out in service, the parts are replaced and the article sold without removing the trademark, and where this replacement of parts is made by the owner of the trademark, identity being substantially retained, no fraud is effected. Otherwise if the replacement is made by a stranger.48 The Massachusetts court has refused to enjoin the manufacture of stove castings used to replace worn parts of a plaintiff's trademarked

stoves.19

Where parts are sold merely for replacement and repair, there is no duty on the part of the manufacturer to so distinguish the parts, by marking or advertising, as to clearly indicate the manufacturer. Thus, relief by injunction has been refused where the defendant failed to so mark repair parts,50 and has been refused where they were advertised by catalogue and label as being of the defendant's make.51 So an injunction was refused as against a manufacturer selling ink and paper for use on the Neostyle machine, though the court suggested that the defendants put their names on their future product.53

52

Effect of alteration of trademarked article.-To alter an article bearing a trademark, making it a new construction, and reselling or offering for resale, is an infringement, even though the article is marked to indicate the maker of the alterations.52a

§ 135. Infringement by applying a manufacturer's trademark to goods of his to which he does not intend its application. -In Hennessy v. White, the defendants bottled brandy, purchased in casks from plaintiffs and applied to such bottling a label which was a colorable imitation of that used by plain

48-General Electric Co. v. ReNew Lamp Co., 128 Fed. Rep. 154; General Electric Co. V. Re-New Lamp Co., 121 Fed. Rep. 164.

49-Magee Furnace Co. v. LeBarron, 127 Mass. 115.

50-Bender V. Enterprise Mfg.

Co., 84 C. C. A. 353; 156 Fed. Rep. 641, reversing Enterprise Mfg. Co. v. Bender, 148 Fed. Rep. 313; Co

lumbian Eng. Works v. Mallory, 75 Or. 542; 147 Pac. Rep. 542.

51-Deering Harvester Co. V. Whitman, 33 C. C. A. 558; 91 Fed. Rep. 376.

52-Neostyle Mfg. Co. v. Ellam's Duplicator Co., 21 R. P. C. 185. 52a-Ingersoll v. Doyle, 247 Fed. Rep. 620.

tiffs to designate a higher grade of brandy sold by them in bottles only. The court, by Molesworth, J., said: "I think a new feature which has not been present in any other case, and is, therefore, not touched by the language of the other cases, is one which I ought to act upon here; that is, that the makers of articles of different qualities are entitled to brand their best article in a particular way to show the superior value they put upon it." Stowell, C. J., in the same case, in the Victoria Supreme Court, states the rule more broadly: "If a brandy different from that which the manufacturer bottled is put into bottles and sold as the manufacturer's bottled brandy, the fact that it is the manufacturer's bulk brandy does not make the sale less an imposition.” 53 There can be no doubt of the right of the manufacturer or selector to designate goods of a certain grade bottled or packed by him by a distinctive trademark, and that no one purchasing goods in bulk from him can thereby acquire the right to pack or bottle such goods under the trademark of the vendor used only upon his packing or bottling. Whether the bulk goods are better than or inferior to the trademarked goods is utterly immaterial except as bearing upon the question of damages. 54

"It is manifest that the sale of merchandise in bulk by a manufacturer does not justify the vendee in using on his retail packages the label which the manufacturer uses upon the same merchandise only when prepared by himself on smaller packages for the retail trade," 55 but he is at liberty to so mark them as to truthfully indicate the manufacturer.56 Where bulk goods were sold without limitation as to the manner in which they were to be re-sold, the effect of the sale was held to be "to invest the defendants (vendees) with the

53-Hennessy v. White, 6 W. W. & A'B. Eq. 216-221; Seb. 650. See also to same effect Hennessy v. Hogan, 6 W. W. & A'B. Eq. 225; Seb. 651; Krauss v. Jos. R. Peebles' Sons Co., 58 Fed. Rep. 585.

54 See the case in which a person purchasing pens from a manufacturer removed the labels and substituted others marked with a numeral, indicating another grade of pen made by the same manufac

turer. Gillott V. Kettle, 3 Duer, 624; Cox, 148.

55-Taft, J., in Krauss v. Jos. R. Peebles' Sons Co., 58 Fed. Rep.

585-592.

56-Russia Cement Co. v. Katzenstein, 109 Fed. Rep. 314.

Of course the purchaser has no right to dilute or adulterate the bulk goods and sell them as the product of the maker. Coca-Cola Co. v. Brown & Allen, 274 Fed. Rep. 481.

title to the article, and with the right to divide it into small packages, as (they) might see fit, and sell the same as originating from the plaintiff, according to the fact."57

In accordance with the general doctrine of this section, a bill disclosed that the complainant was the manufacturer of two preparations used for making root-beer-one a syrup, the other, an extract. The defendant bought the extract and made a beverage from it by the addition of simple syrup and carbonated water, and sold it under the complainant's name, "Hires Root Beer," from which he was enjoined.58

In England Lord Justice Phillimore has recognized this rule, saying, "this is a passing-off which is actionable; not the usual passing-off when a man sells his own goods representing them to be those of another trader, but a more subtle and possibly a more injurious passing-off, when a man sells the second-class goods of a trader representing them as the first-class goods of that trader." 59

§ 136. Substitution.-By "substitution," as used here, is meant the substitution by a retail merchant of the goods other than those called for by a purchaser. In its narrower sense it is confined to the retail merchant who commits the offense. In its broader sense it includes the manufacture of the substituted goods in cases where he has so prepared the goods as to make the substitution possible, and for the purpose and with the intent that they may be substituted. Of such manufacturers the Supreme Court of New York, by Barrett, J., said: "The law of trademarks has been gradually expand

57-Wheeler, J., in Russian Cement Co. v. Frauenhar, 126 Fed. Rep. 228; affirmed, Russia Cement Co. v. Frauenhar, 66 C. C. A. 500; 133 Fed. Rep. 518.

& Sons (D. C.) 229 Fed. 224; Krauss v. Peebles Co. (C. C.) 58 Fed. 585, 592; People v. Luhre, 195 N. Y. 377, 89 N. E. 171, 25 L. R. A. (N. S.) 473; Hennessy v. White,

58-Chas. E. Hires Co. v. Xepa- Cox, Manual of Trademark Cases, pas, 180 Fed. Rep. 952.

59-A. G. Spalding & Bros. v. Gamage, Ltd., 31 R. P. C. 125, 139. See Prestonettes, Inc., v. Coty, U. S. -. 68 L. Ed. -; reversing 285 Fed. Rep. 501, 509, C. C. A. 2. "The law seems to be settled that when a manufacturer of an article of food or drink sells it in bulk, and also puts it up in bottles, the latter bearing a distinctive trademark, a purchaser of the article in bulk will be guilty of unfair competition and be enjoined from bottling and affixing the manufacturer's distinctive label upon the goods bottled by him. Coca-Cola Co. v. J. G. Butler

377." Carland, J., in Coca-Cola Co. v. Bennett, 238 Fed. Rep. 513, 517, (C. C. A. 8). Where a foreign manufacturer has sold his established business in the United States, with its trademarks and goodwill, the vendee of the business may enjoin the sale by a third person of the merchandise of the manufacturer bearing his trademark, purchased from the manufacturer abroad and imported in the original packages bearing the trademark transferred by the sale. Bourjois & Co. v. Katzel, 260 U. S. 689, 67 L. Ed. 464.

60-Enoch Morgan's Sons Co. v. Wendover, 43 Fed. Rep. 420.

ing so as to meet just such cases. The court, in a long and unbroken line of decisions, have endeavored to uphold and enforce commercial morality, and have afforded their protection to honest enterprise and skill." " As to the retailer who performs the actual substitution, there is no question that he will invariably be enjoined from repetitions of his offense.62

The law as to substitution is admirably embraced in the language of Judge Lacombe: "A court of equity will not allow a man to palm off his goods as those of another, whether his misrepresentations are made by word of mouth, or more subtly, by simulating the collocations of details of appearance by which the consuming public has come to recognize the product of his competitor." 03

63

The sale of an imitation article without misrepresentation will not be enjoined. Where the article was a bitters made in imitation of Hostetter's Bitters, but the defendant had sold the goods without any misrepresentation of their identity and without suggesting their adaptability for substitution, injunctive relief was refused.64

65

False oral representation that defendant's goods are those of the complainant will be enjoined, though where the defendant's affidavits contradict those of the plaintiff concerning such representations preliminary injunction will be denied." and the proof must be clear on final hearing to entitle plaintiff to the relief sought.67

The substitution of cigars, in boxes of a manufacturer bearing his trademark, entitles him to the recovery of punitive damages in an action at law, though no actual damages are proven."

61-Morgan Sons Co. v. Troxell, Cox, Manual, 674. The New York Court of Appeals, treating this case as purely a technical trademark case, reversed it in 89 N. Y. 292. If there had been considered by the appellate court the doctrines we have now under discussion, the decision of the lower court would have been affirmed. Taendsticksfabriks Aktiebolaget Vulcan v. Myers, 11 N. Y. Sup. 663; Avery v. Meikle, 81 Ky. 75; Cox, Manual, 686, and cases cited elsewhere in this chapter.

62-Saxlehner v. Eisner & Mendelson Co., 88 Fed. Rep. 61-70; Munro v. Smith, 13 N. Y. Sup. 708; N. K. Fairbank Co. v. Dunn, 126 Fed. Rep. 227; Barnes v. Pierce, 164 Fed. Rep. 213.

68

63—Enterprise Mfg. Co. v. Landers, Frary & Clark, 65 C. C. A. 587; 131 Fed. Rep. 40, 41; affirming 124 Fed. Rep. 923, and to the same effect see Edison Mfg. Co. v. Gladstone, N. J. Eq. -; 58 Atl. Rep. 391, not officially reported. 64-Hostetter Co. v. Van Vorst, 62 Fed. Rep. 600.

65-Weber Medical Tea Co. v. Kirchstein, 101 Fed. Rep. 580. 66-Lavanburg v. Pfeiffer, 52 N. Y. Supp. 801.

67-Lavanburg v. Pfeiffer, 66 N. Y. Supp. 39.

68-Lampert v. Judge & Dolph Drug Co., 238 Mo. 409; 141 S. W. Rep. 1095; reversing Lampert v. Judge & Dolph Drug Co., 119 Mo. App. 693, 699; 100 S. W. Rep. 659.

§ 137. The use of misleading signs and circulars.-The use of misleading business signs will be restrained in equity, whether or not such signs are fixed before a particular place of business, or are distributed through the trade.68a The general rule has been thus stated by the Chancellor of Upper Canada in a case involving the use of signs bearing words "The Golden Lion" used upon a dry goods establishment: "Where it is clear to the court that the defendant himself intended an advantage by the use of a particular sign or mark in use by another, and believes he has obtained it, or, in other words, that the defendant himself thought the use of it was calculated to advertise him at the expense of the plaintiff, and this was his object in using it, and where such has been the effect of the user, I think the court should say to him 'Remove that sign; its use by you may, as you intend, damage the plaintiff. It can not be necessary or valuable to you for any other purpose. You have your choice of many signs. which, as a mere attraction, or to give your store a marked designation, must answer a fair business purpose equally

It will be noted that in the foregoing case the deception employed consisted in duplicating the tradename in which the plaintiff's business was conducted. The same principle has been applied by a New York court in granting equitable protection to a flag design used in newspaper advertising by a real estate auctioneer. The advertising device which was employed was the representation of a flag having an ornamentation of stars, fancifully arranged along its upper and lower edges. The defendant duplicated this device in his newspaper advertising matter, and there was testimony tending to show that persons had actually been deceived into believ ing that defendant's advertising was that of the plaintiff.70

In the latter case, therefore, the signs were not used upon a place of business. In a Missouri case, equitable relief was granted to a brewing company in the use of white muslin signs of peculiar size and lettering which had been distributed both by the plaintiff and the defendant brewing com

68a-Theater signs, New York Life Ins. Co. v. Orpheum Theater & Realty Co., 100 Wash. 573, 171 Pac. Rep. 534; Restaurant signs, Wright Rest. Co. v. Seattle Rest. Co., 67 Wash. 690, 122 Pac. Rep. 348; Transfer and Baggage Com

pany signs, O. K. Bus & Baggage Co. v. O. K. Transfer & Storage Co., 58 Okla. 637, 160 Pac. Rep. 455.

69-Walker v. Alley, 13 Grant Up. Can. Ch. 366.

70-Johnson v. Hitchcock, 3 N. Y. Supp. 680.