Coty, Inc. v. Parfums De Grande Luxe, Inc.

• Decision Date: 07 April 1924
• Docket Number: 164.
• Citation: 298 F. 865
• Parties: COTY, Inc., v. PARFUMS DE GRANDE LUXE, Inc., et al.
• Court: U.S. Court of Appeals — Second Circuit

298 F. 865

COTY, Inc., v. PARFUMS DE GRANDE LUXE, Inc., et al.

No. 164.

United States Court of Appeals, Second Circuit.

April 7, 1924

Barnes Chilvers & Halstead, of New York City (Frank M. Halstead and Bernard C. McKenna, both of New York City, of counsel), for appellants.

Mock &amp Blum, of New York City, for appellee.

Before ROGERS, HOUGH, and MAYER, Circuit Judges.

ROGERS Circuit Judge.

This suit was brought to restrain the defendants from infringing a trade-mark. The court below has granted a preliminary injunction, upon the filing of a bond in the sum of $5,000 conditioned upon the payment of such costs and damages as may be incurred by any party who may be found to have been wrongfully restrained. The injunction restrains the defendants from using the name 'Ernest Coty' in selling perfumes and toilet preparations, save in connection with the phrase 'Not connected with the original Coty.'

The plaintiff is a corporation organized under the laws of the state of Delaware, in January, 1923. It is the successor to the business, in the United States, of Francois Joseph de Spoturno Coty since the date of its incorporation. The trade-mark 'Coty' was duly registered on October 4 1921, in the United States Patent Office, being certificate No. 147,206. The defendant, Parfums De Grand Luxe, Inc., is a corporation organized under the laws of the state of New York. The defendant Coble is president of the defendant corporation.

Francois Joseph de Spoturno Coty is a citizen of France, and a manufacturer in that country of perfumes and face powders, and has been engaged in such business since 1905, during which time he has been selling his merchandise in the United States in packages bearing, in addition to other trade-marks, his surname 'Coty.' Ernest Coty is another French manufacturer of perfumes and toilet articles, and engaged in business in France since 1917. He sells his face powders in packages bearing his full name 'Ernest Coty,' with the notation 'Maison fondee en 1917,' which packages bear labels and coverings different in color and in design from those of the other Coty. The plaintiff in January, 1923, became the sole and exclusive owner of the business of Francois Joseph de Spoturno Coty in the United States. The defendant Parfums De Grand Luxe, Inc., in November, 1922, acquired by contract the exclusive sales agency in the United States for Ernest Coty's products. The controversy centers about the packages of face powder, for, although Ernest Coty also manufactures and sells perfumes, the defendants have disclaimed any intention of selling such perfumes with the labels they now bear, or otherwise than with labels so differing in form and design from those of his competitor that there can be no mistake or confusion, due to any similarity in the labels or packages in which the goods are sold.

The plaintiff's predecessor in business has continuously exported to the United States perfumes, toilet water, powders, and other toilet preparations in general, which were manufactured by him in Paris during 1905, and continuously thereafter until January, 1923, when the plaintiff succeeded to his business. Due to the exercise of skill and care and the use of the best and purest ingredients, this business rapidly grew, until in the year 1922 it amounted to more than $5,000,000. For a number of years Francois Joseph de Spoturno Coty has been recognized as one of the leading manufacturers of perfumes, face powders, etc., in the world. It is alleged that when he engaged in this business in 1905 there was no other perfumer in any part of the world who had the surname 'Coty,' or who used that surname in any manner in connection with the sale of perfumes or toilet preparations, and that he was the first person who made that surname have any meaning whatever in the business of making, selling, and distributing perfumes and toilet preparations. The testimony in the record seems to establish the truth of these allegations.

The complaint alleged that the surname 'Coty' had been prominently affixed to every container of his goods, and that 'Coty' was his trade-mark, and that he was the only person who had ever used 'Coty' to designate perfumes or other toilet preparations in any manner whatever in the United States, save for certain persons who attempted to infringe upon this trade-mark, but who were always compelled to stop as soon as notice of their infringement was secured, and before any infringing use had made any impression whatever upon the trade or upon the public. This very important allegation has no denial in the record, save the formal denial of lack of information. The truth of the allegation seems to us amply proven by the testimony in the record.

It appears that the collector of the port of New York has declined to permit the importation of perfumes, powders, etc., in containers upon which 'Ernest Coty' appeared, unless the words 'Not connected with the original Coty' were appended. An appeal from that decision was taken to the Secretary of the Treasury, who sustained the collector of the port. The record conclusively shows that the purchasing public has been deceived into buying the defendant's product believing that it was the product of the plaintiff. The difference in the appearance of the defendant's containers from the containers used for the plaintiff's product has not prevented deception. It is sufficient for the purpose to refer to two of the affidavits, among others, which we find in the record. A manufacturing perfumer of more than 15 years' experience, and who was familiar with the buying habits of the public, which purchase perfume and toilet preparations, made the following statement:

'I state most positively that, if anybody independent of this plaintiff were allowed to sell perfumes, face powders, or the like under the name of 'Ernest Coty,' this would not serve to inform the public that they were not getting the original 'Coty' goods, because many people would think that the original 'Coty' was merely using his full name, and for the reasons before mentioned a variation in bottle, package, and label would be no protection. I state positively, from my experience in the trade and amongst the purchasing public, that not only the public, but even the trade, would be deceived by the use of the name 'Ernest Coty' upon its products, unless there was some clear designation that this Ernest Coty was not the original Coty.'

And another perfume manufacturer of more than 20 years' experience, and who had no connection with the parties to this suit, and had no interest in the outcome of this litigation, made the following statement:

'If any concern other than the original Coty is allowed to use 'Coty' in any manner whatever upon its labels or containers, there would undoubtedly be deception and confusion. The first name or names of the original Coty, and even the fact that 'Coty' is a surname, is unknown to a large part of the trade and public, and merely using 'Coty,' with a first name like 'Ernest' or the like, would have absolutely no effect in avoiding deception and confusion. I may state, at this point, that the original Coty's perfumes have been sold to the public in the form of relatively small bottles of different types for a few years, and when I was shown 'Plaintiff's Exhibit, Defendant's Perfume,' and before I smelled the contents, my first impression was that this was the Coty perfume, which has had such a large sale in the United States for many years, and I am positive that the public generally would buy the 'Ernest Coty' perfume as and for the product of the original concern, and the same is true of the face powder marked 'Plaintiff's Exhibit, Defendants' Powder."

There are a number of affidavits in this record by persons who purchased perfumes marked 'Ernest Coty,' thinking that they were buying the original Coty's product, and who had never heard of more than one Coty in the business, and to whom the word 'Coty' had no meaning whatever, except to indicate the goods of the original Coty. It never occurred to these purchasers that 'Ernest Coty' was not the original 'Coty.' The affidavits make it plain that the difference in the containers and the name thereon of 'Ernest Coty' has not prevented deception but has misled the trade and the public. And in cases of this character, if the deception of the ultimate purchaser is accomplished, it is sufficient ground for an injunction, whether or not the retailer is deceived. As this court said in Coty v. Prestonettes, 285 F. 501, 506:

'The plaintiff's products have been chiefly known to the trade and public by his trade-mark 'Coty,' which is an uncommon name in the United States, and in the telephone directory of the city of New York there is no other person by that name.' The importation of his goods into the United States began in 1905, and, as we pointed out in that case, his sales in this country in the single year of 1921 amounted to $3,000,000; and the sworn complaint in the instant case states, as already noted in this opinion, that in the year 1922 they 'amounted to more than $5,000,000.' He has built up, therefore, a very profitable and considerable business in this country. And in the United States the 'Coty' perfumes mean one thing only-- the products of the plaintiff's predecessor in title

At the time the business in the United States began, there was no other perfumer in any part of the world who used the surname 'Coty' in connection with the production or sale or distribution of perfumes or toilet preparations, and he was the first person who made that surname have any meaning whatever in the business of making, selling, and distributing perfumes and toilet preparations. Ernest Coty began the manufacture of his...