Winthrop Chemical Co., Inc., v. Blackman
268 N.Y.S. 647
Procedural History: Plaintiff, a pharmaceutical company, brought an action for an accounting and injunctive relief against defendant competitors for alleged infringement of its five trademarks for medicinal preparations.
Facts: The pharmaceutical was the assignee and holder of various trademarks. Rights to the patent and trademark for one drug were originally owned by a German company, but were seized in World War I, sold after the war, and later acquired by plaintiff. In granting relief to the plaintiff, the court found that the competitors had deliberately infringed the trademarks with their products to obtain the benefits of the reputation of the plaintiff's products, to the detriment of the plaintiff and the public, which associated those trademarked products with the plaintiff. The court ruled that the trademarks were the valid property of the plaintiff. The trademarks were arbitrary terms, but if they were originally descriptive, they had acquired secondary meaning deserving of protection from infringement. Neither widespread dissemination by the plaintiff nor infringement by others were defenses to the competitors' unauthorized use of the trademarks. Acts of the plaintiff to combat infringement rebutted any claim of abandonment of the trademarks.
Holding: The plaintiff was granted a permanent injunction restraining the defendants' infringement and simulation of the plaintiff's trademarks, and the defendants were directed to account to the plaintiff for all damages sustained by it as a result of those infringements, together with the taxable costs of the action.
Analysis: If the law of unfair competition is to survive it should be enforced in a manner so to give it life and not to impede it. The fact that by indirection defendants poach upon the rights of a plaintiff holding trademarks does not prevent equity from giving the same relief as if they took the entire names adopted by the plaintiff in its trademarks or use its trademarks alone and not in connection with any other words on its products. Widespread dissemination of trademarked articles by the trademark owner does not justify competitors in the use of the trademark. If it were otherwise, then every time a company holding the trademark obtained the result of having the public purchase its article, that fact of itself would destroy the trademark. Arbitrary trademarks cannot become generic in this way.
If there is an abandonment, the holder of a trademark would lose its exclusive right to the trademark. The court cannot assume abandonment by reason of the fact that several others use the trademarked name on their products. That others may have claim the right to it is immaterial. That others have and are infringing on the trademark does not excuse particular defendants. The function of a trademark is to point out the maker of the good to which it is attached. It gives the right to prohibit the use of it so as to protect the owner's reputation against the sale of a product as his. Where one product name is similar to a trademarked name, an injunction may issue, as where the names are similar both in spelling, appearance and sound or where there is similarity in the packaging.
268 N.Y.S. 647
Procedural History: Plaintiff, a pharmaceutical company, brought an action for an accounting and injunctive relief against defendant competitors for alleged infringement of its five trademarks for medicinal preparations.
Facts: The pharmaceutical was the assignee and holder of various trademarks. Rights to the patent and trademark for one drug were originally owned by a German company, but were seized in World War I, sold after the war, and later acquired by plaintiff. In granting relief to the plaintiff, the court found that the competitors had deliberately infringed the trademarks with their products to obtain the benefits of the reputation of the plaintiff's products, to the detriment of the plaintiff and the public, which associated those trademarked products with the plaintiff. The court ruled that the trademarks were the valid property of the plaintiff. The trademarks were arbitrary terms, but if they were originally descriptive, they had acquired secondary meaning deserving of protection from infringement. Neither widespread dissemination by the plaintiff nor infringement by others were defenses to the competitors' unauthorized use of the trademarks. Acts of the plaintiff to combat infringement rebutted any claim of abandonment of the trademarks.
Holding: The plaintiff was granted a permanent injunction restraining the defendants' infringement and simulation of the plaintiff's trademarks, and the defendants were directed to account to the plaintiff for all damages sustained by it as a result of those infringements, together with the taxable costs of the action.
Analysis: If the law of unfair competition is to survive it should be enforced in a manner so to give it life and not to impede it. The fact that by indirection defendants poach upon the rights of a plaintiff holding trademarks does not prevent equity from giving the same relief as if they took the entire names adopted by the plaintiff in its trademarks or use its trademarks alone and not in connection with any other words on its products. Widespread dissemination of trademarked articles by the trademark owner does not justify competitors in the use of the trademark. If it were otherwise, then every time a company holding the trademark obtained the result of having the public purchase its article, that fact of itself would destroy the trademark. Arbitrary trademarks cannot become generic in this way.
If there is an abandonment, the holder of a trademark would lose its exclusive right to the trademark. The court cannot assume abandonment by reason of the fact that several others use the trademarked name on their products. That others may have claim the right to it is immaterial. That others have and are infringing on the trademark does not excuse particular defendants. The function of a trademark is to point out the maker of the good to which it is attached. It gives the right to prohibit the use of it so as to protect the owner's reputation against the sale of a product as his. Where one product name is similar to a trademarked name, an injunction may issue, as where the names are similar both in spelling, appearance and sound or where there is similarity in the packaging.