Partridge v. Menck — 2 Barb. Ch. 101

Majority

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Partridge vs. Menck and others.

Headnote

The court of chancery' has the power to interfere, by injunction, to prevent the pirating of trade-marks.

The question, in such cases, is not whether the complainant was the original inventor or proprietor of the article made by him, and upon which he now puts his trademark, nor whether the article made and sold by the defendant, under the complainant’s trade-mark, is an article of the same quality or value. But the court proceeds upon the ground that the complainant has a valuable interest in the good will of his trade or business-; and that having appropriated to himself a particular label, or sign, or trade-mark, indicating that the article is manufactured or sold by him, or by his authority, or that he carries on business at a particular place, he is entitled to protection against any other person who attempts to pirate upon the good will of the complainant’s friends, or customers, or of the patrons of his trade or business, by using his trade-mark without his authority or consent.

Where there is a doubt as to whether the complainant’s trade-mark has been actually pirated, in such a manner as to be likely to deceive and imuose upon his customers, or patrons, the court will not grant or retain an injunction until the cause is heard upon pleadings and proofs, or until the complainant has established his right by, an action at law.

But where the court sees that the complainant’s trade-marks are simulated in such a manner as probably to deceive his customers, or patrons, the piracy will be checked at once, by injunction.

This was an appeal from an order of the vice chancellor of the first circuit, dissolving an injunction.^[1] A. Golsh was formerly the maker and vender of a particular kind of friction or loco foco matches, in the city of New-York; which matches he put up in small brown paper boxes, with á moveable cover, of the same material, covering about one third of the box from the top downwards. And he used a label, which was pasted upon one side of the box, containing, among other things, the printed words, “ A. Golsh’s Friction Matches,” and a wood cut representing a bee-hive; which were his trade-marks. He subsequently sold 'out to the complainant, and T. White; - and gave to them the privilege of using his trade-mark or label. White subsequently sold his interest in the business to the complainant, who continued the business of making and vending' the s'ame kind of matches. Some of his matches were put up

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and labelled in the same manner, and others were put up in the same form except as to the label, and the manner in which it was placed upon the boxes. The defendants Menck & Backes subsequently commenced the manufacture and sale of a similar kind of matches, which were put up in the same manner in brown paper boxes, with a cover. And a label was also pasted on one side of each box, containing, among other things, the printed words, “ A. Golsh,” and a wood cut representing a bee-hive. The use of such labels, as the defendant charged in his bill, was a pirating of his trade-marks; and was intended to deceive purchasers, and to induce them to believe that the matches so put up and sold by the defendants, Menck <fc Backes, were the genuine Golsh Matches made and sold by the complainant. The other defendant was engaged in the sale of the matches of Menck & Backes, and was for that reason made a party. The defendants by their answer denied that their label was a pirating of the trade-marks of the complainant, or that it was intended to induce purchasers to believe that the matches sold by them were the matches manufactured by Golsh, or by the complainant as his assignee. But they stated that the defendantBackes had been the chemist of A. Golsh, while the latter was engaged in the manufacture and sale of matches ; which fact was stated on their labels. And they insisted that the matches manufactured and sold by them were made in the same manner as those made by Golsh, and afterwards by the complainant, and were equally good.

S. M. Woodruff & M. T. Reynolds, for the appellant.

Edward Sandford, for the respondents.

Since the decision of this court in the case of Taylor v. Carpenter, (11 Paige's Rep.)^[1] , and which

(b) (b) Subsequent to the filing of the bill in this court, in the case of Taylor v. Carpenter, a suit between the same parties, was instituted, in the circuit court of the United States in Massachusetts, on the equity side of the court. Judge Story decreed a perpetual injunction, with costs. Taylor and others v. Carpenter, Nov. 1844, *103 (7 Law Reporter, 437.) This case is said to be defectively reported, however. (See 2 Sand, Ch. Rep. 596 .)

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decision was recently affirmed by the court for the correction of errors, there is no doubt of the power of the court of chancery to interfere, by injunction, to prevent the pirating of trade-marks. The question in such cases is not whether the complainant was the original inventor or proprietor of the article made by him, and-, upon which he now puts his trade-mark, nor whether the article made and sold by the defendant, under'the complainant’s trade-mark, is an article of the same quality or value. But the court proceeds upon the ground that the complainant has a valuable interest in the good will of his trade or business; and that having appropriated to himself a particular label, or sign, or trade-mark, indicating to those who wish to give him their patronage that the article is manfactured or sold by him, or by his authority, or that he carries on his business at a particular place, he is entitled to protection against any other person who attempts to pirate upon the good will of the complainant’s friends, or customers, or of the patrons of his trade or business, by sailing under his flag without his authority or consent.

In many cases it may be difficult to determine whether the complainant’s sign, or trade-mark, has been actually pirated in such a manner as to be likely to deceive and impose upon Ms customers, or the patrons of Ms manufacture, trade or business. And in cases of doubt the court should not grant or sustain an injunction, until the cause is heard upon pleadings and proofs, or until the complainant has established Ms right by an action at law. But if the court sees that the complainant’s trademarks are simulated,-in such a manner as probably to deceive his customers, of the patrons of his trade or business, the piracy should be checked at once, by injunction. In this case, however, I am not satisfied that the label used by the defendants will probably have the effect to deceive and impose upon those who are in the habit of buying and using the matches made and sold by the complainant; by inducing them to believe the matches of these defendants are of his manufacture.

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I do not find it distinctly charged, in the complainant’s bill; that he had been in the use of his second label -before Menck & Backes assumed the use of their' label'. -But-even if there was such a charge, ‘there is about "as much difference between that label and the one now used by the defendants,' as there is between then’s and the " complainant’s first label, which was originally used by Golsh; except as to the form and- appearance of the "bee-hive. One difference between the original, or Golsh label, and the label of the defendants, is, that all the printed words and'figures, ion the Golsh label, are in black letters upon a white ground,- while-’those on the defendants’ label are in white letters-upon a black ground. The Golsh label is also shorter than the defendants’; only-reaching upwards upon the box to the bottom of' the "'Cover, and leaving' the whole printed part of the label, above the bee-hive, ‘ containing the words “ A. GOLSH’S friction MATCHES”' distinctly visible below the cover" of the box. But the printing on the defendants’ labels runs up 'under the cover of the boxes," leaving nothing visible above the bee-hive except the printed words “ LATE CHEMIST "FOR A. GOLSH.” And -the names of. the "streets and avenues, and the numbers of the buildings at which the matches are made, at the bottom of-these, two labels, aré entirely different. So that without removing the covers from the boxes, the words upon the two labels strike the eye at once as being entirely dissimilar. And if the covers are remóvéd, for the purpose of seeing the parts of the labels which are under them, or to look at the matches, nothing will be found upon the Gdlsh label concealed by the cover nf -the box. But upon the upper part of the defendants’ label, will be found the words “ Menck & Backes Friction Matches, made, by J. Backes,” printed in small caps. Again-; the bee-hive upon the Golsh label is so badly made that it is necessary-tó look at the exit some time to discover what" it was intended for. But that upon the defendants’ label is an elegantly constructed'device, which no one who had ever seen an old fashioned straw beehive, in the days of his boyhood, could for a mómént suppose was intended to represent any thing else. Indeed the differ

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ence, in appearance, between these two labels is so gieat, even while the covers remain upon the boxes, that it is hardly possible to believe that a person who had been in the habit of buying, and using, boxes of matches with the Golsh label would suppose those with the defendants’ label were the same article, from any resemblances in the different labels.

It is not necessary that I should notice all the differences in appearance between the defendants’ label and the second label of the complainant. It is sufficient to say that the word “ GOLSH” does not appear upon the complainant’s second label, below the cover of the box; and that the only words upon that label, below such cover and above the bee-hive, are “ MATCHES without sulphur.” But neither of these words appears upon the defendants’ label below the cover; and the two last words are not to be found upon any part of their label. The only real resemblance between the complainant’s second label and the defendants’ label, either with or without removing the covers from the boxes, is in the bee-hives, and in the black ground upon which the words and figures of the labels appear.

The vice chancellor was, therefore, right in refusing to retain the injunction. And the order appealed from must be affirmed, with costs.^[2]

(c) (c) See Coats v. Holbrook, ( 2 Sand. Ch. Rep. 586 ;) cases referred to in note, (Id. 599;) and Spottiswoode v. Clarke, (Id. 628.) See also Snowden v. Noah, Hopk. Ch. Rep. 347;) Bell v. Locke, (8 Paige, 75;) Seely v. Fisher, (11 Sim. 581;) and Motley v. Downman, (3 My. & Craig, 1.)