"Statement.
"The bill in this case is tiled to enjoin the defendants from the performance of acts which are alleged to lead to unfair competition in the business of manufacturing and selling brushes. The complainant began the manufacture of brushes in 1887, about which time it became the owner of two patents called the Read patents, for setting the knot of bristles in soft rubber and then vulcanizing the rubber, thus forming a new article of manufacture, which it claims is of greater efficiency and durability than any brush theretofore made. In putting out this new character of brush before the public, the complainant used the words and phrases, 'Hard Rubberset,' 'Rubberset,' 'Hard Rubberset and Bound,' to distinguish this special variety of manufacture from any others which were then or ever bad been on the market. The words 'Rubberset and Bound' and 'Rubber Bound' have not been used
recently so much as formerly, though I do not consider them as abandoned. For all practical purposes the controversy is reduced to two items, the first of which is whether the defendant the Rubber-Bound Brush Company is wrongfully using a name or a mark to distinguish its goods so nearly like the words used by the complainant as to be confusing and liable to deceive the public; and, second, whether the defendant may continue to use the phrase 'Rubber-Bound' in its corporate name.
"The Read patents expired in 1904 or thereabouts, since which time the complainant admits that the use of the processes described therein is open to the world.
"The defendant the Rubber-Bound Brush Company began the manufacture of brushes, the bristles of which were set in rubber and vulcanized, in 1908, and has continued such manufacture down to the present time. It marked its brushes at that time with the word 'Rubber-Bound' and continued to do so until the year 1909, when upon the request of the complainant it abandoned the use of that phrase and adopted instead thereof the word 'Rubber-Vulc,' under which name it has marketed its goods ever since.
"On the first branch of the case the question is whether the word 'Rubber-Vulc' is so close an imitation of the word 'Rubberset' as that the public might be deceived or the unwary purchaser led to believe, when he bought a brush marked 'Rubber-Vulc,' he was buying a brush manufactured by the complainant. It appeared in the case that the complainant for a number of years spent many thousands of dollars in advertising its goods under the names which it had chosen to designate them and in such manner as to reach the ultimate purchaser (that is to say, the public generally), and that it had also adopted a peculiar get-up of its goods for purposes of display, which has likewise to some extent been imitated by the defendant it likewise appeared by the testimony of some witnesses that the use of the word 'Rubberset' had in the brush trade come to mean goods manufactured by the complainant, and there was some evidence that the imitation of the complainant's goods by the defendant was so close as to be likely to deceive purchasers; that in certain places retail dealers had exhibited brushes of both manufacturers side by side in showcases and had used the complainant's display racks for the indiscriminate exhibition of brushes of both makes; and that at least in two cases retail dealers had sold the product of the Rubber-Bound Company, marked 'Rubber-Vule,' as and for the goods of the complainant. The fact that the word 'Rubberset' has come to mean the goods manufactured by the complainant was testified to by Mr. Pushee and Mr. Erskine, witnesses produced on behalf of the defendant, and by Mr. Seidler and by Mr. Neidlinger, witnesses on behalf of the complainant; and the fact that the retail dealers did not distinguish between the two lines of manufacture in making their sales is testified to by Mr. Wright and Mr. Holtzman, witnesses produced on the part of the complainant. It likewise appears in the case that the complainant has registered the word 'Rubberset,' 'Hard Rubberset,' 'Hard Rubberset and Bound,' in the United States Patent office, and that it claims protection in the use of these words and phrases under its letters patent.
"Opinion.
"In my opinion the primary and fundamental rules of law which govern the decisions of this case are found in the case of Reddaway v. Banham & Co. (1896) A. C. 199, 65 L. J. Q. B. 381, and in the opinion in International Silver Co. v. William H. Rogers Corporation, 66 N. J. Eq. 119, 57 Atl. 1037, 2 Ann. Cas. 407, affirmed 67 N. J. Eq. 646, 60 Atl. 187, 110 Am. St. Rep. 506, 3 Ann. Cas. 804. The Reddaway Case is the well-known case which related to the use of the words 'camel hair,' in connection with the manufacture and sale of belting for machinery. The phrase had been used by Reddaway in connection with his goods for many years. Banham, who was the leading spirit in the defendant corporation, had formerly been an employé of Reddaway; he left his employment there and went into the manufacture of a similar belting, which he called Arabian belting, but afterwards manufactured belting which it sold under the name of camel-hair belting. It was held by the House of Lords in a series of remarkable opinions that the evidence showed that the phrase 'camel hair' had acquired a secondary meaning in the trade, and that when any one spoke of camel-hair belting he meant belting manufactured by the complainant; that the protection which the complainant might claim for the use of that particular name was not the protection which would be accorded to a trade-mark, for the reason that the words 'camel hair' could not be adopted as a trade-mark because they were purely descriptive words. Lord Herschell says: 'The name of a person or words forming part of the common stock of language may become so far associated with the goods of a particular maker that it is capable of proof that the use of them by themselves, without explanation or qualification, by another manufacturer, would deceive a purchaser into the belief that he was getting the goods of A. when he was really getting the goods of B. In a case of this description, mere proof by the plaintiff that the defendant was using a name, word, or device which he had adopted to distinguish his goods would not entitle him to any relief; he could only obtain it by proving further that the defendant was using it under such circumstances or in such manner as to put...
