Decree of injunction to the plaintiff and the defendant

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Decree of injunction to the plaintiff and the
defendant
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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 terrarium 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.

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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.
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Explanatory phrase

• 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.

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Altering or repackaging plaintiffs goods
Where a defendant alters or repackages
plaintiffs goods and sells them under the
plaintiffs 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.
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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 defendants use does not
cause deceit.
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 plaintiffs packages or
goods, provided
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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 Defendants 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 complainants package
referred to in the bill and marked in evidence,
as does the said defendants second package
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• 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 defendants package, nor from using
  the designation buffalo soap powder, nor from
  making a powder having the appearance of
  complainants 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 Complainants
  package, that they are not calculated to deceive
  the ordinary purchaser.

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Trademark Phonetically dissimilar
Appellants claim is that respondent is guilty of
infringement of trademark Zincovit.
Respondents 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.
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Trade name family names

• In case where the decree provides for explanatory
  phrases to distinguish defendants 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.
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• The boxes used by defendant were changed from
  time to time, progressively advancing towards the
  appearance of plaintiffs 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 plaintiffs 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.

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Territorial limits

• Where business of both the parties is
  nation-wide, the relief should not be confined to
  any particular territory but where plaintiffs
  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 plaintiffs trademark
  wherever it is used by him including those
  places where he may do so in the course of
  normal business expansion.

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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 plaintiffs ice cream cabinets,
its cans, or any other equipment furnished by
plaintiff to its dealers.
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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.
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Some forms
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 defendants goods as
plaintiffs to restrain the use of the name of
the place as a trade name which has become
descriptive of the plaintiffs goods.