Parlett v. Guggenheimer

Stone, J., delivered the opinion of the Cort.- The learned Judge of the Circuit Court of Baltimore City in the opening of his very lucid opinion in this case says: — 549 — “From. an inspection of the exhibits filed in this case, and an examination of the testimony, I have no doubt that the trade-mark adopted by the defendants is a simulation of that of the plaintiffs calculated to deceive the ordinary retail purchaser ; and I think the testimony further shows, that the simulation was designed for the purpose of enabling the defendants to put their goods upon the market upon the reputation previously acquired by the goods of the plaintiffs.” To the views so far expressed by him we fully assent; but he goes on to say that while that is so, the plaintiffs are not entitled to the relief they ask, because according to the evidence, one Lorin Palmer, of Chicago, long before the plaintiffs used the trade-mark, had adopted and used it, and therefore they could not have an injunction against others when they themselves were liable to one at the suit of Palmer. From these latter views we are compelled to dissent. One defence set up by the defendants is in fact a quasi admission that they were simulating the trade-mark of the plaintiffs, but that the plaintiffs were simulating the trademark of Palmer and therefore could not complain of them. It is a plea of confession and avoidance, but it still would be a good plea if sustained by the proof, for if the evidence does show that the plaintiffs were committing, by the use of their trade-mark, a fraud on Palmer, they are in no condition to complain of the defendants’ fraud on them. The appellants, plaintiffs below, are manufacturers of plug twist chewing tobacco and their trade-mark consists of the words Grolden Crown ” marked on the boxes in which the tobacco is packed, and in addition four tin tags of a particular size, shape, lettering and position on each bar of the tobacco, and on each tag, also the words “ Grolden Crown.” These tin tags form a very important part of the plaintiffs’ trade-mark. The tin tag device was adopted to prevent — 550 — frauds on the retail purchaser, who could then he sure that he obtained what he wanted, and of which he could not be sure as long as the trade-mark was only on the top of the boxes in which the tobacco was packed. The trade-mark of Palmer, which the plaintiffs are-charged with using, are the words Golden Crown. He used no tin tags or anything on the bars of tobacco, but only used his trade-mark on the packages of manufactured tobacco and on the boxes of cigars. It is also shown that Palmer had used this trade-mark from 1858, long before the adoption by the plaintiffs of their trade-mark, and it is further shown that the plaintiffs were in entire ignorance of its use by Palmer up to-the bringing of this suit. It also appears from the agreement in this case, that this Lorin Palmer brought suit about 1869, against one Harris of Philadelphia, claiming that Harris was simulating his trade-mark, and seeking a Court of equity to restrain him. Harris in his answer admitted the imitation, but based his defence upon the fact that Palmer had no-standing in a Court of equity to get the relief he asked, because he, Palmer, had marked on his cigar boxes, that the cigars were made in Havana when in fact they were not made, there, but made in New York, and this Paimeradmitted, and the Supreme Court of Pennsylvania decided that Palmer was not entitled to relief. The Court said in substance in that case, that the-ground for relief for simulating trade-marks was the promotion of honesty and fair dealing, and that equity would not extend its protection to one whose case is not founded on truth. It appears also from the agreed statement of facts that Harris has continued since that trial to manufacture the labels and has not been disturbed by Palmer. Trade-marks are protected by Courts of equity for two-reasons. One is to secure to the honest, skilful and indus — 551 — trious manufacturer the legitimate fruits of his skill and industry, and the other to protect the public against the frauds of unprincipled venders, who seek to pass off spurious wares as those of established reputation under the name of the genuine commodity. Upton on Trade-marks, pages 28 and 29. The same author goes on to say that such protection is only afforded the honest manufacturer, and that where a person seeks by representations which are untrue (whether forming a part of his trade-mark or not), to mislead the public into a belief that his commodities have an origin other than the true one, he is entitled to no relief against any one who may see fit to appi’opriate it. Flavell vs. Harrison, 19 En. L. & E. R., 15; Fetridge vs. Wells, 4 Abbott’s Practice Reportts, 144. In this last case the Judge in his opinion says: “ Those who come into a Court of equity seeking equity must come with pure hands and a pure conscience. If the sales made by the plaintiffs are effected, or sought to be by misrepresentation and falsehood, he cannot he listened to when he complains that by the fraudulent rivalry of others, his own fraudulent profits are diminished. An exclusive privilege for deceiving the public is assuredly not one that a Court of equity can be required to sanction. To do so would be to forfeit its name and character.” From these and many similar cases which might he cited, the conclusion is irresistible, that he who seeks to mislead the public and to palm off on it the spurious for the genuine article under the guise of his trade-mark, or coupled with it, forfeits for all time, not his right to use his trade-mark, for with that the Courts will not interfere, hut his right to have that trade-mark protected. The record of his conviction of the fraud is the conclusive proof of it. Courts will not try over and over a question that has been settled by a Court of competent jurisdiction over both the person and subject-matter. When therefore the Supreme Court of Pennsylvania, in a suit begun by him — 552 — self, decided that Palmer had forfeited his right to be protected in the use of the trade-mark “ Golden Crownthe production of that record will be sufficient for the same "purpose in every other Court. He invited the issue — He was duly heard upon it and if it is found against him he must abide the consequence. Lorin Palmer is not himself concluded by the decision in this case, as he is no party to this suit, and we would very cheerfully have avoided all reference to him or his case. But the defendants have thrust him forward as a witness upon whom they relied, to prove that he had the exclusive right to the trade-mark. Golden Crown, and the plaintiffs produced the record to show that he had now no .such exclusive right. That record we are hound to consider and give to it its legal effect. From what we have said it is apparent that in our opinion Lorin Palmer by his false representations, of which he stands duly convicted, has placed himself outside the pale of the protection of a Court of equity, in any exclusive use of this trade-mark. He can of course go on and use it as long as he pleases, but the right of exclusive use is gone from him forever. If Palmer himself could not be successfully heard in‘ a Court of equity asserting his right to the exclusive use of this trade-mark, certainly the defendants cannot successfully assert his right for him-They cannot do for him what he cannot do for himself, and their plea in that behalf is unavailing. We have been discussing heretofore only the question of the right of the plaintiffs to the use of the words Golden Crown as a trade-mark, or part of a trade-mark, and shown that they have that right. But the defendants have not used the words Golden Crown at all. “ Golden Chain ” is what they have adopted as part of their trade-mark, and if the only question in the case was whether the words Golden Chain was an in fringement of the trade-mark of Golden Crown we should unhesitatingly say it was not. — 553 — But the words Golden Crown and Golden Chain only constitute a part of the respective trade-marks of the plaintiffs and the defendants. The tin tags, marked, lettered and arranged as we have said, constitute the most material part of the trade-mark of the plaintiffs. The infringement complained of here is that the tobacco of the defendants in every essential particular, is gotten up in imitation of the plaintiffs, and that the imitation is so close as to mislead the ordinary purchaser. The exhibits will convince every impartial observer that such is the fact, and the evidence will convince any impartial judge that this similarity is the result of design and not of accident. The law applicable to eases like this is fully stated in the case of McLean vs. Fleming, 96 U. S., 245; and an extract from-the opinion in that case will cover this. “Much depends,” says the Court, “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 ah infringement, or to entitle the complaining party to protection. If the form, contents, loords, or the special arrangement of the same, or the general appearance of the alleged infringer’s device, is such as would he likely to mislead' one in the ordinary course of purchasing the goods, and induce him to suppose he was purchasing the genuine article, then the similitude is such as entitles the injured party to equitable relief.” ■ , Many cases might be cited extending and amplifying this doctrine, but we will content ourselves with but one more extract, and that from the English case of Or, Ewing & Co. vs. Johnson & Co., 7 Appeal Cases, 219, where the - Judge, in delivering the opinion of the House of Lords, said: “ Ho man, however honest his intentions, has a right to adopt and use so much of his rival’s trade-mark, as will enable any dishonest dealer into whose hands his goods may come, to sell them as the goods of his rival.” — 554 — (Decided 23d June, 1887.) When we consider that the article, chewing tobacco, is bought and used most extensively by a large class of the illiterate and ignorant, we think no stronger case of infringement by simulation than this, can be found in the books. The decree of the Court below must be reversed and the case remanded, that an injunction may issue as prayed, and an account be taken, if desired, as is usual in such cases. Decree reversed, and case remanded.