Le Blume Import Co., Inc. v. Coty

• Decision Date: 18 June 1923
• Docket Number: 288,289.
• Citation: 293 F. 344
• Parties: LE BLUME IMPORT CO., Inc., v. COTY et al. COTY, Inc., v. LE BLUME IMPORT CO., Inc.
• Court: U.S. Court of Appeals — Second Circuit

293 F. 344

LE BLUME IMPORT CO., Inc., v. COTY et al.

COTY, Inc., v. LE BLUME IMPORT CO., Inc.

Nos. 288, 289.

United States Court of Appeals, Second Circuit.

June 18, 1923

[Copyrighted Material Omitted]

The court granted the motion for an injunction, as asked by the plaintiff, upon the filing of a bond in the sum of $10,000 and it enjoined the defendant, and all under it or in privity therewith 'until further order of this court, from making or causing to be made, or selling or causing to be sold, or offering for sale or causing to be offered for sale, or importing or causing to be imported, any perfumes, powders or other toilet preparations with the use of or in connection with the trade-mark 'L'Origan,' or any deceptive simulation thereof, including 'Origan,' and from infringing upon the said trade-mark and the exclusive rights of the plaintiff thereto in any manner whatsoever.'

First Suit.-- The plaintiff in this suit is a corporation organized under the laws of the state of New York, and having its principal place of business in the borough of Manhattan, in the city of New York. It also maintains a buying office in Paris, France. It is engaged in the business of importing into the United States from Paris, France, toilet articles, including perfumes and cosmetics, for the resale thereof at wholesale. The defendant Coty is a citizen of the republic of France and a resident of Paris. The defendant Levy is a citizen of the United States, doing business in the borough of Manhattan, and resides in the Southern district of New York. He is the commercial representative in this country of the defendant Coty. The defendant Stuart is the acting collector of the port of New York.

In November, 1922, the plaintiff, it is alleged, purchased in Europe a quantity of perfume designated as 'Origan,' and further designated by the name of the manufacturer thereof d'Heraud, for whom it is the exclusive agent in the United States. The plaintiff thereupon caused the perfumes so purchased and owned by it to be transported to the United States. Thereupon it is alleged that the defendants Coty and Levy caused to be filed in the office of the collector of the port of New York notice that the said defendants and their licensees are entitled to the sole and exclusive right to sell in the United States the perfume designated as 'Origan' perfume, and the notice purported to be given under section 27 of the Trade-Mark Act of the United States. Act Feb. 20, 1905 (Comp. St. Sec. 9513), as amended. It is also alleged that pursuant to this notice the defendant Stuart, as acting collector of the port, has caused the said perfume to be unlawfully excluded from entry into the United States, although plaintiff is ready and willing at all times to pay, and has actually paid, the import duties on the goods. It is also alleged that the trade-mark 'L'Origan,' registered by Coty, does not give to Coty, his agents and representatives, the sole and exclusive right to import into and sell in the United States perfumes designated 'Origan,' and does not prevent the importation into and sale in this country by others than Coty of perfumes so designated. It is also alleged that the plaintiff is irreparably damaged by the acts complained of, and it prays the court that the defendant Stuart, acting collector of the port, 'be ordered or instructed or advised by a proper order or decree of this court to admit to entry to the United States and to release and deliver to the plaintiff forthwith his lawful property, the said perfume, upon the payment to the Treasury Department of the United States the lawful custom duties on and applying to the same and such other dues or charges that may be lawfully taxable thereto; that the defendants Coty and Levy be enjoined from claiming any exclusive right to the use of the word 'Origan,' or the words 'L'Origan,' or from representing to the trade and the public that they or either of them, or any licensee under them, have the exclusive right thereto under the Trade-Mark Act or otherwise; that preliminary and perpetual injunctions or orders of this court issue in accordance with the prayers hereof; and for such other and further relief as may be meet and conformable to equity and good conscience.'

Second Suit.-- The plaintiff in this suit is a corporation organized under the laws of the state of Delaware, and is the successor to the entire business in the United States of Francois Joseph de Sporturno Coty in perfumes, toilet preparations, and cosmetics. The plaintiff alleges that it exclusively owns the said business in the United States, the good will, and the trade-marks and registrations thereof in the United States Patent Office. It alleges that the defendant has attempted to infringe upon a registered trade-mark owned by the plaintiff, namely, the trade-mark 'L'Origan' for perfumes, as set forth in certificate of registration 146,974 in the United States Patent Office, by attempting to import perfumes from France into the United States designated as 'Origan,' being bottled perfumes marked 'd'Heraud Bottle,' with the intent of selling them in interstate and intrastate commerce throughout the United States. That the intent of defendant in doing this is to defraud the trade and the public into purchasing the goods of d'Heraud under the belief that they are purchasing the genuine or original 'L'Origan' brand. The prayer of the bill is that the defendant be restrained from importing or attempting to import, or sell or attempting to sell, any perfume or toilet preparation with the use of the trade-mark 'L'Origan' or 'Origan,' or any other deceptive simulation thereof, and that such other and further relief be granted as may be deemed proper.

The defendant filed an answer, in which it denied that the word 'L'Origan' ever has been or ever can be a trade-mark for the designation of perfumes or other toilet preparations, or that Coty was entitled to have the word registered under the acts of Congress. It denied that either the word 'Origan' or 'L'Origan' were ever registered or attempted to be registered in the Patent Office of the United States, and it alleged that in lieu thereof 'a fanciful word 'Lorigan,' printed in intermingled letters of a grotesque design,' was registered; and the answer further alleged that Coty has falsely represented that he has become by exclusive appropriation and by registration in the Patent Office, the sole owner and exclusively entitled to the use of the word 'L'Origan' or 'Origan' as a trade-mark for the designation of a perfume produced by him. The answer prayed that the motion for a temporary injunction be denied and that the bill be dismissed.

Davies, Auerbach & Cornell, of New York City (Charles H. Tuttle, Murray C. Bernays, and Emily C. Holt, all of New York City, of counsel), for Le Blume Import Co., Inc.

Charles Neave, Hugo Mock, and Asher Blum, all of New York City, for Coty, Inc., and others.

Before ROGERS, MANTON, and MAYER, Circuit Judges.

ROGERS Circuit Judge (after stating the facts as above).

The question raised by these cases makes it necessary to determine whether the Coty trade-mark was capable of registration in the Patent Office of the United States. If it was not entitled to registration, the plaintiff in the first of these two suits was entitled to the relief it sought. On the other hand, if the trade-mark was entitled to registration, the plaintiff in the second suit was entitled to the injunction which it obtained, and error was not committed in either suit.

In both suits counsel moved for temporary injunctions. In the first suit no answer was filed. In the second an answer was put in. In both suits a large number of affidavits were submitted to the court, and on account of the related character of the two actions, and of the fact that the issues in each of them are substantially similar to the issues in the other, it was stipulated that the exhibits and affidavits in each of the cases should be considered in evidence and be part of the record in the other. The parties in both suits have been represented by able counsel, who have argued fully the question involved.

It appears that Francois Joseph de Spoturno Coty, of France, on October 27, 1920, filed an application in the United States Patent Office to register the trade-mark 'L'Origan' for certain toilet preparations or perfumes; that on September 27, 1921, registration of the trade-mark was granted to him, and certificate No. 146,974 was issued to him, which is still in force; and that the trade-mark was thereafter duly assigned to Coty, Inc., the plaintiff in the second of the suits now before the court, and that that corporation has owned the entire right, title, and interest in the trade-mark, the registration therefor, and all the business connected therewith since January 1, 1923.

In one of the affidavits in the record Coty is described as 'one of the most celebrated perfumers in the world,' and it is stated that his 'reputation is of the highest, both in France and in the United States. ' It appears that in 1909 Coty began to export to the United States his toilet preparations, and that he then adopted the trade-mark 'L'Origan' to designate his perfumes and toilet preparations, and to identify them to the trade and to the public as being the said Coty's manufacture and the manufacture of no other person or concern; and it is claimed that since 1909 the trade-mark 'L'Origan' in the United States has designated the preparations before mentioned as being manufactured by Coty and by no other person. In the year 1919 the sales in the United States of Coty's 'L'Origan' amounted to more than $500,000. In 1920 they exceeded $1,000.000, and in 1921 they amounted to more than $2,000,000; while in 1922 they had...