STERLING REMEDY CO. v. SPERMINE MEDICAL CO., 112 F. 1000

JENKINS, Circuit Judge (after stating the facts as above). We have held in Hires Co. v. Consumers’ Co., 41 C. C. A. 71, 100 Fed. 809, and in Mitchell v. Williams, 45 C. C. A. 265, 106 Fed. 168, that it is not proper, where unfair competition has been found, for a court of equity to give its approval’ in advance to a changed form proposed to be adopted to avoid future liability, but should in such cases restrain the use of the infringing devices, leaving to the defendant the responsibility of deciding for himself and at his own risk what changes are necessary to avoid infringement.

The order of July 20, 1899, was therefore improvident, and should have been vacated by the decree. It is proper to add that that order was made before either of the decisions referred to, but the decree was entered subsequently to them, and should have conformed the action of the court below to the ruling of this court. We have spoken so frequently to the subject of unfair competition in trade, and have declared the principles which, as we conceive, govern such cases, that the case before us calls for no special consideration of the facts.

There was here manifest attempt to put upon the public the goods of the defendant as those of the complainant. The latter had provided a peculiar form for its tablets and a box oí peculiar shape. This form and shape had not beiore been used in connection with such medicine. It is clear that the defendant adopted the style and shape of the boxes, the color of the tablet, and the letterpress upon the boxes and in advertising, to palm off his goods as those of the complainant. It is not a case of accidental imitation in some respect; it is a case of deliberate and designed imitation in all respects.

The facts bring the case under.the ban of the law, and the complainant was entitled to relief, as well against the form of the tablet and shape of the boxes as against the word “Castorets.” Hires Co. v. Consumers’ Co., 41 C. C. A. 71, 100 Fed. 809; Saxlehner v. Mendelson Co., 179 U. S. 19, 21 Sup. Ct. 7, 45 L. Ed. 60. A more difficult question arises with respect to the use of the words “Candy Cathartic.” It is claimed that these words are merely descriptive, indicating the quality of the compound, and cannot be appropriated as a trade-mark.

This may be, although a different conclusion was reached by Judge Wing in Remedy Co. v. Gorey (C. C.) 110 Fed. 372. We do not find it needful to determine that question, since the bill here does not proceed upon the ground of trade-mark alone, but upon the ground of unfair competition in trade. There can be no trade-mark in one’s name, or in a geographical name, or in a name descriptive of quality; but neither can be used for the purpose of perpetrating a fraud which affects the public. Meyer v. Medicine Co., 7 C. C. A. 558, 58 Fed. 884; Pillsbury v. Mills Co., 12 C. C. A. 432, 64 Fed. 841; Mills Co. v. Eagle (C.

C.) 82 Fed. 816; Williams v. Mitchell, 45 C. C. A. 265, 106 Fed. 168; Reddaway v. Banham [1896] App. Cas. 199; La Republique Francaise v. Saratoga Vichy Springs Co., 107 Fed. 459, 46 C. C. A. 418. In a recent case in the supreme court (Elgin Nat. Watch Co. v. Illinois Watch Co., 179 U. S. 665, 675, 21 Sup. Ct. 274, 45 L.

Ed. 380), the court remarked that, “Where an alleged trade-mark is not in itself a good trade-mark, yet the use of the word has come to denote the particular manufacturer or vender, relief against unfair competition or perfidious dealing will be awarded by requiring the use of the word by another to be confined to its primary sense by such limitations as will prevent misapprehension on the question of origin.” So here, the use of the term “Candy Cathartics,” if it be a descriptive term, was so used by the defendant below? in connection with the form of tablet, the character of letterpress, and with a word idem sonans with the term “Cascareis” employed by the complainant, that the combination worked a fraud upon the public and a wrong to the complainant.

If the term be a descriptive one, the defendant had no right to employ it in such combination, and could only use it under “such limitations as will prevent misapprehension on the question of origin.” The bill sought so to restrain, and the prayer of the bill is no broader. If the defendant is of opinion that it may lawfully appropriate that term as a descriptive one, care should be taken that it is not employed in combination with infringement in form, shape, color, or letterpress. The duty is cast upon the defendant of deciding for itself, as vre remarked in Hires Co. v.

Consumers’ Co., supra, “how near he may with safety drive to the edge of the precipice, and whether it be not better for him to keep as far from it as possible/’ If the term be a descriptive one, the

article to which it is applied must be differentiated in form, dress, and color, that the public may not be imposed upon and the complainant defrauded of its rights. The decree is reversed, and the cause is remanded, with directions to the court below to vacate the order of decree of July 20, 1899, and to enter a decree in conformity with the prayer of the bill.