Torts, § 728; Great Atlantic & Pacific Tea Co. v. A. & P. Radio Stores, D.C.E.D.Pa., 20 F.Supp. 703.
In the present case the testimony showed numerous instances of actual confusion of customers, and a consideration of the nature of the question involved shows that such confusion, under the circumstances of this case, is almost inevitable. A large part of the business done by retail cleaning and dyeing establishments consists of orders received by telephone. The growth and development of such businesses depend largely on word of mouth recommendations. It is obvious that customers are not likely to make careful distinctions between slight differentiations in corporate titles which may appear in the telephone book. On the other hand, most members of the public would merely look for the identifying name of "Gerbron" and place their telephone orders in the belief that the "Gerbron" which they were calling was the one which they associated with that name or to which they had been referred, or in the belief that all the stores having such name were under common management. This in fact was demonstrated by the numerous instances of such confusion brought out in the testimony. There is considerable reason to believe that this confusion was deliberately fostered by the defendants, particularly in view of their distribution of cards bearing the name "Gerbron" with no address and of their recent adoption of the fictitious name of "Gerbron Service" to which they gave prominence in the classified section of the telephone book, but which at the time of trial they agreed to abandon in an effort to forestall the loss of the fruits of other infringements.
On the question of laches defendants' position has somewhat greater merit. It is true that plaintiff was aware for several years of the operations of the defendant corporation in the cleaning and dyeing business and its use of the name "Gerbron" in connection therewith and failed to make any protest. It also appears to be true that the defendants have incurred some expenses for advertising and publicizing their business under that name during those years. On the other hand, it is well settled that in an action for unfair competition mere laches in the sense of delay in bringing a suit does not constitute a defense to the granting of injunctive relief against continuance of the wrong, although it does operate as a bar to an accounting for its profits. Klepser v. Furry, 289 Pa. 152, 137 A. 175, and cases cited therein; Menendez v. Holt, 128 U.S. 514, 9 S. Ct. 143, 32 L. Ed. 526. This principle is of particular application where the defendant has wilfully sought to trade on the reputation of the plaintiff. Under all the circumstances of the present case the defense of laches does not operate as a bar to injunctive relief.
I make the following
Conclusions of Law.
1. By virtue of its use of the name "Gerbron" since 1932 to identify its cleaning and dyeing business plaintiff has established that name as its trade name in the Philadelphia area and is entitled to protection against its use by the defendants in the business conducted by them.
2. Defendants' use of the names "Gerbron Cleaners, Inc.", "Gerbron Service" and "Gerbron" to identify businesses conducted by them tends to deceive, and in fact does deceive, members of the public into believing they are obtaining plaintiff's services when they are obtaining those of the defendants.
3. Such use as the defendant Walter H. Gerbron made of the name "Gerbron" to identify cleaning and dyeing businesses with which he was established prior to its acceptance as the trade name of the plaintiff was not sufficient to establish any right in him to use that name thereafter.
4. Laches of the plaintiff in failing to bring suit for several years after it knew of the operations of the defendant corporation using the name "Gerbron" is no bar to the granting of injunctive relief to it against the defendants under the circumstances of this case.
5. Plaintiff is not entitled to damages from the defendants.
6. Plaintiff is entitled to an injunction against the defendants prohibiting the continued use of the name "Gerbron", "Gerbron Service" or "Gerbron Cleaners, Inc.", or any other combination using the name "Gerbron" to identify or advertise cleaning and dyeing or related businesses conducted by them.
Counsel may submit a decree in accordance with these conclusions.
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