Pacific Coast Condensed Milk Co. v. Frye & Co.

• Decision Date: 17 April 1915
• Docket Number: 12078.
• Citation: 147 P. 865,85 Wash. 133
• Court: Washington Supreme Court
• Parties: PACIFIC COAST CONDENSED MILK CO. v. FRYE & CO.

147 P. 865

85 Wash. 133

PACIFIC COAST CONDENSED MILK CO. v. FRYE & CO.

No. 12078.

Supreme Court of Washington

April 17, 1915

Department 2. Appeal from Superior Court, King County; R. B. Albertson Judge.

Action by the Pacific Coast Condensed Milk Company against Frye &amp Co. Judgment for plaintiff, and defendant appeals. Reversed.

Higgins & Hughes and Hyman Zettler, all of Seattle, for appellant.

Peters & Powell, of Seattle, for respondent.

ELLIS J.

This is an action to enjoin, as unfair competition, the use of a label upon containers of condensed milk. The plaintiff and its predecessor have for about 15 years manufactured and marketed its 'Carnation' brand of evaporated milk using a label of sufficient length and width to preactically cover the surface of the can, with equal horizontal bands of red and white, the red above and the white below. In the middle is a group of three carnation flowers, two red resting on the white background and one pink resting on the red background; with the word 'Carnation' in prominent cursive script in white on the red background running in a straight line above the flowers and the word 'Brand' immediately under the word 'Carnation' in small green letters. Immediately under the group of carnations in small red letters are the words 'Sterilized Evaporated,' and in large green letters the word 'Milk,' below which in small red letters are the words 'An Unsweetened Condensed Milk.' These as the major characteristics are placed in the middle of the label, and are flanked on either side by a torch, one half in red extending into the white band, and the other half in white extending into the red band. On either side outside of these torches are groups of printed matter containing a guaranty and directions. Across the top of the label in the red band is a row of white conventional fleurs-de-lis, and along the bottom in the white band a similar row in green. The defendant is a meat packer, and also operates a group of retail markets in the state of Washington where meats and other supplies are sold. For more than 18 years it has used the name 'Wild Rose,' together with a design of the rose in one form or another, on various articles as its brand. A few months before the commencement of this action it determined to enter the competitive field for the selling of evaporated milk, and adopted a label of the same size, shape, and color as that of the plaintiff, with the red band below and the white above thus reversing the plaintiff's color scheme. The defendant's central figure is a cluster of three wild roses, the stems in white and green resting on the red background, the flowers pink resting upon the white background. Above the group of flowers are the words 'Wild Rose' in prominent upright Roman letters, red in color, forming an arch. Immediately beneath it appears the word 'Brand' in green letters. Immediately beneath the group of roses and in the red background appears the word 'Sterilized' in small white letters, and immediately beneath that, the word 'Milk' in prominent white letters. Flanking the entire figure on either side, instead of the plaintiff's torches, appear two upright scepters, one half in the white background and the other half in the red background. Outside of these on either side appears printed matter wholly different from that similarly placed on plaintiff's label. The defendant's label is not bordered with the fleurs-de-lis, but along the bottom of the red band it is bordered with alternating long dashes and round white dots, each edged with a crescent of green. The case was tried on affidavits and certain stipulated facts. The affidavits on behalf of the plaintiff were made by its president and secretary. The gist of that of the president is as follows:

'Condensed milk is, for the most part, sold through the channels of the grocery trade, wholesale and retail. Prior to engaging in the manufacture of condensed milk I was for many years engaged in the retail and wholesale grocery business, and am familiar with the habits of retail purchasers in the matter of selecting and indicating goods by reference to distinctive labels, and I know how readily confusion and deception in trade may arise from similarity of labels and trade-marks. I have no hesitation in saying that the Wild Rose label as described in and shown by the exhibit annexed to the complaint herein might readily deceive the average purchaser at retail, and could easily be used by dealers in palming off goods so labeled upon incautious and illiterate buyers as for Carnation Milk. The injury to plaintiff's business is intensified by the reason that defendant's milk is much inferior in quality to plaintiff's product, which inferiority will, to those users not noticing that they are not getting plaintiff's product, result in leading them to think that plaintiff is not maintaining the standard of its product and will cease to buy it.'

The affidavit of the secretary was to the effect that he believed the allegations of the complaint to be true. The affidavits on behalf of the defendant were those of its president, secretary, and purchasing agent, to the effect that the name 'Wild Rose,' with the design of a rose or roses, had been used by the defendant and its predecessor for more than 18 years, especially on lard of the highest quality; that after careful consideration in seeking for a label which would be appropriate for condensed milk, they found the colors theretofore used by the defendant, red and black, were not suitable for a light product such as milk, that the color combinations most generally used on condensed milk or similar products are white and red or white and blue; that the probably attractive combinations are very few; that it is impossible to secure a trade-mark from either the state or the federal governments upon any design or combination of colors by reason of their common use; that any attractive design or combination of colors would be certain to present points of great similarity to some other label already in use; that affiants considered red and white more attractive than blue and white, and made their design therefore as distinctive and different from the plaintiff's and other manufacturer's using the same combination as ingenuity could accomplish, not with the view to any confusion, but to avoid such confusion, and to make defendant's milk under its well- known Wild Rose brand as distinctively different as possible. There were also affidavits of six managers of the defendant's retail markets in the state of Washington and of 54 retail grocers and general merchandise dealers throughout the state located in some 20 different towns and cities, as follows:

'That each of them has been handling Wild Rose milk for periods averaging from one to six months; that they each for a long time past also handled Carnation milk; that not a single one of affiants has ever known of a single instance of a retail purchaser or any one else who was deceived by any similarity in the labels of Wild Rose and Carnation brands, or who mistook one for the other, or who was confused into buying or offering to buy one of the brands for the other; that the Wild Rose and Carnation labels are as different as many other styles of labels on independent brands of goods; that retail purchasers habitually distinguish between and call for brands of canned goods they want by name; that in the judgment of affiants there is no likelihood of any retail purchaser's being doceived by the label into purchasing Wild Rose for Carnation.'

There is also an affidavit of defendant's secretary that the affidavits above mentioned were those of all the dealers who have handled the Wild Rose brand, except six or eight, who were absent from their places of business when called upon, or were located at places so remote that they could not be reached at the time of hearing. The stipulated facts were to the effect that the defendant's Wild Rose label more nearly approached the plaintiff's Carnation label than any label of any other competitor save one, which had been abandoned at plaintiff's instance, that defendant's Wild Rose brand contained on the average about 5 8/10 per cent. of butter fat, while the plaintiff's Carnation brand contained not less than 7 8/10 per cent. of butter fat, and that the Wild Rose milk has usually been sold on the market at a lower price than the Carnation milk. The court entered a decree enjoining the defendant from using the Wild Rose label or any other label as closely resembling the Carnation label. The defendant appealed.

Irrespective of technical trade-marks, courts have long recognized the right of the first user of a distinctive dress of goods to protection against use by another of a similar dress or name in unfair competition.

The basic principle of the doctrine of unfair competition, though variously expressed, is exceedingly simple. It is just this--no dealer or manufacturer has the rught, by any name mark, sign, label, dress, or other artifice, to represent to the public that the goods sold by him are those manufactured or produced by another, thus passing off his goods for those of such other to the latter's injury. Rathbone, Sard & Co. v. Champion Steel Range Co., 189 F. 26, 110 C. C. A. 596, 37 L. R. A. (N. S.) 258; Coats v. Merrick Thread Co., 149 U.S. 562, 13 S.Ct. 966, 37 L.Ed. 847; Sterling Remedy Co. v. Spermine Medical Co., 112 F. 1000, 50 C. C. A. 657; Schmidt v. Brieg, 100 Cal. 672, 35 P. 623, 22 L. R. A. 790. Innumerable cases stating this principle in some form might be cited. The whole doctrine rests on the prevention of fraud by the confusion of things through use of a label or dress which by another's use has come to connote a particular thing. Perlberg v. Smith, 70 N. J. Eq. 638, 62 A....