name it bears, the favor enjoyed by the house of Louis Roederer; that, in fact, the antecedents of Théophile Roederer — a stranger in the city of Rheims, and to the commerce of champagne-wines—justify the conclusion that the part he plays in the partnership is solely to lend his name to imitate the labels. and vignettes of Louis Roederer, the borrowing of the special designation of "Carte Blanche," the resemblance of the sealing-wax for the bottles, the similarity of marks upon the corks, and the announcements, scattered even through Belgium and England, in which the agents of the new concern felicitate themselves upon having received the agency for the celebrated champagne-wine, recommending not to confound it with another house of the same name, and retaining but the initial of the name Théophile to make more conspicuous the name of Roederer all reveal and characterize an unlawful competition: Considering that to remedy this abuse the judges below should not have limited themselves simply to direct that the marks, labels, and announcements of this new house should for the future bear the prenomen of Théophile written in full, and in characters of the same dimension as those of the surname Roederer; that that would be an incomplete and inefficacious remedy against confounding in commerce the name of the new house with that of the old, but that the same can be accomplished by diversifying them by exterior signs, without the necessity of modifying the firm title, Théophile Roederer & Co.; that it will suffice for the future to direct that the defendants shall be bound to insert in their marks, labels, announcements, circulars, and bills, the mention following: "House founded in 1864," and to inscribe it thereon in characters of the same size, and of the same form as those of the name and prenomen of Théophile Roederer: For these reasons, the judgment appealed from is modified, in that it orders only that the marks, labels, announcements, and bills of the house of Théophile Roederer & Company shall bear for the future the prenomen Théophile in form and dimension the same as those of the surname. Ordered, that the defendants shall in future insert in their advertisements, bills, and prospectuses, as well as on their marks, labels, and corks, 1st, the prenomen of Théophile; 2d, the mention following: "House founded in 1864;" Ordered, that said mention shall appear in characters of the same dimension and form as those of the surname Roderer ; — Ordered, that the present judgment shall be inserted by extract containing the names and qualities of the parties, the reasons and disposition made, in the newspapers of the department of the Marne, in three newspapers of Paris, and in four foreign newspapers selected by the plaintiffs and at the expense of the defendants, &c. $439. An Englishman established in Paris the sale of a certain manufacture from farina for food, to which he gave the name "ERVALENTA-WARTON," compounded from a word of fancy and his surname. Whatever may have been the intrinsic merit of this farina, through dint of advertising it had obtained in France as well as in England a grand success. Influenced by the renown gained by Warton for his product, another Englishman, named Klug, commenced the sale of a somewhat similar article of food, which he decorated with the name of "REVALENTA ARABICA." For a long time the competitors in business carried on business side-by-side without a legal contest; but eventually Warton died, and his widow succeeding to his affairs brought an action against Klug for usurpation of the denomination which had been adopted by her husband as a trade-mark. The Court of Paris affirmed the judgment of the court below, which had found the defendant guilty of infringement, in using the thinly-veiled expedient of slightly modifying the name of the thing.1 § 440. It is a counterfeiting of a trade-mark to affix the symbol to a box or envelope, although the goods themselves, enclosed therein, do not bear the same mark as the genuine. Thus, where a manufacturer of gilt-headed nails had a star for his 1 Warton v. Klug, Annales de la Prop., tome i. p. 40. mark, which mark he impressed upon the boxes containing his products and his invoices, as well as on the goods; and another person placed the same mark on the outside of his boxes, but not upon the goods, it was held to be infringement. Such was the decision of the Court of Paris in 1872, in Carmoy v. Samson,1 on appeal from a judgment of the Tribunal Civil of the Seine. The lower court had held that a five-pointed star, such as the plaintiff had adopted and the defendant had imitated, is a sign commonly employed in other branches of industry, and when isolated from all other distinctive characters is not susceptible of private appropriation. The defendant, therefore, had not encroached upon an exclusive right, especially as he had not actually stamped the merchandise itself. Judgment was rendered for the defendant, with costs. The appellate court not only regarded the star sufficient as a trade-mark, but found the defendant guilty of counterfeiting, by the external use thereof. His object was to deceive the purchaser, and he did it as effectually as if the star had been impressed upon each nail. § 441. As to who is the actual counterfeiter of a trade-mark, the Court of Cassation of Belgium, in 1865 (Gilbert & Co. v. Benedictus 2), said: Inasmuch as the prohibition to counterfeit trade-marks has for its object the preservation from outrage of industrial property, it follows therefrom, 1. That the counterfeiter is not the agent who materially executes the simulated work, but he who causes it to be done with an intent to fraudulently traffic in counterfeited objects; 2. That the wrong is consummated at the place where the counterfeiter carries on the illicit traffic, although the act may have had its inception in a foreign country. § 442. As to the question of infringement by the use of numerals, we have a decision made at a general term of the Supreme Court of New York, in 1872.3 It was there held: 1 Annales de la Prop., tome xvii. p. 231. 2 Ibid., tome xii. p. 427. 3 Glen and Hall Manuf. Co. v. Hall, Albany Law Jour., vol. v. p. 109. That the use of a street number, or of a building in a street, for part of a person's trade-mark, where other persons have the same right to manufacture the same article in the same street, or at the same number or building, cannot be made exclusive, or the use by another be restrained by injunction. But where a person has the exclusive use of a street number or building, he may very properly use it as a part of his trade-mark. § 443. Perversion of Mark. A genuine mark may virtually become a counterfeit by misapplication or transfer. Thus if a trader sell goods with his mark thereto attached as an evidence of genuineness, and the purchaser adulterate the goods, or use the same envelope for the purpose of selling a false article, he is a counterfeiter. So when one having a right to use a genuine mark upon paper bags for seeds, placed therein seeds of an inferior quality, he was guilty in the eye of the law of fraud, just as much as if he transferred a genuine signature from one paper to another. This point may be considered as settled. § 444. This question was discussed in the Corps Législatif of France, when the bill that crystallized into the trade-mark law of 1857 was under consideration. One honorable member (M. Legrand) said that certain products exist on which by reason of their nature the trade-mark could not be immediately applied. These products are placed in an envelope on which is put the mark of the manufacturer; and the products find a sale more or less easy, according to the degree of credit that particular mark has in the market. He mentioned frauds of frequent occurrence, where certain vendors had made themselves the intermediaries between the manufacturer and the consumer. They address their attentions to the manufacturers the most renowned. In the beginning, to establish confidence, they render to their principals such as they have received; but soon afterwards, when the valuable products have become associated with certain marks, they open the packets and substitute an inferior kind of goods.2 1 Bloss v. Bloomer, 23 Barb. 604. 2 Moniteur, May 14, 1857. § 445. M. Levavasseur, in the same debate, said that in nearly all the cities where textile fabrics are made, and notably so in Rouen, there exist commission-merchants who buy to sell, generally under a form different from that the manufacturer has given; thus, they divide the stuffs in pieces, to make them assume new guises suited to the convenience of those to whom the merchandise is sent. These textile fabrics receive at the dressers an entirely new form, and the commission-merchant, to assure the sale thereon, places his mark, known only to his principals. It is in this manner that are dressed, exported, and sold the greater part of the stuffs of Rouen sold in America. § 446. In Gillott v. Kettle, at a general term of the Superior Court of the city of New York, the fraud complained of consisted in selling an inferior article of the plaintiff's manufacture as being one of a superior quality. The case came up on appeal from an order enjoining the defendant, as hereinafter stated. The papers on which the injunction was granted showed that the plaintiff had for a long time been extensively engaged in the manufacture of steel-pens, at Birmingham, in England; that the pens made by him were well-known as such in the market, and were extensively sold, as well in the United States as in England; that large quantities of them were sold in boxes containing one gross each; that each box was labelled in a manner and with a label having devices upon it, which indicated that the plaintiff was the manufacturer of the pens, and in consequence of which they were bought and sold in the market, as pens made by him; and that the labels had numbers or marks2 impressed on them which indicated, and which were recognized by dealers as indicating, an actual difference in the quality of the pens. The pens in boxes numbered 303 were bought and sold as being extra fine-pointed, and were in fact so. The pens in 1 3 Duer, 624. 2 As to the numbers being trade-marks, see Gillott v. Esterbrook, 47 Barb. 455. |
