Mossler v. Jacobs

Mr. Justice Waterman delivered the opinion oe the Court.

This was an action to restrain the use of the words “ Six Big Tailors ” in such a way as to infringe upon the rights of the complainants under their trade name of “ Six Little Tailors.”

Flo person is entitled to represent his wares as being the goods of another man, or articles of his manufacture as having been made by another, and no person is by the law permitted to use any mark, sign, symbol, name, device or other means, whereby he makes a false representation, or deceives as to his own goods, or as to the goods of another, or whereby, without himself making a false representation to a buyer who purchases fropi him, he enables such buyer to tell a lie or to make an untrue representation to somebody else who is the ultimate customer. FTor is it a defense to an action, the gist of which is a charge of deception, to reply that the words uttered by the defendant were the literal truth, for the truth may be stated in a way likely to, and that does, deceive. What is required is, that a party shall not conduct his business so that by what he says or does, he deceives customers to their injury, or to that of a competitor.

. A man may not use his own name for the purpose of deception, and such fraudulent use will be enjoined. Fair competition in business is legitimate and promotes the public good, but an unfair appropriation of another’s business by using his name or trade mark, or an imitation thereof calculated to deceive the public, is not permissible and will be enjoined by a court of equity. Hazelton Boiler Co. v. Hazelton Tripod Boiler Co., 40 Ill. App. 430 ; Same, 142 Ill. 509 ; Reddaway v. Banhan, House of Lords, opinion filed March 26, 1896; Celluloid Co. v. Cellonite Co., 32 Fed. Rep. 97.

While the court is not bound to interfere where ordinary attention will enable the purchasers to discriminate between the trade-marks used on the goods manufactured by different parties, nevertheless, the character of the article, the use to which it is put, and the kind of people who are likely to ask for it, as well as the manner in which it is probable it will be ordered, must not be lost sight of. Popham v. Cole, 66 N. Y. 69 ; 23 Am. Bep. 22, and cases there cited; Morgan’s Sons v. Troxell, 89 N. Y. 292 ; 42 Am. Rep. 294 ; Manufacturing Co. v. Trainer, 101 U. S. 51 ; Ball v. Siegel, 116 Ill. 137 ; Reed v. Richardson, 45 L. T. (N. S.) 54; Beard v. Turner, 13 Id. 746; Leidesdorf v. Flint, 7 N. W. Rep. 174 ; Eggers v. Hink, 63 Cal. 445 ; Morgan’s Sons Co. v. Troxell, 23 Hun, 932 ; Ewing v. Johnston, L. R. 18, Ch. Div. 612; Apollinaris Co. v. Scherer, 27 Fed. Rep. 22; N. K. Fairbank Co. v. Swift & Co., 64 Ill. App. 477 .

We regard the words “ Six Big Tailors ” as so similar to the complainants’ trade name of “ Six Little Tailors ’’ that it is calculated to deceive the unwary; that confusion is likely to arise therefrom, and thus that it is probable purchasers may be entrapped into buying what they did not. intend; that is, goods of appellants, when intending to buy of complainants.

We can hardly think, in view of 'the testimony, that appellants chose the name “Six Big Tailors” without first considering the publicity and value which complainants’ trade name had acquired, and with the thought that by the adoption of a very similar name they could avail themselves of the reputation of a rival. We are the more inclined to this view because of the fact that while the complainants’ firm is composed of six tailors, appellants’ is made up of two only. Appellants appear to have been guilty of unfair competition in business.

While it does not appear that thus far any one has been deceived, we do not think that complainants are obliged to wait until injury has actually occurred; it is sufficient that it is probable customers would be misled.

The tendency to abbreviate is such that nearly all firms and corporations are ordinarily spoken of, and their names remembered by, a portion only of their true title.

Complainants’ name is quite likely to be carried in mind as six tailors.

Even if appellants’ firm were composed of six “ big ”. tailors it would have no r-ight to publish such fact for the purpose of the deception of the public and injury to complainants. Van Auken Co. v. Van Auken Steam Specialty Co., 57 Ill. App. 240 .

Appellants insist that some of the advertisements put forth by complainants are manifestly untrue, and that therefore they should be denied relief, invoking the maxim, “ he ■who comes into equity must come with clean hands.” It does not appear that the advertisements mentioned had or have any connection with appellants or their business, or the controversy with complainants.

The maxim, behind which appellants seek to shield themselves, considered as a general rule controlling the administration of equitable relief in particular controversies, is confined to misconduct in regard to, or at all events connected with, the matter in litigation, so that it has in some measure affected the equitable relations subsisting between the two parties, and arising out of the transaction; it does not extend to any misconduct, however gross, which is unconnected with the matter in litigation, and with which the opposite party has no concern. When a court of equity is appealed to for relief it will not go outside of the subject-matter of the controversy, and make its interference to depend upon the character and conduct of the moving party, in no way affecting the equitable right which he. asserts against the defendant, or the relief which he demands. Pomeroy’s Equity Jurisprudence, Sec. 399.

There is said' to have been a suit upon a promissory note, in which the defendants’ counsel, in addressing the jurors, told them that the plaintiff ought not to recover because he was a horse thief; at this point the court interfered, refusing to permit such argument to be made.

The decree of the Circuit Court is affirmed.