Winthrop Chemical Co. v. Blackman

McAvoy, J. The proof at the trial established the plaintiff’s contention that the use of the terms “ Veronal ” and “ Protargol ” in either method employed by defendants was calculated to deceive the public and permit sales of defendants’ products as though they were the output of plaintiff. As to the products “ Theobrominal,” “ Aristol ” and " Kre-o-minal,” we all agree that the plaintiff’s rights are infringed by defendants’ user; dissent is expressed only as to the use of the terms “ Veronal ” and “ Protargol.” The names “ Veronal ” and “ Protargol ” are not descriptive words or generic terms solely identifying the drugs in question. They represent in effect in their secondary meaning in the trade, products of plaintiff which it is entitled to use exclusively even after a patent has expired, since the other terms have throughout the patent period been applied to the products in question. There may be instances where an arbitrary name may so identify an article that no other term is its equivalent, but all of these remedies have chemical names apart from their proprietary designations by which they may be purchased and purveyed to the medical profession, by whose members they are usually ordered and prescribed. It seems to us that the practice of using the words “ introduced as ” or “ equivalent ” in conjunction with the plaintiff’s trademarked name, is designed to foist the defendants’ product on the buyer without any necessity of so doing in the interest of the public to prevent monopoly. The cases in which a patent’s expiry permits the use of the patented name on another’s product apply only where no other term would give it meaning in the public domain. Our conclusion is that the plaintiff was properly granted an injunction and an accounting against both the corporate body and the individual defendants since the latter participated actively in the wrong and were hable as joint actors for carrying out the plan of infringement to the detriment of plaintiff. The judgment appealed from should, therefore, be affirmed, with costs. Townley, Glennon and Dore, JJ., concur; Untermyer, J., dissents in part.