Decree of injunction to the plaintiff and the defendant
Decree for injunction to the plaintiff and the defendant.
Decree to be specific:
The decree must be reasonably specific as to acts which are prevented. Injunctions are sometimes passed in general terms such as form otherwise in any manner whatever unfairly competing with the plaintiff.
These can serve only to create a moral effect or an atmosphere in terrorum but would not, it is submitted, be enough to charge the defendant with contempt. Even without the decree the defendant is not entitled to do an illegal act.
It would seem that the decree should make it reasonably clear as to what sort of acts constituting the unfair competition or infringement are sought to be prevented. At any rate, they should be sufficiently specific to identify the particular type of acts which are sought to be prevented.
Defendant to decide how he should carry out an order:
As regards what the defendant should do in order to carry out the order of the court it is for him to decide and the court will not take the responsibility of advising him. The rule was very ably laid down by judge wood ward of new York. He said:
“It is not the province of a court of equity to aid wrongdoers; it fulfils its mission when it has restrained the commission of a wrong, leaving the wrongdoer to figure out for himself how far he can disregard the mandate of the court and the requirements of a clean conscience.
It was again stated thus in another case “while it is useful to the parties, it is not always advisable for the court to undertake to define in detail the precise limits within or without which the defendant can safely act in its completion. It is often the wiser course to lay down general rules.
Where the decree contained an explanatory phrase such as direction to defendant to insert a notice in their circulars and advertisements substantially in the from used by the court and an application was made to the court to modify the same, Judge Knox said:
“My ingenuity at phrase making is insufficient to enable me to alight upon a legend which will at once, satisfy the rights of plaintiff and be fully protective of the commercial requirements of defendants.
That the legend which my decree directs be borne by defendants products lend itself to sales resistance must be admitted. At the same time, if the decree is to serve its purpose, the legend can hardly be less specific.
The decree may specify “not only the exact or substantial phraseology of the explanatory phrases, but the size, proportions, spacing and other details to be in printing.
Altering or repackaging plaintiff’s goods:
Where a defendant alters or repackages plaintiff’s goods and sells them under the plaintiff’s name and trademark, the decree may specify that defendant must use a statement explaining the changes made if he is to sell the goods under their original trademarks.
Colour, size, etc.
The injunction in cases affecting colour etc., should not be too drastic to prevent a fair use of them by defendant and which will have the result of creating rights in the plaintiff to which he is not entitled
The decree may provide that the defendant shall stop using the symbol altogether, unless he can use the mark in such a manner as to eliminate deception of the public, or it may state that it does not forbid, the use of the size, shape, form, colour, etc., of plaintiff’s packages or goods, provided defendant’s use does not cause deceit.
Where, a collocation of features has been copied, the injunction may restrain the use of two or more elements of the collocation, in combination, and specifically exempt the use of any one element, singly, in such a way as not to cause deception.
Injunction should issue against putting up and selling or offering for sale the particular form of package which has not been referred to in the bill and put in evidence as “Defendant’s second package”, or any other form of package which shall, by reasons of the collocation of size, shape, colours, lettering, packing and ornamentation, present a general appearance as closely resembling the complainant’s package referred to in the bill and marked in evidence, as does the said “defendant’s second package”.
This would seem to be sufficient, but since so much has been said about the impossibility of farming any decree which would prevent the sale of the package complained of, and yet not give complainant the monopoly of yellow paper for its wrappers, the following clause may be added.
This injunction shall not be construed as restraining defendant’s package, nor from using the designation “buffalo soap powder”, nor from making a powder having the appearance of complainant’s “gold dust”, nor from using a paper of a yellow colour as wrappers for its packages, provided such packages are so differentiated in general appearance from said “Complainant’s package”, that they are not calculated to deceive the ordinary purchaser.
Trademark –Phonetically dissimilar:
Appellant’s claim is that respondent is guilty of infringement of trademark “Zincovit”. Respondent’s trademark “Zincoia” is phonetically dissimilar to that of appellant. Visual impression of the said two trademarks is also different. No confusion would occur in the minds of the common consumers. Thus, the appeal was dismissed.
Trade name: family names:
In case where the decree provides for explanatory phrases to distinguish defendant’s name from that of the plaintiff some of the following explanatory phrases have been used, viz:
The decree may give the defendant choice between using his full name or, if the defendant is a corporation, the full corporate title in some designated form, or with some explanatory statements.
For example, in american tobacco co. v. Miltiades Melachrino, Inc. Melachrino and Co. sold their business to plaintiff under an agreement not to engage in a similar business for ten years.
Eleven years later, one of the sellers organised the defendant, corporation and sold cigarettes marked with his name Miltiades Melachrino as manufacturer.
The boxes used by defendant were changed from time to time, progressively advancing towards the appearance of plaintiff’s package, the name “Miltiades Melachrino” being particularly featured Held, that while, under the agreement defendant now could lawfully engage in the cigarettes business, it might not do so in such a manner as would indicate that it was the original manufacturer of plaintiff’s cigarettes, which were known as “melachrinos”.
Injunction was granted providing that defendant print its full corporate title in type no larger than indicated by the court or else add the explanatory phrase, not the original Melachrino cigarettes.
The decree may also regulate the use of words such as “the original”, “famous”, “celebrated”, etc.
Where business of both the parties is nation-wide, the relief should not be confined to any particular territory but where plaintiff’s business is confined to a particular territory, the injunction may be limited with reference to such territory.
There may be a decree granting injunction against wrongful appropriation of plaintiff’s trademark “wherever it is used by him” including those places where he may do so “in the course of normal business expansion.
Goods not capable of being easily marked for identification:
Where the goods are such as cannot be effectively or easily marked for identification (e.g., Ice-cream) the question of framing the decree becomes difficult. It can only done with reference to the packages or containers.
For example, in Philadelphia dairy products v. Quaker city ice cream Co., the decree of the court was affirmed on appeal so far as it enjoined the defendant from making use, directly or indirectly, of plaintiff’s ice cream cabinets, its cans, or any other equipment furnished by plaintiff to its dealers.
Form of injunction against unfair use of mark:
Where the defendant is to be restrained from using unfairly words of marks which he is at liberty to use provided only they are used fairly, the injunction may be in the form approved.
For some forms of injunctions see the following cases: Where the defendant has made unfair use of his own name; to restrain infringement of trade name and passing off defendant’s goods as plaintiff’s to restrain the use of the name of the place as a trade name which has become descriptive of the plaintiff’s goods.
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