delivered the opinion of the Court:
The words, “health-preserving, ” preceding the word, “corset, ” beyond all question but describe a quality of the corset, —i. e., an effect which its use will produce,—and can not, therefore, be employed as a trade mark. Amoskeag Manf. Co. v. Spear, 2 Sandf. C. C. 599; Canal Co. v. Clark, 13 Wall. 311; Manufacturing Co. v. Francis, 101 U. S. (11 Otto,) 51; Gilman v. Hunnewel et al. 122 Mass. 122; Larrabee v. Lewis, 67 Ga. 561; Royal Baking Powder Co. v. Sherrell, 93 N. Y. 331. Many of the cases illustrating this principle will be found collected, in Freeman’s note to Partridge v. Menck, 47 Am. Dec. 292, 293. See, also, Upton on Trade Marks, 114, et seq.; Brown on Trade Marks, secs. 164, 657, 658. It is well settled, moreover, that directions, advertisements, notices, etc., constitute no part of a trade mark, (Candee, Swan & Co. v. Deere & Co. 54 Ill. 462,) and that no one can obtain a trade mark in the form, appearance or finish of his goods, so that another can not lawfully make his goods like them. (Candee, Swan & Co. v. Deere & Co. supra; Brown on Trade Marks, sec. 605.) Nor can there be a trade mark in the form or color of a package or box. Morgan’s Sons Co. v. Troxell, 89 N. Y. 292; Moorman v. Hoge, 2 Sawyer, 78; Harrington v. Libby, 14 Blatchf. 128.
Conceding that appellants had a trade mark in the name of “Ball, ” and in the picture and words and form of lettering on the labels pasted on their boxes, it is evident that the name, “ Schilling, ” or “Dr. Schilling, ” could not be mistaken for that of “Ball, ” and that if the picture, words and form of lettering on the labels pasted on appellees’ boxes were totally unlike those pasted on appellants’ boxes, the one could not reasonably be mistaken for the other, and there could, in neither respect, be any infringement of a trade mark. The only question is, whether appellees were, hy devices and false representations, as charged in the bill, selling or causing to be sold their corset, when the purchasers were desiring to purchase, and supposed they were purchasing, appellants’ corset.
Affidavits were read in evidence by appellants to prove active efforts by appellees to sell Schilling’s corsets as Ball’s corsets; but some of them were inadmissible becaus.6 based on mere hearsay, and others were insufficient because proving acts only of third parties, and not sufficiently connecting appellees with them, either by showing that they were done under the direction of appellees or with their approval. The balance of appellants’ affidavits were neutralized by counter-affidavits on behalf of appellees—at least so far that we can not say the allegations of the bill resting on them for support' are clearly proved. The boxes in which appellees’ corsets are placed to be sold, are of the same shape, size and general color as those in which appellants’ corsets are placed to be sold. It does not appear, however, that there is anything unusual in the shape or structure or color of these boxes, and, so far as we perceive, this similarity may result from the use required, and the convenience of the makers of the boxes —at all events, it does not appear that this may not be so, and we regard it a reasonable inference in the absence of all proof as to purpose or motive. The labels on the boxes are dissimilar. That on the end of appellants’ box has the picture of a corset, and reads: “Ball’s Health-preserving Corset.—Drab.—. . . . Size. ” That on the end of appellees’ box has no picture of a corset or of anything else. It reads: “Dr. Schilling’s Self-adjusting Corset.—Drab.—.... Size.” The lettering is unlike in every respect. The types are different, the lines run in different directions, and the reading is different. The most casual observer would, at any distance at which he could distinguish the appearance of these labels from labels of any other description, distinguish the difference. The label on the top of the lid of appellants’ box has, in the centre, lengthwise, a picture of a corset, with lettering on each side extending irregularly upward and downward, parallel with and corresponding to the irregular outline of the sides of the corset, reading, on the one side, “Coiled Spring,” and on the other, “Elastic Section, ” and over the picture of the corset, in a single line running lengthwise with the label, the beginning and ending being about equi-distant from the ends, is printed, in caps, the words, “What Eminent Chicago Physicians say of it.” The label on the top of the lid of appellees’ box has no picture of a corset upon it, but it has, in the centre, lengthwise of the label, a picture of Dr. Schilling. There is no lettering of any kind, either extending perpendicularly, parallel with, or over this picture, as on the other label; but to the right and left of the picture, in the upper margin and near each end of the lid, in distinct single lines of caps, are printed, in each line, the words, “Opinions of Eminent Physicians of Chicago.” On both labels, on each side of the pictures, are physicians’ certificates,—those on the one certifying to the excellence of the “Ball Corset, ” and those on the other to that of the “Schilling Corset,”—and appended to these are what purport to be fac similes of the signatures of the respective certifying physicians. The same names do not certify to each certificate, and the phraseology is not the same, in form, in each ease, and the fac similes are as different as the signatures of different individuals ordinarily are. Along the upper sides and ends of the lids of the boxes of each party is a narrow border, but that on appellants’ box consists of small, alternate stripes of red and white—the red stripes being, perhaps, four times broader than those of the white—while the border on appellees’ box is plain red.
It is thus apparent that in respect to the tops as well as to the ends of the boxes the difference can be detected by even casual observation, as far as one box of this size and shape can, by the use of dissimilar labels, be distinguished from another.
With respect to the circulars in each box, there is a palpable distinction, obvious to any one, even without reading. The display letters in the head lines are entirely different in shape, shading and size, and the paper in appellants’ box is shorter and narrower than that in appellees’ box, and there is a difference in the quality and whiteness of the paper, and in the form, shading and size of the letters in the body of the circulars, plainly distinguishable as far as the outlines of the letters are visible. At the head of appellants’, in large caps, is the word “Ball’s. ” At the bead of appellees’, also in large caps, are the words, “Dr. Schilling’s.” One circular commends “Ball’s” corset, and the other commends that of “Dr. Schilling. ” It is true that in cases of this kind, as a general rule, exact similitude is not required to constitute an infringement, or to entitle the complaining party to protection ; but if the form, marks, contents, words, or other special arrangement or general appearance of the words of the alleged infringer’s device, are such as would be likely to mislead persons in the ordinary course of purchasing the goods, and induce them to suppose that they were purchasing the genuine article, then the similitude is such as entitles the injured party to equitable protection, if he takes seasonable measures to assert his rights and prevent their continued invasion. (Thompson’s note to Popham v. Cole, 23 Am. Rep. 28.) But the court is not bound to interfere where ordinary attention will enable purchasers to discriminate between the trade marks used by different parties. Popham v. Cole, 66 N. Y. 69; 23 Am. Rep. 22, and eases there cited; Morgan’s Sons Co. v. Troxell, 89 N. Y. 292; 42 Am. Rep. 294; Manufacturing Co. v. Francis, supra; Reed v. Richardson, 45 L. T. (N. S.) 54; Beard v. Turner, 13 id. 736; Leidesdorf v. Flint, 7 N. W. Rep. 174; Eggers v. Heink, 63 Cal. 445.
Applying this rule to the facts before us, there clearly ought to be no relief decreed. To entitle a complainant, in cases of this character, to the relief here sought, the right must be clearly established by the evidence. Partridge v. Menck, 2 Barb. Ch. 101; High on Injunctions, (1st ed.) sec. 676; Hilliard on Injunctions, p. 407, sec. 43. In no view can this be said of the appellants’ right, under the legitimate, pertinent evidence in this record.
The judgment of the Appellate Court is affirmed.
Judgment affirmed.
This ease, when first considered, was assigned to the late Justice Dickey to prepare the opinion, but no opinion having been prepared in his lifetime, it was re-assigned at the November term, 1885.