Seybold Baking Co. v. Derst Baking Co.

• Decision Date: 08 July 1943
• Docket Number: 14548.
• Citation: 26 S.E.2d 536,196 Ga. 391
• Parties: SEYBOLD BAKING CO. v. DERST BAKING CO.
• Court: Georgia Supreme Court

26 S.E.2d 536

196 Ga. 391

SEYBOLD BAKING CO. v. DERST BAKING CO.

No. 14548.

Supreme Court of Georgia

July 8, 1943

Syllabus by the Court.

1. 'Any attempt to encroach upon the business of a trader or other person, by the use of similar trade-marks, names, or devices, with the intention of deceiving and misleading the public, is a fraud for which equity will grant relief.' Code, § 37-712.

2. While the color of merchandise or its wrapper or container may be one of the important indicia of such a fraudulent purpose, if accompanied by other confusing factors such as size, shape, name, printing, or design in the make-up of the article, yet color alone, except possibly where some peculiar and distinctive combination of colors is employed, is not sufficient to establish the fraudulent intent, since no one is permitted from the mere prior use of such an all-belonging thing as a color to obtain a monopoly in its use for any particular purpose. Nor can the testimony of the defendant's manager, that he was forced to discontinue the less expensive white waxed paper and use the more costly 'tango' colored cellophane wrapper for his whole wheat bread in order to meet the competition of the plaintiff, be taken to establish a fraudulent purpose as a matter of fact, when the act itself does not so indicate where he also testified that cellophane was a more desirable and more attractive wrapper, and that the 'tango' (brownish yellow) color was a more suitable and appropriate transparent wrapper for the brown bread; and where it also appears that the product was without any other similarities as to the plainly printed labels both inside and outside the wrapper, the ones outside being strikingly different in color.

3. Under the preceding rulings, it was error to grant an interlocutory injunction against the use of the 'tango' colored cellophane wrapper by the defendant.

Lawton & Cunningham and Hester & Clark, all of Savannahn, for plaintiff in error.

Kennedy McWhorter & Jenkins and Shelby Myrick, all of Savannah, for defendant in error.

JENKINS Justice.

The rule seems to be well recognized that, in order to transgress an unfair competition act, the mere use of the same color on wrappers, containers, or labels will not suffice. Joseph Schlitz Brewing Co. v. Houston Ice & Brewing Co., 5 Cir., 241 F. 817, 821; Id., 250 U.S. 28, 39 S.Ct. 401, 63 L.Ed. 822; Southern Cal. Fish Co. v. White Star Canning Co., 45 Cal.App. 426, 187 P. 981; Union Fishermen's Co-op Pkg. Co. v. Point Adams Pkg. Co., 108 Or. 535, 217 P. 642; John Vittucci Co. v. Merline,

130 Wash. 483, 228 P. 292; Turner & Seymour Mfg. Co. v. A. & J. Mfg. Co., 2 Cir., 20 F.2d 298; Omega Oil Co. v. Weschler, 35 Misc. 441, 71 N.Y.S. 983; Id., 68 A.D. 638, 74 N.Y.S. 1140; Heinz v. Lutz, 146 Pa. 592, 23 A. 314; Nims on Unfair Competition, 2d Ed., 238, 292, 594 (§§ 119, 140, 332); Hopkins on Trademarks, Tradenames and Unfair Competition, 3rd Ed., 280, 281 (§ 114). To hold that after one person adopts some color for the wrapper, container, or label of his merchandise, no competitor can go into the open market and buy and use a wrapper of the same color for a similar purpose, would violate the rules against monopoly and restraints of trade. Once enunciated, there could scarcely be set a limit to such a doctrine, and its application would inevitably lead to oppressive lengths. As was said in N. K. Fairbank Co. v. R. W. Bell Mfg. Co., C.C., 71 F. 295, 298, if such a rule be applied, the 'shield of the law must be extended to every dealer who adopts paper of a particular color in which to wrap his goods, until at last the court may be called upon to protect one who claims 'for his goods the primitive brown paper and tow string as a peculiar property.'' To the same effect, see Philadelphia Novelty Mfg. Co. v. Rouss, C.C., 40 F. 585, 587; 63 C. J. 456, 358 (§§ 129(12), 56(8), and cit.

The contention of the plaintiff is not supported by two Federal decisions chiefly relied upon:Andrew Jergens Co. v Bonded Products Corp., D.C., 13 F.2d 417, 424, and Caron Corp. v. Vivaudou, Inc., 2 Cir., 4 F.2d 995, 997. In the former decision it was merely said: 'There is no exclusive right in the mere color of wrappers. The wrong, if any, exists when a fraud on the public is caused by the use of similar colors, as an element, in the real deceit forbidden.' (Italics ours.) In that case the wrong consisted, not only in 'the alleged imitation of the plaintiff's wrappers' in color and contents, but chiefly in the alleged use of the name 'Woodbury' upon the toilet soap, so that color, at most, was only one of several elements that together violated the plaintiff's rights. In the Vivaudou decision the court, in 'observing that it must be a clear case in which mere similarity in color will be enough,' did not have before it such a case; and therefore the statement was obiter. The case actually involved, not only the same shade, black, on the 'make-up' of the boxes and bottles, but an alleged misuse of the words 'Black Narcissus.' The court denied an injunction; and therefore the statement as to 'mere similarity of color' was not only obiter, but contrary to the actual holding. In that case, the court also said: 'While the plaintiff has no right to a monopoly in the use of the word, the color, or the ornament, simpliciter, when it becomes an element in a manifold likely to divert from him his customers, the law will prevent its use. * * *...