Low v. Fels

• Decision Date: 20 April 1888
• Citation: 35 F. 361
• Parties: LOW et al. v. FELS. [1]
• Court: U.S. District Court — Eastern District of Pennsylvania

35 F. 361

LOW et al. v. FELS. ^[1]

United States Circuit Court, E.D. Pennsylvania.

April 20, 1888

Fred'k W. Hinricks and Robt. D. Maxwell, for complainants.

Maurice Fels, Geo. P. Rich, and Mayer Sulzberger, for respondent.

Alfred Low and Robert Haydon, of London, England, trading as Low Son & Haydon, filed a bill against Joseph Fels, trading as Fels & Co., averring that they and their predecessors were and had been for a long time, manufacturers of soaps and perfumery, especially of a certain soap known as 'Brown Windsor Soap,' distinguished and recognized by certain well-known marks, stamps, and labels, the property of complainants; that said soap had attained a great reputation by reason of its superior quality, and was extensively purchased and used by consumers, thereby yielding large profits to complainants; that the said marks, stamps, and labels, having been employed for a long time past, had become established in the public mind as indicating that the goods bearing them were the product of complainants; that the respondent had been for some time past engaged in manufacturing and vending a compound intended to resemble the said 'Brown Windsor Soap,' being colored, perfumed marked, stamped, and labeled in imitation of complainants' goods; that such manufacture had been begun by respondent long after complainants' soap had acquired its great reputation; that by reason of the imitation aforesaid, respondent had deceived and enabled others to deceive the community, thus selling large quantities of his own products, and inflicting a corresponding injury upon the complainants. The bill then demanded answers to certain interrogatories embodying the above facts and prayed an injunction restraining the further manufacture and sale by the respondent of soap prepared, marked, stamped and labeled in imitation of complainants' goods, and an account of the proceeds of the soap so manufactured and sold by the respondent in violation of the rights of complainants. The respondent pleaded that 'soaps like those alleged in the said bill of complainants to be imitations of the soap as made and sold by the complainants, and the marks, stamps, and devices on the labels alleged to be in imitation of the labels of the complainants, and the packages alleged to be imitations of complainants' packages in size, shape, color, etc., have been made, used, and sold in open market in many parts of the United States, particularly in the Eastern district of Pennsylvania, with the knowledge of the complainants and the parties whose business they allege to have succeeded to, for a period of more than twenty-one years continuously last past. ' The case was referred to an examiner, who reported the testimony taken. It appeared therefrom that the goods of complainants had never had an extensive sale in the United States; that imitations of them had been manufactured and sold by many persons, with the undoubted knowledge of complainants; and that it had been generally understood that the name and labels were open to the use of any one who might desire to avail himself of them.

Fred'k W. Hinricks and Robt. D. Maxwell, for complainants--

-- Argued that the lapse of time did not bar their rights to an injunction. Taylor v. Carpenter, 3 Story, 463; Gillott v. Esterbrook, 48 N.Y. 374; Wolfe v. Barnett, 24 La.Ann. 97; Lazenby v. White, 42 Law J.Ch. 354; Manufacturing Co. v. Spear, 2 Sanf. 599; Brown, Trade-Marks, (2d Ed.) 681. Not only are complainants entitled to an injunction, but to an accounting. Moet v. Couston, 33 Beav. 578; Edelsten v. Edelsten, 1 De gex. J. & S. 185; Millington v. Fox, 3 Mylne & Co. 338; Morgan v. Troxell, 57 How. 121; Holt v. Menendez, 23 F. 869.

Maurice Fels, Geo. P. Rich, and Mayer Sulzberger, for respondent--

-- Admitted that an injunction ought to issue, and, before any costs had been incurred subsequent to the pleadings, had offered to allow a decree to be entered by consent, but denied that there was any liability to an account. 'Relief of this kind is constantly refused, even when the right of the...