Saxony Products, Inc. v. Guerlain, Inc.

• Decision Date: 07 April 1975
• Docket Number: No. 73-1290,73-1290
• Citation: 185 U.S.P.Q. 474,513 F.2d 716
• Parties: SAXONY PRODUCTS, INC., Plaintiff-Appellee, v. GUERLAIN, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 716

513 F.2d 716

185 U.S.P.Q. 474

SAXONY PRODUCTS, INC., Plaintiff-Appellee, v. GUERLAIN, INC., Defendant-Appellant.

No. 73-1290.

United States Court of Appeals, Ninth Circuit.

April 7, 1975.

Harold I. Kaplan (argued), New York City, for defendant-appellant.

Louis W. Shaffer (argued), of Stewart & Shaffer, Los Angeles, Cal., for plaintiff-appellee.

OPINION

Before DUNIWAY and ELY, Circuit Judges, and JAMESON, ^* District Judge.

JAMESON, District Judge:

Defendant-appellant, Guerlain, Inc., appeals from an order granting the motion of plaintiff-appellee, Saxony Products, Inc., for summary judgment and holding that (1) the use of appellant's registered trademark SHALIMAR in appellee's advertising did not constitute trademark infringement and unfair competition, and (2) appellant was guilty of unfair competition by threatening appellee with legal action based on unfounded claims.

I. BACKGROUND

Guerlain, a New York corporation and well known perfumer, is the owner of a trademark on the name SHALIMAR used in connection with unpatented perfumery products since 1926. ¹ Saxony, a California corporation, produces toiletry items and distributes them throughout the United States.

Saxony produces and markets a line of toiletries called "LIKE COLOGNES" and "LIKE PERFUMES", which they advertise as being similar to high-priced colognes and perfumes identified as ARPEGE, CHANEL No. 5, ESTEE LAUDER, MY SIN, WHITE SHOULDERS, SHALIMAR, JOY and TABU. The Saxony product is sold for a fraction of the selling price of the cologne or perfume it simulates. ²

In its advertising displays, Saxony lists the well known colognes and perfumes in one column and its own cologne or perfume of similar fragrance in a matching column. The Saxony "LIKE" products are denominated Fragrance A, Fragrance C, Fragrance E, Fragrance M, Fragrance W, and Fragrance S, the letter corresponding to the first letter of the name product it simulates. Thus, the "LIKE" cologne corresponding to SHALIMAR is called Fragrance S. The comparison charts recite that "If you Like" (the) "Famous Colognes", then "You'll love" (the) "Similar Colognes".

Tester bottles of the LIKE perfumes are provided by Saxony at each display so that purchasers may determine for themselves that the Saxony product has the scent they desire. Tester bottles of the colognes and perfumes allegedly being simulated, however, are not provided. Although the trademark names appear on the Saxony displays for purposes of identifying the nature of the LIKE colognes and perfumes, only the Saxony name appears on the labels of the boxes or bottles in which Saxony's products are sold. Most of the comparison charts, display bins, signs, labels, and boxes, prominently identify Saxony as the source of Fragrance S and all other LIKE toiletries. ³

II. PROCEEDINGS IN DISTRICT COURT

This controversy arose when Guerlain wrote a letter to F. W. Woolworth and Company, a customer of Saxony, stating that Saxony's LIKE cologne and perfume displays constituted an infringement of its trademark SHALIMAR and requesting that Woolworth remove the Saxony displays from its stores. Woolworth referred the letter to Saxony. Saxony replied to Guerlain's letter, asserting that the alleged trademark infringement was unfounded. When the matter could not be resolved, Saxony commenced this action, charging Guerlain with unfair competition by threatening one of Saxony's customers and seeking a declaratory judgment that Saxony was not infringing on Guerlain's trademark "SHALIMAR" and was not engaged in unfair competition against Guerlain through its advertising. In a counterclaim Guerlain alleged infringement of its trademark SHALIMAR, dilution and denigration of the trademark, misrepresentation, and unfair competition.

Saxony moved for summary judgment. Following three hearings, the motion was granted, and an order was entered declaring Saxony free of any infringement, unfair competition, dilution, or misrepresentation, adjudging Guerlain "guilty of unfair competition" by wrongfully threatening Saxony and its customer, and granting Saxony injunctive relief. The order was accompanied by "Findings of Fact and Conclusions of Law in accordance with F.R.C.P. Rule 52(a) ⁴ and Local Rule 7(a)." ⁵ The conclusions of law contain a provision that, "There is no material triable issue of fact in this entire case and all of the questions presented by Plaintiff's claims and Defendant's counterclaims can be and hereby have been resolved by summary judgment."

III. SUMMARY JUDGMENT

Appellant contends that the court erred in holding that there were no genuine issues as to any material facts and that the case was proper for summary judgment. ⁶ In particular, appellant argues that the evidence presented through its affidavits and exhibits raises genuine issues of fact with respect to its allegation that Saxony violated Sec. 43 of the Lanham Act,15 U.S.C. § 1125(a). ⁷ Appellant claims as violations of the Act that (1) in designating its product "Fragrance S" and in comparing Fragrance S to SHALIMAR, Saxony has falsely represented that Fragrance S is "similar" or " LIKE" SHALIMAR and (2) the use of Guerlain's trademark SHALIMAR and Saxony's code name Fragrance S in the promotional materials used by Saxony is designed to confuse the public as to the origin of Fragrance S. ⁸

(a) Evidence Submitted

In opposition to the motion for summary judgment, Guerlain submitted detailed affidavits of Harold I. Kaplan, one of its counsel, and Thomas Spelios, its research director. ⁹ Attached to the Kaplan affidavit is a verified report of Dr. Paul Bedoukian, a consulting chemist and specialist in the perfume and essential oil field. After analyzing SHALIMAR Cologne and LIKE Cologne S on the basis of odor components and lasting quality, ¹⁰ Dr. Bedoukian concluded:

" 'Shalimar' and 'Like Cologne S' cannot be considered as being alike or similar. They may not even be called the same type. Shalimar is by far a superior and expensive perfume."

Annexed to a supplemental affidavit of Kaplan is a verified report concerning a series of odor tests between SHALIMAR Cologne and Fragrance S Cologne prepared by Foster D. Snell, Inc., an independent analytical laboratory. A description of those tests and the results thereof were summarized as follows:

" . . . Shalimar Cologne and Cologne S were compared in a series of odor tests. The tests consisted of having five observers smell both colognes and evaluate their odor both qualitatively and quantitatively.

"We found that the two Colognes were substantially different. They were dissimilar in both the major odor components and in strength. We also found that Shalimar Cologne lasted longer, an important factor for a high-quality Cologne."

Spelios' affidavit sets forth his findings and conclusions with respect to a series of tests he conducted, including a standard "blotter" test with ten persons. Spelios concluded:

"Fragrance S cologne is completely different in character and performance from Shalimar cologne according to criteria upon which accepted evaluations are based and, accordingly, the products must be deemed to be completely dissimilar with respect to characteristics related to product function." ¹¹

The report of Dr. Bedoukian was presented at the first hearing on July 31, 1972. ¹² At the close of that hearing the court stated:

"I think if I am to make any determination that there is no issue of similarity, that I have to make that determination by actual tests. It is not the subject of expert testimony."

(b) Findings of Fact re: Sniff Test

At the third hearing, on September 18, 1972, counsel for Saxony, at the request of the court but over the objection of Guerlain, prepared a sniffing or smelling test. ¹³ The tests were described in detail in the finding of fact:

"13. Two samples of Plaintiff's FRAGRANCE S spray cologne, a sample of Defendant's SHALIMAR cologne spray and a sample of Defendant's SHALIMAR liquid cologne were applied one at a time to chemist's blotter strips from a sealed package. The samples of the fragrances were applied in approximately equal amounts and not allowed to contact or mix with one another. Each blotter strip was successively laid upon a separate clean sheet of yellow legal pad paper prior to applying the toiletry liquid so that the fragrances would not interfere with one another.

"14. The four fragrance samples on their respective blotter strips were then marked as exhibits and received in evidence. The four samples were then sniffed by the court one at a time; first one of Plaintiff's FRAGRANCE S samples, second one of Defendant's SHALIMAR samples, next the other of plaintiff's FRAGRANCE S samples and finally the second of Defendant's SHALIMAR samples.

"15. From the foregoing test indicated in paragraphs 11 through 14 it is determined that the fragrance of Plaintiff's FRAGRANCE S is similar to the fragrance of Defendant's SHALIMAR with the exception that SHALIMAR has a much stronger fragrance than that of FRAGRANCE S. ¹⁴ Plaintiff's advertising of FRAGRANCE S as being 'LIKE' or 'similar' to SHALIMAR is not false, misleading or fraudulent, but is truthful and accurate."

(c) Conclusions of Law

The conclusions of law include the following:

"4. The name SHALIMAR is a fragrance description as well as a trademark.

"5. Plaintiff's reference to the name SHALIMAR as a fragrance description is a proper way to suggest to consumers that the fragrance of FRAGRANCE S is 'LIKE' or 'similar' to the fragrance of SHALIMAR. There is no legal harm done when a competitor seeks to take advantage of the good will of an unprotected product as opposed to the trademark identifying the source of the product.

"6. Plaintiff's representations and advertisements that the fragrance of FRAGRANCE S is 'LIKE' or 'similar' to the fragrance of SHALIMAR is not false, misleading or fraudulent and is truthful and accurate. This conclusion is reached following a sniffing test by the court. ¹⁵

"7. Plaintiff has taken...