This is a suit by Wm. Radam, the appellant, against J.J. Tobin and others, partners doing business under the firm name of The Capitol Microbe Destroyer Company. Plaintiff alleged that he had discovered a valuable medicine possessing great curative properties, was manufacturing and selling it at large profits, and had given it the name of "Microbe Killer," and as such, with the trademark, labels, devices, and symbols adopted by plaintiff, it had become widely known; that defendants, with intent to defraud plaintiff and to deceive the public, have prepared for sale a medicine inferior to plaintiff's, similar in appearance, and put up in similar packages, with label, devices, and trademark in imitation of plaintiff's, which are calculated to deceive and do deceive the public into the belief that the same is the medicine of plaintiff; that defendants are selling their medicine by such counterfeiting, to plaintiff's damage $29,000. Prayer for temporary injunction, to be perpetuated on final hearing, and for judgment for alleged damages.
The answer of defendants denied all the allegations of the petition, and set up that Tobin had prepared a medicine for sale which he called the "Microbe Destroyer," a superior and different medicine to that *Page 128 of plaintiff, was selling the same under the firm name of the "Microbe Destroyer Company," but that plaintiff had no right to the exclusive use of the words "microbe killer;" that defendants' trademark is not in imitation of plaintiff's, and that there was no infringement as alleged.
On final hearing the trial judge, who tried the case without a jury, denied the injunction and gave judgment for defendant.
The first assignment of error is that "the court erred in permitting defendants to file an amended: original answer in the case and substituting the same for the answers in the case as it was called for trial and exceptions, of plaintiff to the answers had been sustained."
The second assignment is that "the court erred in overruling the motion of plaintiff to strike out the amended original answer, as the same was not filed in due order of pleading."
The case was regularly called for trial on the 7th day of May, 1888, the day set for trial, when plaintiff's demurrers were presented to the court. A portion of them (we here adopt appellant's statement under these assignments) "were sustained and parts of the answer stricken out. The court then permitted appellees to file an amended original answer to these pleadings over the objection of appellant."
The motion to strike out the amended answer was upon the following ground: "The same is not filed in the due order of pleading; the case being now called for trial and the demurrers of plaintiff being sustained to the answers of defendants, the said defendants could be permitted to file only a trial amendment, and not a first original answer." This motion was filed on the 8th of May, and on the same day another motion was filed to strike out that part of the amended answer denying the alleged partnership, declaring that Tobin alone was the proprietor of the medicine and trademark set up by defendants, and that he alone constituted the Microbe Destroyer Company; and also to strike out that portion of Tobin's answer setting up that the two medical preparations of plaintiff and defendant were composed of different chemicals; that plaintiff's medicine was a known mixture and had been used as a medicine long before plaintiff attempted to appropriate it; that he (defendant) used the words "microbe destroyer" to indicate the real character of his medicine, and not to imitate the name adopted by plaintiff; that he has used in the sale of his medicine jugs of all sizes and colors, because jugs are suited to the medicine and are cheaper than other vessels; that he has never represented to the public or any person that he was manufacturing or selling plaintiff's medicine, or a medicine in imitation of it, or authorized any other person to do so, but on the contrary has always represented it to be different in all respects, and that he has carefully avoided any imitation of plaintiff's labels, devices, and methods of selling, and denies that he has encroached upon any privilege plaintiff may have. The grounds relied on in the motion to strike out the foregoing parts *Page 129 of the answer axe that they set up new matter not before pleaded. The motion was overruled.
After sustaining certain exceptions to the answer, a trial amendment was the proper technical pleading in order. Rule 27 for District Court. But the rule is not absolute where no injury is done the other side. The court has the power to relax the rule in the interest of justice. The Revised Statutes provide that pleadings may be amended under leave of the court before the parties announce ready for trial, "and not thereafter." Rev. Stats., art. 1192. Yet it has been held that after such announcement the court may allow amendments that may seem necessary to the ends of justice. Parker v. Spencer,61 Tex. 164; Whitehead v. Foley, 28 Tex. 10 [28 Tex. 10]. The due order of pleading indicated in the motion to strike out the amendment referred to the time and order of filing a trial amendment, and the objection to the amendment on the ground that it was not filed in due order went only to the power of the court to permit a general amendment of the answer after exceptions were sustained to parts of original answers. The court had the power to grant leave to amend, and under the circumstances, plaintiff not being injured thereby, the failure to strictly enforce the rule was not error. If new matter had been set up that plaintiff was not prepared to meet by pleading or evidence he could have amended also, and even continued the case if necessary. No such condition of things existed, no injury was done to plaintiff, and there was no reversible error in the action of the court.
The fourth, fifth, and nineteenth assignments of error are of the same character and can be conveniently considered together. The fourth is that the court erred in refusing to permit the plaintiff to testify that the labels attached as exhibit B to plaintiff's petition and the label attached as exhibit A were so alike that they were calculated to deceive a person of ordinary intelligence and care into taking one for the other. The fifth is to the effect that the same witness should have been permitted to testify that the jugs as filled and the labels as used thereon by each of the parties were, in the opinion of the witness, so alike as to be calculated to deceive a person of ordinary care and intelligence. The nineteenth is to the same effect as the fourth assignment.
Plaintiff's trademark and label is described in the first part of the opinion in the case of Alff Co. v. Radam,77 Tex. 530. Tobin's trademark is the words "Microbe Destroyer," and there is no symbol, picture, or illustration on the label. On the label used by Radam at the top are written the words: "Wm. Radam's Microbe Killer," in large letters, and under this the words "Germ, bacteria, or fungus destroyer." In the center of the label is the symbol or illustration, in the top of which is printed in capital letters "Wm. Radam's Microbe Killer," and in the lower part of it "Trademark." Under the picture are the words "Registered December 13, 1887," and below this a caution *Page 130 is printed: "The genuineness of every jug is secured by trademark as above, and my name must be written on each label in that form." The name "Wm. Radam" is then written or printed below. On the left of the symbol, in a column about the size of an ordinary newspaper column, is printed "This is the invention of Wm. Radam, Austin, Texas." "It is the only microbe killer in the world;" all in capital letters. Then in the same column is further information about the medicine and its cures, and a warning to persons not to use the label or trademark. On the right side of the symbol in a similar column are printed instructions about how to use the medicine in different diseases, all signed by "Wm. Radam, Austin, Texas, U.S. A.," in printed capital letters.
Exhibit B attached to plaintiff's petition shows no device or picture on the label used by the Microbe Destroyer Company. The printed matter on the label is not divided into columns, but appears as follows:
"MICROBE DESTROYER. "An unfailing remedy for consumption, catarrh, bronchitis, "etc., etc., and all diseases arising from impurities of "the blood. Dose: Wineglassful three times a "day before eating in a tumblerful of "water. Price $2.50 per gallon. "PREPARED BY THE "CAPITAL MICROBE DESTROYER CO., AUSTIN, TEXAS. "Registered December 28, 1887.
[Signed] "DR. J.J. TOBIN, State Agent."
Another copy is given of the label on exhibit B as used by the Microbe Destroyer Company exactly like the above, except that it ends with the words "Austin, Texas." These labels used by the Microbe Destroyer Company were of different colors — blue, yellow, etc. Both parties put up their medicine in grey or brown one-gallon jugs similar in appearance and bought in the market, and their respective labels and trademarks were placed on the jugs.
Plaintiff's proprietorship in his trademark, labels, and style of packages was prior to any right of defendant to use the alleged imitations.
It does not appear from the bills of exceptions that Radam was offered as an expert or that his opinion was to be that of an expert. His evidence was objected to because it would be only his opinion, but the bills show that it was not offered as an opinion but as a fact.
We doubt the propriety of taking the opinion of an expert in such a case. He was called on for his opinion as to whether persons of ordinary intelligence and care would be deceived by the trademarks of the parties, or the package and the trademarks, into the belief that they were the same. We do not see how the evidence of an expert could *Page 131 aid the court in determining this question, or how there could be an expert in such a matter. What ordinary intelligence might think of facts before the eye, it seems to the writer, should be left to the judgment of ordinary intelligence, with at least as much confidence as to one calling himself an expert. Such evidence has, however, been admitted and approved. Williams v. Brooks, 50 Conn. 278, reported in American Trademark Cases, p. 661. In McLean v. Fleming, Myers' Copyright and Trademark, 1118, 96 United States Reports, 6 Otto, 245, it is said that "witnesses in great numbers were called by the complainant, who testified that exhibits L and K of the respondent were calculated to deceive purchasers;" but in that case there was no objection to the evidence. In Abbott's Trial Evidence it is said that "probability of deception is generally shown by resemblance, and by the opinions of experts. Resemblance as shown by inspection is, however, the primary test and criterion, and proof by experts is seldom resorted to." Identity of design might require an expert's testimony — an expert in designs — but that is not the question here. Expert testimony is resorted to for the purpose of informing the court or jury upon subjects not commonly understood, but where the nature of the inquiry appeals to the common understanding and ordinary intelligence of mankind it would be improper to admit opinions of experts or other persons. Shelley v. City of Austin, 74. Texas, 612. This witness was not called as an expert, and his opinion was not admissible, nor would it have been in our judgment if he had been an expert. All the facts were before the court — the trademarks, the labels, the jugs, and the packages, as presented for sale in the market; it was his province to decide what impression would be made by them upon persons of ordinary intelligence and care. In such a case an expert should not be allowed to decide for him. Cooper v. The State, 23 Tex. 331; Turner v. Strange, 56 Id., 142; Railway v. McGehee, 49 Id., 481; McKay v. Overton, 65 Id., 85; Shelley v. City, supra; 1 Whart. on Ev., 436. Similar testimony was offered by plaintiff by other witnesses, which was met by the same ruling. The assignments of error involve the same principles that have been above disposed of. It is useless for us to repeat them or the reasons in favor of the court's ruling. All such testimony was inadmissible, and there was no error in rejecting it.
The main question in the case, was there an infringement as alleged by plaintiff, is raised by many assignments of error on the conclusions of the court upon the facts and the law, but they may all be considered under one head.
The conclusions of the court were "that there is a general similarity in shape and color of the jugs and those portions of the labels which indicate the properties and uses of the medicine between the goods of appellant and appellees as the same are offered for sale, but that the differences in the same are so readily perceptible and marked that a *Page 132 man of ordinary intelligence and care should not be misled thereby;" and "that appellees did not designedly or fraudulently adopt the use of gallon jugs or imitate the trademark and labels, etc., of appellant." The court also added the following to his findings as the law of the case:
"1. That the appellant has the right to the exclusive use of his trademark, labels, symbols, etc.
"2. That there is no such imitation thereof by appellees as is calculated to deceive the public.
"3. That there is no intentional wrong nor fraud on appellees' part.
"4. That appellant take nothing by his suit, and that the injunction be denied.
"5. That this is without prejudice to appellant's right to the exclusive right to make the preparation known as 'Microbe, Killer,' if he has such right, which is not in any way involved in this suit."
These findings embrace the merits of the case, and appellant attacks all of them by various assignments of error. We do not think it necessary to notice all these assignments, nor is it convenient or necessary to discuss all the questions raised by them. They principally tend to the one object — that is, to show error in the main findings of the court as above set out.
The questions involved are not difficult or subtle; they are simple and may be easily and briefly disposed of. It has already been decided by the Commission of Appeals "that the words 'microbe killer,' as used by the complainant, do not constitute a trademark;' that they were words in common use, employed by complainant in their ordinary sense, and that he had not acquired any proprietary right to their exclusive use; and it was also decided in the same case that the labels used by him and the defendant (in that case) respectively were so entirely dissimilar that no person of ordinary prudence and caution could be deceived thereby. Alff Co. v. Radam,77 Tex. 540, 541. After an able brief in support of a motion for a rehearing before the Supreme Court by one of the attorneys for the appellant in this case, in which numerous authorities and precedents were cited, that court refused to qualify the former opinion in any respect. We have again carefully examined the question as to whether appellant can appropriate "Microbe Killer" as a trademark, and are satisfied that the opinion in Alff Co. v. Radam is correct. The symbol of appellant in this case as in the former, registered with the words "microbe killer" as his trademark, was not used by the Microbe Destroyer Company at all. It had no symbol of any kind, and there is no pretense that it was taken or infringed. We have no hesitancy in following the case formerly decided by the Commission. For generic names held not to be trademarks see Browne on Trademarks, section 134.
We see no error in the court's finding that there was no such similarity in the trademark, labels, or packages used by appellee to those *Page 133 of appellant as would be calculated to deceive the public. Both parties put up their medicine in grey or brown jugs with their labels pasted on them, and there may have been in the general appearance a similarity, but only in our opinion because of the jugs. Taking the labels, the printed matter upon them, its arrangement and form, their color — one with a bright red border around it and an attractive red symbol or figure in the center, with printed matter in columns on each side of it, the other of yellow or blue paper with no symbol at all and no columns in print, and taking the entire packages in jugs so labeled — we do not see how an ordinary purchaser or even a casual observer could mistake one for the other. If the labels, trademark, and packages, one or all combined, were not calculated to deceive an ordinary purchaser there is no infringement. Am. Trademark Cases, 116, Caire's Appeal; Bell v. Lock, 8 Paige, 75; Cox Man. Trademark Cases, Nos. 72, 91, 123, 138, 157, 217; Conrad v. Brewing Co., Am. Trademark Cases, 316, reported in 8 Mo., 277.
A text writer on the law of trademarks says that to constitute infringement "it is enough that the representations employed bear such resemblance to the genuine as to be calculated to mislead the public generally who are purchasers of the article, and to make it pass for the genuine." Browne on Trademarks, sec. 385. He copies in the text the doctrine announced by the New York Court of Appeals in the case of Popham v. Cole, 66 New York, 69, where it was held that the resemblance "must be such as to deceive a purchaser of ordinary caution." We think this is the correct rule in cases where there is no intention to defraud. Alff Co. v. Radam, supra. But it has been held "that the resemblance need not be such as would deceive persons seeing the two trademarks side by side, or as would deceive experts." Tobacco Co. v. Hynes, Am. Trademark Cases, No. 136, p. 898. In the last case the right to a recovery is made to depend upon such a similarity of the trademarks as "would deceive the ordinary purchaser purchasing as such persons ordinarily do." We need not proceed further with the examination of authorities; there are many of them, and some of great respectability, that hold that if the similarity of trademarks, packages, color, etc., is such as to "deceive careless and unwary purchasers who buy goods with but little examination, but not such as to deceive purchasers who read the trademark and label," an injunction would lie. Williams v. Brooks, Am. Trademark Cases, No. 102, p. 654, reported in 50 Conn. 278, and authorities cited.
There was evidence before the court that some persons were deceived by the similarity of the two trademarks, labels, etc., but under all the facts the court decided the question in favor of appellee, as we think he should have done under the law.
The court also concluded from the evidence that there was no fraudulent design or intentional wrong on the part of appellees in adopting *Page 134 their trademark, labels, and packages. It was the province of the court trying the case without a jury to solve this question according to the evidence. The evidence supports his finding, and we see no reason why we should set it aside.
It is assigned as error that the court should have permitted William Radam to answer the question, "Has any one applied to you for information regarding the Microbe Destroyer medicine?" which question the witness would have answered in the affirmative had he been permitted to answer. The question and answer were inadmissible. The object of the evidence as stated in the bill of exceptions was "to show that persons had been deceived in seeking to buy one medicine for the other." This was not the proper way to prove the fact. If persons were deceived they should have been called to speak to the fact. To allow Radam to state the facts, or to state facts from which such a conclusion might have been inferred, would have been hearsay. The court refused to allow Radam to state while on the stand how much he lost by reason of defendants having offered and sold their medicine in Houston. If there was error in this ruling as assigned it has become wholly immaterial, plaintiff having failed to show any interference with his rights as alleged and the court having so found.
Plaintiff set up the grounds upon which he claimed his trademark and labels were infringed, and that the infringement was fraudulent and wrongful, but he did not specify any loss occasioned to him in his sales or otherwise because of the interference. He laid his damages generally at $29,000. The court below sustained a special exception to the claim for damages, but held that a good cause of action was stated for injunction. There is an assignment of error that such ruling striking out the claim for damages is error. We think it unnecessary to consider the question raised, because it was correctly decided by the court that there was no infringement, fraudulent or otherwise, upon which damages if specifically alleged could have been predicated.
The court refused to allow proof of the reputation of the identity of the two medicines. There was no error in this; because, first, the identity of the medicine's was not the issue, but only the similarity of the trademarks, labels, and packages; second, the evidence of the identity of the medicines would be inadmissible to prove the alleged infringement of trademark, etc., unless it were also shown that the similarity in trademarks created the reputation.
The court refused to allow E.W. Baker to answer the question, What representations, if any, Mrs. Reagan, as agent of Dr. Tobin, made at Kyle, Texas, as to the similarity of the two medicines? This ruling is complained of by assignment of error. Again we have to say that the similarity or identity of the medicines was not the question before the court. Besides this, the bill of exceptions does not disclose the *Page 135 answer that would have been made to the question, and for this reason we can not consider the assignment.
Having considered all the important questions raised by the assignments of error, and finding no error, we conclude the judgment of the lower court should be affirmed.
Affirmed.
Adopted May 19, 1891.