compared with “Exhibit A, Complainant’s Wrapper,” shows on the front an exact imitation of the latter in every minute detail, except the name in script near the lower part, respondent having substituted the words “The Phenix Medicine Concern, Dallas, Texas,” for those of “Chas. H. Fletcher, New York,” as used by complainant. With this small and unnoticeable change, the front of the wrappers are enough alike to have been printed from the same form.

In size, shading, and form of letters, in arrangement and ’composition of matter, in punctuation, spacing, size, and general effect, the two are in all other respects identical. The similarity is such that it could not have been the result of accident, and must have been so arranged for a purpose. It is true that the respondent, on another part of his label, substituted the name of the “Phenix Medicine Concern” for that of “Chas. H.

Fletcher,” used by complainant, in much larger type; but it is also true that he printed it in a script very similar, and took care it was so placed as to be on the back part of the bottle, where it would not be likely to be noticed. There can no longer be a question that, while the manufacture of “Castoria” is free to all since the expiration of the patent, yet the respondent has no right to dress his goods v. in such a manner as to deceive an intending purchaser, and induce him to believe he is buying those of complainant. In Coats v. Thread Co., 149 U. S. 566, 13 Sup. Ct. 966, Mr.

Justice Brown, announcing this doctrine, says: “Rival manufacturers may lawfully compete for the patronage of the public in the quality and price of their goods, in the beauty and tastefulness 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 they are buying those of their rivals.” Justice Maynard, while announcing the same doctrine in Fischer v. Blank, 138 N. Y. 244, 33 N.

E. 1040, very aptly remarks: “It must be admitted that there is no single point of resemblance or imitation which would of itself be regarded as adequate ground for the granting of equitable relief. Form, alone, would not be sufficient, nor size, nor color, nor the general decoration of panels, nor disks of the same size and color, arranged in the same way, nor a label of the same shape and color attached to the same part, nor the use of the same name to designate the kind and quality of tea.

But when all or a number of them are combined in a single package, and so arranged and exhibited that, when they strike the eye of the intending purchaser possessed of ordinary intelligence and judgment, a false impression is likely to be produced that the goods of the plaintiff are offered, it is the province of equity to interfere, for the protection of the purchasing public, as well as of the plaintiffs, and for the suppression of unfair and dishonest competition.” While discussing the same proposition in Nail Co. v.

Bennett, 43 Fed. 800, Justice Bradley said: “Whether this [the bronzing of nails] is a good trade-mark or not, it is the style of goods adopted by the complainant which the defendants have imitated for the purpose of deceiving, and have deceived, the public thereby, and induced them to buy their goods as the goods of complainant. This is a fraud,—-a substantial charge, which the defendants should be required to answer.

Undoubtedly, an unfair and fraudulent competition against the business of complainant, conducted with the intention on the part of defendant to palm cf. its goods as plaintiff’s, would, in a proper case, constitute grounds of relief.” Inasmuch as the issue raised in such cases is one of fraud, of deceitful representation, or perfidious dealing, it is evident that the intent of the defendant, when that is clearly made out, is often illuminative of the question to be decided; and such intent may be, and often is, made out, not from direct testimony, but as clear inference from all the circumstances, even where the defendant protests that his intention was Innocent.

What degree of similarity must exist to warrant the intervention of the cour t cannot, in the nature of things, be specifically defined in advance. The general rule is best stated by the supreme court, in the following extract: “The judge must depend in every case upon the appearance and special characteristics of the entire device; but it is safe to declare as a general rule that exact similitude is not required to constitute an infringement, or to entitle the complainant party to protection.

If the form, marks, contents, words, or the special arrangement of the same, or the general appearance of the alleged infringer’s device, is such as would be likely to mislead one in the ordinary course of purchasing the goods, and induce him to suppose he Is purchasing the genuine article, then the similitude is such as to entitle the injured party to equitable protection. Difficulty frequently arises in determining the question of infringement; but it is clear that exact similitude is not required, as that requirement would always enable the wrongdoer to evade the responsibility for his wrongful acts.

The colorable imitation which requires a careful inspection to distinguish the spurious trade-mark from the genuine is sufficient to maintain the issue; but a court of equity will not interfere when ordinary attention by the purchaser of the

article would enable him at once to discriminate the one from the other. Where the similarity is sufficient to convey a false impression to the public mind, and is oi a character to mislead and deceive the ordinary purchaser in the exercise of ordinary care and caution in such matters, It is sufficient to give the Injured party a right to redress.” The same doctrine was affirmed and applied by Justice White in an elaborate and able opinion in Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 16 Sup. Ct. 1002. The closing paragraph of the opinion (Manufacturing Co. v. Bent, 163 U. S. 206, 16 Sup.

Ct. 1016), is as follows: “There is no doubt that the marks were imitations of those used by the Singer Company, and were intended to deceive, and were made only seemingly different to afford a plausible pretext for asserting that they were not illegal imitations, although they were so closely imitative as to deceive the public. The defendant therefore must be treated as if he had used the Singer marks.

So treating him, however, we should be obliged to allow the use of the name ‘Singer,’ since that name, as we have already held in the case just decided, fell into the domain of things public, subject to the condition on the one who used it to make an honest disclosure of the source of manufacture.” We think the questions raised by the record in this case have already been properly determined by Judge Kirkpatrick in the case of Centaur Co. v.

Kellenberger, in the district of New Jersey (87 Fed. 725), in which he denied the respondent had the right to so dress v. his goods, by the use of labels and wrappers that were such imitations of those used by the complainant for about 20 years as were calculated to deceive the ordinary purchaser, and cause 'him to buy defendant’s goods when intending to buy complainant’s, and thus carry on an unfair competition in trade, deceive the public, and unlawfully secure to himself tire profits belonging to the complainant.

Bearing in mind that the complainant’s wrapper was well known to the trade for years before the adoption of that of the defendant, it is impossible, in view of the “accumulated resemblances,” to avoid the conclusion that these numerous similarities were not the result of chance, but are chargeable to design, the sole object of which was an intent on the part of defendant to so imitate the complainant’s wrapper as to create confusion in the minds of intending purchasers, to palm cf. his goods as those of complainant, and thereby unfairly acquire the benefit of complainant’s efforts to build v. and retain the trade.

While it is admitted that “the right to manufacture Castoria” according to Pitcher’s patented process or formula may be free to the world, also the right to sell the manufactured

article by the name “Castoria,” yet in putting it upon the market the new manufacturer must clearly identify his goods, and not engage in unfair competition, nor do anything which will tend to deceive the public, and induce it to taire his goods under the belief that they are those which it has heretofore been accustomed to purchase under the same name.

As the similarity of labels shown by the record has that tendency to deceive, and such similarity is evidently the result of design, we are of opinion that the defendant should be enjoined from the use of the label set out in the bill of complaint, or of any label substantially similar thereto which is calculated to deceive the public.

The order of the circuit court refusing a preliminary injunction is reversed, and the cause is remanded, with instructions to grant a preliminary injunction as prayed in the complainant’s'bill, and otherwise proceed in accordance with the views expressed in this opinion, and as equity and good conscience may require.