Martin H. Smith Co. v. American Pharmaceutical Co. (244 A.D. 702, 1935)

Judgment affirmed, with costs. No opinion.

Present — Martin, P. J., McAvoy, O’Malley, Townley and Glennon, JJ.; Martin, P. J., dissents.

Martin, P. J. (dissenting).

Approximately thirty- years ago the plaintiff adopted the word " Ergaapiol ” under which to market a pharmaceutical preparation composed chiefly of the drugs known as ergot and apiol but which also contained several other ingredients. It duly registered that name as a trade-mark. Since that time plaffitiff’s product has bepn kngwn and identified by that name. Upon this record it clearly appears that this trade name has acquired a secondary meaning dissociated from the basie components QÍ the preparation and associated with the particular preparation. During the past ten years the plaintiff has expended upwards gf $40Q,0QQ ip. advertising its product, and in that time its pales aggregated $4,Q0Q,Q0Q:

The corporate defendant, from 3,926 to 1982, also manufactured and sold a similar preparation under the name “ Ergot and Apiol Compound,!! In 1932 the defendants discarded this designation and adopted instead that of 11 Ergoti Apiol.” At the same time the defendants discontinued the use of the square cardboard container of twenty-four capsules which it had until then been using, and substituted a tin box approximating in sise and general appearance the oblong tjn box used by the plaintiff, reducing a}§g the number of capsules to the same number contained in the package of the plaintiff and packing the capsules in a nest-like paper inlay, which up to that time had been peculiar to the plaintiff’s product.

The evidence indicates that the defendants have gone to great extremes to simulate the package of the plaintiff. Designations other than that used by plaintiff for its product were not lacking. The preparation could more accurately have been described by the term “ Apiol and Ergotin Compound,’’ or by the term used by the defendants prior to the appropriation of plaintiff’s trade-mark, namely, fi Ergot and Apiol Compound,” or by the term