W. A. Gaines & Co. v. Leslie

Equitable relief is sought in this action, according to the allegations of the complaint, upon either of two grounds: (1) That the defendants’ acts in adopting and applying to their whisky a label bearing the words “White Crow” constitute an actual infringement upon the plaintiff’s existing trade-mark “Old Crow”; or (2) that, if a technical violation of a trade-mark be not established, the use by the defendants of their “White Crow” label should be held to amount to an unfair method of business competition, a fraudulent endeavor to deceive the public through the adoption of a form of package similar to that in which a better known article is customarily exposed for sale, and, as such, restrained.

So far as the action proceeds upon this alleged unfair competition, it must certainly fail. The labels used by the respective parties are totally dissimilar in lettering and in general appearance, and no proof has been given from which a fraudulent intent upon the defendants’ part could be inferred. An action of this character is' founded upon fraud, and proof of the fraudulent nature of the defendants’ act must be furnished, except where the similarity of the labels is so striking as to raise a presumption of fraudulent intent, without more. Day v. Webster, 23 App. Div. 602 , 49 N. Y. Supp. 314 ; McLoughlin v. Singer, 33 App. Div. 185 , 53 N. Y. Supp. 342 . No person who was at all familiar with the appearance of the plaintiff’s brand of whisky could be deceived into the idea that the defendants’ product was the same from ah inspection of the label upon the latter, even at a considerable distance, and we may, therefore, eliminate from consideration the question of unfair competition, as plaintiff’s counsel appears to concede.

I think, however, that the action is properly brought for the invasion of the plaintiff’s property rights in the words “Old Crow,” as possessed by it and applied to its whisky in the form of a trademark. Here the question of the infringing party’s intent is immaterial (Day v. Webster, supra), and so, also, it may be said, of actual proof that intending purchasers have been deceived (Vulcan v. Myers, 139 N. Y. 367 , 34 N. E. 904 ). The injury is based upon the defendants’ attempted taking of a particular form of mark, or designation, to the exclusive use of which the plaintiff has a right, and upon tire presence of which designation the public have come to rely when attempting to purchase the plaintiff’s product. Sufficient proof, prima facie, has been furnished to establish the fact that the plaintiff has a property right in these words “Old Crow,” as applied to whisky, and the defendants have not attempted to controvert the fact, nor is any affirmative defense set up. It appears that these words have been used for many years by the plaintiff, and its predecessors in

Having, then, a right of trade-mark in the words “Old Crow,” the plaintiff may properly be heard to complain that the defendants’ use of the word “Crow,” the word which is peculiar to, and the more distinctive of, that trade-mark, is an act of infringement, for such it is, under the adjudged cases. It is to be borne in mind that the question is not of a trade-mark claimed in a symbol. Here the property right is claimed, and is sufficiently shown to exist, in a particular word which, with regard to the product to which it is applied, is distinctive and peculiar. In the case of a symbol, merely, an imitation, to amount to an infringement, must be fairly exact, but, in the case of a distinctive word, the use of the word itself, in any form, by a competitor, is a violation of the right of the trade-mark. Hier v. Abrahams, 82 N. Y. 519 . As was said by Rapallo, J., in the case cited: “Where the trade-mark consists of a word, it may be used by the manufacturer who has appropriated it, in any style of print, or on .any form of label, and its use by another in any form is unlawful. * * * The goods become known by the name or word by which they have been designated.” This rule applies whether the distinctive word is used alone or together with another (Lauferty v. Wheeler, 63 How. Prac. 488); and it has operated for the protection of the possessor of the trade-mark in numerous cases where the matters involved were of practical identity with those in the case at bar (Pike Mfg. Co. v. Cleveland Stone Co., 35 Fed. 896 ; Walker v. Mikolas, 79 Fed. 955 ; Fleischmann v. Schuckmann, 62 How. Prac. 92; Edelsten v. Edelsten, 7 Law T. [N. S.] 768; Seixo v. Provezende, 14 Law T. [N. S.] 314).

I do not think that the plaintiff’s failure to prove the registration of this trade-mark can affect the case, although the fact of registration was alleged in the complaint. The allegations, generally, were broad enough to admit of proof of the trade-mark as existing through exclusive use, and the defendants at no time upon the trial assailed the method of proof adopted. No motion for-dismissal, based upon ,a variance between the pleadings and proof, was made, and, even assuming the variance, still it is difficult to see in what manner the defendants were prejudiced, since they did not offer any proof to con- ' trovert the existence of the trade-mark as a matter of fact.

As to the defendant Trott, the complaint should be dismissed, it ■appearing that he is not a partner of the defendants Leslie, and

Plaintiff is entitled to a decree enjoining the further use by the defendants Leslie of the label in suit, and any label bearing the word “Crow” as a part of the name or description of whisky sold by them, with costs. Ordered accordingly.