its use may be enjoined where it tends to cause defendant's product to be called by the same name as plaintiff's or to create a mental impression whereby the purchaser is likely to be caused to confuse defendant's goods with plaintiff's. We quote from the Seixo case: "If the goods of a manufacturer have, from the mark or device he has used, become known in the market by a particular name, I think the adoption by a rival trader of any mark which will cause his goods to bear the same name in the market may be as much a violation of the rights of that rival as the actual copy of that device."

In the Akron Cement Case,' decided in 1872, we find the use of a geographical term by one not manufacturing at the location named enjoined at the suit of one who had rightfully established a business in connection with such geographical

term.

Clearly a case of unfair competition and one which went as far in its line as any of the more recent decisions was that of Lee vs. Haley, decided in 1869.2 Plaintiffs were in business at 22 Pall Mall. They sold coal at a guinea a ton under the name of the "Guinea Coal Co." Defendant started in business at 46 Pall Mall, selling coal at the same price and under the name of "Pall Mall Guinea Coal Co." An injunction was granted. The court said: "I quite agree that the plaintiffs have no property in the name, but the principle upon which the cases upon this subject proceed is not that there is property in the word, but that it is a fraud on a person who has established a trade and carries it on under a given name, etc. It is a fraud on the part of the defendant to set up a business under such a designation as is calculated to lead and does lead other people to suppose that his business is the business of another person."

These decisions, however, although pointing to a development of the law with which we are now so familiar and which is constantly invoked, were outside of the general trend of

1 Newman vs. Alvord, N. Y. Sup. Ct. 49 Barb. 588.

2 21 L. T. N. S. 546; 22 L. T. N. S. 251.

decisions at that time which were, for the most part, adhering closely to the narrow boundaries of technical trade-mark law. For instance, in 1870 the Supreme Court of Illinois, in Candee vs. Deere, said: "The law is well settled that no circular, price list or advertisement, no matter how frequently repeated, can constitute a trade-mark," the implication being that the plaintiff cannot by the use of any circular, price list or advertisement acquire any right the infringement of which can be enjoined.

2

McLean vs. Fleming, decided in 1877 by the United States Supreme Court, marks in one way the starting point of a new period of growth and strength for the law of unfair competition, for in it we find the first clear pronouncement by that high tribunal to the effect that "it is not necessary to prove infringement of a specific trade-mark if the defendant has acted with fradulent intention."

In Frese vs. Bachof, decided the following year, we find the suggestion of the Yankee Shaving Soap case definitely adopted, for while, on the motion for preliminary injunction, the court declined to enjoin defendant from imitating the peculiar form of package for tea, on final hearing defendant was enjoined from using packages similar to those of plaintiff, to wit: long cylindrical parcels, with pink wrappers and with crimson papers of directions and yellow ones of warning tied in, and having a white label with the firm name within a circle pasted across the ends of the string, etc. And this decision in turn outlined the law which was later applied in the Sapolio cases where defendant was enjoined from using a package of silver paper having a deep blue band about it, although, in one case, the defendant's article was called "Pride of the Kitchen," obviously not resembling the word 'Sapolio."

1 54 Ill. 439.

2 96 U. S. 245.

313 Blatchford 234.

4 Frese vs. Bachof, 13 O. G. 635.

4

The case of Orr, Ewing & Co. vs. Johnston' is of interest as following the doctrines of the Cross Cotton case and the Seixo Wine case, and as logically leading to the often criticised decisions in the Uneeda Biscuit cases.

In this case against Johnston it appeared that so far as the plaintiff's label differed from that which was common in the trade, there was but little resemblance between the plaintiff's label and the defendant's label beyond the fact that each showed a representation of two elephants supporting a banner. The court held that the difference between the tickets or labels were such that it was not probable that English purchasers or Indian dealers would be deceived, but that in view of the fact that plaintiff's yarn had become known among the users in India as "Bhé Hathi" or "Two Elephant" yarn, the defendant's device was of such a character that his yarn was likely to become known as "Bhé Hathi" or "Two Elephant" yarn.

The language of the court in that case is worthy of consideration. I quote as follows:

66

Having described the tickets, I repeat the question, should I be deceived so as to take the one package for the other, even if the two tickets were not before me, supposing me to be a purchaser of ordinary caution and ordinary intelligence, I answer, I should not," and thereupon the court at length points out numerous characteristic differences between the two tickets, and continues: "Have the defendants taken a material and substantial part of the plaintiff's ticket? For this purpose it seems to me immaterial to consider whether the ticket is justly entitled to be called a trade-mark, strictly or not. . I must next inquire the mode in which the plaintiff's goods have been accustomed to be sold and what people have called those goods. Having arrived at the conclusion that the goods of the plaintiff which bore the trade-mark in question were known as The Two Elephant' or 'Bhé Hathi' goods, it follows, in my judgment, that two elephants were a material and substantial part of plaintiff's ticket because they were that part of the ticket which communicated that name to the goods. There is a strong probability that the ultimate purchasers would be deceived by the

140 L. T. N. S. 307.

defendant's ticket. It appears to me that there is a great deal of evidence to which I attach weight to show that these goods are sold largely by name, and although the first dealers no doubt look at the tickets and the brokers in Bombay probably look at the tickets, yet that the ultimate purchasers probably do not look at the tickets and at any rate are liable to be deceived by the name by which the goods are sold."

Hennessey vs. White' brings forward another development of this branch of the law to the effect that you may not use plaintiff's own labels or packages for plaintiff's own goods where plaintiff has two qualities of his product and the defendant fills plaintiff's bottles with the quality of brandy which plaintiff in fact only sells in casks, thereby fraudulently indicating to the public that the inferior cask brandy is in fact the superior bottled cognac.

2

Sawyer vs. Horn, decided in 1880 by the United States Circuit Court, would seem to recognize as firmly established the doctrine that, regardless of any trade-mark, a complainant may be protected in the use of a distinctive character of package as indicated in the Williams Shaving Soap case and distinctly decided in the Tea Package case. In the Sawyer case the court said: "Whether the complainant has a trade-mark or not, he was the first to put up bluing for sale in the peculiarly shaped and labeled boxes adopted by him, and as his goods have become known to purchasers and are bought as the goods of complainant by reason of their peculiar shape, color and label, no person has the right to use the complainant's form of package, color or label, or any imitation thereof, in such manner as to mislead purchasers into buying of his goods for those of the complainant, whether they be better or worse in quality."

The same year the leading English case of Thorley's Cattle Food Co. vs. Massam3 was decided, in which, in an exhaustive decision and review of authorities, the court sustained com

16 W. W. & A. B. Eq. 216.

21 Fed. Rep. 24.

3 Eng. Ct. App. 42 L. T. N. S. 851.

plainant's exclusive right to the term "Thorley's Food for Cattle" as against the defendant company which had been organized by Joseph Thorley and which was, in fact, manufacturing cattle food in accordance with the original Thorley's recipe. The court said: "The words Thorley's Food for Cattle' would indicate, according to my view of the case, to a purchaser this: You have always had a very good article called 'Thorley's Food for Cattle'; any article bearing that name is to you a guarantee that it comes from the same place from which that has come with which you have hitherto been well satisfied and contented. I am, therefore, of opinion that in this case what the defendant company have done has been calculated to deceive, and I am bound to say, in my judgment, I have no doubt was from the first intended to deceive the persons purchasing their article into the belief that they were purchasing the article which Joseph Thorley had formerly manufactured at the works which had obtained the great reputation which Thorley's manufacture appears to have obtained from the purchasers of those condiments. I am of opinion. that the order should have been granted very much in the general words in which it was asked."

It would seem, therefore, from the cases which have been reviewed and from the pronouncements of the United States Supreme Court in McLean vs. Fleming in 1877 and of the English Court of Appeals in the Cattle Food Case in 1880, that by the year 1880 the law of Unjust Trade and Unfair Competition, as distinguished from the technical law of trademarks, had become broadly established and thoroughly recognized, and as confirming this view we note the comments of the Supreme Court of New York in Morgan Sons Co. vs. Troxell, one of the Sapolio cases.1

After discussing the similarity between defendant's package and that of complainant, the court says that according to defendant's contentions "it is only necessary for the dishonest trader to avoid the use of some special word or device to which 189 N. Y. 292 (1880).