The inventor of an unpatented medicine has no exclusive right to make and vend the same; but, if others make and vend it, they have no right to vend it as the manufacture of the inventor, nor to adopt his label or trade-mark, nor one so like his as to lead the public to suppose the article, to which it is affixed, is the manufacture of the inventor, and they are equally liable for the damage whether such trade-mark be adopted by fraud or mistake. The plaintiff, having first applied the name "Pain-Killer" to a medical compound made and sold by himself, it was held that the application of the same name to a similar compound, sold by the defendant, bottled and labelled in a somewhat similar way, was an infringement of the plaintiff's trade-mark.
GREENE, C.J., delivered the opinion of the court.
The plaintiff has no patent and no exclusive right to the compound called Pain-Killer. He invented the compound and gave it the name Pain-Killer, and this seems to have been the first application of that term to a medical compound. The plaintiff, though not entitled to the compound, is entitled to his trade-mark, and the law recognizes and will protect this right.
Trade-marks may be, first, the name of the maker; second, symbolical; third, the name of the compound. Of this last kind is the trade-mark of the plaintiff, PAIN-KILLER.
All are entitled to make and vend this compound, and to vend it as a similar article to that made and sold by the plaintiff; but no one, but the plaintiff, has a right to sell it as a medicine manufactured by the plaintiff.
The adoption of the same label as the plaintiff's, will, of course, be actionable; and so the adoption of a label so like the plaintiff's as to mislead the public, would be actionable.
If the difference be merely colorable, it will not avail the defendant. But if the defendant state in his label, that the article which he sells was made by himself, although he calls it by the same name as the plaintiff, he will not be liable; because he has a right to make and vend the compound, if he vends it as his own, and not as made by the plaintiff. Canham v. Jones, 2 Vesey Beames, 218.
If the defendant, without fraud, use the trade-mark of the plaintiff, he is still liable. If the right be violated, it matters not whether it be by fraud or by mistake. Millington v. Fox, 3 Mylne Craig, 339.
The whole question in this case is, whether the defendant's label is liable to deceive the public, and to lead them to suppose they are purchasing an article manufactured by the plaintiff, instead of the defendant. The agreed statement of facts does not find that the defendant's label has deceived any one, and I do not think it will do so, but my associates think otherwise, and judgment must, therefore, be returned for the plaintiff.
Judgment for the plaintiff.
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