New England Awl & Needle Co. v. Marlboro Awl & Needle Co.

• Decision Date: 06 March 1897
• Citation: 46 N.E. 386,168 Mass. 154
• Parties: NEW ENGLAND AWL & NEEDLE CO. v. MARLBORO AWL & NEEDLE CO.
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

168 Mass. 154

46 N.E. 386

NEW ENGLAND AWL & NEEDLE CO. v. MARLBORO AWL & NEEDLE CO.

Supreme Judicial Court of Massachusetts, Suffolk.

March 6, 1897

COUNSEL

Maynadier & Mitchell, for plaintiff.

Strout & Coolidge, for defendant.

OPINION

HOLMES, J.

This is a bill to restrain the infringement of an alleged exclusive right of the plaintiff to put up awls in a distinctive package, consisting of a bronze-colored box having a brown label on the top and one side, with printed inscriptions, and tied with an orange string. The box used by the defendant is indistinguishable in every particular, including the words of the inscription and the size and shape of the type, except that at the bottom, instead of "Manufactured and Warranted by the New England Awl & Needle Co. West Medway, Mass.," the defendant's label reads "Manufactured for the United States Awl & Needle Co. New York," in letters and arrangement as nearly like the plantiff's as possible. It is admitted by the answer that the plaintiff is a manufacturer of awls, and that it has used packages of the kind described since 1885. At first this use was comparatively small, but in 1893 increased, and in 1896 extended to three-quarters of the plaintiff's manufacture. In September, 1895, the defendant began the use complained of. An inspection of the boxes makes it plain that the public would not distinguish them. The judge before whom the case was tried found the facts, and ruled that the bill could not be maintained.

It is found that the defendant did not intend to deceive the public by passing off their goods for the plaintiff's, but this must be taken pretty strictly. They knew that they were putting the power to do so into the retail dealers' hands. It hardly can be doubted that they contemplated that the wholesale dealer at whose request they put up their awls in this form, with full knowledge of the plaintiff's prior use, would or might try to deceive the public, and whether they did or not is immaterial. They knew it after they were warned by the plaintiff, and stood upon their rights. The principles upon which the rights of the parties are to be determined are similar to those which are well known to govern trade-marks, although the combination of elements is more complex than in devices which commonly go by that name. Hildreth v. D.S. McDonald Co., 164 Mass. 16, 41 N.E. 56; Chadwick v. Covell, 151 Mass. 190, 194, 23 N.E. 1068; Goodyear's India Rubber Glove Manuf'g Co. v. Goodyear Rubber Co., 128 U.S. 598, 604, 9 Sup.Ct. 166; McLean v. Fleming, 96 U.S. 245, 253, 254; Taendsticksfabriks Akticbolagat Vulcan v. Myers, 139 N.Y. 364, 34 N.E. 904; Hall v. Barrows, 4 De Gex, J. & S. 150, 159; Singer Machine Manufacturers v. Wilson, 3 App.Cas. 376, 389; Turton v. Turton, 42 Ch.Div. 128, 141; Kirby, Trade-Marks, 13-15.

The report states that it did not appear whether or not any purchaser of awls had learned to recognize the plaintiff's awls by the appearance of the packages. This cannot mean more than that there was no direct testimony to that effect. But the fact that the plaintiff had used the combination since 1885, and largely since 1893, is enough to raise a presumption in its favor. McAndrew v. Bassett, 4 De Gex, J. & S. 380, 384, 385.

The ground of the ruling probably...