Matzger v. Vinikow
| Decision Date | 07 March 1927 |
| Docket Number | No. 4830.,4830. |
| Citation | 17 F.2d 581 |
| Parties | MATZGER et al. v. VINIKOW. |
| Court | U.S. Court of Appeals — Ninth Circuit |
Gavin McNab, Nat Schmulowitz, and Oliver B. Wyman, all of San Francisco, Cal., for appellants.
Dinkelspiel & Dinkelspiel, Henry G. W. Dinkelspiel, Martin J. Dinkelspiel, and John Walton Dinkelspiel, all of San Francisco, Cal., for appellee.
Before GILBERT and RUDKIN, Circuit Judges, and JAMES, District Judge.
The appellee, as plaintiff, obtained in the lower court a decree against the appellants, as defendants, for an injunction and an accounting. The plaintiff sought relief for infringement of three trade-marks, which he applied to articles of confectionery, "Rough Bar," "Whipped Cream Style," and "Union Leader." The court below denied the exclusive right of the plaintiff to use those names as trade-marks, but upon the ground of unfair competition enjoined the defendants from using said labels in the form and manner in which they had used them, and referred the case to a master for accounting.
The defendants contend that the differences between the plaintiff's labels and theirs were so considerable and so marked as to avoid the charge of unfair competition. As to two of the labels, "Rough Bar" and the "Union Leader," we find the similarity so obvious that little need be said further than to point out their features. The bars of candy sold by the defendants were substantially of the same size as those sold by the plaintiff. The defendants' wrappers carrying these two labels were similar to the plaintiff's, the printing thereon was in the same colors, and the lettering was of like size. In the case of the "Rough Bar," the labels of both the plaintiff and the defendants are inclosed in a similar square. In the plaintiff's at the left is a circular seal design. In the defendants' at the left is a circular seal of the same dimensions, inclosing a shield displaying, when closely scrutinized, a lion rampant. The label of the "Union Leader" of both parties is in a long rectangle, within which on the left are the same seals as in the "Rough Bar," and on the right each carries a device representing two clasped hands.
Where labels present such a general similarity, it is no defense that the name of the manufacturer is different; the plaintiff's being "Parisian Chocolate Company," and the defendants' being "Matzger's," both in much smaller type than the name "Union Leader." In the "Whipped Cream Style" labels the difference is greater. Both labels, however, are similar in size, and are carried in an oval frame of identical shape; the line of the defendants' frame being slightly wavy. Both have the words "Whipped Cream Style Bar" and are printed in the same colored ink. Each carries a similar scroll device or seal near the center.
We are not convinced that the court below was in error in holding that, notwithstanding the differences in the two labels, the general appearance of the defendants' so resembled that of the plaintiff's that its use might tend to deceive the ordinary, average, and unwary purchaser. While in a case of unfair competition, such as this, it is generally unnecessary, in order to obtain an injunction, to show that the defendants had the actual intention to mislead the public, the facts here in evidence, in addition to the similarity of the labels, are strongly indicative of the existence of such an intention. One of the defendants had been engaged in partnership with the plaintiff in Seattle under the name of the "Parisian Chocolate Company" in manufacturing and selling goods under the plaintiff's labels, and the other had been in business in California as a jobber in selling the plaintiff's goods, and it is shown that, when the defendants first placed their own goods upon the market, they used the term "Parisian" as part of the printing on their labels, and, while they may have been justified in disregarding the plaintiff's claim to the exclusive use of the names used by him as trade-marks, they clearly had no justification for using labels and wrappers in imitation of those which he used, and such use was properly the subject of injunctive relief.
The defendants pleaded the defense of laches, in that the plaintiff knew three years before the commencement of the suit, which was October 8, 1923, that the defendants were using the trade labels here in controversy. They contend that the defense should have been sustained. The court below was of the opinion that, while there was considerable delay in bringing the action,
The evidence of the defendants was that their first order for the printing of wrappers and labels was filled in the latter part of November, 1920. It is shown by the correspondence that the plaintiff promptly protested against the use of the labels and trade-marks. Again, on August 6, 1921, the plaintiff, by his attorney, brought the matter to the attention of the defendants, and on October 24, 1921, the defendants replied that they had engaged attorneys to determine the question of their rights to the use of the label "Union Leader," and that their decision would be given shortly thereafter, stating that they had on January 1, 1921, discontinued the use of the word "Parisian" in connection with their labels. In their letter to the plaintiff of November 10, 1921, the defendants asserted their right to use the name "Union Leader," but suggested suit or arbitration. Their letter of August 23, 1922, would seem to indicate that the only remaining matter for adjustment was their claim of right to the use of "Union Leader"; but this was written in answer to the plaintiff's letter of August 15, 1922, in regard to all his trade-names, which the defendants were using, and in which the writer said:
One of the defendants testified that some time between ...
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