Kenny v. Martin Gillet & Co.

Irving, J., delivered the opinion of the Court. The appellees, Martin G-ille.t & Co., tea dealers, in Baltimore City, obtained a decree for injunction in the Circuit Court of Baltimore City, restraining the appellant, Cornelius D. Kenny, from using certain cylindrical bags containing tea for sale, with certain labels, with devices upon them, which tea was called Hi-Hi,” because the Court held appellant’s bags, devices and labels to be fraudulent simulations of the appellee’s trade-mark, bags and labels, for the sale of their iCHeNo” tea. Erom that decree this is an appeal. The conclusion we have reached renders it unnecessary for us to decide whether appellant has simulated the appellees’ trade-mark; for we are clearly •of opinion that though he may have done so, as the Circuit Court of Baltimore decided he had done, but about which we express no opinion, still the appellees are not entitled to the relief asked for, because their trade-mark is accompanied with statements in their label so plainly calculated to deceive and mislead purchasers, that they cannot rightfully claim equitable interference.

The statements made upon the label may, possibly, not have been designed to be false and fraudulent, yet the language employed cannot be construed otherwise than as asserting, concerning the tea exposed for sale, that which is, in fact, deceptive and misleading. Courts of equity never interfere in cases of this ⁵⁷⁶ kind, by way of injunction, where there is clear misrepresentation by the plaintiff in his trade-mark and labels. This Court has several times so decided in most unequivocal terms. Careful inspection and examination of the appellees’ trade-mark and label leave no doubt upon our minds that any one who is not informed of the true state of facts would be deceived thereby.

The tea is put up in cylindrical packages, twisted at the top, and tied securely with a small string. Three concentric blue circles surround the twisted part as a common centre. At the top and bottom of the bag or package Chinese characters encircle the bag which, translated into English, mean “Martin Gillet & Co’s genuine £ He-No’ tea.” Upon the front of the package appears the following inscription, viz., “Standard He-No.” “Trademark registered 3 8⁷⁵. ” Martin Gillet & Company, importers, guarantee this t'ea pure and free from all adulteration. On the reverse part of the package is printed this statement: “Kind the Chinese drink.” On a blue band passing around the bag from top to bottom, is this further representation: “The importers of He-No Tea are Martin Gillet & Co., a house established in 1811 by Martin Gillet.

The present members of the firm are his descendants in the third generation. He-No Tea is the successful result of their experience;” andón this band is the further statement : “This band of any color is our trade-mark.” From these statements the casual reader of them would certainly understand that there was a kind of tea in China called “He-No” tea, and that this tea was the kind the Chinese drank; and that this very tea the appellees imported direct from China, and was by them guaranteed to be the pure and genuine article. We were so impressed, and believed until we knew the contrary; and we do not think the most scrutinizing ⁵⁷⁷ reader would ever imagine it to be a tea compounded of several varieties in tbe City of Baltimore, as the evidence clearly and undeniably shows it to be prepared in the house of the appellees; and that it was not imported, as sold, from China. The Circuit Court decided that the representations were not necessarily fraudulent and harmfully misleading; and therefore granted the relief ashed for.

That Court thought, that because the component parts of the preparation came from China, and were purified by the appellees’ secret process, and was sold as pure tea, no matter if there was no variety in China known as He-Eo, (as there is not) the representation was only that it was a pure tea such as the Chinese drink; that is, unadulterated, as contra-distinguished from ordinary tea which is adulterated before exportation from China, and which the Chinese do not drink. It is not necessary that the appellees should have deliberately designed to deceive, (and in this case they may not have so intended ;) yet if what they have said in their label is naturally calculated to deceive, and must and does inevitably deceive ; then the falsehood which their label conveys must bring to them the same -consequences as.if wilfully uttered. Knowingthe facts, the inscriptions maybe understood truthfully, perhaps, but ignorant of them, we cannot think any one would understand from what is said on the packages, that the tea they contain^was other than a particular kind of tea grown in China and drunk by the Chinese people. Eo one certainly would suspect that it was a tea compounded in Baltimore of three different brands of tea ; and if it were guessed to be a mixture, still it would be thought to be brought in that form from China.

Indeed the statement, that it is the kind the Chinese drink, of necessity implies, that the particular article thus described was the drink of the Chinese, and most ⁵⁷⁸ generally used by them. Again, by calling it “Standard He-No” tea there is a plain implication that there are various grades of it, and that this is the “'Standard’ ’ or best article of the kind. The guaranty endorsed implies that it is “Standard and purchasers without doubt are misled into buying an article different from what they expected to get, and suppose, in error, that they have gotten. The encasing the tea in tin foil, or the lining the bags therewith, is well calculated to aid the impression conveyed by the labels, that it is directly brought from China in those bags; as all imported teas are brought in boxes lined with tin foil, the better, we suppose, to protect on the sea voyage.

The attempted explanation of what is intended by the expressions employed upon the labels and in the guaranty, and accepted by the Court below, does not, in our view, relieve them from their deceptive and misleading character, and certain effect, which works a fraud; security against which is intended to he provided by the rule of non-intervention by Courts in such case. We cannot doubt in this case, from the proof, that the appellees, by some method, which is their secret, so cleanse the teas composing this mixture of most objectionable impurities, so as to sell a good article; but this cannot excuse the deceptive statements they make in their labels, nor relieve them from the consequences of the natural, and necessary import of the language employed in their labels. This case is very similar to that of Pidding vs. How, 8 Simons, 477, where the representations of the plaintiff respecting his tea on the market were held to be so deceptive as to deprive him of the right to injunction. To us it seems to be nearly, if not quite, as strong a case for the application of the rule that equity will not interfere, as the cigar case of Palmer vs. Harris, 60 Pa., ⁵⁷⁹ 156 , or Hobbs vs. Français, 19 How.

Pr., 567. The last mentioned case was one where a powder for beautifying and preserving the complexion was called “Meen Pun,” and the label was calculated to induce the belief that it was manufactured in London, and had received the j>atronage of “Her majesty the Queen.” It is certainly quite as strong a case as Manhattan Medicine Co. vs. Wood, 108 U. S., 218 , which this Court followed in Siegert vs. Abbott, 61 Md., 284 , and there cited various other cases in support of the decision then made, and from which w'e do not incline to depart. It follows from all we have said that the decree must be reversed, and the bill be dismissed. (Decided 3d May, 1889.) Decree reversed, and bill dismissed.

Bryan, J., filed the following dissenting opinion: Martin Gillet & Co. filed a bill in equity against Kenny. The complainants alleged that they were engaged in the business of buying and selling teas; and that in the year eighteen hundred and seventy-five they placed on the market a tea of superior quality which they called “He-Ho;” that this word was the invention of the complainants, and that they had acquired the right to the exclusive use of it, and had registered it as a trade-mark in the office of the Commissioner of Patents ; and that the tea prepared and sold by them under this name acquired a high degree of publicfavor, i>and became known throughout the United States as their preparation; and that the packages, fnarks, symbols and other indicia used in connexion with the name of “He~Uo,” became well known within the same limits, and served to identify the tea, and to distinguish it from tea prepared by other persons. It was ⁵⁸⁰ fxirther alleged that Kenny, the respondent, for the purpose of appropriating to his own benefit the fruits of the enterprize of the complainants, had prepared a tea closely resembling theirs, and had also simulated and imitated their trade-mark and their signs, devices and symbols, and by the use of these simulations and imitations had caused customers and dealers to believe that his tea was, in fact, the He-No teaj)repared by the complainants. The hill prayed for an injunction and an account.

A preliminary injunction was granted, which on final hearing was made perpetual and an account decreed. He-No tea is put up in cylindrical paper packages of different sizes; containing respectively a pound, half a pound, and a quarter of a pound. These packages have at the top and bottom Chinese letters or characters; and on the front have these words printed in blue: “Standard He-No Tea, Trade-Mark, reg’std 18⁷⁸ — Martin Gillet & Co., importers, guarantee this tea pure andfree from all adulteration.” The packages of Kenny are of the same size, have different Chinese letters at the top and bottom, and in front hear these words of a deeper blue than Gillet’s: “Standard Hi-Hi Tea, Trade Mark applied for. C. D. Kenny, the packer, guarantees this tea free from all