The evening telegraph. [volume] (Philadelphia [Pa.]) 1864-1918, 1870-07-30
LEGAL INTELLIGENCE.
Trade -marks- What Amonnts to a Sale of 1t
lmnOrtanf 0eciniOn

Trade-mnrks- What Amonpts to a Sale of It
An Important Decision
Court of Common Pleas-Judge Parson
In the case OF GILES VS.. Hail. involving the right
to make al and sell certain preparation @ for the hair
was fully reported In our columns upon argument
last week, his Honor Judge Paxson this morning
rendered decision which will be found highly inte
resting and important TO business men.
1he difficulty between the parties ia thus briefly
Prior to the 18th day OF jane 1865 the plaintiff
and defendant, Reuben Z; Hall were in partner
business OF making and selling q certain prepara-
tion called "Hall's Vegetable Gillian Hair Renewer"
that Of the defendant, Hall, three-eighths On the
Gay and year aforesaid the sald Hall, for the con-
sdeIation OF $50 600, sold to the plaintiff all his the
said Halls, interest in said firm, in the secret of
said preparation IN the right to make and vend the
for in the future sales thereof.
The agreement for the sale referred to is in
writing, and the said Hall covenants therein inter
aHa with the said piantn:-
First That he win not use or allow his name to be
used IN the preparation OF any similar articles.
Second That he Will not engage in the manufac-
ture thereof.
Third. That he will not impart to any one his
secret or recipe for the manufacture thereof.
Fourth. That he WI not engage in the manufac-
ture of any al tlcle similar TO thls.
Fifth That he will all wv the plaintiff the Free un-
interrupted, and exclusive use or his name In the
manufacture and sale OF SAID preparation.
After which cove nants follows this stipulation -
''And In ease shall not carry out and follow the
true meaning aud intent of the above covenants or
shall be guilty of breaking or violating the same or
any one Of them, that viii forfeit TO the SAID Gues
HIS beIrs executors administrators, aud assigns the
sum of thirty Thousand dollars in full Satisfaction
and as liquidated damages for my non-funiment OF
said stipulation covenant and agreement, aud either
The plaintiff paid the consideration money
$50 GOO, TO Mr.. Hall, and has greatly extended the
business by liberal expenditure Of money, until L
has become of great value 1t is alleged, and not
denied, that the profits thereof now amount to
100000 or $50 900 per annum. rhe said business is
ried on at Nashua. N. Ii. The defendant Hall IN
connection with defendant Kendall F. Worcester,
has recently commenced the manufacture OF the
| said "Halls Vegetable Sicilian Hair Renewer" in
TINS CITY, The name OF the firm is r. p. Hail & Co,
| and they indorsc their bottles with a trademark
which is palpaole Imitation OF the one nov in use
| by plaintiff.
The attendants answer that at the time of the sald
sale there was side agreement that after the
plant had realized 500 900, the whole OF Halls in-
terest should revert 50 nlln and that plaintiff had
not produced, it being said that it left
in plaintiffs tireproof for safe keeping and was still
In plaintiffs possession all OF which denied py
| plaiDtlf
peculiar state OF affairs, the Judge sums up In the
| following terms:-
The true rule, suggested by both authority and
reason, would appear To be-
! First. When person has bound himself in a cer-
tain form to do, or not to do, certain thing, the
Court will look at the language OF the conract-the
visions-the subject Of tine contract and its sur
roundings-the ease or dlfficulty OF measuring tue
breach Of damages and the form stipulatedSand
from the whole decide whether equity aud good
science require that said sum shall be treated as
liquidated damages, or only as penalty.
| Second When man bound hiRlsslf by his
cou,nant to do, or not 10 do certain thing aud has
fixed a certain sum which he will pay upon breach
VI his covenant he is not aOsolved thereby from q
specific performance of his agreement; and when
TIE justice OF the requires such specific per-
formance, equity will enforce it,
Third. In such case the party injured Is not bound
to luTsue his remedy at law by suit for the stpu.
| lated sum, II, under all the circumstances OF the
case. it will not AFFORD him full, complete, and ade-
quate remedy.
bat to apply these principles to the case
before us The defendant Hall has, for price
| uh ifh at tO
entire interest in the manufacture aud sale " these
preparations, and to the trademark used there0a.
lie has covenanted with plaintf not to manufacture
or sell the same to use his for that purpose,
and not permit others to do SO; and to make tins
himself to forfeit the SUM OF $4,000 as lquidated
damages for any breach of said covenant. He now
says, In effect, to the plaintiff, / have broken my
agreement in it's most material part, and propose
to continue to do so. have not paid, nor do pro-
pose to pay the $50 600 damages unless compelled TO
DO SO by due course OF law: bat / hold that Can
break my covenants with impunity because have
bound myself In the sum OF $50 900 not to 40 The
pIaII tiff on the other hand, claims specific per-
fOrmance. He contends that an action at law for
the damages would not afford him adequate relief;
vastly increased the business and that 900 now,
even If paid by defendant, wodli b. no
compensation for the ruin OF business worth from
$50 GOO to s6O, 900 per annum. am OF opinion that
the paintiff is entitled TO the relief he asks. MOI
the defendant justly complain that he is held tC
compliance with his solemn covenant He has
the consideration therefor in his pocket, and both
honesty and good faith require that agreemen,
entered into under such circumstances, with nc
pretense of fraud or imposition upon him, should be
enforced in accordance with the understanding o
the parties at the time 1t was made.
| We will not enjoin the defendants from making
preparations Tor the hair, or from making anything
anything else that is not In violation OF law, and
which the public choose to buy but we will enj Dir
them from making and selling any preparations a:
and for the preparations specified in plaiatfs bill
and from using the name OF Hail, or r. p. Hail, OF
Reuben p Hail. either sngly or in connection with
Others upon any such preparation, and from making
using any trade mark, label, or wrapper in imt
taton of those now in use by plaintiff Subject t;
these qualifications, this injunction is continued
until the further order OF the Court.