George G. Fox Co. v. Best Baking Co.

Loring, J. These bills are brought by the plaintiff in George G. Fox Co. v. Glynn, 191 Mass. 344, and in George G. Fox Co. v. Hathaway, 199 Mass. 99. The master in the case at bar has found (1) that the defendants began to sell the loaves here complained of “ soon after the decree of the Superior Court of this County [referred to in these bills] dismissing the bill in the case of the George F. [sic] Fox Company v. Hathaway, was entered,” and (2) that “ The defendants’ loaves here in question are, except for slight differences in the labels, substantially the same in appearance as those in question in Fox [szc] v. Sathaway”; but in the words of his report, (3) “ Upon all the facts, [256] as above stated and upon an inspection of the exhibits in the cases, I therefore find that the defendants’ loaves, without any bands or names upon or about them were not so similar to the ‘ Creamalt ’ loaf as to be likely to deceive the ordinary purchaser, having some knowledge of the appearance of the ‘ Creamalt ’ loaf, or to constitute an instrument of fraud in the hands of the retail dealer.” In George G. Fox Co. v. Hathaway, we found as a fact that the visual appearance of the loaf there in question, which was “ substantially the same in appearance ” as that in question in the two suits now before us, was likely to mislead the ordinary purchaser into thinking that the defendants’ bread was the plaintiff’s bread. We adhere to our former finding. The master was plainly wrong in the last of the three findings stated above, and the plaintiff’s first, third, fourth and fifth exceptions to his report must be sustained. The defendants contend that for two reasons this does not bring these two cases within the decision in George G. Fox Co. v. Hathaway, ubi supra. The first of these reasons is that it appeared in the Hathaway case “ that the oval shape adopted by the plaintiff was uncommon, although not entirely novel, and that it was uneconomical, and less convenient and satisfactory generally for the cutting of slices for all kinds of uses than the shapes generally adopted. There was nothing to show that the defendants’ business interests required the combination of this shape with the same size, color and general visual appearance that had become associated with the plaintiff’s trade in this ‘ Creamalt ’ bread,” while in the cases now before us it has been found as a fact that the oval-shaped loaf with its flaring sides and exaggerated rounding of the top is on the whole an advantageous loaf and for the following reasons: (1) It has an appearance of bulk and size which no other loaf of the same weight has and therefore purchasers who wish to get as much as possible for their money prefer it: (2) It has a handsome and attractive appearance: (3) Its rounded corners are less likely to be broken in transportation and the pans are more easily cleaned: (4) Although it is a fact that it is less adapted to being cut into uniform slices, that fact is of little importance in the “ family trade,” for which the plaintiff’s and the defendants’ loaves are primarily intended. [257] The fact in the Hathaway case that the plaintiff’s oval-shaped loaf was an uneconomical loaf and generally less convenient and satisfactory was spoken of because since that was the fact the case there presented was not a case of conflicting rights, but a case where the only explanation of the defendants’ adopting the oval-shaped loaf was that they hoped to take advantage of the plaintiff’s good will and to pass off their bread as the plaintiff’s bread. There is nothing in that opinion which implies that if it had been found there as a fact that the oval shaped loaf was a desirable one the opposite result would have been reached. Not only that, but it is there stated in terms that the opposite result would not have been reached had that been the fact. After setting forth that the oval shaped loaf was an undesirable one and that there was nothing to show that the defendants’ business interests required the adoption of it, this court went on to say: “ The plaintiff had no exclusive right in any one of the features of the combination, and if the defendants had required the use of this combination for the successful prosecution of their business, they would have had a right to use it, by taking such precautions as would prevent deception of the public and interference with the plaintiff’s good will.” The second ground on which the defendants seek to take the eases at bar out of the decision in the Hathaway case lies in the fact that the master has found that "If the fact is material . . . the defendants, perceiving that a loaf like the 'Creamalt ’ loaf, with rounded and flaring sides, suited the public taste or whim, and desiring to meet the competition of the 'Creamalt ’ loaf, decided to make a loaf having such rounded and flaring sides.” The plaintiff has no exclusive right to make and sell bread having an oval shape, flaring sides and an exaggerated rounding of the top. And the defendants would have a right to make and sell bread which has that shape were it not for the fact that bread of that shape means to the publip that it is made by the plaintiff. From this it follows (as was decided in Flagg Manuf. Co. v. Holway, 178 Mass. 88, and as was stated in that part of the opinion of this court in George G. Fox Co. v. Hathaway quoted above) that the defendants can use that shape of loaf if they take such precautions as will prevent their bread from being taken for the plaintiff’s bread. The only precautions [258] taken by them in these cases consist in stamping their names on the bottom of the loaves and placing bands around them. But the master has found in terms that these two means of distinguishing the defendants’ loaves from the plaintiff’s loaves “ would not be an adequate means of distinguishing the loaves.” We are therefore of opinion that there is nothing in these eases which takes them out of the decision in George G. Fox Co. v. Hathaway, 199 Mass. 99, and that the twelfth exception to the master’s report must be sustained. - A new defense, however, is set up, namely, that the plaintiff does not come with clean hands. The master has found (first) that the representation made by thé plaintiff as to the ingredients of the bread is that it is made of milk and malt unless calling it “ Creamalt ” “ may be taken to connote the use of pure cream.” In our opinion it does not. Secondly, the master found that when the bill was filed “the plaintiff widely advertised ‘ Creamalt ’ bread as the ‘ new bread made with milk and malt.’ ” The findings of the master are that the plaintiff used malt as one of the ingredients of its bread because “ it was also thought by the plaintiff to impart a desirable flavor to the bread,” and that “the ingredients used in making ‘ Creamalt ’ bread were of good quality and were skilfully combined and baked, in accordance with a formula devised by the plaintiff’s agents as the result of experiments.” The bread therefore appears to have been made according to a new formula, and so might be fairly termed a new bread, although all the ingredients had been used in combination before in making bread. Thirdly. Up to and including the year 1906 the plaintiff did make misrepresentations of fact with respect to its “ Creamalt ” bread. It advertised that “It has twice the food value of any other bread.” And there were other similar misrepresentations. But these advertisements had been stopped nearly a year and a half before these bills were filed on June 4, 1908. Although it is not so found in terms, we take it to be the fact on the findings made by the master that the increase in the plaintiff’s daily sales from “ about one hundred loaves ” to “ about six thousand loaves ” may have come in some degree from these false representations. Notwithstanding that, the plaintiff has built up a large and remunerative business in selling a good bread which [259] the public like, and the defendants have put upon the market an imitation of its loaves, adapted to use in deceiving that part of the public who had only a general knowledge and recollection of that which had been recommended to them, or which they had been accustomed to buy. The question we have to decide is whether the plaintiff who, for nearly a year and a half before the bill was filed, stopped all advertisements which were not true, is to be precluded from having the defendants enjoined from selling their bread as the plaintiff’s bread because some of its former advertisements contained statements which were not true. In our opinion that would be going too far, and the only authorities we have seen are to that effect. Moxie Nerve Food Co. v. Modox Co. 153 Fed. Rep. 487. Benedictus v. Sullivan, Powell & Co. 12 R. P. C. 25. The orders overruling the first, third, fourth, fifth and twelfth exceptions to the master’s report taken by the plaintiff must be reversed and said exceptions must be sustained. The orders for decrees dismissing the bills must be reversed and decrees entered in favor of the plaintiff. So ordered.