Johnson & Johnson v. Seabury & Johnson

• Decision Date: 17 June 1907
• Citation: 71 N.J.E. 750,67 A. 36
• Parties: JOHNSON & JOHNSON v. SEABURY & JOHNSON.
• Court: New Jersey Supreme Court

67 A. 36

71 N.J.E. 750

JOHNSON & JOHNSON

v. SEABURY & JOHNSON.

Court of Errors and Appeals of New Jersey.

June 17, 1907.

(Syllabus by the Court)

Appeal from Court of Chancery.

Action by Johnson & Johnson against Seabury & Johnson. From the decree advised by the Vice Chancellor, defendants appeal. Reversed.

See 61 Atl. 563.

Charles L. Corbin and William Brinkerhoff, for appellant. Willard P. Voorhees and Archibald Cox (Charles G. Coe, on the brief), for respondent.

SWAYZE, J. The evidence establishes that the absorbent cotton and gauze of the complainant have been known for a number of years as "Red Cross cotton" and "Red Cross gauze"; that the words "Red Cross," as applied to absorbent cotton and gauze, have acquired in the trade a secondary meaning and designate goods of the complainant's manufacture. The time when this secondary meaning was acquired is not, and probably cannot be, fixed with certainty. Doubtless it was, as usually happens in cases of the kind, a gradual growth. We see no reason to doubt the testimony of witnesses who fix the date as early as 1892 or 1893. The testimony of other witnesses fixing later dates does not conflict with these statements, since the later dates fixed by them are necessarily only the dates of their own knowledge of that use of the words. The time when the manufacture was begun by the complainant, the prominence given by it to the red cross on its packages, the persistency of its use on large and small packages alike, and the vigorous efforts of complainant to protect its use of the words against harmful legislation in 1894, sustain this view.

We are satisfied also that the defendant has unfairly simulated the complainant's packages of absorbent cotton. The original business connection between the predecessors of complainant and the predecessors of defendant, the competition which resulted from their separation, and the original controversy as to the merits of interleaving cotton with tissue paper, show that the defendant was familiar with complainant's method of packing goods. In view of this knowledge, we cannot explain the change in the color of the carton in which an Inferior grade of defendant's cotton was packed, from granite and chocolate to dark blue, the use of granite cartons for the best grade and dark blue for the inferior grade, the use of the "Mercury" seal on the former and the "Red Cross" seal on the latter, the increased prominence given to the red cross by defendant after a somewhat irregular use for so many years, and the adoption of the interleaving by tissue paper of the same color as complainant's, upon any theory, except that of an effort on the part of defendant to profit by complainant's trade. The injury was increased by the attempt to confuse the complainant's cotton with an inferior grade. If the defendant had desired to avoid confusion, it had only to continue its previous course of business.

The question as to gauze is more difficult. The defendant was the first to use an amber glass jar, and the color was later adopted by the complainant, whose motive in doing so does not seem to be questioned. The defendant then changed from a round jar to a square jar like that of complainant. The change is suspicious; but, in view of the fact that the red cross was not used on defendant's jar, we are not prepared to say that there was an intent to simulate complainant's packages. The use of the red cross seal on the "glazed container," however, indicates a desire to connect the name "Red Cross" with the defendant's gauze, and although we think, for reasons to be stated, that the use of the seal itself was permissible, the complainant is entitled to protection in the use of the name. The additional wrapper which was used by the defendant as an excuse for the use of the red seal was an extra trouble and expense, and the reason alleged for adopting it—the protection of the ornamental labels—does not appeal to us with any great force. The protection had not been found necessary during the previous use of the glazed containers for some years, and it was quite unnecessary to seal the exterior packing with a red cross seal when the red cross was not elsewhere used in connection with gauze.

The greatest difficulty we have had has been with the right of the complainant to claim relief in equity. Beginning with, 1894, and continuing for several years, at least until 1899, the complainant circulated catalogues and price lists containing a statement that an act of Congress had vested the use of the red cross symbol in the American National Red Cross Society, and that the society, in recognition of the services of the complainant, in perfecting surgical appliances and medicinal preparations, had granted to complainant the exclusive right to use the Red Cross trade-mark upon this class of preparations. This statement was untrue. The only foundation for it was that the Red Cross Society, in order to induce the complainant to withdraw opposition to a pending bill intended to secure the exclusive use of the red cross to the society, had recognized the exclusive right of the complainant to the red cross as a trade-mark on chemical, surgical, and pharmaceutical goods, and had agreed not to contest complainant's exclusive right in case the bill passed.

There is no question about the principle that a false representation in a trade-mark will prevent equitable relief for its protection. The cases cited by the defendant are with one exception cases where the false representation was contained in the trade-mark itself. In such a case it is quite impossible to determine to what extent good will, for which protection is sought, has been created by the false assertion; and to afford protection to a trade-mark...