Harris, 60 Pa. 156 (Pa. 1869)

The opinion of the court was delivered, by

Sharswood, J.

— The plaintiff, according to the statements of his bill, is the manufacturer of a cigar, known as the “ Golden Crown,” and he has devised a trade-mark, which he uses in its sale. He charges that the defendant, who is a printer by trade, has counterfeited this mark, and sells copies of it to persons engaged in the manufacture and sale of cigars, by whom they are used to his damage. The answer of the defendant admits these allegations; but sets up as a ground for the non-interference' of the court, that the articles thus sold by the plaintiff were manufactured in the city of New York, and that the trade-mark in question contains upon it the declaration that they are the product of a “ factory of cigars from the best plantations de la Vuelta Abajo, Calle del Agua, Habana.” The case having been heard on bill and answer, the bill was dismissed with costs.

The maxim which is generally expressed, “ He who .comes into equity must come with clean hands,” Snell’s Principles 33, but sometimes, in stronger language, “He that hath committed iniquity shall not have equity,” Francis’s Maxims 5, has been often applied to bills to restrain by injunction the counterfeiting of trade-marks. The ground on which the jurisdiction of equity in such cases is rested, is the promotion of honesty and fair dealing, because no one has a right to sell his own goods as the goods of another: Croft v. Day, 7 Beav. 84. “It is perfectly manifest,” said Lord Langdale, “ that to do this is a fraud, and a very gross fraud.” It is plain that there is no class of cases to which the

maxim referred 'to can be more properly applied. Tbe party who attempts to deceive the public by tbe use of a trade-mark, wbicb contains on its face a falsehood as to the place where bis goods are manufactured, in order to have tbe benefit of tbe reputation wbicb such goods have acquired in the market, is guilty of tbe same fraud of wbicb be complains in tbe defendant. He certainly can have no claim to tbe extraordinary interposition of a tribunal, constituted to administer equity, for tbe purpose of securing to him tbe profits arising from bis fraudulent act. Thus, in Pidding v. How, 8 Sim. 477, tbe plaintiff bad made a new sort of mixed tea and sold it under tbe name of “ Howqua’s Mixturebut as be bad made false statements as to tbe teas of wbicb bis mixture was composed, and as to the mode in wbicb they were procured, tbe court refused an injunction, Yice-Ohancellor Shadwell remarking, “ it is a clear rule, laid down by courts of equity, not to extend their protection to a person wljose case is not founded in truth.” In Flavel v. Harrison, 10 Hare 467, an injunction was refused, where an article was sold by tbe name of Elavel’s Patent Kitchener, for wbicb there never' bad been a patent. In Leather Cloth Company v. American Leather Cloth Company, 11 House of Lords Cases 533, though decided on tbe ground that tbe mark used by tbe defendants was substantially different from that of tbe plaintiffs, yet it may be fairly inferred from all tbe opinions that, if necessary, tbe decree of Lord Chancellor West-bury would have been affirmed on tbe broader ground. Th|ié, a company, wbicb bad gained reputation by a particular manufacture, on discontinuing their business, transferred their stamp or trade-mark, wbicb indicated them as tbe manufacturers, to other parties; and it was tbe opinion expressed that such assignees would not be protected in equity in tbe use of that mark on goods manufactured by themselves. “So,” said Lord Cranworth, “in tbe cases of bottles or casks of wine stamped as being tbe growth of a celebrated vineyard, or cheese marked as tbe produce of a famous dairy, or of bops stamped as coming from a well known hop-garden in Kent or Surrey, no protection would be given to tbe sellers of such goods, if they were not really tbe produce of tbe place from wbicb they purported to come.” It is contended, however, that this case is different, because there were marks or words used with these labels inconsistent with the idea that they were held forth as manufactured in Havana. On tbe label is printed, “Entered according to Act of Congress, A. D. 1858, by Lorin Palmer, in tbe Clerk’s Office of tbe Southern District of New York.” Apart from the fact that this is in such very small type, and so abbreviated that it would probably escape the observation of every one whose attention was not specially directed to it, a circumstance wbicb rather strengthens tbe evidence of an intention to mislead tbe public, what is there in tbe fact that tbe

design or engraving had been copyrighted in the United States, inconsistent with the declaration that the cigars, contained in the box, were manufactured in Havana of Cuban tobacco ? But, again, it is said that the United States’ internal revenue stamp would at once undeceive the purchaser, there being a difference between the stamp used for articles imported and for those of domestic manufacture. New persons would stop to notice this difference; and besides, as it is alleged, the trade-mark is pasted on the inside of the lid, and when the box is open for the purpose of retailing, the trade-mark is brought directly in the view of persons wishing to purchase, and the revenue stamp is not seen unless the lid is turned down, and the box examined on the outside. It is contended, further, that the falsehood is in a foreign language, of which it is to be presumed that the plaintiff’s customers are ignorant. Yet there is certainly enough to convey to every one who can read that the cigars are from “ Havana.” It is true, that when a slander is uttered in a foreign tongue, it is necessary, in an action for damage, to prove that the hearers understood the language; for it will not be .presumed that, being ignorant of the meaning of the words, they afterwards repeated them to those who understood them: 2 Starkie on Slander 52; but there is no such rule in an action for a libel in a foreign language, for litera scripta manet; that may be read and explained by those who do to those who do not understand it. The case of a written or printed libel has a much closer analogy to the point before us than that of spoken slander. But above all this, it is not necessary that any one person has been actually deceived or defrauded; it is enough that it is a misrepresentation, calculated to have that effect on the unwary and unsuspicious.

Decree affirmed and appeal dismissed at the costs of the appellant.