#### William H. Swift *et al.*plaintiffs and appellants, *vs.*James R. Dey, defendant and respondent.

1. The principle of all the cases of trade-marks is, that if persons of ordinary-understanding purchasing the article would he placed on their guard, and would be led to inquire, whether they were being deceived by the article they were pur-chasing, that fact is sufficient for the court to refuse its interference.

2. For the purpose of sustaining a motion to punish for a contempt in violating an injunction as to trade-marks, it should appear clearly that the ordinary mass of customers, paying that attention which such persons usually do in purchasing, would be easily deceived by the label used by the defendant.

(Before Robertson, Oh. J., and Garvín and McCunn, JJ.)

Heard February 11,1865;

decided May 27, 1865.

In this case the controversy is in regard to a trade-mark on match boxes. The plaintiff obtained an injunction pending the suit against the defendant, and after the injunction was served the defendant changed his trade-mark materially, and continued his business with the new label.

The plaintiff believing, notwithstanding the change, that the use of the new label was an infringement on his mark, moved the court to punish for contempt. The motion was denied at special term, by Robertson, Oh. J. and from that denial this appeal is taken.

The following ooinion was given at special term:

*612Robertson, Oh. J. The only practical principle in relation to the law of what is called trade marks, apparently settled in the case of *Partridge*v. *Menck,*(2 *Sandf. Ch.*622; *S. C.*2 *Barb. Ch.*101; 1 *How. App. Cas.*547,) is that upon which the leading opinion in the court of last resort places its decision, which is, that the possessor of a trade mark, which contains a misrepresentation calculated to impose on the community, is entitled to no protection. The same principle was subsequently applied by this court in the case of *Fetridge*v. Wells, (4 *Abb. Pr.*144.) The learned chancellor and vice-chancellor, in the first case referred .to, decided by ocular inspection that there, was a perceptible difference between the labels in controversy, which was enough to put purchasers on their guard, and one opinion in the Court of Appeals held nearly the same language with a very slight distinction as to the degree of the differences. Such a difference, it is evident, must be in all cases a question of fact, unless it is so palpable as not to be susceptible of being overlooked on the most casual glance. It is much more easy, of course, in any case to recognize a difference, however minute, after it is pointed out, than to discover it by the ordinary inspection bestowed by purchasers. It would hardly be a fair test of a counterfeit that, after its errors or deviations from the original were known, it could not be mistaken for it. ' The proper question should be, not differences, but points of resemblance ; not the utmost vigilance of purchasers, but ordinary observation. The value of the goods to be sold, and the intelligence of the persons dealing in and consuming them, besides other circumstances, are also to be taken into account in determining the adaptability of a simulated trade-mark to deceive purchasers. It is eminently, therefore, a question of fact, to be submitted to the practical experience of a jury, whether, in a particular case, a resemblance was likely to deceive the community. There is no article of more general consumption, less value, or more frequently bought by ignorant or careless purchasers, than friction matches—none, perhaps, where their degrees of excellence are more widely apart. In such a case, the general ap*613pearance of whatever is adopted as a trade-mark must control; because it is the unwary, and not the wary, who are to be protected, as most likely to be taken in by its counterfeit.

The simulation in this case consists in the use of the same words with similar devices to those employed by the plaintiffs Other words, it is true, are also employed, marking a distinction if observed ; but they are not so prominent and striking as to control or modify the general impression produced by the general appearance. In the cases of *Coffeen*v. *Brunton,*(4 *McLean,*517,) and the *Amoskeag Manufacturing Company*v. *Spear,*(2 *Sandf.*599,) the names of two labels were entirely different, yet the defendant was enjoined from using similar labels. In the latter case, the chief justice (Duer) thought that mere change of words should have ho effect, not only because, from their position, they “ might escape the attention of the purchaser,” but even if seen and read might not alter the impression “the general resemblance of the matches was calculated to produce.” And in the former, Judge McLean makes such resemblance of the language in the body of the label and printed directions for the use of the article, as to make it appear to be the same, the test of the wrong done. With the exception of the place of manufacture and the manufacturers’ names in this case, the distinctive printed words are small, not noticeable, except by close scrutiny, and not apt to be remembered, unless carefully conned over, or committed to memory. Whereas, the lozenge shaped borders or frames enclosing the words “ Parlor Match,” as well as the design or strip subdivided into compartments, on which the word “ State ” is printed in both, very nearly resemble each other, and can only be distinguished by minute comparison. The word “ Diamond ” is also printed on both, in large type. The most striking features in both being, then, the words “ Parlor Match,” enclosed within the lozenge before mentioned^ the word “ State,” the design or strip on which it is printed, and the word “ Diamond ” in large type, they most readily impress themselves on the minds of, and are remembered by casual purchasers.

*614There is hardly sufficient affirmative evidence before me to rehut the evidence of the defendant, as to the use of the words *“*Parlor Match,” to designate matches having no sulphur, prior to the plaintiffs’ employment of them. But even if there was, they seem to indicate sufficiently the quality or place of using the matches, instead of their origin, to bring them within the rule laid down in *Corwin*v. *Daly,*(7 *Bosw.*222,) and cases cited therein, and therefore not proper subjects to have their use prohibited.

Besides any inferences to be drawn from the appearance of the labels, there is positive testimony of the attempted resemblance being successful in deceiving; some persons—a circumstance taken into consideration in the *Amoskeag Manuf. Co. v. Spear, (ubi sup.)*in determining an adaptability to that purpose. The use of the word *“*Diamond,” or *“*Diamond State,” seems to have been adopted first by the plaintiffs as part of a trade-mark, and, as they do not indicate any' thing respecting the quality or use of the article, are entitled to he retained for their exclusive use.

The patent taken out by the' author of the design of the label in this case, whereof the plaintiffs are assignees, cannot affect the jurisdiction of this court to protect their right to use such design to designate the wares sold by them, against the use by others of similar designs to designate wares sold by the latter. If they had actually bdught their labels from the plaintiffs, such purchase would give them no authority to employ them to pass off their matches as those of the plaintiffs. A patented design may be adopted as a trade-mark by consent of the patentee, and thereby its use by others for the same purpose prevented. There is no rule, however, which makes the test of the infringement of such rights the same in both cases. The defendants may be liable in both the federal and state courts ; in the former for imitating the design, in the latter for passing off, by means of such design, spurious wares as being the plaintiffs’, and the cause of. action would clearly clearly not he the same.

The injunction must, therefore, be continued against the *615employment by the defendants of the words “Parlor.Match,” inclosed in a lozenge shaped frame or design, similar to that in the label of the plaintiffs, in any label used by them in the sale of matches ; and also of the word “ Diamond,” or the words “ Diamond State,” in any label used to designate such matches, and of any strip or border on their labels similar to that on which such word “ State ” is printed in the labels of the plaintiffs ; and from selling any matches with labels having such prohibited insignia of ownership thereon. The costs of motion, fixed at ten dollars, are to abide the event of the action.

*H.*White, for the appellant.

*G. Jones,*for the respondent.

By the Court,

McOunu, J.

In order to enable the court to determine the question understandingly, the original label of the plaintiff and the one used by the defendant are presented in the papers, so that an ocular demonstration might be entered into, and I am satisfied, from a careful inspection of both labels, that there is not the slightest resemblance between them. In the case of *Partridge*v. *Menck,*(2 *Sandf. Ch.*622,) the chancellor and vice-chancellor held, that if the difference in the label was so slight as to put purchasers on their guard, or prompt an inquiry in their minds, an injunction could not be maintained.

I cannot believe that the second labél used by the defendant was meant by him to be an invasion of the plaintiff’s trademark, or intended to mislead or deceive ;- besides-, I am satisfied, from an inspection of the two labels, that the most ordinary mind, seeking to purchase the matches of the plaintiff, would see, at a glance, that the defendant’s label was not intended to deceive them in purchasing the article. The great principle laid down, and applied in all the cases of trademarks is, that if persons of ordinary understanding purchasing the article would be placed on their guard, and would be led to inquire whether they were being deceived by the article they *616were purchasing, that fact is sufficient for the court to refuse its interference.

This is the doctrine established by Lord Chancellor Cottenham, in the case of *Spotswood*v. *Clark,*(10 *London Jur. R.*1043,) and by the chancellor of this state, in the case of *Partridge*v. *Menck,*cited above: and by still later decisions it remains the established law of this state.

Eor the purpose of sustaining the motion for contempt, it should have appeared clearly that the ordinary mass of customers, paying that attention which persons usually do in buying the article in question, would be easily deceived. This not being the case in this instance, the order denying the motion for contempt was correct, and should be affirmed, with costs.