Paris Medicine Co. v. W. H. Hill Co. , 102 F. 148 ( 1900 )

LURTON, Circuit Judge,

after making the foregoing statement, delivered the opinion of the court.

It must he admitted that the resemblances between the trade-name and dress of the rival preparations here involved are numerous and striking. There are differences between their packages, including differences in the colors of the lettering thereon, but the differences are less observable than the resemblances. An intentional infringer is never likely to make his packages exactly like that of the tradesman whose trade he proposes to steal. To avoid the consequences of infringement, an intentional infringer will usually take care that there are plenty of what Judge Lacombe, in Scheuer v. Muller, 20 C. C. A. 161, 74 Fed. 225, 228, called “arguable differences,” to stand upon when brought into court, but resemblances to the article he desires to imitate sufficient' to deceive the average purchaser into buying the simulated article as and for the goods of another. Speaking of the infringement of a trade-mark, Justice Cotton, in Tea Co. v. Herbert, 7 Eng. Rep. Patents & Trade-Mark Cas. p. 183, said:

“Of course, wlien one person imitates another's mark, lie never takes it absolutely in all points. If so, there is no question. But there is always a similarity and dissimilarity, in order that he may say, ‘If you look at the marks carefully, you will see such a difference that you cannot be deceived.’ Of course, when you are told that there are two marks, and the differences pointed out, or they are put before you so that you can see the differences, then in that ease you might say there is hardly any probability of deception; but, when one only is shown, there are certain incautious purchasers who would probably be deceived by the similarities which exist, the articles being the same.”

'Wlien there are found strong resemblances, the natural inquiry for tbe court is, why do they exist? If no sufficient answer appears, the inference is that they exist for the purpose of misleading. Taylor v. Taylor, 2 Eq. Rep. 290. We are to remember that the average purchaser has seldom the opportunity of making a close comparison; that he is apt to act quickly, and is therefore not expected to exercise a high degree of caution. Pillsbury v. Flour-Mills Co., 12 C. C. A. 432, 64 Fed. 841.

In McLean v. Fleming, 96 U. S. 245, 255, 24 L. Ed. 832, the court said:

“Difficulty frequently arises in determining the question of infringement, but it is clear that exact similarity is not required, as that requirement, would always enable the wrongdoer to evade responsibility for his wrongful acts. Colorable imitation, which requires careful inspection to distinguish the spurious trade-mark from the genuine, is sufficient to maintain the issue, but a court of equity will not interfere wlien ordinary attention by the purchaser of the article would enable him at once to discriminate the one from the other. Where the similarity is sufficient to convey a false impression to the public mind, and is of a character to mislead and deceive the ordinary purchaser, in the exercise of ordinary care and caution in such matters, *it is sufficient to give the injured party a right to redress, if he has been guilty of no laches.”

The general resemblance between the names “Bromo Quinine” and “Bromide Quinine” is very striking. The words “Bromo Quinine” catch the eye and fasten themselves in the memory, and, as the name of the remedy, become easily known and recognizable. The difference between “Bromo Quinine” and “Bromide Quinine” is slight, and not likely to attract the attention of the average public. It is true that complainant uses the word “Laxative” as a prefix, but that is a word indicative of a therapeutic effect. The defendants have substituted “Cascara” as a prefix, that being a drug widely and generally known as one of the best laxatives. Ilere, again, is both a resemblance and a difference, by which the literalness of imitation is avoided, while the laxative property of the defendants’ “Bromide Quinine” is called to the attention of the public.

But is the complainant' entitled to prevent the defendants from using the wTords “Bromide Quinine,” as a trade-name greatly resembling that of complainant? The defendants say that they use the name “Bromide Quinine” as descriptive of the ingredients of their remedy, and for the purpose of telling the truth. But the chemical analysis made of their tablets show but the barest trace of bromine,— not enough to have the slightest therapeutic effect. The court below thought, however, that the presence of even a trace gave a color of truthfulness to the use of the word “Bromide.” If the fact be, as shown by the affidavits, that defendants do not use “Bromide Quinine,” and that the trace of bromine in their preparation can have no possible medicinal effect in the doses intended to be taken, it is a fact tending to show that the use of so infinitesimal a quantity was intended to justify the use of a word in their trade-name for the purpose of not only misleading the public into the belief that bromine was a leading element in their preparation, but to also justify the use of the same word against the trade-name of complainant. Such a device was resorted to in the case of California Fig-Syrup Co. v. Frederick Stearns & Co., 20 C. C. A. 22, 20, 73 Fed. 812, 33 L. R. A. 56; but this court regarded the device as not altering the legal effect of the fact that the syrup advertised and sold was a syrup of senna, and not of figs. Complainant, on the other hand, urges that its prefix, “Bromo,” is a coined w7ord, and is not descriptive. The court below took judicial notice of a definition of “bromo” found in the Standard Dictionary, where it is stated that the word is “'derived from bromine,” and is “a combining word used mostly in names of chemical compounds in which bromine is a principal element.” Upon this definition and certain affidavits filed by' defendants, made by chemists, of the same general tenor, the court reached tlie conclusion that the trade-name of the complainant was descriptive, and that complainant, by its use, intended to affirm that bromine was a leading constituent in its remedy. The court below also found, upon the strength of certain affidavits purporting to state the results of chemical analysis made for defendants of the tablets of the complainant, that its tablets contained no bromine whatever. Upon these considerations the court reached the conclusion that, upon the showing made, the "complainant’s trade-name was descriptive, and therefore not the subject of a technical trade-mark, and that complainant was not entitled to protection against a use of the same name by the defendants, because it was a descriptive name used descriptively. Whether the word “bromo” has or has not acquired a definite significance as a term of science, indicating a compound in which bromine is an element, is a matter upon which this court is not clear, and is therefore reluctant to disturb the order denying to complainant a temporary injunction. There is no finding and no proof as to whether there is known, either in chemistry or medicine, such a compound as “bromo quinine.” In the case of Keasbey v. Chemical Works, 142 N. Y. 467, 37 N. E. 476, the trade-name “Bromo Caffein” was protected as a trade-mark; the court, after elaborate consideration, holding that the name was arbitrary and fanciful, and was not so descriptive “as to impart information as to the general characteristics and composition of the plaintiff’s preparation;’ to such an extent as to make the trade-mark invalid because descriptive. If the word “bromo” is not descriptive, in the sense that it affirms the presence of a particular and known drug in complainant’s preparation, and could therefore be the subject of a valid trade-mark in association with the word “quinine,” it is difficult to see how its use can be regarded as so misleading and deceptive as to exclude complainant from the doors of a court of equity. In California Fig-Syrup Co. v. Frederick Stearns & Co., 20 C. C. A. 22, 25, 73 Fed. 815, 33 L. R. A. 57, the term “Syrup of Figs” was held by this court to be plainly and distinctly descriptive of a syrup “in which the medicinal quality of the fig is the active and chief element.” It was also found from the facts of that case that the complainant intended that the public should understand that the name was used in this descriptive sense. The court below, upon the evidence, reached the conclusion that the word “bromo” was also a word of description, and that the complainant, by its use, intended the public to understand and believe “that bromine was a leading constituent in the compound which they made and sold”; thus bringing the case within the rule applied in the Fig-Syrup Case. In Proctor & Gamble Co. v. Globe Refining Co., 34 C. C. A. 405, 400, 92 Fed. 357, this court refused to reverse the action of the court below in denying a temporary injunction, upon the ground that it was not so plainly apparent that the court below had made a mistake as to justify a reversal of its action in a matter in which much must be left to the discretion of the court below. The trial of the question, upon appeal from an order granting or denying a preliminary injunction, (‘specially when the action of the court below was based in large part upon conflicting affidavits, is not as if the appeal was from a final decree upon the merits. In the case cited above, this court, speaking by Judge Severens, said:

“This being an appeal from an order denying a preliminary injunction, the qneslion to be determined is whether the discretion of the court below was improvidently exorcised, and not whether, upon the final hearing, upon full view of all the facts in the case, this court would, upon the evidence before it, reach the same conclusion as that of the court below. Duplex Printing-Press Co. v. Campbell Printing-Press & Mfg. Co., 16 C. C. A. 220, 69 Fed. 252; Garrett v. T. H. Garrett & Co., 21 C. C. A. 173, 78 Fed. 472. To justify this court in reversing an order of this kind, it must be quite cls'arly apparent that a mistake was committed by the court below. Ritter v. Ulman, 42 U. S. App. 263, 24 C. C. A. 71, 78 Fed. 222.”

The ruling of Judge íáwan, who heard this case in the court below, was based upon certain conclusions of fact, already stated, drawn from conflicting ex parte affidavits. In this situation of the case, we are not so clearly convinced that there lias been such a plain error as to justify a reversal. The decree will therefore he affirmed.