the public that it was a different place of business. And in Nokes . Mueller the appellant was enjoined from using milk wagons decorated in a certain manner which was practically identical with the painting on those of the appellee, excepting that the name "Walnut Park Dairy" was used instead of "Walnut Grove Dairy." The use of signs which would mislead customers as to the identity of the place of business has also been enjoined. There the defendant moved his clothing store next door to that of the plaintiff which was known as "The Globe." Globes representing the earth, similar in appearance to those used by the plaintiff, were placed in the windows and other conspicuous places. He was enjoined among other things from using symbols, devices, paintings, or advertisements, or any combination of such elements as to give to his store the appearance of its being a part of, or used in connection with, the store of the plaintiff.3 In this connection it is interesting to note that while one has a right to state to the public that he has been in the employ or formerly connected with another firm he must not display the name of the latter more prominently than his own name so as to mislead the public. Thus a former employee of the Colton Dental Association who had opened a dental office of his own on the same street was enjoined from using a sign and cards on which was printed his own name with the addition, "Formerly operator at the Colton Dental Rooms," the words "Formerly operator at" being in much smaller letters than "Colton Dental Rooms." Similarly, where a retiring partner embarked in the same line of business, only a short distance from the old store, and put up a sign bearing his own name and the words "of the late firm of " followed by the name of the older firm, it was held that an injunction should issue and that actual fraudulent intention need not be established in such cases. And in New York it has been held unlawful for one to misrepresent to the public the capacity in which he was formerly employed. Thus a defendant who had acted simply as a business manager of a medicine company, another having charge of the medical department, was enjoined from advertising himself as "late manager" of such company." IMITATION OF GOODS THEMSELVES.-The general rule is that in the absence of patent protection the general get-up of an article may be copied. Under certain circumstances it may be unfair for one to make an exact copy of an article even when it is sold under his own 172 Ill. App., 431 (1897). Lippman v. Martin, 5 Ohio N. P. Rep., 120 (1898). See also Johnson r. Hitchcock, 3 N. Y. Supp., 680 (Sup. Ct., 1888), and Cady r. Schultz, 19 R. I., 193 (1895). O Colton r. Thomas, 7 Phila., 257 (1869). Humphrey's Homeopathic Medicine Co. r. Bell et al., 2 N. Y. S. R., 78 (1888). See also Colton v. Deane, 7 N. Y. S. R., 78 (1887). name. Copying the necessary features of an article will not be prohibited, but copying the nonfunctional parts of an article made by a rival has been enjoined. In a case decided in 1904, the court said "defendants overlooked the fact that a court of equity will not allow a man to palm off his goods as those of another, whether his misrepresentations are made by word of mouth, or, more subtly, by simulating the collocation of details of appearance by which the consuming public has come to recognize the product of his competitor." The complainant had for 30 years manufactured a line of mills of various sizes for grinding coffee, drugs, etc., adopting therefor a certain characteristic shape, design, color, and ornamentation which had become well known to purchasers and associated in their minds with his goods. Later the defendants began the manufacture of a similar line of goods imitating all of the distinguishing features of the article but selling them under their own name. They were enjoined from selling the different styles of mills which had already been imitated and also from imitating in the future other styles which defendant had declared his intention to make. And while many of the features of an article may separately be a subject of appropriation because they were not original with plaintiff, the appropriation of all of the prominent features in such a manner as would probably deceive the ordinary purchaser constitutes unfair competion. Such was the ruling in a case2 where padlocks, manufactured by the defendant, represented the plaintiff's article in form, size, color, lettering, and in details of finish. The chief differences were that the complainants' lock bore the name "Yale," while the defendant used the name "Yap" on its product, and each had its respective name, with the place of manufacture, on its product. The court held that although dealers, and the trade generally, would no doubt notice the differences, ordinary purchasers would be deceived. It has been held that the manufacture and sale of repair parts is not unlawful if there is no deception and the goods are not represented to be those of another. Thus where a manufacturer of farm machinery and the separate parts thereof, adopted a system of stamping upon the different parts a letter designating the style of the machine, followed by a numeral designating the particular part, so as to enable the users of the machines to readily obtain repairs, it was held not to be unfair competition for another manufacturer of such repair parts to use such markings and advertise by catalogue that their goods were adapted to the complainant's machines and inter 1 Enterprise Manufacturing Co. v. Landers, Frary & Clark, 131 Fed., 240 (C. C. A., 1904). 2 Yale & Towne Manufacturing Co. v. Adler, 154 Fed., 37 (C. C. A., 1907). changeable with the corresponding parts furnished by the original manufacturer of said machines, where the repair parts were not covered by patents and it was stated that the parts so offered were of their own manufacture.1 And in a more recent case,2 a Federal circuit court of appeals reversed a decree of the circuit court granting an injunction, although it was contended by the complainant that the fact that the repair parts made by the defendant reached the consumer without any markings to indicate their origin would mislead purchasers thereof into believing that they were made by the complainant, the well-known maker of the machines. Owners of patented or copyrighted articles have an exclusive right to make and sell the article during the life of the patent or copyright. At the expiration of the patent or copyright the public is entitled to copy the article and use its name, but is not entitled to palm off such goods as the make of the original manufacturer and must distinguish them in such a manner as not to cause confusion. Such an attempt was held to be unfair in G. & C. Merriam Co. v. Ogilvie. In that case the complainants' copyright on the name "Webster," used in connection with dictionaries, having expired, the defendant adopted the name, accompanied by other words and phrases used by the complainant, conveying the impression that his dictionary was a later edition of the complainants'. The defendant used the words “Imperial" and "Universal" instead of the word "International," used by the complainant. The complainant was denied the right of sending out circulars to the effect that it had the exclusive right to the name, while the defendant was enjoined from sending out circulars and advertisements trespassing on the reputation of the plaintiff or which would mislead purchasers into buying his dictionary for one of the series published by the complainant. The injunction as to the defendant was broadened on appeal so as to preclude the use of misleading words on the title pages and the backs of the dictionaries. ENGLISH DECISIONS. The legal term applied by the English courts to cases where one party does or attempts to palm off his goods or business as that of another is "passing off." In the American courts the equivalent term used is "unfair competition," although that term has gradually been broadened so as to include other unfair means used in competition. The important distinctions in the United States decisions 1 Deering Harvester Co. v. Whitman & Barnes Mfg. Co., 91 Fed., 376 (C. C. A., 1898). Bender et al. v. Enterprise Mfg. Co., 156 Fed., 641 (C. C. A., 1907). 3170 Fed., 167 (C. C. A.. 1908). See also Singer Manufacturing Co. r. June Manufac turing Co., 163 U. S., 169 (1896); Yale & Towne Manufacturing Co. v. Worcester Manufacturing Co., 205 Fed., 952 (D. C., 1913); Jenkins Bros. t. Kelley & Jones Co., 212 Fed., 328 (D. C., 1914), appeal pending; Prest-O-Lite Co. v. Davis, 215 Fed., 349 (C. C. A., between trade-mark actions and actions for unfair competition, as shown in a discussion of the cases under this heading, are (1) that no exclusive right is necessary in cases of unfair competition; (2) that to obtain relief on the ground of unfair competition it is necessary to show that the name or mark sought to be protected has acquired a secondary meaning; and (3) that many courts refuse relief on the ground of unfair competition unless fraudulent intent is shown or is clearly inferable from the circumstances. The first and second distinctions noted above are recognized by the English courts, but it is well settled that proof to the effect that the defendant intended to deceive is no more necessary in passing off actions than in cases of infringement of trade-marks, and as Lord Justice Lindley said in the case where the words "Camel-Hair Belting" were protected: "All that need be proved is that the defendants' goods are so marked, made up, or described by them as to be calculated to mislead ordinary purchasers and to lead them to mistake the defendants' goods for the goods of the plaintiffs." In 1899 the House of Lords, although denying the plaintiff protection in the use of the word "cellular," as applied to cloth, held that in order to claim the interference of the court it was not necessary to show fraudulent intention.2 Also in actions for passing off, it is sufficient to prove that retailers may succeed in deceiving the public as to whose goods they are purchasing. In an early case, it appeared from the evidence that the retailers, who bought the goods of the defendant, knew by whom they were manufactured, but resold them as and for goods manufactured by the plaintiff. The court in refusing a new trial held that, although the defendants did not themselves sell the articles as goods of the plaintiff's manufacture, it was substantially the same thing for them to sell to retail dealers for the express purpose of being resold as such. And the retailer, jobber, or other middleman might be enjoined from substituting another's goods for those of the plaintiff's manufacture. Thus, in a case decided by the Superior Court for the District of Montreal, the defendants, the proprietors of a confectionery store in Montreal, were perpetually enjoined from selling or offering for sale under the name "Bovril" any substance, preparation, or extract of beef as being the product of plaintiff's manufacture other than that manufactured and sold by the plaintiff. It was alleged that they served customers who asked for "Bovril" with a preparation of fluid beef known as "Armour's 1 Reddaway . Banham Hemp-Spinning Co., L. R. (1892), 2 Q. B., 639. * Sykes r. Sykes, 3 B. & C. Reports, 541 (1824). Bovril (Ltd.) v. Metrakos et al., 17 La Revue de Jurisprudence, 32 (1909). Beef Cordial" and "Armour's Extract of Beef." Similarly, where wine merchants advertised wine furnished by Alexander D. Taylor as "Taylor's" wine, it was held that the plaintiff had a cause of action against the defendants for offering to sell to the trade as "Taylor's" wine that which was not the well-known wine manufactured by the plaintiff.1 Actions for infringement are frequently joined with actions for passing off. The passing off feature is of less importance since the passage of the trade-mark act of 1905,2 which has had the effect of entitling many names and words to registration as valid trade-marks which were before merely trade names or common-law trade-marks. The important section in this connection provides in part as follows: A registrable trade-mark must contain or consist of at least one of the following essential particulars: (1) The name of a company, individual, or firm represented in a special or particular manner. (2) The signature of the applicant for registration or some predecessor in his business. (3) An invented word or invented words. (4) A word or words having no direct reference to the character or quality of the goods and not being according to its ordinary signification a geographical name or a surname. (5) Any other distinctive mark but a name, signature, or word or words other than such as fall within the description in the above paragraphs (1), (2), (3), and (4) shall not, except by order of the board of trade or the court, be deemed a distinctive mark. For the purposes of this section "distinctive" shall mean adapted to distinguish the goods of the proprietor of the trade-mark from those of other persons, 3 Under this section, for example, the word " Oswego" has been held entitled to registration as a trade-mark, whereas prior to the passage of the act of 1905 such words could only have been protected by an action for passing off. Therefore any infringement of the use of such words can now be prevented by a statutory trade-mark action without resorting to the doctrine of passing off. Cases of this sort have been omitted from the present discussion, only those which were decided on the ground of passing off being included. The same classifications which were adopted in the review of the American cases have been followed. GEOGRAPHIC OR PLACE NAMES.-Use of such names prior to the enactment of the trade-mark act was only protected when the words 1 Yeatman v. Homberger & Co., 107 Law Times Reps., 742 (Ct. of App., 1912). See also Parazone Co. (Ltd.) v. Gibson, 21 R. P. C., 317 (1904), and Kinnell & Co. (Ltd.) v. A. Ballantine & Sons, 47 Scot. Law Reps., 227 (1909). 25 Edw., 7, chap. 15. * Id., sec. 9. In re National Starch Co.'s Application, 25 R. P. C., 802 (1908). |