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MATTERS OF PRACTICE AND EVIDENCE.

§ 202. Matters of which courts will take judicial notice.This subject is of practical importance in the trial of trademark causes. The courts of the United States will take judicial notice of the statutes of the several states,1 and of the decisions of the state courts upon the constitutionality of such statutes.2 All courts will take judicial notice of treaties or conventions with a foreign government or power. It has been expressly held that judicial notice will be taken of the convention concerning trademarks, of April 16, 1869, between the United States and France. As in other classes of cases, the courts take judicial notice of political facts, legal facts, official facts, public history, natural history and the vernacular language, and all matters of common and ordinary knowledge, including matters of science.a

§ 203. Expert and other evidence on the question of infringement.-Inspection by the court is the main, and indeed the final test of the alleged resemblance in trademark cases. The courts, as a rule, give little weight to expert testimony on questions of similitude," and the greatest weight to direct proof of actual deception. Mr. Justice Kekewich observing that "if

1-In re Jordan, 49 Fed. Rep. 238; Gormley v. Bunyan, 138 U. S. 623; 34 L. Ed. 1086.

2-Knox v. Columbia Liberty Iron Co., 42 Fed. Rep. 378.

3-Ex parte McCabe, 46 Fed. Rep. 363.

4-La Croix v. Sarrazzin, 15 Fed. Rep. 489.

4a-Judicial notice was taken of the existence of the "Boy Scouts" as a matter of common knowledge in re Excelsior Shoe Co., 40 App. D. C. 480.

5-Von Mumm v. Frash, 56 Fed. Pep. 830-838; Filley v. Fassett, 44 Mo. 173; Gail v. Wackerbarth, 28 Fed. Rep. 286; Drummond v. Addison-Tinsley Tob. Co., 52 Mo. App. 10; Collins Chemical Co. v. Capital City Mfg. Co., 42 Fed. Rep. 64;

Liggett & Myer Tob. Co. v. Hynes, 20 Fed. Rep. 883; Joseph Dixon Crucible Co. v. Benham, 4 Fed. Rep. 527.

6-Cook v. Starkweather, 13 Abb. Pr. N. S. 392; Popham v. Wilcox, 66 N. Y. 69; In re Jelley, Son & Jones, 51 L. J. Ch. 639; Radam v. Destroyer Co., 81 Texas, 122; 16 S. W. Rep. 990; P. Lorillard Co. v. Peper, 86 Fed. Rep. 956; Monopol Tobacco Works v. Genisor, 66 N. Y. Supp. 155. Lord Esher, Master of the Rolls, has tersely said: "If

a man was to come and tell me that a horse was like a cat, he might swear it, and you might get fifty persons to swear it, but I should not act on such evidence, because it is pure nonsense." In re Christiansen, 3 R. P. C. 54-61.

one case of actual deception is proved there is no more to be said."' ca

Testimony of skilled witnesses to the effect that in their opinion the public is likely to be deceived by the similarity of two trademarks, although valuable in a doubtful case, is not of itself sufficient evidence of infringement. When technical trade or scientific questions are involved, however, expert evidence is highly desirable," and especially when the probability of the ultimate consumer being deceived by the defendant's goods rests on the character and habits of the people who use the product,10 or the manner in which the goods are usually sold or exhibited by the retailer.11

Where the defendant was charged with refilling "A. V. H." gin bottles, evidence of an expert gauger showing a variance in alcoholic proof between the genuine gin and that sold by defendant in the trademarked packages, was admitted.12

Where the complainant's case rested on the testimony of hired witnesses that they had drunk bitters sold them by the defendant in his saloon as being complainant's bitters and that said bitters were imitation, the bill was dismissed on the conflicting testimony offered in defense, the court remarking that hired witnesses are not disinterested and their testimony for that reason should be scrutinized with unusual caution.13 In dismissing a bill in which a defendant was charged with refilling genuine 6a-Liebig's Extract of Meat Co.

v. Chemists' Co-op. Society, 13 R. P. C. 635, 644. To the same effect, Humphries v. Taylor Drug Co., 5 R. P. C. 687, 689; Morley v. Macky, Logan & Caldwell, Ltd., N. Z. R. L. 1921, 1001.

7-Celluloid Mfg. Co. v. Read, 47 Fed. Rep. 712-716. The use of such evidence in trademark and unfair competition cases distinguished. Tatem & Co., Ltd., v. Gaumont Co., Ltd., 34 R. P. C. 181, 189.

8-Columbia Mill Co. v. Alcorn, 40 Fed. Rep. 676; Cope v. Evans, L. R. 18 Eq. 138. But in one case such evidence was admitted and approved (Williams v. Brooks, 50 Conn. 278; 47 Am. Rep. 642), while in another its propriety was questioned (Radam v. Capital Microbe Destroyer Co., 81 Texas, 122; 26 Am. St. Rep. 783).

9-Mitchell v. Henry, L. R. 15 Ch. D. 181; 43 L. T. 186; Cartmell,

227; In re Worthington, 14 Ch. D. 8; 49 L. J. Ch. 646; Cartmell, 351; In re Christiansen, 3 R. P. C. 54; Cartmell, 95; Gorham Co. v. White, 14 Wall. 511; 20 L. Ed. 731; Williams v. Brooks. 50 Conn. 278; Price & Steuart, 654; Celluloid Mfg. Co. v. Read, 47 Fed. Rep. 712-716.

10-Drummond v. Addison-Tinsley Tob. Co., 52 Mo. App. 10; Sperry v. Percival Milling Co., 81 Cal. 252-260.

11—In re Worthington, L. R. 14 Ch. D. 8.

12-Van Hoboken v. Mohns & Kaltenbach, 112 Fed. Rep. 528.

13-Hostetter Co. v. Bower, 74 Fed. Rep. 235. The quantity of proof adduced, and its weight, neeessarily must be fixed by the attendant circumstances of each case. Thus, in one case it was held that a single sale of the infringing article by the defendant's clerk was insufficient to warrant injune

packages, where the evidence was conflicting, Judge Coxe remarked that "the burden is strongly upon the complainant to prove fraud by a fair preponderance of evidence." 14

Proof of actual suggestions by defendant's salesmen that defendant's product can be sold for less money than plaintiff's and that the ordinary buyer will not be able to tell them apart, makes a typical case of unfair competition.14a

Where proof is offered to show that the complainant's business has increased steadily during the period of the alleged unfair competition, and there is no evidence of injury, such facts will be considered in determining the complainant's right to relief.15 Where the only evidence of deception came from purchasers who were not misled, it was held that the facts constituted a case of substitution on the part of the retailer, and not unfair competition.10

Where "the evidence does not warrant a finding that the public has cared anything about the source of plaintiff's goods, or has been deceived by believing that the merchandise of defend

tion. Leahy v. Glover, 10 R. P. C. 141. And in a patent case it was held that a single sale was not per se an infringement. Byam v. Bullard, 1 Curt. 100; Fed. Case No. 2262. But evidence of a single sale "may, in connection with other proof, be persuasive evidence of other sales, and convincing proof of an intention to sell whenever the opportunity of doing so without detection is presented." Lacombe, J., in Lever Bros. (Ltd.) v. Pasfield, 88 Fed. Rep. 484. Citing De Florez v. Raynolds, 14 Blatchf. 505. "That fraud may not be presumed does not imply that it may not be proved by circumstances, since it may be apparent from the intrinsic nature and subject of the transaction itself. In re Walden Bros. Clothing Co., 199 Fed. Rep. 315; Lumpkin

v. Foley, 204 Fed. Rep. 372, 122 C. C. A. 542. Direct evidence is not necessary to prove fraud, provided the circumstances relied on are convincing, and inconsistent with a presumption of honesty. Crowder v. Allen-West Commission Co., 213 Fed. Rep. 177; 129 C. C. A. 521; Goodman v. Curtis, 174 Fed. Rep. 644; 98 C. C. A. 398." Toulmin, J., In re Brincat, 233 Fed. Rep. 811, 816.

14-Hostetter Co. v. Comerford, 97 Fed. Rep. 585.

14a-Lennox Furnace Co. v. Wrot Iron Heater Co., (Iowa) 160 N. W. Rep. 356.

15-Stevens Linen Works V. William & John Don & Co., 121 Fed. Rep. 171.

16-Bickmore Gall Cure Co. v. Karns Mfg. Co., 126 Fed. Rep. 573.

ant's manufacture is that of the plaintiff" there is no unfair competition.16a

Expert testimony on other issues.--While the question of the likelihood of the defendant's acts to cause deception is one on which opinion evidence is usually inadmissible," it is competent to prove by witnesses familiar with the trade the customs of the trade, the class of customers, and any other matters of fact which may be useful in aiding the court to reach an opinion on the question of probability of deception.18

Evidence of the meanings of words.-A witness familiar with the trade may testify to the catch-word or other peculiar designation by which an article is known to the trade,19 or to con20 and of course other witnesses similarly qualified may testify to the contrary.21

sumers;

The rule has been thus expressed. "It is not the trade meaning, nor even the dictionary meaning, of a term or expression, which governs in unfair competition cases. It is the meaning which, under the condition and circumstances usually attending sales, would be conveyed to the ordinary purchaser of the

16a-Manton, J., in Stanley Works v. Twisted Wire & Steel Co., 256 Fed. Rep. 98, C. C. A. 2

17-Payton v. Snelling, 17 R. P. C. 635; Alaska Packers' Assn. v. Crooks & Co., 18 R. P. C. 135; Hennessy & Co. v. Dompe, 19 R. P. C. 333, 339; Hennessy & Co. v. Keating, 25 R. P. C. 125, 361. In Mitchell v. Henry, L. R. 15 Ch. D. 181, 191, 195, 196 the Court of Appeal called for expert witnesses of its own motion, declaring it "essentially a question for experts," whether a mottled thread of three colors was likely to be confused with plaintiff's mottled thread of two colors. Each of the three separate opinions of James, Cotton and Thesiger, L. J. J., demands expert testi

mony. The court does not surrender to any witness its judgment as to the exhibits. Glenton & Mitchell v. Ceylon Tea Co., So. African L. R. (Witwatersrand Div.) 1918, 118.

18-Payton v. Snelling, (1901) A.' C. 308; Bourne v. Swan & Edgar, (1903) 1 Ch. 211; Royal Ins. Co. v. Midland Ins. Co., 25 R. P. C. 728; St. Mungo Co. v. Viper Co., 27 R. P. C. 420.

19-Pollen v. LeRoy, 30 N. Y. 549-561.

20-Johnson & Johnson v. Bauer & Black, 27 C. C. A. 374; 82 Fed. Rep. 662; Read v. Richardson, 45 L. T. N. S. 54; Cox, Manual, No. 698.

21-Wilkinson v. Greely, Fed. Case No. 17671; 1 Curt, 63.

article in question. In this respect, the law is the same as in cases of misbranding or mislabeling."

Evidence of falling off of sales.-Testimony of witness properly qualified is admissible to show that owing to the defendant's infringement, plaintiff's sales have fallen off; this is true both at law 22 and in equity.23 In the action at law it is competent for the plaintiff's proof to show that his sales fell off concurrently with the defendant's infringement, from which the jury may infer that the falling off was the result of the defendant's acts.24

Evidence of defendant's good faith.-The relief resting upon the charge of fraud, the fact that a defendant has transacted his alleged infringement openly, by extensive advertising of his package will be considered as bearing on the question of intent, where a technical trademark is not involved.25

§ 204. Successive changes, approach to plaintiff's dress.— Where the defendant is shown to have gradually adopted labels, forms of package and, other distinctive features of the plaintiff's goods, from a beginning in which his goods bore no resemblance to those of the plaintiff, that fact is strong evidence of fraudulent motive.26 Similarly, the defendant's first infringement may be so flagrant that copying is manifest, and a later changed and modified label may show he was anticipating prosecution.27

§ 205. Exhibits. It is particularly desirable that the conflicting marks be at all times easily accessible to the court, and that they be filed as exhibits whenever possible. The practice of the courts of several states does not permit exhibits, other than documentary, to be filed, as no provision has been made.

21a-Stone, J., in Myles Standish Mfg. Co. v. Champion Spark Plug Co., 282 Fed. Rep. 961, 958, C. C. A. 8. To the same effect, Royal Baking Powder Co. v. Emerson, 270 Fed. Rep. 429, 435, C. C. A. S.

22 Shaw v. Pilling, 175 Pa. St. 78-84; 34 Atl. Rep. 446.

23-Hostetter v. Vowinkle, Fed.

Case, No. 6714; 1 Dill. 329; Cox,
Manual, No. 207.

24-Shaw v. Pilling, supra.
25-T. B. Dunn Co. v. The Trix
Mfg. Co., 63 N. Y. Supp. 33.

26-Carmel Wine Co. v. Palestine Hebrew Wine Co., 161 Fed. Rep. 654.

27-Franck v. Frank Chicory Co., 95 Fed. Rep. 818.

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