the packages of baking powder sold by them. The respondents admit all the material facts above stated, except that they deny they infringe the complainant's trademark by using the same on their packages of baking powder, because, as they allege, baking powder does not belong to the same class of goods as baking soda and saleratus. They also deny that they intend to, or do, deceive the public by using the complainant's trademark on their baking powder, or that the complainant is damaged by such use. . . . The evidence is conflicting on the question whether the public are, or are likely to be, deceived by the respondents' use of the complainant's trademark. . . .

The tendency of the Courts at the present time seems to be to restrict the scope of the law applicable to technical trademarks, and to extend its scope in cases of unfair competition. Mill Co. v. Alcorn, 150 U. S. 460, 14 Sup. Ct. 151, 37 L. Ed. 1144; Laughman's Appeal, 128 Pa. St. 1, 18 Atl. 415, 5 L. R. A. 599; Koehler v. Sanders, 122 N. Y. 65, 25 N. E. 235, 9 L. R. A. 576; Castle v. Siegfried, 103 Cal. 71, 37 Pac. 210; Fleischmann v. Starkey (C. C.), 25 Fed. 127. As this case falls more appropriately under the head of an infringement of a technical trademark, rather than under the head of unfair competition, it becomes desirable to ascertain as nearly as may be the distinctions, as well as the points of resemblance, between them. The underlying principle of each is the same, namely, the prevention of that which in its operation and results, and usually in intention, is a fraud upon the public, and an injury to the rival trader. That this is the underlying principle is clearly shown in the leading case on technical trademark law (Canal Co. v. Clark, 13 Wall. 311, 322, 20 L. Ed. 581, 583), where the Supreme Court say:

"This will be manifest when it is considered that, in all cases where rights to the exclusive use of the trademark are invaded, it is invariably held that the essence of the wrong consists in the sale of the goods of one manufacturer or vendor as those of another, and that it is only when this false representation is directly or indirectly made that the party who appeals to a Court of Equity can have relief. This is the doctrine of all the cases."

But, while the idea of fraud or imposition lies at the foundation of the law of technical trademarks as well as the law of unfair competition, it must be borne in mind that fraud may rest in actual intent shown by the evidence, or may be inferred from the circumstances, or may be conclusively presumed from the act itself. In the case of unfair competition the fraudulent intent must be shown by the evidence, or be inferable from the circumstances, while, in the case of the use by one trader of the trademark or trade symbol of a rival trader, fraud will be presumed from its wrongful use. It is commonly said that there is a right of property in a technical trademark, and an infringement of it is spoken of as a violation of a property right. Whether this view be correct or not is quite immaterial, because it is universally agreed that some of the rights which are incident to property do inhere in a tech

nical trademark. The cases all agree that no one has a right to use another's trademark in connection with similar goods; and if he does so use it, and persists therein after being requested to desist, the fraud and imposition which constitute the essence of the injury will be presumed to exist, and relief will be granted without further proof. Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537, 548, 549, 11 Sup. Ct. 396, 34 L. Ed. 997. In strict trademark cases, such as the present case is, a fraudulent intent to injure the complainant, or an actual misleading of the public, need not be proved, as it will be presumed. In Lawrence Mfg. Co. v. Tennessee Mfg. Co., supra, the Supreme Court says:

"The jurisdiction to restrain the use of a trademark rests upon the ground of the plaintiff's property in it, and of the defendant's unlawful use thereof. Boston Diatite Co. v. Florence Mfg. Co., 114 Mass. 69. If the absolute right belonged to the plaintiff, then, if an infringement were clearly shown, the fraudulent intent would be inferred; and, if allowed to be rebutted in exemption of damages, the further violation of the right of property would nevertheless be restrained. McLean v. Fleming, 96 U. S. 245, 24 L. Ed. 828; Menendez p. Holt, 128 U. S. 514, 9 Sup. Ct. 143, 32 L. Ed. 526.”

The complainant having acquired the exclusive right to the use of the trademark upon baking soda and saleratus, the remaining question is this: Does the baking powder of the respondents belong to the same class of goods as the baking soda and saleratus of the complainant? The respondents admit that their baking powder consists of 25 per cent of soda, mixed with 75 per cent of corn meal starch and tartaric acid. The greater part of the baking powder consists of the starch, used simply as a drier to absorb the moisture to which the baking powder may be exposed, and thus to prevent the formation of carbonic acid gas by the chemical combination of the soda and acid. Consequently, every time the respondents sell a package of their baking powder, having the complainant's trademark upon it, they are actually selling a package a material part of which consists of baking soda. . . . A decree may be prepared in accordance with the foregoing views.

180. JAMES LOVE HOPKINS. Law of Trademarks, Trade Names, and Unfair Competition. (1905. 2d ed., § 108, p. 264.) Mr. Justice Clifford expressed the rule in these words: "What degree of resemblance is necessary to constitute an infringement is incapable of exact definition as applicable to all cases. All that courts of justice can do in that regard is to say that no trader can adopt a trademark so resembling that of another trader as that ordinary purchasers buying with ordinary caution are likely to be misled.'' But further, in the same opinion, he bases the decision explicitly upon the ground that the defend

1 McLean v. Fleming, 96 U. S. 245-251; following the language of Lord Cranworth in Seixo v. Provezende, L. R. 1 Ch. D. 192. See also Popham v. Wilcox, 14 Abb. Pr. N. s. 206, 38 N. Y. Super. Ct. 274, 66 N. Y. 69, 23 Amer. Rep. 22, Seb. 425; Dawes v. Davies, Seb. 426.

1

ant's package "is well calculated to mislead and deceive the unwary." There are many instances of similar dicta. We have heretofore referred to the assertion of Vice-Chancellor Shadwell, who said that "If a thing contains twenty-five parts, and but one is taken, an imitation of that one will be sufficient to contribute to a deception, and the law will hold those responsible who have contributed to the fraud." 2

It is at this point that we can secure probably the most striking proof of the manner in which the law of trademarks and the law of unfair competition overlap each other. True, the function of the trademark is to distinguish the goods to which it is applied, and whose origin or ownership it indicates. True that the purpose of an intentional infringement is to draw away the trade secured by the infringed mark for the benefit of the owner of the infringing mark. But that that infringement is to be determined, not by the question whether any substantial part of the trademark is copied or duplicated by the infringing mark, but by the tendency of the pirated mark to deceive (whether the careful, ordinary, or unwary purchaser is immaterial), is an anomaly in our jurisprudence. Yet the Courts have persisted in disregarding the technical composition and detail of trademarks, and have invariably applied the test of tendency of the suspected mark to deceive. The test ignores the absolute right of property which exists in a lawful trademark, and gives the owner of such a mark no other or further rights than are given the plaintiff who uses only generic terms to designate his wares and perforce relies upon the doctrines of unfair competition.3 The broad rule as stated above by Mr. Justice Clifford has been elaborated by other Courts.

181. REGIS v. JAYNES

SUPREME JUDICIAL COURT OF MASSACHUSETTS. 1906

191 Mass. 245, 77 N. E. 774

CASE reserved from Supreme Judicial Court, Suffolk County. Suit by E. M. Regis and another against J. A. Jaynes and others to enjoin the infringement of a trademark. From a decree enjoining defendants, and ordering the recommitment of the cause to a master for an accounting, defendants appeal. Affirmed.

Robert F. Herrick and Guy Cunningham, for appellants.

Arthur F. Hardy, for appellees.

SHELDON, J. After the decision in this case reported in 185 Mass. 458, 70 N. E. 480, a decree was entered enjoining the defendants from

1 McLean v. Fleming, 96 U. S. 245, at page 256.

2 Guinness v. Ulmer, 10 L. T. 127. See also Leather Cloth Case, 11 H. L. C. 523, 35 L. J. Ch. 53, 11 Jur. N. s. 513, 12 L. T. N. s. 742, 13 W. R. 873; Popham v. Willcox, 66 N. Y. 69.

3 Lord Westbury evidently was impressed with this thought when he said, "Imposition on the public is necessary for the plaintiff's title, but in this way only, that it is a test of the invasion by the defendant of the plaintiff's right of property; for there is no injury if the mark used by the defendant is not such as is mistaken, or is likely to be mistaken, by the public for the mark of the plaintiff; but the true ground of this Court's jurisdiction is property." Hall v. Barrows, 4 De G. J. & S. 150.

using the words "Rex" or "Rexall" in connection with the sale of preparations for the cure of dyspepsia, and ordering that, upon the filing of a supplemental bill, the case should be recommitted to the master for an accounting of profits since the filing of the original bill; and the first question which now comes before us is raised by the defendants' appeal from this decree. The plaintiffs' supplemental bill avers that since the filing of the original bill the defendants have sold numerous boxes of dyspepsia tablets under the names "Rexall” and “Rexall Dyspepsia Tablets," and prays for an accounting of the plaintiffs' damages and of the defendants' profits therefrom. The defendants' contention is that, although the injunction was rightly issued under the previous decision (Regis v. Jaynes, 185 Mass. 458, 70 N. E. 480), yet no accounting of profits should have been ordered. The facts which were then before the Court were those stated in the master's report. They claim that it appeared by this report that they had acted in good faith, in ignorance of the plaintiffs' rights, until about a month. before the filing of the bill; that there had been no actual interference with the sale of the plaintiffs' goods by reason of the similarity of the word "Rexall" to their trademark; that the plaintiffs had not suffered any actual monetary loss; and that it did not appear that the defendants had derived any advantage from the use of the trademark or good will.

The general principle that one who has shown that he is entitled to the exclusive use of a trademark may in equity recover from an infringer, against whom he obtains an injunction, the amount of the profits arising from the sale of goods upon which the trademark had been wrongfully used, is not denied by the defendants and is abundantly sustained by authority. Saxlehner v. Eisner & Mendelson Co. (C. C. A.), 138 Fed. 22; Oakes v. Tonsmierre (C. C.), 49 Fed. 447; Société Anonyme v. Western Distilling Co. (C. C.), 46 Fed. 921; Benkert v. Feder (C. C.), 34 Fed. 534; Atlantic Milling Co. v. Rowland (C. C.), 27 Fed. 24; Sawyer v. Kellogg (C. C.), 9 Fed. 601; Collins Co. v. Oliver Ames Corporation (C. C.), 20 Blatchf. 542, 18 Fed. 561; Stonebraker v. Stonebraker, 33 Md. 252; Avery v. Meikle, 85 Ky. 435, 3 S. W. 609, 7 Am. St. Rep. 604; El Modello Cigar Co. v. Gato, 25 Fla. 886, 7 South. 23, 6 L. R. A. 823, 23 Am. St. Rep. 537; Graham v. Plate, 40 Cal. 593, 6 Am. Rep. 639; Cartier v. Carlile, 31 Beav. 292. And the same rule is applied to cases of unfair competition merely, as well as to cases of the infringement of a trademark properly so called. N. K. Fairbank Co. v. Windsor (C. C.), 118 Fed. 96, overruled as to some points 124 Fed. 200, 61 C. C. A. 233; Walter Baker Co. v. Slack, 130 Fed. 514, 65 C. C. A. 138; Williams v. Mitchell, 106 Fed. 168, 45 C. C. A. 265; Lewis v. Goodwin, 36 Ch. D. 1. Equity in such a case holds the infringer as trustee for the benefit of the rightful owner to the extent of the profits realized from the unlawful or wrongful busiPaul, Trade-Marks, § 326, and cases cited. . . .

ness.

The defendants argue that in such a case as this, while an injunction may be granted to protect the rights of the plaintiff's in their trade name, yet the defendants should not be held for the profits which they have realized by selling articles bearing a name like the one used by the plaintiffs, in the absence of any fraudulent intention on their part, when it was found that they had acted in ignorance of the plaintiffs' rights, and it did not appear that substantial injury had been done to the plaintiffs before the filing of their bill. There is some conflict in the decisions; but we think that the weight of modern authority is in favor of the rule that an account of profits will not be taken where the wrongful use of a trademark or a trade name has been merely accidental or without any actual wrongful intent to defraud a plaintiff or to deceive the public. Elgin Watch Co. v. Illinois Watch Case Co., 179 U. S. 665, 674, 21 Sup. Ct. 270, 45 L. Ed. 365; Saxlehner v. Siegel Cooper Co., 179 U. S. 42, 21 Sup. Ct. 16, 45 L. Ed. 77; N. K. Fair'bank Co. v. Windsor, 124 Fed. 200, 61 C. C. A. 233; George T. Stagg Co. v. Taylor, 95 Ky. 651, 669, 27 S. W. 247; Beebe v. Tolerton & Stetson Co., 117 Iowa, 593, 91 N. W. 905; North Cheshire & Manchester Brewery Co. v. Manchester Brewery Co., [1899] App. Cas. 83, 86; Moet v. Conston, 33 Beav. 578; Hodgson v. Kynoch, Limited, 15 Rep. Pat. Cas. 465. And see 21 Ency. Pl. & Pr. 779, and cases there collected. But we do not think that the defendants are protected by this principle against the taking of the account here in question. The account is ordered to be taken only since the filing of the original bill, upon the charge made in the supplemental bill that during the litigation the defendants have persisted in their infringement. It cannot be said that this conduct on their part was in ignorance of the plaintiffs' rights. They were at least put upon inquiry, and must be charged with knowledge of what they would have learned upon reasonable inquiry. Nor can it be said that their conduct since the filing of the bill was innocent or free from wrongful intent within the meaning of the rule which has been stated. They chose, after full notice and warning, to persist in violating the plaintiffs' rights. If the facts, as they were afterwards proved, could have been made manifest to the Court when the bill was filed, an injunction must have issued then. It does not lie in the defendants' mouths to say that conduct on their part which afterwards was proved to have been wrongful, and as to which they had either full knowledge, or the means of obtaining full knowledge, of the facts, was either lawful or innocent. Their continued use was not, as in N. K. Fairbank Co. v. Windsor, 124 Fed. 200, 61 C. C. A. 233, in reliance upon the decision of a competent tribunal. Nor was there here any laches or acquiescence on the part of the plaintiffs, as in McLean v. Fleming, 96 U. S. 245, 24 L. Ed. 828. The defendants must be treated as having, after the filing of the original bill, that knowledge of the plaintiffs' prior right which was required in Edelstein v. Edelstein, 1 De G., J. & S. 185. In Ford v. Foster, L. R. 7 Ch. 611, a case very