right can be evoked from the fact that the perfume or powder is delicate and likely to be spoiled, or from the omnipresent possibility of fraud. If the defendant's rebottling the plaintiff's perfume deteriorates it and the public is adequately informed who does the rebottling, the public, with or without the plaintiff's assistance, is likely to find it out. And so of the powder in its new form."
Conceding that Prestonettes, Inc. v. Coty, supra, supports the defendant's position, the plaintiff argues that it has been overruled by Old Dearborn Distributing Co. v. Seagram Corp., 299 U.S. 183, 57 S. Ct. 139, 81 L. Ed. 109, 106 A.L.R. 1476. That case, however, related only to the constitutional validity of the Fair Trade Act of Illinois, Smith-Hurd Stats. c. 121 1/2 § 188 et seq., which permitted the vendor of a trade-marked article to contract with the buyer against the resale of the article except at the price stipulated.What the court decided was that a State might by statute confer such a right upon the vendor of a trade-marked article. The court, however, did not suggest that such a right existed under the common law. In fact it pointed out that in Dr. Miles Medical Co. v. Park & Sons Co., 220 U.S. 373, 31 S. Ct. 376, 55 L. Ed. 502, it had expressly held to the contrary. That the court did not intend to overrule the Prestonettes case was clearly indicated by Mr. Justice Sutherland, when he said (299 U.S. page 195, 57 S. Ct. page 145, 81 L. Ed. 109, 106 A.L.R. 1476): "There is nothing in the act to preclude the purchaser from removing the mark or brand from the commodity -- thus separating the physical property, which he owns, from the good will, which is the property of another -- and then selling the commodity at his own price, provided he can do so without utilizing the good will of the latter as an aid to that end."
The court thus indicated that even the act there under consideration did not affect the right of a purchaser to do what the defendant has done in this case provided he does so without utilizing the good will of the manufacturer. The Prestonettes case is authority for the proposition that in the absence of a statutory prohibition the use of the trade-mark to the extent authorized in the preliminary injunction granted in this case is not an improper utilization of the good will of the trade-mark proprietor. No statute is relied on in this case and it, therefore, follows that the rebottling operations of the defendant may not be totally restrained at the instance of the plaintiff provided the defendant's labels conform to the rule laid down in the Prestonettes case and reflected in the preliminary injunction which was granted in this case.
Third. The plaintiff argues, however, that with respect to the rebottling of Kreml from its sixteen ounce bottles into the defendant's eight ounce bottles the product is so changed in composition as no longer to be in fact plaintiff's Kreml. It is doubtless true, as plaintiff contends, that the value of its product Kreml lies not only in its ingredients but also in the proportions in which they are introduced into the product. In view of the rather substantial variation in the proportions of the two immiscible liquids of plaintiff's product found in defendant's eight ounce bottles I have concluded that there is merit in this contention of the plaintiff. In view of the immiscible character of the two liquids it is obviously quite difficult for the defendant by the process he uses to transfer the contents of one of plaintiff's sixteen ounce bottles into two eight ounce bottles in such a way as accurately to preserve the proportions of the two liquids as they appear in plaintiff's product. Unless this is done, however, it is obvious that the resulting product is not Kreml but at best but a distortion of it. I accordingly conclude that plaintiff is entitled to have the defendant restrained from using the word Kreml even to describe the origin of the rebottled product contained in such of his bottles as are of smaller capacity than those in which the product was contained when it was purchased by the defendant.
The defendant is entitled to rebottle and sell plaintiff's Kreml hair tonic purchased by him.
The defendant is not entitled to use the trade-mark Kreml upon his labels except as a part of the following inscription: "Genuine Kreml, rebottled by Franklin Sales Company, not connected with the makers of Kreml," and then only in letters of the same size, color, type and general distinctiveness and lettering as the other words of the inscription.
The defendant is not entitled to use the trade-mark Kreml in any form upon bottles containing plaintiff's product in which in the course of rebottling the plaintiff's proportion of ingredients has not been preserved.
The defendant is not entitled to use the word Kreml even to describe the origin of the rebottled product contained in such of his bottles as are of smaller capacity than those in which the product was contained when it was purchased by the defendant.
The plaintiff is entitled to a decree granting a perpetual injunction restraining the defendant from the use of the trademark Kreml except to the extent hereinabove indicated, with costs.
A decree may be entered accordingly.
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