Keller v. B. F. Goodrich Company

• Citation: 19 N.E. 196,117 Ind. 556
• Decision Date: 21 December 1888
• Docket Number: 14,370
• Parties: Keller v. The B. F. Goodrich Company
• Court: Supreme Court of Indiana

19 N.E. 196

117 Ind. 556

Keller v. The B. F. Goodrich Company

No. 14,370

Supreme Court of Indiana

December 21, 1888

Petition for a Rehearing Overruled February 16, 1889.

From the Allen Circuit Court.

Judgment affirmed.

R. S Robertson, for appellant.

W. P Breen, R. C. Bell and S. L. Morris, for appellee.

OPINION

Elliott, J.

The appellee is and long has been engaged in the manufacture and sale of an article used in dentistry, and the trade-mark, printed upon each box or package, is "The Akron Dental Rubber." The appellant is engaged in the same line of business, and manufactures and sells an article which he claims is the same as that manufactured and sold by the appellee. He puts the articles in boxes of a different shape and material from those used by the appellee, and has printed on them these words: "Non-Secret Dental Vulcanite, made according to our analysis of the Akron Dental Rubber." The words preceding the words "Akron Dental Rubber" are printed in black ink and large type. The words "Akron Dental Rubber" are printed in red ink, the type is large and the words are prominently displayed. They are so printed and arranged as to readily and quickly catch the eye. They are followed by the formula for the preparation of the article, also printed in red ink, but in very small type.

The contention of the appellee, which prevailed below, is, that in using the words "Akron Dental Rubber," as the appellant did, he infringed its trade-mark; the appellant, on the other hand, contends that there was no infringement because the label used by him does not assert that the article is the "Akron Dental Rubber," but informs the public that it is a non-secret vulcanite, manufactured according to an analysis of the "Akron Dental Rubber," and that the similarity is not such as is likely to mislead.

We should, perhaps, be able to sustain the views of the appellant's counsel if it were not that the words constituting the appellee's trade-mark are printed in colors that attract attention at once, and are so prominently displayed as to catch and hold the eye.

What should be the rule where the use of a trade-mark is made by a rival in business of the owner of the mark for the simple purpose of apprising the public that his (the rival's) article is manufactured from the same formula as that used by the owner of the trade-mark, and this information is so given as to fairly indicate that the words are in good faith used solely for the purpose of imparting information, we need not inquire or decide, for we are satisfied that it must be adjudged that the appellant has not so used the words constituting the trade-mark of the appellee as to indicate that he employed them in good faith, and for the sole purpose of informing dealers that the article is prepared according to the formula used by the appellee. The manner in which the words that form the appellee's trade-mark are printed is such as to make them very conspicuous, thus indicating the purpose of the appellant to reap some advantage from the trade-mark, and not merely to impart information. If the object had been to impart information simply, it is evident that no such prominence would have been given those words. As a matter of law, the judgment must be that the words, as used and printed by the appellant, are likely to mislead dealers, and that they indicate the purpose of the appellant to secure an advantage from the use of the words constituting the trade-mark. Adjudging, as we do, that this effect must be attributed to the mode of printing and displaying the trade-mark, we can not avoid the conclusion that the appellant has invaded the rights of the appellee.

The words so prominently displayed are not simply words of similar sound and meaning as those chosen by the appellee, but they are the identical words. It is true that other words are associated with them, but the words of the trade-mark are so prominently displayed, arranged and printed as to make it appear that they designate the article contained in the box or package, thus indicating that they were used for the purpose of conveying information as to the composition of the article manufactured by the appellant. The trade-mark is given the prominent position, and the other words are placed in subordinate ones. It is easy to perceive that the words "Akron Dental Rubber" might well be taken as designating the article sold by the appellant, and thus deceive purchasers. As we have shown, the purpose of the appellant in so conspicuously displaying the trade-mark adopted by his competitor, was not to enable him to explain the method of manufacturing the product he offered for sale, and as this was not his purpose, the only reasonable hypothesis upon which his conduct can be accounted for is, that his purpose was to secure an advantage from the use of his rival's trade-mark. Either his purpose was to explain, or it was to wrong his competitor; it was not his purpose to explain, and, therefore, it must have been his purpose to do injury to his competitor.

As it was the purpose of the appellant to do wrong, it is the duty of the courts to prevent its accomplishment, since to do otherwise would be to permit a wrong-doer to secure an advantage from his own wrong. This conclusion, with all its necessary incidents, results when it is affirmed that this was the appellant's purpose, and if that was his purpose, he should not be permitted to persist in a course that may probably result in loss to his competitor or in the deception of others. Where it appears that a trade-mark is used for the purpose of securing a benefit at the expense of its owner, the person who uses it must be presumed, unless the contrary appears, to intend to deceive dealers, and if this intention does appear, or is to be presumed, it should be held that what is intended will probably result. Where, therefore, it appears that the trade-mark was used to secure benefit to the user at the expense of the owner, and that it was not simply used in good faith for the purpose of explanation or information, the just presumption is that the person so using the trade-mark intends to deceive, and that he will probably succeed in his purpose. This being true, the courts should restrain him from persisting in his wrong.

It is difficult, if not impossible, to deduce any general rule from the decisions under which a particular case can be placed. As held by Mr. Justice Bradley, in Celluloid Mfg. Co v. Cellonite Mfg. Co., 32 F. 94, "each case must be determined on its own circumstances." It was held in that case that the defendant, by employing the words "Cellonite Manufacturing Company," infringed the trade-mark "Celluloid Manufacturing Company," the court saying, among other things, that ...